Riso Kagaku Corp. v. A. B. Dick Co.

300 F. Supp. 1007, 162 U.S.P.Q. (BNA) 395, 1969 U.S. Dist. LEXIS 13207
CourtDistrict Court, S.D. New York
DecidedMay 7, 1969
DocketNo. 68 Civ. 4414
StatusPublished
Cited by14 cases

This text of 300 F. Supp. 1007 (Riso Kagaku Corp. v. A. B. Dick Co.) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Riso Kagaku Corp. v. A. B. Dick Co., 300 F. Supp. 1007, 162 U.S.P.Q. (BNA) 395, 1969 U.S. Dist. LEXIS 13207 (S.D.N.Y. 1969).

Opinion

OPINION

HERLANDS, District Judge:

Three interrelated motions are before the Court, disposition of which turns on essentially the same criteria. Only a brief factual background is necessary for a full understanding of the problem.

Defendant — A. B. Dick Company (Dick) is the holder of a patent on the method of manufacturing stencils for use on a mimeograph-type duplicating machine. Application of the patented process creates a stencil from a certain type of thermoplastic film which then can be used on the mimeograph-duplicating machine to provide the desired number of copies.

Plaintiff — Riso Kagaku Corporation (Riso), a Japanese concern, manufactures this film in Japan. It also uses the film in the patented method and sells both the film and prepared stencils to various United States customers. Minnesota Mining and Manufacturing Company (3-M) is one of Riso’s customers. It purchases and distributes the film, and also uses the film in the patented method and sells the prepared stencils.

Riso filed its complaint herein on November 7, 1968. It seeks a judgment declaring that Dick’s patent is invalid and not infringed by Riso. Service was made on Dick’s New York office on November 13, 1968.

On November 12, 1968, Dick commenced an action against 3-M in the Northern District of Illinois, charging infringement of the same patent whose validity is drawn into question in the New York declaratory action. 3-M was served with this complaint on November 20, 1968.

Dick has moved for transfer of this declaratory action to the Northern District of Illinois, pursuant to 28 U.S.C. § 1404(a) (1964). The basis for the motion is that such transfer would serve the convenience of the parties, witnesses, and interests of justice.

Riso opposes this motion primarily on the ground that Dick has failed to prove that the balance of convenience lies in the proposed transferee district. Riso has cross-moved for a preliminary injunction restraining Dick from prosecuting the infringement action in the Northern District of Illinois pending the termination of the instant declaratory action and any appeal. Riso also seeks to restrain Dick, during the pendency of this action, from commencing or prosecuting any other infringement action against any Riso customer, or any user or seller of Riso stencil masters. The basis for this motion for a preliminary injunction is that the New York declaratory action was the first filed and, therefore, should be the one first adjudicated.

Finally, 3-M has moved to intervene in this action, as a plaintiff, on the ground that common questions of law and fact are involved. Fed.R.Civ.P. 24 (b). 3-M seeks to enable full adjudication of the issues, binding on all the principal interested parties, in this single forum. The intervention motion is posited, ostensibly, on the Court’s grant [1009]*1009of Riso’s request for a preliminary injunction restraining prosecution of the Northern District of Illinois infringement action wherein 3-M is the defendant.

I.

At the outset, the Court will consider so much of Riso’s motion for a preliminary injunction as seeks to restrain the commencement or prosecution of other infringement actions. Riso has not alleged that Dick has threatened any of Riso’s customers (other than 3-M) or that Dick has engaged in any other activity which would constitute harassment. Thus, there does not appear to be present in this case any basis for equitable relief restraining the commencement of other infringement actions. Accordingly, this branch of Riso’s motion is hereby denied.

Furthermore, no other infringement actions have been initiated or threatened; and there is no allegation of harassment. Therefore, it would appear premature to enjoin prosecution of all future infringement actions. Consequently, this branch of Riso’s motion is also hereby denied, without prejudice to its renewal should circumstances materially change so as to justify its grant at a later date.

II.

It is apparently agreed by all of the interested parties that precisely the same issues of fact and law are involved in the New York declaratory judgment and the Illinois infringement action. If Riso, Dick, and 3-M can be made parties to one action, it is recognized that prosecution of two independent lawsuits would be an unnecessary expenditure of the resources of court and counsel. The question thus posed is: Which forum should hear and determine the issues raised?

Resolution of this problem turns on the balance of convenience. By first determining Dick’s motion to transfer under § 1404(a), the Court will necessarily be passing on this issue, and, thus, its decision on that motion will effectively dispose of the other motions. See Ron-son Art Metal Works v. Brown & Bigelow (Inc.), 105 F.Supp. 169, 172 (S.D.N.Y.), aff’d on opinion below, 199 F.2d 760 (2d Cir. 1952).

Should the Court.- decide that the Northern District of Illinois is a more convenient and appropriate forum and grant the transfer motion, there then would be no reason to enjoin the infringement action or grant 3-M leave to intervene. Under Rule 10(B) (5) of the Rules of the District Court for the Northern District of Illinois, the declaratory action, when transferred, undoubtedly would be assigned as a “related case” to the District Judge who is now presiding over the proceedings in the infringement action; and the two actions would probably then be consolidated for all purposes.

On the other hand, should the transfer motion be denied, this would be indicative that the movant has failed to demonstrate that interests of convenience favor litigation of the issues in the Northern District of Illinois. In the absence of such showing, the first-filed suit should be given priority, and the other stayed. E. g., Mattel, Inc. v. Louis Marx & Co., 353 F.2d 421 (2d Cir. 1965), cert. dismissed, 384 U.S. 948, 86 S.Ct. 1475, 16 L.Ed.2d 546 (1966). Since the instant action was the first filed, it would be the one actively litigated. And, under those circumstances, the objective of effectuating complete resolution of the controversy between the parties in one lawsuit would persuade this Court to grant 3-M’s motion to intervene.

III.

Hence, the Court turns to a consideration of the transfer motion. Dick claims that transfer of the action to the Northern District of Illinois is appropriate because that is the district (1) where it maintains its principal place of business; (2) where all of its personnel connected with the subject matter of this lawsuit reside; (3) where all of its records pertaining to the alleged acts of infringement and to the validity of the patent are located; and (4) where the inventor of [1010]*1010the patented process resides. Dick also seeks support from the fact that Riso does not do business in any district in the United States, and that Riso, thus, would not be inconvenienced to any substantially greater degree by litigating in Chicago instead of New York.

Riso contends that, while it does not maintain an office in the United States, it does have a representative — Francis Y. Sogi, Esq. — who is its “legal advisor” and “sole business agent in this country.” Affidavit of Francis Y.

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Bluebook (online)
300 F. Supp. 1007, 162 U.S.P.Q. (BNA) 395, 1969 U.S. Dist. LEXIS 13207, Counsel Stack Legal Research, https://law.counselstack.com/opinion/riso-kagaku-corp-v-a-b-dick-co-nysd-1969.