IN RE: Multidistrict Litigation Involving Butterfield Patent Infringement

Case MDL No. 29 Document 2 Filed 04/30/15 Page 1 of 19
oT BUDICIAL PANEL ON EO
MULTIDISTRICT LITIGATION ER oo
| FILED seandEEEERS
THE JUDICIAL PANEL FEB 2 1970 -ON
MULTIDISTRICT LITIGATION | RATRICIA	©. CAD, .
CLERK	Qc 2. PANEL
ILTIDISTRICT LITIGATION INVOLVING ) _- E oo oo
'TTERFIELD PATENT INFRINGEMENT ) DOCKET NO. 29 | R |
OPINION AND ORDER :
FORE ALFRED P. MURRAH, CHAIRMAN, AND JOHN MINOR WISDOM, - |
WARD WEINFELD, EDWIN A. ROBSON, WILLIAM H. BECKER, AND
ANLEY A. WEIGEL, JUDGES OF THE PANEL
SEPH S. LORD, III, JUDGE OF THE PANEL oo
This litigation involves the Butterfield Patent I
. 2,544,246. There are presently pending 41 actions - : oo
2king damages for infringement in 19 different districts Lo a.
i plaintiff has moved under Title 28 U.S.C. Section 1407
tr transfer and consolidation of pretrial proceedings. There oo SUE
ams to be little doubt that several questions of fact are -
mmon to all the lawsuits. The issues of the scope of
> patent, and its validity, including questions of obviousness,
vention, prior art and commercial success are undoubtedly R
nmon to all cases. Additionally, it appears that since
aintiff waited for eight years and over a year after the Co
>iration of the patent to bring suit, the question of laches
Ll be a common question. Finally, questions relating to

Case MDL No. 29 Document2 Filed 04/30/15 Page	2 of 19
Co . |
® EC
notice of infringement as required by Title 35 U.S.C.
Section 287 will be common. We have concluded that these
are "actions involving one or more common questions of fact"
within the requirement of Section 1407.
Those defendants resisting transferY’do SO on one Or more
of several grounds. All argue that the question of infringement
will be peculiar to each defendant and it seems likely that
this is so. If it is, the transferee judge can of course
separate this issue from the consolidated pretrial proceedings
and leave it for local handling. Some argument is made that
it would be inconvenient for defendants to travel to a forum
® other than their own to submit to depositions by plaintiff.
This argument, however, has no real force, since if serious
inconvenience becomes apparent, the transferee judge has it
within his power to order the taking of depositions of
defendants' personnel in their own locality.
The most serious argument made by many defendants is
that they are small businesses, their volume is small and
the recoverable damages so comparatively minor that transfer
and consolidation would force on them a disproportionate
financial burden. We think, however, that this fear is more
fanciful than real. Experience has shown that where, as here,
common questions of fact exist in a large number of cases,
1/ Alldefendants appearing at argument oppose transfer, but
® not all defendants appeared.

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| ® N | he . - 3 =
it is not only expedient, but less expensive for each individual
defendant to join in the selection of lead counsel to handle
the consolidated discovery depositions. Thus, all defendants
receive the benefit of the consolidated depositions without
the necessity of engaging individual local counsel in the
transferee court and without the necessity of extensive travel
by their own local counsel.
Aside from the undeniable existence of common questions
of fact, there is another compelling reason for transfer and
consolidation. It seems clear that "pretrial proceedings"
include the power of the transferee judge to grant motions for
summary judgment. See H.R. Report No. 1130, accompanying S.159;
® and cf. In Re Plumbing Fixture Cases, 298 F. Supp. 484 (JPML, 1968);
In Re Postage Regulation Litigation, 298 F. Supp. 1326 (JPML,1969).
Here, if discovery on the issues of validity, scope, statutory
notice or laches reveals no dispute of any material fact,
disposition of the litigation by summary judgment may be
appropriate. We of course intimate no opinion on the merits
of any such motions. Nevertheless, the possibility of summary
disposition certainly lurks in the background. If the
litigation is transferred, the result on any such motion would
be the same for all parties and thus transfer would be
"an appropriate means of avoiding injury to like parties
caused by inconsistent judicial treatment." In Re Postage
) Regulation Litigation, 298 F. Supp. 1326 (JPML, 1969). On
balance, and considering all the factors involved,

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: ° - - 4 -we are convinced that transfer and consolidation of pretrial
| proceedings will promote the just and efficient conduct of
these actions.
The plaintiff originally sought transfer to the Northern
District of California, but suggested at argument that the
transferee court should be on the East Coast. However, there
are four cases presently pending in the Northern District
of Illinois and already assigned to the Honorable Hubert Will.
We have no doubt that he is familiar with the litigation and its
needs. We are advised that his docket is relatively current
and that he is willing to accept the transfer of these cases.
Since Chicago is geopraphically central, we think the convenience
C of the parties will best be served by transfer to Judge Will
in the Northern District of Illinois. ’
There are three related actions in the Central District
of California which are not included on Schedule a Pretrial
proceedings in those three cases has progressed to such a point
that transfer at this time might not result in the promotion of
their just and efficient conduct. They are therefore excluded
from this order of transfer. In Re Grain Shipment Cases, 300
F. Supp. 1402, 1405 (JPML, 1969); In re Protection Device Cases,
295 F. Supp. 39, 40 (JPML 1968).
IT IS THEREFORE ORDERED that the actions listed on
Schedule A pending in other districts be and the same are hereby
PA transferred to the United States District Court for the Northern
37 Butterfield v. Obrig Distributors, CA No. 69-871-FW;
Butterfield v. Calecon Lab., CA No. 69-958-FW; Butterfield
. Danker & Wohlk Associates, CA No. 69-997-FW.

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o al
District of Illinois and with the consent of that court these
actions are assigned to the Honorable Hubert L. Will for
coordinated or consolidated pretrial proceedings under 28 U.S.C.
Section 1407.
Ls

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’ a ata laa r
UIE Cre bm
DOCKET NO. 29 SCHEDULE A
SOUTHERN DISTRICT OF CALIFORNIA
George H. Butterfield, Sr. v. San Diego Civil Action
Contact Lens Laboratory, Inc. No. 69-126-S
EASTERN DISTRICT OF NEW YORK
George H. Butterfield, Sr. v. Ocular Civil Action
Products, Inc. No. 69 Civ 1147
George H. Butterfield, Sr. v. Danker & Civil Action
Wohlk, Inc. No. 69 Civ 1255
George H. Butterfield, Sr. v. Mastercraft Civil Action
Contact Lens Labs, Inc. No. 69 Civ 1256
SOUTHERN DISTRICT OF NEW YORK
George H. Butterfield, Sr. v. Para Lens, Civil Action
¢® Inc. No. 69 Civ. 4003
. George H. Butterfield, Sr. v. Precision Civil Action
Contact Lens Laboratories, Inc. No. 69 Civ 4019
George H. Butterfield, Sr. v. Optimum Civil Action
Contact Lenses, Inc. No. 69 Civ 4020
George H. Butterfield, Sr. v. 5 Continents Civil Action
Contact Lens, Inc. No. 69 Civ 4474
George H. Butterfield, Sr. v. Vent Air Civil Action
Contact Lens Laboratories No. 69 Civ 4471
George H. Butterfield, Sr. v. United Civil Action
Contact Lens Corp. No. 69 Civ 4472
George H. Butterfield, Sr. v. Full Civil Action
Sight Contact Lens Corp. No. 69 Civ 4473
NORTHERN DISTRICT OF TEXAS
George H. Butterfield, Sr. v. Dal-Tex Civil Action
® Optical Co. No. CA-3-3331-B

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® DOCKET NO. 29 - 2 - SCHEDULE A
WESTERN DISTRICT OF TEXAS
George H. Butterfield, Sr. v. Contour Civil Action
Comfort Contact Lens, Inc. No. W-69-CA-48
SOUTHERN DISTRICT OF OHIO
George H. Butterfield, Sr. v. Carskadden Civil Action
Optical Co., Inc. No. 69-270
MIDDLE DISTRICT OF PENNSYLVANIA
George H. Butterfield, Sr. v. Morrison Civil Action
Laboratories, Inc. No. 69-339
WESTERN DISTRICT OF PENNSYLVANIA
George H. Butterfield, &. v. Erie Civil Action
® Contact Lens Laboratory, Inc. No. CA 98-69-Erie
DISTRICT OF MASSACHUSETTS
George H. Butterfield, Sr. v. Young Civil Action
Contact Lens Laboratories, Inc. No. 69-969-M
George H. Butterfield, Sr. v. Custom Civil Action
Contact Lens Lab Inc. : No. 69-1118-M
George H. Butterfield, Sr. v. Quality Civil Action
Optics, Inc. No. .69-1119-M
NORTHERN DISTRICT OF GEORGIA
George H. Butterfield, Sr. v. Quality Civil Action
: Optics, Inc. No. 13099

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® DOCKET NO. 29 - 3 - SCHEDULE A
NORTHERN DISTRICT OF ILLINOIS
George H. Butterfield, Sr. v. Oculus Civil Action
Contact Lens Co., Inc. No. 69 C 1812
George H. Butterfield, Sr. v. Contact Civil Action
Lens Service, Inc. No. 69 C 2184
George H. Butterfield, Sr. v. Custom Civil Action
Contact Lens Laboratories, Inc. No. 69 C 2186
George H. Butterfield, Sr. v. Fused Civil Action
Kontacts of Chicago, Inc. No. 69 C 2185
EASTERN DISTRICT OF MICHIGAN
George H. Butterfield, Sr. v. Custom Civil Action
Laboratories, Inc. No. 33380
® WESTERN DISTRICT OF KENTUCKY
George H. Butterfield, Sr. v. SCL Civil Action
Laboratories, Inc. No. 6376
EASTERN DISTRICT OF LOUISIANA
George H. Butterfield, Sr. v. Custom Civil Action
Contact Lens Laboratories, Inc. No. 69-2346
DISTRICT OF NEBRASKA
George H. Butterfield, Sr. v. Precision Civil Action
Optics, Inc. No. 03403
George H. Butterfield, Sr. v. Rite-Style Civil Action
Optical Co., Inc. No. 03404
WESTERN DISTRICT OF OKLAHOMA
George H. Butterfield, Sr. v. Professional Civil Action
Research Contact Lens, Inc. No. Civ-69-449

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® DOCKET NO. 29 - 4 - SCHEDULE A
WESTERN DISTRICT OF WASHINGTON
George H. Butterfield, Sr. v. Peninsula Civil Action
Optical No. 8607
NORTHERN DISTRICT OF CALIFORNIA
George H. Butterfield, Sr. v. Pace Civil Action
Optical Co., Inc. No. C69-18 GSL

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JUDICIAL PANEL ON
MULTIDISTRICT LITIGATION oo oo
FILED
4 B : ’ Co
THE JUDICIAL PANEL APR i U 170 :
ON :
PATRICIA D. HOWARD Fed
MULTIDISTRICT LITIGATION CLERK OFTHE PANEN x= |
/TIDISTRICT LITIGATION INVOLVING ) LO
'TERFIELD PATENT INFRINGEMENT ) DOCKET NO. 29 ee SU
DISSENTING OPINION I
ORE ALFRED P. MURRAH, CHAIRMAN, AND JOHN MINOR WISDOM, |
‘ARD WEINFELD, EDWIN A. ROBSON, WILLIAM H. BECKER, JOSEPH S. So
D, III, AND STANLEY A. WEIGEL, JUDGES OF THE PANEL IEE oo
NLEY A. WEIGEL, JUDGE OF THE PANEL, DISSENTING: :
I respectfully dissent. : oo
The jurisdiction of the Panel is properly invoked in this : 8
ceeding because the cases included are civil actions (1) pending a
different districts and (2) involving one or more common B B oo
vv |
stions of fact. 28 U.S.C. § 1407. : a
The presence or absence of these jurisdictional requirements | : : :
nearly always readily determinable. The more difficult task
the Panel is to determine whether or not transfers of actions | Lo
coordinated or consolidated pretrial proceedings "will be for :
convenience of parties and witnesses and will promote the
There are 41 cases pending in 19 widely scattered United
tes District Courts.

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® just and efficient conduct of such actions.” Id. In this
proceeding, the record presented to us indicates that transfer
will serve neither convenience nor justice nor efficiency.
To begin with, the important questions of fact which are
common to all the cases are outnumbered by those which are not.
The validity of the Butterfield patent presents common factual
questions and so does one aspect of the matter of notice of
2/
infringement. All other important factual questions require
separate examination into the respective activities of each of
the defendants in the 41 actions.
® Turning now to the specifics supporting that conclusion:
The majority opinion is correct in suggesting that laches
will be a common question in the actions. But it will be a
common question of law or equity, not of fact. The facts re-
lating to laches will vary from defendant to defendant because
the defense of laches always turns upon the facts individually
relevant. For example, in one case before us, the defendant
alleges that he has been notoriously producing the lens in
question for eight years while, in other cases, it is clear
that the defendants are newer to the field. Moreover, laches
is not available as a defense unless the defendant urging it
® shows that the delay of the plaintiff has caused detriment to
i 2.

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® that defendant. This question is necessarily unique to each
defendant claiming laches.
The majority opinion also errs to the extent it suggests
that notice of infringement will be a significant question of
fact for common discovery. Unless the plaintiff marked his
claimed invention or its container with the word "patent" and
with the patent number, the exact opposite is crue.” If such
mark is absent, then, to recover for infringement, the patentee
must prove actual notice to the particular defendant. 35 U.S.C.
§ 287. The adequacy of the marking is a simple factual question
which is common to all the cases. But it is one which will require
® little discovery. If, however, the marking is inadequate, then
the plaintiff will have to prove that he gave notice to each of
the defendants in the 41 actions and that each continued thereafter
to infringe. That actual notice question will require pretrial
discovery of facts unique to each case and common to none.
Finally, the majority opinion fails to recognize that the
~~ issue of the scope of the patent involves common questions of
fact only in a minor respect. The abstract definition of the
scope of the Butterfield patent is, of course, an element common
3/ Although plaintiff alleges proper marking in his pleadings,
he also alleges actual notice. In a deposition taken by defendant
[ John H. Rottmann, plaintiff seems to admit that he has nevertaken steps to enforce patent marking by his licensees.
oo 3.

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| C to all the cases. But extrapolation of that definition involves
little or no pretrial inquiry. On the other hand, the effective
scope of the patent, as opposed to its abstract definition, can
be determined solely in concrete cases by measuring each of the
defendants' lenses, one by one, against the Butterfield patent.
Thus the scope of the patent will be meaningfully determined only
by decisions on the issue central to each case -- infringement.
And infringement does not involve common questions of fact. To
prove infringement, the plaintiff will have to establish in each
case that the lens made by the defendant is of a particular
configuration and fits on the wearer's cornea in a particular
C manner.
In sum, then, there are, at most, two issues involving
common questions of fact in these 41 actions. One of the two,
insofar as it may be common, is factually trivial and will require
very little discovery. In contrast, at least three major issues
raise complex questions requiring discovery of facts unique
to each case.
In the light of the foregoing, can it be said that the
statutory criteria for transfer -- convenience of parties and
witnesses, efficiency, and justice -- are satisfied?
4/ In the prosecution of the Butterfield patent, No. 2,544,246,
[ its scope has been generally limited to a contact lens whose	interior side conforms to the curvature of the wearer's cornea.
| 4.

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[ The first and second statutory criteria -- convenience of
parties and of witnesses -- may be discussed together. In this
proceeding, all responding defendants oppose transfer. Only the
plaintiff Butterfield supports it. One reason the defendants
oppose transfer is clear. They believe that it will substantially
increase the costs to them and greatly decrease costs to plaintiff.
Plaintiff has brought the actions here involved against 41 widely
scattered optometrists and contact lens manufacturers. He
indicates an intention to bring hundreds of such actions. Only
four of the presently filed suits were brought in Chicago, the
transferee district. Thus, more than 90% of these small defendants,
( scattered from Massachusetts to California, will be forced to
conduct pretrial in a forum in which they were not and probably
could not have been sued. To suggest that they can employ lead
counsel is only to say that they can adopt what may be the least
| inexpensive mode of dealing with this extra burden.
The extent of the inconvenience to the defendants and their
witnesses will turn, in large part, on the range of discovery
" conducted in the transferee court. Since all the records and
witnesses relevant to the question of infringement will be in
the areas in which the defendants' respective businesses are
5/ The unqualified statement in the majority opinion on the
[ benefits of employing lead counsel may impel some litigantsbefore the Panel to retain counsel they otherwise would not
’ select.
5.

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® located, it would appear that discovery on this issue should be
conducted in the transferor districts. It is hardly an answer
to say that such discovery may be remanded. The burden will be
on the defendants to move the Panel for such remand. Such motions
and decisions upon them add to complication, not efficiency.
Moreover, if such motions should be denied, the burdens on the
defendants of producing for consolidated discovery will be very
heavy, indeed. The majority does note that the transferee judge
may make orders to protect the defendants, but, once again, the
burden is on the defendants to secure such orders.
The defendants are engaged in small optical businesses. The
® individual damage claims against most of them are relatively
. small. To increase, by transfer for pretrial, the defendants’
litigation costs will be to impose substantial pressure on them
to settle even if their position on the merits seems stronger
than that of the plaintiff.
For all these reasons, transfer will impose great inconvenience.
on the many defendants and their witnesses. Convenience to the
single plaintiff does not justify the inconveniences, indeed,
hardships, to the defendants.
Section 1407 further provides that transfer should promote
efficiency. Transfer necessarily imposes extra burdens of paper
® | 6.

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® and clerical work on court clerks and others. An outline of the
procedural steps involved in transfers makes this abundantly clear.
The Manual for Clerks circulated by the Panel indicates
that the most efficient procedure would be as follows:
Upon receiving the Panel's order of transfer, the
clerk of the transferee court transmits a certified
copy thereof to the clerks of the transferor courts.
After receiving and filing this order, each trans-
feror clerk makes an appropriate entry on the docket
sheet of each affected case and then forwards to
the transferee court the files, records, and a copy
of the docket sheet of each transferred case.
The transferee clerk usually maintains a master
docket sheet for all transferred cases, individual
docket sheets for each such case and a complete
combined pretrial file for each transferor court.
Thereafter, copies of all motions, depositions,
exhibits, and other pretrial papers are included in
each combined district file. Notices, orders and
C) pleadings must be served on all counsel for all	parties, unless alternative arrangements can be
agreed upon.
Motions for remand may be initiated by any party,
the transferor or transferee courts or the Panel.
Only the Panel has the power to order a remand. Hear-
ings may be necessary. Orders of remands must be
transmitted to each transferor court by the trans-
feree court and appropriate entries must be made on
all the aforementioned docket sheets. The individual
case file, a docket sheet for each remanded case, a
copy of the master docket sheet and the combined
district file must then be transmitted back to the
appropriate district court. If some but not all of
the cases from a specific district are remanded, then
copies of all subsequent motions, orders and other
filings must be sent to the transferor court for
inclusion in the combined district file. In re
Concrete Pipe, 302 F. Supp. 244, 254-5, n.l (1969).
® : 7.

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® In this proceeding, a total of 37 cases must be transferred
to the Northern District of Illinois from 18 different district
courts. Just the routine costs of the paperwork and record-
keeping involved in consolidation will be great.
Because of the clerical costs of transfer, because of the
paucity of common questions of fact, and because of the likelihood
that the parties will have to make and the Panel hear remand
motions, transfers are hardly likely to promote efficiency.
The last question is whether transfer will promote justice.
In this regard, the majority opinion places great weight on the
possibility that a motion for summary judgment by defendants
® could terminate the Litigation.” To the extent that the majority
opinion relies upon that possibility, it treads dangerously close
to making an assessment on the merits. Such an assessment would
transcend the limited powers vested in the Panel by Congress.
Those powers relate solely to the transfer and remand of actions
consolidated for pretrial proceedings. 28 U.S.C. § 1407. The
statute will be searched in vain for any provision empowering
the Panel to adjudicate upon the merits. That power of adjudica-
tion remains in the appropriate United States courts.
In any event, posed against the justice which may result
if summary judgment is eventually granted is the injustice of
PY 6/ At least three Butterfield patent cases have already completed	pretrial and will go to trial soon. It appears that summary
: judgment has not been granted in any of them.
8.

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® the adversary advantage given plaintiff by transfer. In fact,
this advantage may attend plaintiff even if summary judgment
may result since most of the pretrial preparation would very
likely have to be completed before consideration of such a
motion.
Moreover, the virtue of consolidation in possibly ensuring
uniform decisions is likely to be achieved without consolidation.
The first decision or decisions reached in these cases, if they
are based on common issues, would have persuasive authority in
the other cases. .
Transfer here, then, is likely not to be convenient nor
® efficient nor just. It appears to reward a plaintiff whose case
is assessed as being weak. And it may well encourage institution
of frivolous suits by plaintiffs exploiting Section 1407 transfers
to force nuisance value settlements.
|
| | oo.

Case MDL No. 29 Document 2 Filed 04/30/15 Page 19 of 19
JUDICIAL PANEL ON SE
’ THE JUDICIAL PANEL MULTIDISTRICT. LITIGATION To
ON FILED
MULTIDISTRICT LITIGATION LPR1 51870 | I
PATRICIA D. HOWARD Co :
MULTIDISTRICT LITIGATION INVOLVING ) CLERK QF THE PANEL
BUTTERFIELD PATENT INFRINGEMENT ) DOCKET NO. 29
DISSENTING OPINION ase oo
ag
- imi I :ma
BEFORE ALFRED P. MURRAH, CHAIRMAN, AND JOHN MINOR WISDOM, eel EI
EDWARD WEINFELD, EDWIN A. ROBSON, WILLIAM H. BECKER, JOSEPH ——
S. LORD, III, AND STANLEY A. WEIGEL, JUDGES OF THE PANEL Co
EDWARD WEINFELD, JUDGE OF THE PANEL (dissenting and concurring B ‘ SU
in the dissent of Judge Weigel): . Co
The multiplicity of suits brought against various de- :
fendants to recover relatively small damages based upon a patent
which has already expired and the delay of eight years suggest
harassment and a hope that the heavy expense of defending the
actions will lead the defendants to settle rather than to fight. as 2
There is much substance to the defendants' contentions of ex-
cessive inconvenience and burdensome financial expense, and also on oo
that infringement is peculiar in the instance of each defendant. oo
While it is true that some issues, such as the scope of the
patent and its validity, are common in all cases, this is not so oo :
as to other issues. In my view, it would not, under the circum-
stances here presented, promote the just and efficient conduct .
of these particular actions	to transfer them to one district for
consolidation and coordinated pretrial proceedings.