IN RE: Multidistrict Litigation Involving Frost Patent

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or JUDICIAL PANEL CN Es 0
’ MULTIDISTRICT LITIGATION i ta dm]
FILED oy 0
THE JUDICIAL PANEL JUL 2 11970 BN 000
ON , EE
MULTIDISTRICT LITIGATION EATRICIA D. HOWARD CL SEERA
‘CLERK OF THE PANEL |
IN RE MULTIDISTRICT LITIGATION ) |
INVOLVING FROST PATENT ) DOCKET NO. 46
OPINION AND ORDER ERP SE
BEFORE ALFRED P. MURRAH, CHAIRMAN, AND JOHN MINOR WISDOM,
EDWARD WEINFELD*, EDWIN A. ROBSON, WILLIAM H. BECKER, JOSEPH oer
S. LORD, III, AND STANLEY A, WEIGEL, JUDGES OF THE PANEL Cel :
PER CURIAM Lo
This multidistrict litigation involves United States oo Co
Patent No. 3,072,582, commonly referred to as the "Frost oo
Patent". This patent describes a method for making polyether- Lo Co on
urethane foam and is owned by the General Tire and Rubber I
Company (hereinafter "General"), the common party in each of Co
the actions listed on the attached Schedule A.
On April 9, 1970 General filed a motion with the Panel Co . PE
to transfer three actions to the District of Delaware for ) . I
coordinated or consolidated pretrial proceedings with five
related actions pending in that court. The day before this Ce
* Although he was not present at the hearing, Judge Weinfeld
has, with the consent of all parties, participated in this decision. . = } :

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IP
motion was filed Judge Frederick van Pelt Bryan of the Southern
District of New York granted General's motion in the Jefferson
1/
casey separated the claims involving the Frost Patent and
transferred those claims to the District of Delaware under
2/
28 U.S.C. §1404(a).” Thus this litigation now encompasses eight
actions in three districts, six in the District of Delaware,
and one each in the Eastern District of Michigan and the
Co 3/
Western District of Virginia.
In its present posture the motion contemplated the transfer
of only two cases, the Wyandotte case from the Eastern District
X of Michigan and the 0lin case from the Western District of
Virginia. Both actions were commenced on March 26, 1970 as
® were the Diamond-Shamrock case, the Reichhold case, and the
Upjohn case which were filed in the District of Delaware. Of
the two defendants in cases subject to the transfer, only
Wyandotte had noted its opposition.
Wyandotte concedes that questions of fact relating to the
vglidity of the Frost Patent are common to all actions but
contends that questions of fact relating to infringement are
unique to each defendant and would not benefit from coordinated
1/ General Tire & Rubber Co. v. Jefferson Chemical Co., Inec.,
No. 68 Civ, 1227
2/ In ruling on defendants' motion for reargument Judge Bryan
correctly pointed out that the motion to transfer under §1407
was neither inconsistent with not did it supercede General's
motion under Section 1404(a) and the court properly rejected the
defendants' claim that the mere filing of the motion under
Section 1407 deprived it of jurisdiction to decide the pending
[ 1404 (a) motion.3/ We do not understand any of the parties to urge transfer of the
remainder of the Jefferson case to the District of Delaware since
it involved a different patent, and we have not considered the
possibility.

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® or consolidated pretrial proceedings, Wyandotte also seems
to admit that its discovery program would include areas which
have been the subject of prior discovery but infers that it
could obtain the benefits of such discovery without the
necessity of transfer under §1407. This suggestion presupposes
that all other parties would be willing to make prior discovery
available to Wyandotte and further that there will be little need
for further discovery. Without inferring that such cooperation
is either impossible or unlikely we believe that Section 1407
was intended to provide a procedure which would insure that
repetitious and duplicative discovery is avoided by providing
that all related actions be assigned to a single judge. Cf.
® In re Gypsum Wallboard, 303 F.Supp. 510 (JPML 1969).
Counsel for Wyandotte also urges that the District of
Delaware is not a particularly convenient forum for either
party since neither it nor General have any significant contact
with Delaware and since their witnesses and records are located
in Ohio and Michigan respectively. While we may not have
selected the District of Delaware at the outset of this
litigation, the advanced state of discovery in several actions
pending there and Judge Wright's familiarity with this litigation
compels the selection of the District of Delaware as the only
practical transferee forum at this time.
The other parties opposing General's motion to transfer
under Section 1407 - Isocyanate Products, Inc. and Murphy
® Body Works, Inc., (hereinafter I.P.I/Murphy), Jefferson
Chemical Company Inc., (hereinafter Jefferson) and, to a lesser

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® extent, the Upjohn Company, (hereinafter Upjohn) are not subject
to transfer for their actions are now pending in the District
of Delaware but they object to the inclusion of their
actions in coordinated or consolidated pretrial proceedings.
I.P.I./Murphy and Jefferson urge that their actions will be
delayed by becoming part of this multidistrict litigation and
contend that both actions are nearly ready for trial. Upjohn
does not object to consolidation and coordination of pretrial
proceedings but urges that such proceedings be limited to matters
pertaining to the validity and misuse of the Frost patent.
i They contend that questions relating to infringement should not
be included in such proceedings because they involve individual
® facts unique to each defendant and of a sensitive nature due
to the fact that the defendants are in direct competition with
each other.” General denies both of these assertions claiming
that discovery is not far advanced in either the I.P.I./Murphy
case or the Jefferson case and that questions of infringement
are in many respects common to all actions.
It is clear that discovery is not complete in any of these
actions but substantially further along in the I.P.I./Murphy
case and the Jefferson case than, for example in any of the
actions commenced on March 26, 1970. We need not resolve
the dispute as to whether those cases are nearly ready for
trial or whether trial can be held in the Fall as predicted
4] 1.P.I./Murphy and Jefferson also suggest that there may be
® a conflict between them and other defendants with respect to
(1) a claim of prior invention by a Kenneth B., Satterly and (2)
possible infringement of the Heiss patent.

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® oCby the defendants nor do we need to resolve the question
of whether there are any common questions of fact as to
infringement which would benefit from coordinated or
consolidated pretrial proceedings. The transferee judge can
separate the actions filed in the District of Delaware and
set them for trial as soon as they are ready. He can also
decide whether and to what extent questions relating to
infringement should be covered during coordinated and consolidated
pretrial proceedings or whether they should be left for local
discovery following remand to the court of origin. In re Butter-
} field Patent Litigation, ____ F.Supp. ____ (JPML February 2, 1970).
In sum, there can be no doubt that this litigation
® involves substantial and complex common questions of fact, at
least insofar as they concern the validity and misuse of the
Frost patent. We have no doubt that the transfer of all actions
to the District of Delaware and their assignment to Chief Judge
Wright will serve the convenience of parties and their witnesses
by enabling all parties to benefit from discovery which has
taken place and by avoiding repetitious and duplicative future
discovery. Finally, it can be hardly doubted that the just
and efficient conduct of all of these actions will be furthered
by assigning them all to a single judge and by permitting him
to exercise his broad discretion in determining the best
manner for conducting further proceedings.
IT IS THEREFORE ORDERED that the two actions pending in
@ other districts are hereby transferred to the District of
Delaware and, with the consent of that court, all related actions

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are hereby assigned to the Honorable Caleb Wright for coordinated
or consolidated pretrial proceedings pursuant to 28 U.S.C. §1407.

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: are hereby assigned to the Honorable Caleb Wright for coordinated
or consolidated pretrial proceedings pursuant to 28 U.S.C. §1407.

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DOCKET NO. 46 SCHEDULE A
DISTRICT OF DELAWARE
The General Tire & Rubber Company v. Civil Action
Reichhold Chemicals, Inc. No. 3867
The General Tire& Rubber Company v. Civil Action
Diamond Shamrock Corporation No. 3868
The General Tire & Rubber Company Vv. Civil Action
The Upjohn Company No. 3866
The General Tire & Rubber Company Vv. Civil Action
Isocyanate Products, Inc. No. 3183
Isocyanate Products, Inc. and Murphy Civil Action
- Body Works, Inc. The General Tire & No. 3184
Rubber Company
The General Tire & Rubber Company V. Civil Action (*)
Jefferson Chemical Company, Inc. No. 3910
® EASTERN DISTRICT OF MICHIGAN
The General Tire & Rubber Company v. Civil Action
Wyandotte Chemicals Corporation No. 34666
WESTERN DISTRICT OF VIRGINIA
The General Tire & Rubber Company v. Civil Action
0lin Corporation = No. 70-C-29-A
| (*) Transferred from the Southern District of New York
by Judge Frederick van Pelt Bryan on April 8, 1970.