IN RE: Embro Patent Infringement Litigation

Case MDL No. 57 Document 2 Filed 04/29/15 Page 1 of 6
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ASH iy ihe . oh : LS oo Co
ie J] i.BEFORE THE JUDICIAL PANEL rm em on BN SE REE
ON Gin = i) roMULTIDISTRICT LITIGATION Be ET J
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EMBRO PATENT INFRINGEMENT LITIGATION ) DOCKET NO. 57 Voie
OPINION AND ORDER Toe Tw Th
BEFORE ALFRED P. MURRAH, CHAIRMAN* AND JOHN MINOR WISDOM, ST
EDWARD WEINFELD, EDWIN A. ROBSON, WILLIAM H. BECKER, JOSEPH
S. LORD, III* AND STANLEY A. WIEGEL, JUDGES OF THE PANEL
PER CURIAM [ES
On September 30, 1970, we directed the parties in the o Co
six actiopnsl/ 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. Co
§1407.2/ The common party, Embro Company, Inc.3/ and three co : .
of the adverse parties have responded to the show cause order
but none took a positive position with regard tc the advisability
of transfer under §1407 nor did they provide much insight as to : : oo
*Judges Murrah and Lord were unable to attend the hearing but So I oo
with the consent of all parties they have participated	in this ]
decision on the basis of the transcript of the hearing and the
pleadings filed in this matter.
1l/ One of the actions pending in the Central District of California
at the time the show cause order was entered, Embro Company, Inc. Co .
v. Tube Specialists, Inc., was terminated by consent judgment on co Te
November 9, 1970. It will of course, not be affected by this order. co Co
2/ At the request of several parties the time for responding to Co :
this show cause order was extended to November 6, 1970. Ce IEEE
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 Embro.

Case MDL No. 57 Document2 Filed 04/29/15 Page	2 of 6
9 the nature of the litigation, the existence of common ques-
tions 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 Fran-
cisco, 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 re-
presented at the hearing and we must therefore reach our de-
cision 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 Embro's
Dd reissue patent No. 26,725. We have consistently held thatthe issue of patent validity presents common questions of
fact which satisfy the statutory requirements of §1407. C.f.,
In re Carrom Trademark Litigation __F. Supp. _(J.P.M.L. 1971),
In re Willingham Patent Litigation __F. Supp. _(J.P.M.L. 1971),
In re Frost Patent Litigation 316 F. Supp. 977 (J.P.M.L. 1970),
In re Kaehni Patent Litigation 311 F. Supp. 1342(J.P.M.L. 1970),
and In re Butterfield Patent Infringement Litigation __F. Supp.
__(3.P.M.L. 1970.) a
| Although not taking a position with regard to the
question of transfer, all parties responding to the show cause
order3/ strongly urged that if there was to be a transfer, it
4/ The January Session was held in San Francisco partly for
a the convenience of counsel in these cases since most of themare from the West Coast.
i 5/ Embro Company, Inc., Relaxaway Corp., Robert J. and Pauline
Thomas, and Tube Specialties, Inc. }
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<9 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 appro-
priate 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 principle place of business in
the Central District of California while two of the remaining
four parties have a principle place of business in the Southern
District of California and are represented by counsel with offices
<P in the Central District of California. In addition, five of theseven 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 fur-
ther support of transfer to the Central District of California,
it is pointed out that the earliest case, Relaxaway Corporation
v. Embro Co., Ine. was commenced in that district.
od LL

Case MDL No. 57 Document 2 Filed 04/29/15 Page 4 of 6
<P 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.
<P
od .-

Case MDL No. 57 Document 2 Filed 04/29/15 Page 5 of 6
~ SHCEDULE A DOCKET NO. 57
SOUTHERN DISTRICT OF CALIFORNIA i
Embro Co., Inc. v. House of Slender Gem, Civil Action
Inc. No. 70 127 7
Embro Co., Inc. v. Daco Industries, Inc. Civil Action
No. 70 165 T
CENTRAL DISTRICT OF CALIFORNIA
Relaxaway Corporation v. Embro Co., Inc., Civil Action
et al. 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, Civil Action
etc. No. 70-225
WESTERN	DISTRICT	OF WISCONSIN
Embro Co., Inc. v. JTL Manufacturing, Inc., Civil Action
et al. No. 70-C-112

Case MDL No. 57 Document 2 Filed 04/29/15 Page 6 of 6
id NEN JU -
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fin; ~ 0
THE JUDICIAL PANEL Pare 197]ON cell
MULTIDISTRICT LITIGATION Sed EEA
EMBRO PATENT INFRINGEMENT LITIGATION ) DOCKET NO. 57
DISSENTING OPINION
BEFORE ALFRED P. MURRAH, CHAIRMAN, AND JOHN MINOR WISDOM,
EDWARD WEINFELD, EDWIN A. ROBSON, WILLIAM H. BECKER, JOSEPH
S. LORD, III, AND STANLEY A. WEIGEL, JUDGES OF THE PANEL
STANLEY A. WEIGEL, JUDGE OF THE PANEL, DISSENTING:
<P I respectfully dissent. As in In re Carrom TrademarkLitigation, F. Supp. , (J.P.M.L. 1971) and In re
Willingham Patent Litigation, F. Supp. (J.P.M.L.
1971), it seems to me that there are insufficient common
questions of fact to justify § 1407 transfer in the light
of the troubles and inconveniences occasioned thereby. See
In re "East of the Rockies" Concrete Pipe Antitrust Cases,
302 F. Supp. 244, 253-256 & n. 1 (J.P.M.L. 1970) (concurring
opinion); In re Butterfield Patent Litigation, F. Supp.
(F.P.M.L. 1970) (dissenting opinion).