IN RE: Panty Hose Seaming Patent Litigation

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LETTPUTER Lo
BEFORE THE JUDICIAL PANEL © ll-o-U
ON 973
MULTIDISTRICT LITIGATION C131 \
ToC n HARD	Al patuies2s I 5
IN RE PANTY HOSE SEAMING Coioegk THER
PATENT LITIGATION i DOdKET NO. 209
OPINION AND ORDER
BEFORE ALFRED P. MURRAH, - CHAIRMAN, AND JOHN MINOR WISDOM *,
EDWARD WEINFELD, EDWIN A. ROBSON *, WILLIAM H. BECKER *,
JOSEPH S. LORD, IIT, AND STANLEY A. WEIGEL, JUDGES OF THE PANEL
PER CURIAM
Tights, Inc. is the holder by assignment from John
O. Ferrell of U.S. Patent No. 3,657,257, which relates to
a specific method for fabricating panty hose garments sometimes
referred to as the simultaneous cut-and-sew technique. Tights
had instituted five patent infringement actions involving the
Ferrell patent in two districts: three in the Middle District
of North Carolina and two in the Western District of North
i/
Carolina. Several of the actions also involved alleged2/
infringement of another patent held by Tights.
Defendant Stevens moved the Panel for an order
transferring all actions to a single district for coordinated
er
Although Judges Wisdom, Robson and Becker were not
present at the hearing, they have, with the consent
of all parties, participated in this decision.
y Defendants named in the actions pending in the Middle
District of North Carolina were, respectively, Burlington
Industries, Inc. (Burlington), Kayser-Roth Corp. (Kayser-
Roth) and Adams-Millis Corp. (Adams-Millis). Defendants
named in the Western District of North Carolina actions
were, respectively, Brevoni Hosiery Corp. (Brevoni) and
J.P. Stevens, Inc, (Stevens).
2/ Rice Reissue Patent No. 25, 360.
i

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or consolidated pretrial proceedings pursuant to 28 U.S.C.
§1407, but did not suggest a transferee district. Plaintiff
Tights joined in the motion and favored transfer of this
litigation to the Western District of North Carolina while
defendants Kayser-Roth and Adams-Millis preferred the Middle
District of North Carolina. Defendants Burlington and Brevoni
opposed transfer.
Following oral argument on the motion, we were
informed that Tights' action against Stevens in the Western
District of North Carolina had been voluntarily dismissed
with prejudice, by stipulation of the parties, under Rule 41 (a)
(1) (ii), Fed. R. Civ. P. Although Stevens was thus no longer
a party to any of the actions in the litigation, we have never-
theless considered the propriety of Section 1407 proceedings
with regpect to the four remaining actions inasmuch as Tights
had joined in the motion and is a party to each of those actions.
We find that the four remaining actions share common
questions of fact and that transfer of the actions pending in
the Middle District of North Carolina to the Western District
of North Carolina for coordinated or consolidated pretrial
proceedings with the action pending in that district will
best serve the convenience of the parties and witnesses and
promote the just and efficient conduct of the litigation.
The factual commonality among the actions in this
litigation rests on the invalidity defenses asserted by all
defendants regarding the Ferrell patent. A major portion

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of these defenses involves the alleged prior knowledge and
use of the ideas embodied in the Ferrell patent, which arises
from the alleged invention and exploitation in Europe of the
simultaneous cut-and-sew technique and the dissemination in
this country of knowledge of this European-developed method
long prior to Ferrell's invention date.
Burlington and Brevoni argue that since the factual
questions common to all actions on the issue of the validity
of the Ferrell patent relate to the use of the simultaneous
cut-and-sew technique in this country prior to the date of
the Ferrell patent, that date, once established in any one
action, would lead to the quick disposition of the prior use
question in all other actions. Moreover, they note, the
collateral estoppel doctrine of Blonder-Tongue Laboratories,
Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971),
would prevent inconsistent rulings on the patent validity issue,
should the patent be held invalid, and thus, they maintain,
the need for transfer under Section 1407 is obviated.
In our view, Burlington and Brevoni have advanced
a much too simplistic analysis of the common validity questions.
The prior use and knowledge issue under 35 U.S.C. §102(a)
clearly necessitates substantial and complex technical discov-
ery involving a comparison of the European and Ferrell cut-and-
sew methods. Cf. In re Multidistrict Treble Damage Antitrust
Litigation Involving Distribution of Scotch Whiskey, 299 F. Supp.
543, 544 (J.P.M.L. 1969). Although the date of the Ferrell

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patent's issuance is certainly relevant to the validity issue,
it does not appear to be dispositive. Thus, the domestic and
foreign discovery essential to illumination of the prior use
issue and, in turn, the Ferrell validity issue, would be need-
lessly duplicated in the absence of coordinated or consolidated
pretrial proceedings. Moreover, we recognize that the question
of infringement of the Ferrell patent is unique to each action,
and that the issue of the validity of the Rice Reissue Patent
is not common to all actions, but the common factual questions
raised by the validity defenses asserted to the Ferrell patent
warrant coordinated or consolidated pretrial proceedings pursuant
to Section 1407 nonetheless. See In re The Triax Co. Patent
Litigation, 385 F. Supp. 590, 591 (J.P.M.L. 1974); In re
Molinaro/Catanzaro Patent Litigation, 380 F. Supp. 794, 795
(J.P.M.L. 1974).
Although we have denied transfer in several patent
litigations in partial reliance on the principles of Blonder-
Tongue, supra, our decisions were influenced by two factors, inter
alia, not present here. In In re Disposable Diaper Patent
Validity Litigation, 362 F. Supp. 567 (J.P.M.L. 1973), In re
Lehman Equipment Co. Patent Infringement Litigation, 360 F. Supp.
1402 (J.P.M.L. 1973) and In re Bourns Patent Litigation, 385
F. Supp. 1260 (J.P.M.L. 1974), we recognized that when one of
the actions in the litigation was proceeding expeditiously
toward trial on the common validity issue, a transfer under

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Section 1407 would not necessarily further the most harmonious
conduct of the litigation in light of the collateral estoppel
effect under Blonder-Tongue of a holding of invalidity. And,
secondly, in In re Shipley Co., Inc. Patent Litigation,
383 F. Supp. 847 (J.P.M.L. 1974), we denied transfer where only
two actions were involved and noted that Blonder-Tongue would
likely eliminate any possibility of duplicative discovery if
the patent in question were held invalid in either of the actions.
Thus, where one of the actions is proceeding expedi-
tiously toward trial on the common validity issue or where a
very bare minimum number of actions are involved, transfer of
patent litigations may be denied. There are, however, four
actions remaining in this litigation and it is not at all clear
that trial of the validity issue is near in any of them. Indeed,
the briefs of the parties revealed that no discovery on the issue
of the validity of the Ferrell patent has been had in the Kayser-
Roth, Brevoni or Burlington actions and only minimal discovery
on that question has occurred in the Adams-Millis action.
Because of their proximity to one another, either
the Middle District or the Western District of North Carolina
could be described as an appropriate transferee court for this
litigation. Although the Stevens action is no longer before
the court in the Western District of North Carolina, that action,
which was assigned to Judge Woodrow Wilson Jones, involved a
substantial amount of activity prior to its dismissal relating

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to the Ferrell patent. Judge Jones accordingly had an oppor-
tunity to familiarize himself with the factual background of
the dispute and, as a result, we conclude that transfer of this
litigation to the Western District of North Carolina for assign-
ment to him is preferable because it will allow all parties
and the judiciary to benefit from the expertise he has already
gained in the matter.
IT IS THEREFORE ORDERED that transfer of the action
entitled Tights, Inc. v. J.P. Stevens, Inc., W.D. North Carolina,
Civil Action No. ST-C-74-16, be, and the same hereby is, DENIED,
as moot.
IT IS FURTHER ORDERED that the actions listed on the
following Schedule A and pending in the Middle District of
North Carolina be, and the same hereby are, transferred to
the Western District of North Carolina and, with the consent
of that court, assigned to the Honorable Woodrow Wilson Jones
for coordinated or consolidated pretrial proceedings pursuant to
28 U.S.C. §1407 with the remaining action pending in that district
and listed on Schedule A.

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SCHEDULE A DOCKET NO. 209
MIDDLE DISTRICT OF NORTH CAROLINA
Tights, Inc. v. Adams-Millis Corp. Civil Action
No. C-231-G-72
Tights, Inc. v. Burlington, Industries, Inc. Civil Action
No. C-359-G-72
Tights, Inc. v. Kayser-Roth Corp. Civil Action
No. C-302-G-72
WESTERN DISTRICT OF NORTH CAROLINA
Tights, Inc. v. Brevoni Hosiery Corp. Civil Action
No. C-C-75-78
Tights, Inc. v. J.P. Stevens & Co., Inc. Civil Action