We previously reported on the interplay between the Judicial Panel on Multi-District Litigation (“MDL”) under 28 U.S.C. § 1407(a) and the joinder rules under 35 USC § 299 of the America Invents Act (“AIA”).

In Unified Messaging Solutions, LLC v. United Online, Inc., et. al., 1-13-cv-00343 (N.D. Il. May 3, 2013) Judge Lefkow recently denied defendants’ motion to sever plaintiff’s infringement claims against them from pretrial consolidation in an MDL case, and rejected their argument that § 299 had been violated.

The Court held, inter alia, that Section 299’s prohibition on joinder did not “obviate a transferee court’s discretionary ability to order pretrial consolidation in multidistrict litigation. . . . The coordination that [defendants] advocate would thwart the court’s ability to manage the present litigation by transforming each case into an individual action circumventing the uniform rulings and judicial efficiency that the [MDL] intended . . . .” The Court also found that its order of pretrial consolidation did not implicate Section 299’s prohibition on consolidation of trials because “‘Section 1407 applies to pretrial proceedings’ while ‘Section 299 itself is silent as to the conduct of pretrial proceedings, nor does it mention Section 1407.’” (citing In re Bear Creek Tech., Inc., Patent Litig., 858 F. Supp. 2d 1375, 1377 (J.P.M.L. 2012). And, because the consolidated actions will ultimately be remanded to the trial courts from which they originated after the pretrial proceedings, the Court rejected movant’s argument.

Accordingly, practitioners can continue to expect consolidation of related litigations under 28 U.S.C. § 1407(a), where appropriate, despite the procedural transformations under the AIA.

Ralph A. Dengler is a Director in the Gibbons Intellectual Property Department.