IN RE: Molinaro/Catanzaro Patent Litigation

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Case MDL No. BEF YgReNt 2, Filed 04/30/ ag JUMCIAL PANE; on
| MULTI CT RICT ionTION® BEFORE THE JUDICIAL PANEL ON MULTIDISTRICT LITIGATION {| f= i») !
amr ~ RPRIT 1975
IN RE MOLINARO/CATANZARO PATENT LITIGATION p 7	ATRICIA 0. HOW AR
CLERK GF THE pasar
ORDER
Plaintiff Catanzaro has requested that the Panel
clarify its order, dated July 26, 1974, transferring the actions
in this litigation to the Southern District of New York for
coordinated or consolidated	pretrial proceedings pursuant to
28 U.S.C. §1407. In re Molinaro/Catanzaro Patent Litigation,
380 F. Supp. 794 (J.P.M.L. 1974). Specifically, he seeks clari-
fication of the scope of the issues encompassed in the trans-
ferred litigation.
In the initial order in this litigation the Panel
transferred all actions listed on the Schedule A attached
to the order in their entirety. The Panel did not, however,
by its order of transfer intend to dictate in any way the
manner in which the coordinated or consolidated pretrial proceed-
ings were to be conducted by the transferee judge. The scope
of the coordinated or consolidated pretrial proceedings and
the extent to which discovery is permitted are matters exclusively
[ within the control of the transferee judge. See, e.g., In rePlumbing Fixture Cases, 298 F. Supp. 484, 489 (J.P.M.L. 1968).
Accordingly, any grievances which plaintiff Catanzaro has with
respect to the conduct of such proceedings are properly addressed
to the transferee judge and not to the Panel.
FOR THE PANEL:
| . oe a. CL SL
Alfred P. Murrah a :

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Case MDL No. 170 Document 2 Filed 04/30/15 Page 2 of 9
JITICIAL PANEL OY
RULTSTRCT LITIGATION bono
BEFORE THE JUDICIAL PANEL Ra | -
ON ie a V7 oo	MULTIDISTRICT LITIGATION Ja 10 57 ER a
IN RE MOLINARO/CATANZARO ) DOCKET, NO:170: =v. oo LC -PATENT LITIGATION ) CLEA CT nD PANEL
OPINION AND ORDER
BEFORE JOHN MINOR WISDOM, CHAIRMAN, AND EDWARD WEINFELD*, : :
EDWIN A. ROBSON*, STANLEY A. WEIGEL, ANDREW A. CAFFREY*, . :
ROY W. HARPER, AND CHARLES R. WEINER, JUDGES OF THE PANEL. :
PER CURIAM B
I. BACKGROUND
The matter now before the Panel involves three
actions in three districts: one each in the Middle District a
of Pennsylvania, the Eastern District of New York and the oo
k Southern District of New York. : : :
A. Prior Panel Rulings Co oo
The Panel issued its first opinion in this docket -
in July, 1974. In re Molinaro/Catanzaro Patent Litigation,
380 F. Supp. 794 (J.P.M.L. 1974). At that time the Panel
centralized, pursuant to 28 U.S.C. §1407, nine actions in
the Southern District of New York before the Honorable Charles
M. Metzner. Each of these actions involved a patent on :
* Judges Weinteld, Robson and Caffrey did not participate
in the decision of this matter.

Case MDL No. 179 2Dscument 2 Filed 04/30/15 Page 3 of 9
a "station-sampling radio"l/ and was brought, pro se, by Le SEE
Edward T. Molinaro (Molinaro) and Anthony P. Catanzaro
(Catanzaro). These individuals were, respectively, the oo
original patentee and the assignee of a fifty percent |
interest in the patent at issue. Defendants in these actions :
were manufacturers and/or retailers of radio equipment
whose products allegedly infringed upon Molinaro and Catanzaro's ER i.
patent rights. : :
In ordering transfer under Section 1407, the Panel
held:
Although the question of whether... a particular de-
fendant's product infringes plaintiffs’ patent may
not involve questions of fact common to the other Co
infringement actions, the key issue in each of these
actions is whether plaintiffs' patent can withstand
defendants’ charges of invalidity. And that issue
raises complex questions of fact common to each action oo
and defendants will necessarily pursue similar, if SE
not identical, discovery against plaintiffs to elicit : oo
those facts. A Section 1407 transfer of all actions
to a single district for coordinated or consolidated Co
pretrial proceedings will insure that that discovery :
is not duplicated and avoid unnecessary inconvenience
to the plaintiffs and their witnesses. .
17 This patent, No. 2,906,875, has been further described
in an opinion by the Honorable Walter K. Stapleton as follows:
The subject matter of this patent is a type of signal- oo
seeking receiver. Signal-seeking receivers, as the
term is broadly used, are devices which scan a fre-
quency spectrum in search of a signal and stop when
a signal being broadcast is encountered.
... An example of such a device...would be an
automobile radio which automatically tunes from station-
to-station, stopping long enough on each to allow
the driver to determine whether he wants to listen
to the program being presented, and containing a
mechanism (a switch, e.g.,) whereby the driver could
stop the tuning at a station whose programming he :
desires to hear.
Catanzaro v. Masco. Corp., 423 F. Supp. 415, 417 (D. Del.

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C In re molinarojCatanzaro Patent Litization, supra, 33C F.Supp. at 7¢5. The Panel also ruled, inter alia, that transfer
would have the '"salutarv effect of having all discovery
relevant to the validity issue supervised by one judge so
that an informad decision on the merits can be mada and
at a substantial savings of judicial tise and
rasources.' Id.
Tn 2ctober, 1975, the Panel ilssuad its second
opinion in this docket. In re lolinaro/Catanzaro Patent
Litigation, 402 F. Supp. 1404 (J.P.M.L. 1375). At that
time the Panzl vacated its ordesrs conditionally transferring
four taz-alongz actions in tihils docket to the Southern District
of Yew York and remanded all actions previously transferred
o to the Southern Listrict of ilew York to their transferor
districts. The Panel action followed the entry of an order
by Judse “etzner in wnich he formally advised the Panel
of the completion of common discovery proceedings and
suzgestad	that the Panel remand all remaining actions.
Id. at 1406.
%. The Present #otion Before thz Panel
The Pennsylvania action (Hart) presently before
the Panel was brought in August, 1972 by Yolinaro and
Catanzaro azainst Hart Electronics Corp. of Scranton (Hart).
Plaintiffs allez=2 that the defendant sold equipment, nanu-
facturad ov Electra Corporation (lactra),2’ Unimetrics,
C Inc. (Jninetrics) and 22zency Electronics, Inc. (Az23ency),
27 Zlectra Corporation is now Zlectra Co., division of
asco Corp.

Case MDL No. 170 Documeny 2 Filed 04/30/15 Page	5 of 9 ’ :
which infringed upon tire station-sampling radio patent. CPlaintiffs s=2k a declaration of »atent validity, injunctive
ralief and <damases. Cn July 5, 1973, th= clains in Hart
pertaining to tha raceivers nanufactured by Elactra were
szvered andconsolidated with an action (Penney) brought
by .folinaro and Catanzaro wn the widdle District of Pe2nnsylvania
against J.C. Penney Co., Inc., another retailer of Electra
; 3/
r2ceivers.=’
The Eastern District of New York action (Sonar)
was brought in June, 1972 by iolinaro and Catanzaro against
Sonar Radio Corporation (Sonar). Plaintiffs allege that
Sonar Auto-Scan Receivers manufacturasd and sold by Sonar
* 1nfringe the station-sampling radio patent. As in ‘lart, ®plaintiffs seek a daclaration of patent validity, injunctive
relief and damages.
Doth Hart and Sonar were included in the actions
transferred by the Panel to the Southern District of New
York in 1974 and Femanded to their transferor districts
by the Panel in 1975.
0 UAE, WPT ——— rea yy oo : E - 4 N 1 3 . PE ~
37 Procezainzs in this consolidatad action have been stayed
pendinz the resolution of an appeal by Catanzaro from the
decision of Judpe Staplaton in a ra2lated action granting
“iasco Corp.'s (tha manufacturer of Elactra receivers) motion
for summary judgment of non-infrinzement. Catanzaro Vv. ’
tlasco Corp., 423 F. Supn. 415 (2. Del. 15748). The Court
of Appeals for the Third Circuit affirmed the district
court's ruling in an uncublishead o2r curiam opinion issued
on ay 1, 19735. On Novamber 27, 1073, th=2 United States
Supreme Court denied a satition for a writ of certiorari
that had been filed by Catanzaro followin: the Third Circuit's
ruling. C

. . Case MDL No. 170 Document2 Filed 04/30/15 Page	6 of 9
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o The Southern istrict of New York action
(32ars) was Drouzht by Molinaro and Catanzaro against Sz2ars,
Roebuck and Coupanv (Sears) in June 1976. The complaint
in this action alleges infringement of the station-samnling
radio patent in connection with sales made by Sears of
receivers manufactured by Regency.
Sears, joined by Sonar, moves the Panel, nursuant
to 2% U.S.C. §1407, to transfer Hart, Sonar and Sears to
the District of Delaware for coordinated or consolidated
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pretrial proce=dings tefore Judze Stapleton.— Hart opposes
inclusion in centralized proceedings of the Electra-based
claims that have bzen severed in Farf and have heen consolidatad
.
C with Penney, tut otherwise Hart joins in Zears's motion.Catanzaro opooses transiar. a.
IT. DISPOSITION 3Y THz PANEL |
"le conclude that transfer under Sectlon 1407 would
not necassarily serve ths convenience of the parties and
witnessa2s or promote the just and efficient conduct of
this litigation and, accordinzly, we deny transfer.
Sears states that both Sears aud Hart involve
allezations of infringamnent on the station-sampling radio
patent oy models of radios manufactured by Kezencyv. Sears
further states that it believes the Auto-Scan feceivers
ZT JudzeStapleton, who normally sits in the District of
Jelaware, ls assigned Hart and is sitting in thz “iddle
C itistrict of Pemnsvlvania ov desiznatioa pursuant to 23 U.S.C.§252 (1).

Case MDL No. 170 Document2 Filed 04/30/15 Page	7 of 9 ’ :
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at issue in Sonar are related to the Zezency nroducts. @®
Centralization under Section 14037 is thus necessary, S=2ars
ur,;2s, in order to prevent duplication of discovery on the
infringement issue common to all these actions.
ile find thes2 arguments unoersuasive. Only
1 minimal number of actions are involved here. Two of
the three actions ars well advanced and have already benafitad
from participation in coordinated or consolidated pretrial
oroceedingzs under Section 1407. No party before us has
advocatad that any discovery remains to be accomplished
on the central issue of patent validity. At best, the
propon2nts of transfer have suggested that transfer is
justified because common factual rfuestions exist anonz C
thie actions on the issues of infringement upon the station-
sampling radio patent. Z2ut there has been no adequate
demonstration to the Panel that the infrinzement issue
in Sonar, 1nvolving Auto-Scan Receivers, shares factual
questions with thg infringement issues in Sears and Hart,
involving Regency products. Evan assuaing, however, that
the thr2e actions raise common questions of fact rezarding
the infringement issues, we are not convinced that those
questions alone are sufficiently complex or require such
time-consuming discovery as to justifiv transfer under
Saction 1407, eswecially in light of the ardvanced status
of Hart and Sonar. See In re Scotch Whiskey Antitrust
Litization, 299 F. Sunn. 542, 544 (J.2..:.L. 1859). @®

y . Case MDL No. 170 Document2 Filed 04/30/15 Page	8 of 9
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C We observe that suitable alternatives to Section
1407 transfer are available to all parties in the actions
before us. Any party could ask the judge assigned to
a particular action to issue an order to show cause why
the discovery already completed in any related action
should not be made applicable to the former action. See
In re Raymond Lee Organization, Inc. Securities Litigation,
446 F. Supp. 1266, 1268 (J.P.M.L. 1978); Manual for Complex
Litigation, Parts I and II, §§3.11 (rev. ed. 1977). Or
the parties simply could stipulate that that discovery
could be used in a particular action.
Additionally, consultation and cooperation among
C the three courts, if deemed appronri=te hy “hose courts |coupled with the cooperation of the parties, would minimize
the possibility of conflicting pretrial rulings. See
In re Raymond Lee Organization, Inc. Securities Litigation,
supra, 446 F. Supp. at 1268.
IT IS THEREFORE ORDERED that the motion to transfer
the actions listed on the following Schedule A be, and
the same hereby is, DENIED.
®

Case MDL No. 170 Document 2 Filed 04/30/15 Page 9 of 9 J >
DOCKET NO. 170 CSCHEDULE A
EASTERN DISTRICT OF NEW YORK Civil Action No.
Edward T. Molinaro, et al. v. Sonar 72C382
Radio Corp.
SOUTHERN DISTRICT OF NEW YORK
Edward T. Molinaro, et al. v. Sears 76-Civ-2582
Roebuck & Co.
MIDDLE DISTRICT OF PENNSYLVANIA
Edward T. Molinaro, et al. v. Hart 72-250
Electronics Corp. of Scranton