United States District Court, S.D. Alabama, Southern Division
MEMORANDUM OPINION AND ORDER
F. MOORER UNITED STATES DISTRICT JUDGE
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.
FACTUAL AND PROCEDURAL BACKGROUND
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”].
removed this matter to this Court, pursuant to 28 U.S.C.
§§ 1331,  1338, 1441(c),  1446, and 1454, 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.
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 and Answer to the
Complaint. Docs. 2-4.
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.
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.
filed their Counterclaims 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.
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. Therefore, the motion is ripe for review
and the Court finds oral argument unnecessary.
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.
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