Opinion
No. 99-73700.
February 19, 2002
REPORT AND RECOMMENDATION
This matter is before me on an Order of Reference. The Court has directed that I submit a Report and Recommendation On the January 22, 2002 Opinion from the United States Court of Appeals for the Federal Circuit. That decision affirmed the District Court's dismissal of the plaintiff's Complaint without prejudice, but reversed the dismissal of the defendant's counterclaims. Following the (now affirmed) dismissal of its Complaint in this action, H.R. Technologies, Inc. filed a new Complaint in case No. 00-74406. Thereafter, defendant Astechnologies, Inc. filed an Answer and Counterclaims. The counterclaims in the second action are identical to those which were dismissed, and are now to be reinstated by the Order of the Court of Appeals.
In the final paragraph of its decision, the Federal Circuit Court of Appeals stated that the District Judge may disregard the Order to Vacate the Dismissal of the Counterclaims if it regards the Section 285 Counterclaim as still under consideration in a pending motion for sanctions. Because I conclude that the sanctions motion does not encompass the Section 285 claim for attorney fees, I do not recommend that the Circuit Court Order be disregarded.
The Court of Appeals decision recognizes that the practical effect of the dismissal of the counterclaims in Case No. 99-73700 is likely to be insignificant, so long as Astechnologies, Inc. is given the opportunity to assert its causes of action. Accordingly, I recommend that the Court consult with the parties to determine Astechnologies' willingness to elect which pleading it would prefer to rely upon. voluntary dismissal of the counterclaims in this action would entirely resolve the matter, since the claims of plaintiff and defendant could be fully resolved in Case No. 00-74406. should the defendant elect to pursue the counterclaims asserted in Case No. 99-73700, I recommend that the two cases be consolidated, pursuant to Federal Rule of Civil procedure 42(a) which provides that:
When actions involving a common question of law or fact are pending before the Court, it may order a joint hearing or trial of any or all the matters in issue in the actions; it may order all the actions consolidated; and it may make such orders concerning proceedings therein as may tend to avoid unnecessary costs or delay.
There could hardly be a clearer justification for consolidation than the assertion of identical claims in two actions.
Following consolidation, the Answer and Counterclaim filed in Case No. 00-74406 should be dismissed. If a voluntary dismissal is not forthcoming, I recommend that the Court strike the Answer and Counterclaims in the later case pursuant to Federal Rule of Civil Procedure 12(f), which provides that redundant matter may be stricken from any pleading upon the Court's own initiative at any time.