IN RE: FMC Corporation Patent Litigation

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v . JUDICIAL PANEL OM
MULTILIS	[RCT LIToATon
C BEFORE THE JUDICIAL PANEL |
ON HOY 22 1976
MULTIDISTRICT LITIGATION
PATRICIA 0 HOWATD
IN RE FMC CORPORATION PATENT LITIGATION §-Lif pockEd' io. 255
: OPINION AND ORDER
BEFORE JOHN MINOR WISDOM*, CHAIRMAN, AND EDWARD WEINFELD,
EDWIN A. ROBSON, WILLIAM H. BECKER, JOSEPH S. LORD, III,
STANLEY A. WEIGEL, AND ANDREW A. CAFFREY, JUDGES OF THE
PANEL
PER CURIAM
This litigation consists of five actions pending in
three different federal districts -- two each in the
District of Kansas and the Eastern District of Wisconsin,
and one in the Northern District of Ohio. All the actions
@® involve the validity and alleged infringement of a
single patent, No. 3,875,607, the rights to which are
held by FMC Corporation. The patent relates to the
construction of a gutter brush used in street
sweeping machines, and to wear-replacement parts for this
brush. FMC, through its Industrial Brush Division,
manufactures street sweepers, and brushes and replacement
brush parts for these sweepers. One of its products,
which is cavered by the patent in question, is
a plastic block designed to support wear-replacement
. *Although Judge Wisdom was not present at the Panel hearing,
: he has, with the consent of all parties, participated in
this decision.

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® bristles. That block, with bristles installed, is
secured to the carrying plate of the machine for
ultimate use. Jenkins Equipment Company is a manufacturer
and seller of brushes and wear-replacement brush parts
for street sweepers. It also produces a block, or
bristle holder, which is sold with or without bristles	to a .
| number of customers. Those persons purchasing bare blocks
install their own bristles for ultimate sale of completed
brush units to the owners of sweepers. Two of Jenkins’
customers are Kennedy Van Brush Co. and Zarnoth Brush Co.
In 1975, FMC brought separate patent infringement
actions against Kennedy and Zarncth in the District of
® Kansas and the Eastern District of Wisconsin, respectively.
Each action alleges that the defendant infringed patent
3,875,607 by making, using and selling components for
“use in gutter brushes of street sweepers. FMC requests,
inter alia, that the patent be adjudged valid and that
both defendants be enjoined from using or contributing to
the use of any invention cévered by the patent. The claims
in each action are virtually identical. Defendants have
: filed counterclaims challenging the validity of the patent.
®

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®
FMC has since filed motions in these two actions
to add Jenkins as a co-defendant; and has also filed
two additional actions, one each in Kansas and Wisconsin,
naming Jenkins and its sales company, Sweepster Inc., as
defendants. The second action in Wisconsin also includes
Zarnoth as a defendant. Motions are pending in the four
actions to dismiss Jenkins and Sweepster for lack of venue.
Early in May of 1976, Jenkins filed the Ohio
action against FMC attacking the validity of the patent.
Jenkins claims that its bristle holder and bristles
® do not infringe the claims of the patent in view of the
limitations necessarily placed upon it in light of prior
art. Jenkins further alleges that FMC has attempted to
use enforcement of the patent and refusal of licensing
agreements in an unlawful attempt to monopolize trade
in the sale of gutter brush replacement parts, in violation
of the federal antitrust laws. Jenkins asks the court to
(1) declare the patent void and invalid, (2) declare the
patent not infringed by Jenkins or its customers, (3) declare
the patent legally unenforceable because of misuse by the
defendant, and (4) award treble damages.
®

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( These actions are before the Panel pursuant to two
motions for transfer under 28 U.S.C. §1407: the first
filed by Jenkins to transfer one of the Wisconsin and
Kansas actions:to	the Northern District of Ohio for
coordinated or consolidated pretrial proceedings with the
action pending there, and the second filed by FMC for
transfer of all five actions to the District of Kansas.
All parties agree on the propriety of transferring this
litigation to a single district for pretrial proceedings,
though they disagree on the appropriate transferee district.
We find that these actions involve common questions
of fact and that their transfer to the District of Kansas
® for coordinated or consolidated pretrial proceedings under
Section 1407 will best serve the convenience of the parties
and witnesses and promote the just and efficient conduct
of the litigation.
All parties recognize,	and we agree, that this litigation
involves common factual questions concerning the validity
of the patent held by FMC and that transfer is therefore
necessary in order to eliminate duplication of discovery
and prevent inconsistent pretrial rulings. See In re
Joseph F. Smith Patent Litigation, 407 F. Supp. 1403, 1404
(FJ.P.M.L. 1976); In re Triax Company Patent Litigation,
- 385 F. Supp. 590, 591 (J.P.M.L. 1974). Moreover, since
®

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® all the alleged infringers use the same product furnished
by Jenkins, common factual questions are also present con-
cerning the infringement issue.
Jenkins favors the Northern District of Ohio over the
District of Kansas as the transferee forum because the
action pending there contains broader issues than any other
action involved in this litigation, and because that forum
has jurisdiction over all parties to the actions, whereas
Jenkins and Sweepster contest in personam jurisdiction and
venue in the Kansas forum Jenkins further argues that
this lack of jurisdiction and venue makes the District of
Kansas an inappropriate transferee forum because that
® court would lack authority to enforce its rulings ondiscovery matters through the imposition of sanctions
unless Jenkins and Sweepster voluntarily waive their ob-
jections to venue.
We find these arguments unpersuasive. Jenkins' con-
tentions regarding jurisdiction and venue are based on
a total misconception of Section 1407. Transfers under
Section 1407 are simply not encumbered by considerations
of in personam jurisdiction and venue. See In reSugar
1/Note, however, that Jenkins stated in its papers sub-
mitted to the Panel that it has become the real party in
interest in all the actions through hold harmless agree-
ments which it furnished Kennedy and Zarnoth, and that
: it is paying for and controlling the defense of their
actions.
®

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[ Industry Antitrust Litigation, 399 F. Supp. 1397, 1400
(F.P.M.L. 1976), and In re Revenue Properties Co., 309
F. Supp. 1002, 1004 (J.P.M.L. 1970). A transfer under
Section 1407 is, in essence, a change of venue for pre-
trial purposes. Following a transfer, the transferee
judge has all the jurisdiction and powers over pretrial
proceedings in the actions transferred to him that the
transferor judge would have had in the absence of transfer.
In re Plumbing Fixture Cases, 298 F. Supp. 483, 495-96
(F.P.M.L. 1968).
An evaluation of all relevant factors leads us to
the conclusion that the District of Kansas is a more
® appropriate transferee forum for this litigation. Dis-
covery is more advanced in one of the Kansas actions than
in any other action. And Judge Earl E. O'Connor, to whom
the Kansas actions are assigned, has had an opportunity
to become acquainted with this litigation, which puts him
in the best position to supervise all the actions toward
their most just and expeditious termination. See In re
Griseofulvin Antitrust Litigation, 395 F. Supp. 1402,
1403 (J.P.M.L. 1975).
IT IS THEREFORE ORDERED that the actions listed on
the following Schedule A and pending in districts other
Rk than the District of Kansas be, and the same hereby are,
transferred to the District of Kansas and, with the
®

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[ consent of that court, assigned to the Honorable Earl
E. O'Connor for coordinated or consolidated pretrial
proceedings pursuant to 28 U.S.C. §1407 with the actions
pending in that district and listed on Schedule A.
®
®

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@® SCHEDULE 2
DOCKET NO. 255 =-- In re the FMC Corporation Patent
Litigation
EASTERN DISTRICT OF WISCONSIN
FMC Corporation v. Zarnoth Brush Works, Civil Action
Inc. No. 75-C-669
FMC Corporation v. Zarnoth Brush Works, Civil Action
Inc., Jenkins Equipment Co., Inc. and No. 76-C=-316
Sweepster, Inc.
DISTRICT OF KANSAS
FMC Corporation v. Kennedy Van Brush Civil Action
Mfg., Inc. No. 75-244-C2
FMC Corporation v. Jenkins Equipment Civil Action
Co., Sweepster, Inc. No. 76-94-C2
NORTHERN DISTRICT OF OHIO
Jenkins Equipment Co. v. FMC Corporation Civil Action
® No. C-76-439