second action). Without ever raising any concerns about the potential for inconsistent judgments, courts consistently deny the joinder of unrelated parties into one action, even where the infringement of the same patent is alleged, and thereby allow for the actions against those defendants to proceed separately. See, e.g., Androphy, 31 F. Supp.2d at 623; New Jersey Machine, 1991 WL 340196, at *1-*2.
To the extent that Pergo's argument is based on the fact that litigation in two jurisdictions will result in differing interpretations of the `547 and `970 patents, it too is meritless. Patent holders often litigate cases and bring claims alleging infringement of the same patent in multiple jurisdictions against different parties, and they are able to resolve discrepancies, if they exist, by appealing those decisions to the Court of Appeals for the Federal Circuit. See, e.g., RF Delaware, Inc. v. Pacific Keystone Techs., Inc., BCA, No. 02-1508, 2003 WL 1906785, at *2 (Fed. Cir. April 21, 2003) (noting that multiple district courts had conducted claim construction analysis on identical patent owned by the plaintiff, because the plaintiff had brought suit in two jurisdictions, and the plaintiff had appealed one such interpretation); see also 17 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 4104 (2d ed. 1987) (noting that Federal Circuit was created specifically to achieve consistency in area of patent law and to resolve conflicts in lower courts).
In addition, as explained above, Alloc and Berry Wood have a declaratory judgment action pending in Wisconsin that involves the same issues of infringement that are being litigating against the Berry defendants in this action. The interest in avoiding inconsistent judgments is certainly greater as between the Wisconsin declaratory judgment action and the claims against the Berry defendants in this case, than between any action in Georgia and any action in Wisconsin brought by Pergo that involves different products and different infringement issues. Compare Reiffin v. Microsoft Corp., 104 F. Supp.2d 48, 55-56 (D.D.C. 2000); Coregis Ins. Co. v. Montelepre, No. 98 Civ. 2167, 1999 WL 236616, at *1-*3 (E.D. La. April 19, 1999); Vortekx, Inc. v. Ias Communications, Inc., 72 F. Supp.2d 638, 640 (N.D. W. Va. 1999) with SmithKline Beecham Corp., 2000 WL at *1-*2 (discounting argument concerning potential for risk of inconsistent judgment where patent issues involving parties were dissimilar as between two jurisdictions). Consequently, the Berry defendants run a greater and more plausible risk of inconsistent judgments if the claims against them are not transferred to Wisconsin, and litigated along with the declaratory judgment action. See Reiffin, 104 F. Supp.2d at 55-56 (D.D.C. 2000) (granting motion to transfer venue where parties and patents were identical in two actions and failure to transfer raised risk of inconsistent judgments).
Thus, the public interest factors favor the transfer of the claims against the Berry defendants to the Eastern District of Wisconsin, because such a transfer promotes judicial economy, by allowing the declaratory judgment action to proceed alongside the claims raised by Pergo in this Court. There is no persuasive countervailing public interest advanced by Pergo that counsels against transferring the claims against the Berry defendants to the Eastern District of Wisconsin or the claims against Shaw and Witex to the Northern District of Georgia, since there is no realistic danger of inconsistent judgments.
Given that the interests of the parties and the public interest tips decidedly in favor of transfer, the motions of the Berry defendants and Shaw to transfer pursuant to § 1404(a) are granted.
There are several additional motions that have been filed by one or more of the Berry defendants. Because the motions to sever and transfer are being granted, it is appropriate for the transferee court to consider the merits of the remaining motions. Since these motions are critical to the disposition of the case, they should be decided by the transferee court in the first instance. See Lyon v. Cornell Univ., 97 Civ. 7070, 1998 WL 226193, at *2 (S.D.N.Y. May 4, 1998) (collecting cases). Consequently, it is unnecessary to decide the remaining motions and they are transferred with the claims against the Berry defendants to the Eastern District of Wisconsin.
For the reasons explained above, it is hereby ordered that:
1. The claims in the 4840 and 6408 actions against the defendants Berry Finance, Alloc and Armstrong are severed from the claims against the defendants Shaw and Witex.
2. The claims in the 4840 and 6408 actions against the defendants Berry Finance, Alloc and Armstrong are transferred to the Eastern District of Wisconsin.
3. The claims in the 4840 and 6408 actions against the defendants Shaw and Witex are transferred to the Northern District of Georgia.
4. The remaining motions by one or more of the Berry defendants are transferred together with the claims against the Berry defendants to the Eastern District of Wisconsin.
5. The Clerk is directed to transfer the cases in accordance with this decision and to close these cases on the docket of this Court.