In re Embro Patent Infringement Litigation

328 F. Supp. 507, 169 U.S.P.Q. (BNA) 422, 1971 U.S. Dist. LEXIS 14324

• Court: United States Judicial Panel on Multidistrict Litigation
• Decided: March 5, 1971
• Docket: No. 57
• Status: Published

Opinions

OPINION AND ORDER

PER CURIAM.

On September 30, 1970, we directed the parties in the six actions ¹ listed on Schedule A to show cause why those actions should not be transferred to a single district for coordinated or consolidated pretrial proceedings under 28 U.S.C. § 1407.² The common party, Embro Company, Inc.³ and three of the adverse parties have responded to the show cause order but none took a positive position with regard to the advisability of transfer under § 1407 nor did they provide much insight as to the nature of the litigation, the existence of common questions of fact, the status of discovery or the problems that remain for resolution during pretrial proceedings. An order was then entered setting this matter for hearing in San Francisco, California on January 22, 1971, with the hope that additional information would be forthcoming at the hearing.⁴ Regrettably none of the parties in this litigation were represented at the hearing and we must therefore reach our decision on the basis of the pleadings and other papers before us.

It is clear from the complaints in each of these actions that one of the principal issues in this litigation if not the principal issue, concerns the validity of Em-bro’s reissue patent No. 26,725. We have consistently held that the issue of patent validity presents common questions of fact which satisfy the statutory requirements of § 1407. Cf., In re Carrom Trademark Litigation, 322 F.Supp. 1016 (Jud.Pan.Mult.Lit.1971), In re Willingham Patent Litigation, 322 F.Supp. 1019 (Jud.Pan.Mult.Lit.1971), In re Frost Patent Litigation, 316 F.Supp. 977 (Jud.Pan.Mult.Lit.1970), In re Kaehni Patent Litigation, 311 F.Supp. 1342 (Jud.Pan.Mult.Lit.1970), and In re Butterfield Patent Infringement Litigation, 328 F.Supp. 513 (Jud.Pan.Mult.Lit.1970).

Although not taking a position with regard to the question of transfer, all parties responding to the show cause order ⁵ strongly urged that if there was to be a transfer, it should be to the Central District of California. Their reasons for supporting transfer to the Central District of California not only support the selection of that district as the most appropriate district but also make it clear that transfer of these cases to a single district for coordinated or consolidated pretrial proceedings will serve the convenience of the parties and their witnesses and will promote the just and efficient conduct of this litigation.

Of the eight real parties in this litigation, four either reside in or have a principal place' of business in the Central District of California while two of the remaining four parties have a principal place of business in the Southern District of California and are represented by counsel with offices in the Central District of California. In addition, five of the seven attorneys active in this litigation maintain offices in the Central District of California and the inventor of the patent, John W. Sellner, resides in the Central District of California.

The responding parties also contend that many of the activities relating to the validity of reissue patent No. 26,725 occurred in California and that much of the discovery will be directed- to the business records and other tangible evidence in the possession of Embro Company, Inc. and Mr. Sellner. In further support of transfer to the Central District of California, it is pointed out that the earliest case, Relaxaway Corporation v. Embro Co., Inc. was commenced in that district.

We are satisfied from the above uncontested allegations that there is substantial common discovery in the area of patent validity and that the transfer of these actions to the Central District of California will serve the convenience of the parties and their witnesses and will promote the just and efficient conduct of this litigation.

It is therefore ordered ■ that the actions on the attached Schedule A pending in other districts be and the same are hereby transferred to the Central District of California for coordinated or consolidated pretrial proceedings under 28 U.S.C. § 1407. With the written consent of that court, all such actions are hereby assigned to the Honorable Francis C, Whelan.

SCHEDULE A

Southern District of California

Embro Co., Inc. v. House of Slender Gem, Inc.

Civil Action No. 70 127 T

Embro Co., Inc. v. Daco Industries, Inc.

Civil Action No. 70 165 T

Central District of California

Relaxaway Corporation v. Embro Co., Inc., et al.

Civil Action No. 69-2393-FW

Embro Co., Inc. v. Tube Specialists, Inc.

Civil Action No. 70—844—DWW

District of Oregon

Embro Co., Inc., et al. v. Robert J. Thomas, etc.

Civil Action No. 70-225

Western District of Wisconsin

Embro Co., Inc. v. JTL Manufacturing, Inc., et al.

Civil Action No. 70-C-112

1 . One of the actions pending in the Central District of California at the time the show cause order was entered, Embro Company, Inc. v. Tube Specialists, Inc., was terminated by consent judgment on November 9, 1970. It will of course, not be affected by this order.

2 . At the request of several parties the time for responding to this show cause order was extended to November 6, 1970.

3 . Five of these actions are patent infringement actions brought by Embro and the other is a declaratory judgment action brought by Relaxaway Corp. against Em-bro.

4 . The January session was held in San Francisco partly for the convenience of counsel in these cases since most of them are from the West Coast.

5 . Embro Company, Inc., Relaxaway Corp., Robert J. and Pauline Thomas, and Tube Specialties, Inc.