IN RE: Shipley Co., Inc., Patent Litigation

I Case MDL No. 169 Document 2 Filed 04/30/15 Page 1 of 5
JUDICIAL RAMEE (A
BEFORE THE JUDICIAL PANEBLT[SY tL ON
ON Er pe iGATION
MULTIDISTRICT LITIGATION ll
OCT 17 197
PATRICI 1 iii
CLERK	OF Ti ARD
IN RE SHIPLEY COMPANY, INC. ) OF THE PANE
PATENT LITIGATION ) DOCKET NO. 169
OPINION AND ORDER
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
PER CURIAM
This litigation consists of two actions: one in the
District of Massachusetts and the other in the Eastern District
of Michigan. In the Massachusetts action Kollmorgen Corporation
is seeking a declaratory judgment that a patent owned by Shipley
Company concerning a composition used in the process of coating
plastic surfaces with metal is invalid and not infringed by
Kollmorgen or any of its licensees. Kollmorgen also alleges that
defendant Shipley has violated the federal antitrust laws.
Shipley has counterclaimed charging Kollmorgen with infringement
of the patent and inducing others to infringe the patent through
its licensing activities. Shipley also seeks to have certain
Kollmorgen patents declared invalid and alleges that Kollmorgen
violated the federal antitrust laws, engaged in unfair
competition and was unjustly enriched. The Michigan action is
brought by Shipley against Oxy Metal Finishing Corporation for
% alleged infringement of the same Shipley patent involved in
® Although Judges Murrah, Becker and Lord were not present
at the hearing, they have, with the consent of all parties,
participated in this decision.

) Case MDL No. 169 Document 2 Filed 04/30/15 Page 2 of 5
- 2 =
the Massachusetts action. Oxy Metal, a patent licensee of
Kollmorgen, has raised the affirmative defense that the Shipley
patent is invalid.
Shipley moves the Panel for an order transferring the
Michigan action to the District of Massachusetts for coordinated
or consolidated pretrial proceedings pursuant to 28 U.S.C. §1407
with the action already pending there. Oxy Metal and Kollmorgen
oppose transfer. We find insufficient basis for transfer under
Section 1407 and, accordingly, deny the motion.
Movant Shipley contends that the issue of validity of
the Shipley patent is common to both actions and that transfer is
necessary in order to avoid duplication of discovery. We agree
that the discovery regarding the issue of patent validity will
be, for the most part, common to both actions. But we find that
with respect to this particular litigation the overall convenience
to the parties and witnesses and the just and efficient conduct
of the litigation will not necessarily be enhanced by a Section
| 1407 transfer. Compare In re Disposable Diaper Patent Validity
Litigation, 362 F. Supp. 567 (J.P.M.L. 1973) and In re Lehman
Equipment Company Patent Infringement Litigation, 360 F. Supp.
1402 (J.P.M.L. 1973) with In re Molinaro/Catanzaro Patent
Litigation, ___ F. Supp._____ (J.P.M.L., filed July 26, 1974).
First, we note that only two actions are involved in
this litigation and it seems clear that the primary focus centers |
on the dispute between Kollmorgen and Shipley in the Massachusetts
action. In addition to the issue of validity of the Shipley

Case MDL No. 169 Document 2 Filed 04/30/15 Page 3 of 5
- 3 -
patent, which is common to both actions, the Massachusetts action
involves numerous other patents and an assortment of claims
and counterclaims alleging unfair competion and violations of the
antitrust laws. The Michigan action, on the other hand, focuses
solely on the infringement - validity issue of the Shipley
patent. And Shipley concedes that one of its principal objec-
tives in filing the suit against Oxy Metal in Michigan was to
protect itself against possible statutes of limitation or laches
problems.
Secondly, Oxy Metal is a patent licensee of Kollmorgen
and its course of action in the Michigan action will largely be
dictated by Kollmorgen. Indeed, Oxy Metal and Kollmorgen are
represented by the same patent counsel and, therefore, there is
little likelihood that any common discovery concerning the
Shipley patent will be duplicated if transfer is denied. And
Oxy Metal has agreed to treat discovery already taken in the
Massachusetts action relevant to the validity issue as if taken
in the Michigan action.
Furthermore, if either the Massachusetts or Michigan
courts proceeds on the merits and finds the Shipley patent to
be invalid, the application of the estoppel rule of Blonder-
Tongue Laboratories, Inc. v. University of Illinois Foundation,
402 U.S. 313 (1971), could eliminate any need for further
discovery or trial relating to the validity issue. Thus, we
believe there are suitable alternatives to a Section 1407
transfer that are available to the parties in this litigation.

Case MDL No. 169 Document 2 Filed 04/30/15 Page 4 of 5
~ . - 4 -
IT IS THEREFORE ORDERED that the motion to transfer
: the actions listed on the attached Schedule A be, and the same
hereby is, DENIED.
Cy	p—

Case MDL No. 169 Document 2 Filed 04/30/15 Page 5 of 5
hal Q .
SCHEDULE A DOCKET NO. 169
EASTERN DISTRICT OF MICHIGAN
Shipley Co., Inc. v. Oxy Metal Civil Action
Finishing Corp. No 4-70661
DISTRICT OF MASSACHUSETTS
Kollmorgen Corp. v. Shipley Co., Civil Action
Inc. No. 72-3697-C
_6épo 878.888