Brandeis University's Patent Infringement Case Over Cookies Crumbles Against Multiple Defendants and the Court Transfers All the Crums to Another District

February 29, 2012

Plaintiff Brandeis University ("Brandeis") alleged that it was the owner of the patents-in-suit and plaintiff GFA Brands, Inc. ("GFA") alleged that it was the exclusive licensee of the patents-in-suit. Plaintiffs asserted that the defendants infringed the patents by making, using, selling or importing various products such as cookies, cookie dough and spreads. A number of the defendants moved to transfer or sever.

With respect to the motions to sever, some of the defendants asserted that the joinder violated Fed.R.Civ.P. 20. Although most of the parties agreed that there were common questions of fact and law, the question remained whether plaintiffs' claims against the different defendants arose out of the same transaction, occurrence or series of transactions or occurrences.

Plaintiffs identified two grounds for finding that their claims satisfy this requirement. First, plaintiffs argued that they would be proving infringement using the same laboratory tests and test source. The district court found this unpersuasive because the plaintiffs did not explain why this matters. "The question is whether plaintiffs' claims against defendants 'arise out of' the same transactions or occurrence. The test used to prove infringement is an arbitrary choice by plaintiffs that has nothing to do with whether defendants' products infringe the asserted claims, so it is difficult to see how the claims could 'arise out of' that test."

Second, plaintiffs argued that multiple defendants buy infringing ingredients from common suppliers. The district court also did not find this persuasive. "It is not clear why a common supplier would have any effect on the proceedings in this case or increase the efficiency of trying the claims against different defendants together, particularly because plaintiffs have not sued any suppliers."

Accordingly, the district court granted the motion to sever.

The district court then turned to the various motions to transfer. Defendants sought to move to transfer their cases to various courts across the country, which would leave the cases with five different judges. The district court did not believe that such transfers would increase convenience. "[Defendants have failed to show that any increase to their convenience outweighs the obvious inefficiency of requiring five different judges to decide six related cases." Instead, the district court determined that the cases should not remain in Wisconsin but instead should be transferred to a single district. In this case, the district court transferred the cases to Judge Posner, who had agreed to take over the pretrial and trial work in each of the cases, in the Northern District of Illinois.

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Although the defendants plainly had the better arguments for severance and transfer, they almost lost the transfer argument by not agreeing to one transfer district and instead requesting transfer to several districts. As a practical matter, defendants in these situations should pick a preferred transfer district and agree upon that district as opposed to seeking to transfer similar cases to multiple districts.


Brandeis University and GFA Brands, Inc. v. East Side Ovens, Inc., et al., Case No. 11-cv-619-bbc (W.D. Wisc. )

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.