IN RE: Joseph F. Smith Patent Litigation

Case MDL No. 232 Document 2 Filed 05/01/15 Page 1of3. = ELIT
oo IN RE SMITH PATENT LITIGATION Lo C1403
Cite as 407 I*.Supp. 1103 (1976) :
fem ~ serted by defendants in all actions, since
PRC ) In re Joseph F. SMITH PATENT there was factual overlap with respect to
) LITIGATION. - aches discovery in all actions. 28 U.S. -	SE : C.A. § 1407. :
i : No. 232. - .
4 ) © 2. Courts &=277.2 ]
~. Judicial Panel on Multidistrict © Even assuming that laches discovery :
: Litigation. were unique in each of six patent in-
' fringement actions against six separate
. Feb. 13, 1976. . defendants filed in three districts in
: -same state, court would order transfer
Patent holder filed motion to trans- for coordinated or consolidated pretrial
fer all actions to Middle District of proceedings, since actions all shared com- )
: North Carolina for coordinated or consol- mon questions of fact with respect to
idated pretrial proceedings. The Judicial validity of patent and, in the circum-
Po : oC Panel on Multidistrict Litigation held stances, that was sufficient to justify
+ that where patent holder instituted six transfer. 28 U.S.C.A. § 1407.
| - patent infringement actions against six —_— Co
| -- separate defendants in three different OPINION AND ORDER oo| ; districts in same state, and acticns in- . :
| volved common questions of fact, trans- Before JOHN MINOR WISDOM, -
| ‘ fer for coordinated or consolidated pre- Chairman, and EDWARD WEINFELD,
trial proceedings-was ordered to Middle EDWIN A. ROBSON, WILLIAM H.
District of North Carolina where patent BECKER, JOSEPH S. LORD, III, a
Co holder resided, where a substantial STANLEY A. WEIGEL, and ANDREW .
SE > amount of relevant discovery would oc- A. CAFFREY, Judges of the Panel. .
cur and where more actions were pend- PER CURIAM. Co Bh© ing than in any other district, notwith- i .
Pan? : standing individual defenses of laches as- Joseph F. Smith operates a machine
4J) serted by defendants in all actions, since shop n Greensboro, North Carolina, andIB there was factual overlap with respect to 1S the holder of United States Patent No.
So laches discovery in all actions. 3,180,074, which relates to a high-speed,
h ; Order accordingly. false twist spindle apparatus. _ Such a DN= : : ; spindle is apparently useless until includ- a
' : : ed as part of a textile yarn processing
machine, typically referred to as a false
. 1. Courts &=277.2 . . twist machine. In practice, these ‘ma-
Where patent holder ‘instituted six chines are utilized to convert synthetic =
: patent infringement actions against six Yarn, such as nylon, into a form .desired
! i - separate defendants in three different by knitters or weavers. : ~
districts in same state, and actions in- Between July 30 and August 1, 1975,
volved common questions of fact, trans- Smith instituted six patent infringement -
: fer for coordinated or consolidated pre~ actions against six separate defendants
| : trial proceedings was ordered to Middle in three differont districts: three in the
District of North Carolina where patent Middle District of North Carolina, two in
: holder resided, where a substantial =~ the Western District of North Carolina )
| amount of relevant discovery would oc- and one in the Eastern District of North :
Poo cur and where more actions were pend- Carolina! The defendants in these ace
: ing than in any other district, notwith- tions are either yarn processors who uti-
| standing individual defenses of laches as- lize false twist machinery or suppliers
| . 1. Defendants in the actions pending in the North Carolina are, respectively, Amgcrican
i : Middle District of North Carolina are, respec- Barmag Corporation and Scraps: North Ameri-
: - : tively, ARCT, Inc., Burlington Industries, Inc. ca, Inc; and the defendant in the action pend-
and Macfield Texturing, Inc.; defendants in ing in the Eastern District of North Carolina is
_ . the actions pending in the Western District of Akzona, Inc. -
1 E 3 } .
| : - °
| - :

Case MDL No. 232 Document 2 Filed 05/01/15 Page 2 of 3 °
Hho ein AL SUPPLEMENT
: «oll such machinery. None of the rects the transferee judge not to suspend
® v . det: rvianls manufactures false twist ma- discovery concerning this issue pending	« chinery or the spindles used thereon, © completion of discovery regarding other
This matter is before the Fanel on issues, such as patent validity.
Smith's motion to transfer all actions to In our view, discovery concerning the
the Middle District of North Carolina for laches defense in cach action will not, as
: coordinated or consolidated pretrial pro- respondents suggest, be distinet as to
ceedings pursuant to 28 U.S.C. § 1407. each defendant. This is so, we believe, }
Burlington and Macfield favor transfer because the relevant laches discovery : :
on certain conditions while Akzona and will not be directed towards the individ-
"American Barmag oppose the motion? ual acts of defendants with respect to
American Barmag alternatively proposes the Smith patent but to whether or not
either the Western or Eastern District of Smith unreasonably delayed asserting his
Nort Carolina as the transferee court in rights to the detriment of the defend-
the event the Panel determines that See- auwts. Cf Daker Manulacturing Co. v.
tion 1407 proceedings are appropriate for Whitewater Manufacturing Co., 430 F.2d .
these actions. 1008 (7th Cir. 1970). Accordingly, there
appears to be a substantial area of factu-
[1] We find that these actions In- * af overlap with respect to the laches dis-
volve common questions of fact and that covery in all actions. :
their transfer to the Middie District of : :
North Carolina will best serve the A [2] Even assuming, however, that the
. SEA tion, we would nonetheless order trans-
the litigation. for in this litigation. These. actions all
American Barmag and Akzona argue share common questions of fact with re-
that transfer at this stage of the pro- gpect to the validity of the Smith patent :
"ceedings is inappropriate hecause of the and, in the circumstances here present, :
i. : presence of local issues in each action, {hat would be sufficient to justify trans- :
which predominate over the few common fer, See In re Panty Hose Seaming Pat-
issues. These local issues, they maintain, ent Litigation, 402 F.Supp. 1401 (Jud.
pe arise from the individual defense of lnch- Pon Mull LAt.1975); In re Triax Co. Pal-
es asserted by defendants in all actions. ent Litigation, 385 ¥Supp. 530 (Jud. Pan.
: Since laches is a personal defense de- Mult.Lit.1974). Moreover, on account of
Lo. pending in each instance upon the devel- the similarity of the alleged infringing
"opment of facts peculiar to cach defend- devices, it is not all clear that discovery :
ant's relationship with plaintiff, respon- on the infringement. issues will be differ-
dents suggest, discovery concerning thal ent in each action. The transferee judpe oC
defense will be different as to each de- can, in any event, develop a pretrial pro-
fendant and, accordingly, summary reso- gram that would insure that the needs
lution of the laches defense at the outset of the respective parties for any unique
of the various actions could be disposi- discovery or individual judisial attention
tive of the entire litigation. can be accommodated concurrently with
Burlington and Macfield agree that the common pretrial matters. Sce In re .
the laches defense is predominant at this Westinghouse Flectric Corp. Uranium
time but they nonetheless believe that Contracts Litigation, 405 F.Supp. 316,
transfer is apprepriate provided that the 319 (Jud. PanMuolt.Lit, filed Deseraber
; Panel's order of transfer specifically di- 19, 1975).3 : Co
2. American Barmoag, in a late Gled ijef, ap- 3. We cannot, as respondents Burlington and
pears to have modified somewhat its position Macficld suagest, specifically dicect the teans.
in apposition to transfer. It did not, however, feree judge's conduct of the pretriod prececd-
specifically state its support for Section 107 ings. As we recently observed, “the Paael is
proceedings and, accordingly, for purposes of not einpowered to dictate in any way the nian.
oo this opinion, it will be considered as opposing nar in which the coordinated or consolidated
the motion. pretrial proceedings ave to be conducted by
os .

Case MDL No. 232 Document 2 Filed 05/01/15 Page 3 of 3
H IN (Gn HLS. NAVY VARIABLE REENLISTMENT BONUS LIT. 1465
Cite as 407 1". Supp. 1405 (1976)
B } Because of the proximity of the pro- “
C . a posed transferee courts, selection of any In re U. S\NAVY VAIIABLE RELN-one of them would not seriously preju- LISTMENT BONUS LITIGATION.dice any party. On balance, we believe
that the Middle District of North Caroli- No. 224
na is preferable. Since Smith resides in Judicial Phuel on Multidistrict
} } ’ that district, a substantial amount »f the \itigratidn.
relevant discovery will occur there. Fur-
: . ’ ther, there are more actions pending in Feb) 10, 1976.
* that district than in any other. Co i . .
It is therefore ordered that the actions Plaintiff in thre actions alleging
listed on the following Schedule A and breaches of contrad s py reason of fail-
pending.in distriots other than the Mid- Uc of Navy to pay ke enlistment bonuses
dle District of North Carolina be, and moved to transfer dil actions to the
3 : the same hereby are, transferred to the Southern District of Jalifornia, in which
. . Middle District of North Carolina and, four actions were pening, for coordinat-
with the consent of that court, assigned ed or consolidated pj rial proceedings.
to, the Honorable Hiram H. Ward for Defendants and plaigtikfs in hy actions
. : “coordinated or consolidated pretrial pro- opposed the otion. Th Judicial Panel
ceedings pursuant to 28 U.S.C. § 1407 ©°O Multidistrict Litigation held ‘that
Co with the actions pending in that district transfer to a single forum would neither
: and listed on Schedule	A. serve the convenience of the parties and
their witnesses nor gromotejthe just and
SCHEDULE A efficient conduct of sthe litig tion whore :	; } appeals were pending in to circuits
DOCKET NO. 232 which could have {sutton ial if not	Eastern District of North Carolina dispositive effect onfall the actions pend-
: LL ’ . Joseph F. Smith v. Akzona, Inc. Civil Action ing in districts withgn those ci cuits, and	i : : No. 75-0026-CIV--8 questions of law gather than\common
C1) : © WesternDistrictofNorthCarolina questions of fact wpre significaktly pre-	Joseph F. Smith v. American Civil Action ponderant. - :
ny Barmag Corp. No. €-€-75-238 Motion denied.’ . : Joseph F. Smith v. Scragg North Civil Action 4
a. a America, Inc. No. C-C-75-239 1. Courts &=277.2 .
i " Middie District of North Carolina Transfer of myltidisirict actiods, for
. Joseph F. Smith v. ARCT, Inc. Civil Action breach of contractfby Navy in failure to
oo } No. C-75-316-G pay reenlistment bbnuses to plaintiffs, to
: Co Joseph F. Smith v. ‘Burlington Civil Action - the Southern District of Californid in
L Co Industries, Inc. No. C-75-315-6 which four action§ were pending, wuld
‘ Joseph F. Smith v. Macfield Civit Action not serve the conyenicnce of the parties
Texturing, Inc. } No. C~75-317-G and their witnessps or promote the jist
- and efficient cofduct of the litigatidn
) wheré appeals jwere pending before
Court of Appeal fin two circuits and "yposition of thosd appeals could have a
substantial if nof dispositive cffect on allt
the actions penfling in districls within
: . those circuits, dnd where «questions of
law rather thal common questions of
fact were significantly preponderant, 23	: US.C.A. § 1407;
the transferee judge. The scope of the coordi- transferee sage In re Molinaro Catanzaronated or consolidated pretrial proceedings and Patent Litigation, 402 F.Supp. 1404 (Jud.Pan.
: . the extent to which discovery is permitted are Mult.	Lit. 1975).
: matters exclusively within the control of the