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Erdman v. Falkner

United States District Court, S.D. Alabama, Southern Division

May 24, 2019

FRANKIE WENDELL ERDMAN, JR., Plaintiff,
v.
PETER T. FALKNER, et al., Defendants.

          MEMORANDUM OPINION AND ORDER

          TERRY F. MOORER UNITED STATES DISTRICT JUDGE

         Pending before the Court is Plaintiff's Withdrawal of Motion to Remand and Request to Set Deadlines and for Rule 16 Conference (“motion to withdraw”). Doc. 44, filed May 7, 2019. Plaintiff moves the Court allow him to withdraw his Motion to Remand (Doc. 14); states he does not oppose the pending Motion to Consolidate in the companion case of INGEN1, LLC v. Erdman, No. 1:19-cv-00183-TFM-C; moves the Court to set deadlines to amend his Complaint; moves the Court to set deadlines for him to file an answer to the counterclaims; and asks the Court set a deadline for the parties to submit a Fed.R.Civ.P. 26(f) report. Doc. 44, at 1-2.

         I. FACTUAL AND PROCEDURAL BACKGROUND

         To clarify, the Court will discuss in this memorandum opinion and order two cases that are before it. First is the instant action, Erdman v. Falkner, No. 1:18-cv-00414-TFM-C [hereinafter “Erdman I”], and the second is INGEN1, LLC v. Erdman, No. 1:19-cv-00183-TFM-C [hereinafter “Erdman II”].

         A. Erdman I

         Defendants removed this matter to this Court, pursuant to 28 U.S.C. §§ 1331, [1] 1338, [2]1441(c), [3] 1446, and 1454[4], from the Mobile County Circuit Court on September 21, 2018. See Doc. 1. Plaintiff's Complaint alleges state law claims of fraudulent misrepresentation, fraudulent deceit, conversion, misappropriation of trade secrets, breach of contract, and breach of fiduciary duty against Peter T. Falkner; Carla Williams Falkner; Kirby J. Plessala; Deneen Territo-Evans Plessala; Clifford A. Henricksen; Medical Ingenuity Partners, LLC; Innovative Medicine Partners, LLC; and Ingen1, LLC. Doc. 1-1.

         Contemporaneously filed with Defendants' Notice of Removal is their Rule 12(b)(6) Motion to Dismiss, or Alternatively, Motion for More Definite Statement and memorandum in support[5] and Answer to the Complaint. Docs. 2-4.

         On September 21, 2018, the Court entered a Preliminary Scheduling Order, which set a November 5, 2018 deadline for the parties to submit their Fed.R.Civ.P. 26(f) report. Doc. 10.

         On November 3, 2018, Plaintiff filed his motion to remand and supporting brief (Doc. 14) and his Motion to Suspending Briefing Schedule, in which he moved the Court to suspend the parties' briefing for Defendants' motion to dismiss pending a ruling on Plaintiff's motion to remand (Doc. 15). Plaintiff contemporaneously filed his Motion to Stay Discovery Pending This Court's Ruling on Plaintiff's Motion to Remand, in which he moved the Court to suspend the discovery and the parties Fed.R.Civ.P. 26 obligations pending a ruling on his motion to remand. Doc. 16. The Court granted both of Plaintiff's motions (Doc. 17), and entered a briefing submission order for his motion to remand (Doc. 18). Defendants filed their response in opposition on November 29, 2018, Doc. 27, and Plaintiff filed his reply on December 12, 2018, Doc. 29.

         Defendants filed their Counterclaims[6] against Plaintiff on April 8, 2019, in which they seek a declaratory judgment of patent ownership and inventorship, and invalidity and uneforceability of a nondisclosure agreement, and brings state law claims of tortious interference with business relations and breach of nondisclosure agreement. Doc. 30. On the same date, Defendants filed their Motion for Leave to File Defendants' Supplemental Memorandum in Opposition to Plaintiff's Motion to Remand (Doc. 33) and their supplemental memorandum in opposition to the motion to remand (Doc. 34). In Defendants' motion, they requested the Court's permission to file their supplemental memorandum. Doc. 33 ¶¶ 3-4. The Court granted Defendants leave to file their supplemental memorandum and allowed Plaintiff to file a response (Doc. 39), which he filed on April 24, 2019 (Doc. 40). In Defendants' supplemental memorandum, they state, since Plaintiff's Motion to Remand was filed, the United States Patent and Trademark Office issued a Notice of Allowance that indicates that a patent will issue for pending U.S. Pat. App. No. 16/152, 706 (the “706 Application”) in the name of Plaintiff INGEN1, LLC, which has paid the required Issue Fee. Doc. 34, at 2. The question of inventorship and ownership of the 706 Application patent is the focus of dispute between the parties in Erdman I and Erdman II. Compare Erdman I, Doc. 1 with Erdman II, Doc. 1.

         On April 29, 2019, Plaintiff filed his Motion for Extension of Time to Answer Counterclaims, in which he moved the Court extend the time for him to file his responsive pleading to Defendants' counterclaims until the Court rules on the motion to remand. Doc. 42. The Court's granted Plaintiff's motion. Doc. 43. Plaintiff filed on May 7, 2019, his instant Withdrawal of Motion to Remand and Request to Set Deadlines and for Rule 16 Conference. Doc. 44. Defendants did not file an opposition to Plaintiff's instant motion.[7] Therefore, the motion is ripe for review and the Court finds oral argument unnecessary.

         B. Erdman II

         In Erdman II, Plaintiffs Peter T. Falkner; Carla Williams Falkner; Kirby J. Plessala; Clifford A. Henricksen; Innovative Medicine Partners, LLC; and Ingen1, LLC originally filed on April 8, 2019, their Complaint against Frankie Wendell Erdman, Jr., in which they bring the same claims asserted in the counterclaims in Erdman I. Compare Erdman II, No. 1:19-cv-183-TFM-C, Doc. 1 with Doc. 30.

         Plaintiffs contemporaneously filed their Motion to Consolidate (Erdman II, No. 1:19-cv-183-TFM-C, Doc. 4) and memorandum in support (id. at Doc. 5). In Plaintiffs' motion, they move the Court consolidate this matter, pursuant to Fed.R.Civ.P. 42(a), with Erdman I because the parties in Erdman II are parties in Erdman I, the claims in Erdman II are asserted as counterclaims in Erdman I, and the two cases arise from the same set of operative facts. Erdman II, No. 1:19-cv-183-TFM-C, Doc. 5, at 3-4. The Court ...


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