IN RE: Wyeth (PET) Patent Infringement Litigation

PE Case MDL No. 325 Document 2 Filed 05/04/15Bgot =
BEFORE THE JUDICIAL PANEL RI EERE EE | E oo SH -
SE ON FIR UT AH 4MULTIDISTRICT LITIGATION Tr Jr 5/3/58:	eT AA
IN RE WYETH PATENT INFRINGEMENT ) DOCKET NOu:325 7 A - 3LITIGATION ) - iE
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OPINION AND ORDER CEE RE
BEFORE JOHN MINOR WISDOM*, CHAIRMAN, AND EDWARD WEINFELD®*,
EDWIN A. ROBSON*, JOSEPH S. LORD, III, STANLEV A. WEIGEL, i
ANDREW A. CAFFREY, AND ROY W. HARPER, JUDGES OF THE PANEL. i i
PER CURIAM ~ IEE
This litigation consists of three actions, each pending in oo :
a different federal district -~- the Northern District of Ohio, :
the District of Delaware or the Eastern District of Pennsylvania. | .!
The subject of these actions is Patent No. 3,733,309 (Wyeth | }
patent), which relates to biaxially oriented polyethylene f EEE
terephalate bottles (PET bottles) useful for bottling carbonated |} co
beverages under pressure. The rights to the Wyeth patent have ;1 PA :
been assigned to E.I. duPont de Nemours & Co. (DuPont) by the | CTT
inventors. So
In the Ohio action, Owens-Illinois, Inc. and the Continental i a
Group, Inc., two corporations engaged in the manufacture and sale ! SLE
of PET bottles, seek declarations of invalidity and noninfringe- i Co TE
ment of the Wyeth patent, as well as injunctive relief against | TeLo SE
threatened suits by DuPont to enforce the patent. DuPont has TUTE
i
counterclaimed for declarations that the Wyeth patent is valid
and has been infringed by Owens-Illinois and Continental. h :
* Judges Wisdom, Weinfeld and Robson took no part in the co SE
decision of this matter. ||
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o In the Delaware action, DuPont charges that defendant
PepsiCo, Inc., a user of PET bottles,has been actively in-
ducing others to manufacture, use and sell PET bottles that
infringe the Wyeth patent; and that PepsiCo has itself in-
fringed the Wyeth patent by using, selling and offering for
sale PET bottles.” DuPont seeks a declaration that the Wyeth
patent is valid and has been infringed by PepsiCo, an injunction
preventing future infringement, and damages.
In the Pennsylvania action, DuPont alleges that defendant
| Pepsi-Cola Metropolitan Bottling Company, Inc. (Pepsi-Metro)
has infringed the Wyeth patent by using, selling and offering
for sale PET bottles. DuPont seeks relief in this action
similar	to the relief sought in the Delaware action.
® Pursuant to 28 U.S.C. §1407, DuPont moves the Panel to
centralize these three actions in the District of Delaware or
© any other appropriate district for coordinated or consolidated
pretrial proceedings. Owens-Illinois, Continental and PepsiCo
oppose transfer.
We conclude that transfer under Section 1407 would not
necessarily serve the convenience of the parties and witnesses
or promote the just and efficient conduct of this litigation and,
accordingly, we deny the motion to transfer.
1/ Hoover Ball and Bearing Co., a manufacturer of PET bottles,
allegedly for use by PepsiCo, was originally named as a defendant
in the Delaware action, but was subsequently dismissed by agree-
ment of DuPont and Hoover after Hoover obtained a license from
DuPont relating to the Wyeth patent.
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Co Case MDL No. 325 Document 2 Filed 05/04/15 Page	3 of 5 |
® Movant DuPont asserts that transfer is appropriatebecause discovery in each action will focus on highly complex
and technical material concerning both the technology involved in
the manufacture of PET bottles and the validity of the Wyeth
patent. Furthermore, DuPont stresses, common issues concerning
infringement will be involved in these actions because PepsiCo
has instigated Owens-Illinois' and Continental's infringement -
of the Wyeth patent by inducing them to manufacture infringing
PET bottles and by purchasing those bottles through a sub-
‘ sidiary, Pepsi-Metro, for PepsiCo's own use and sale.
We find these arguments unpersuasive. A minimal number
of actions are involved here. Although we recognize the
existence of common questions of fact among these few
) actions, movants have not met their burden of convincing us that
those common factual questions are sufficiently complex or that
the accompanying discovery will be so time consuming as to
justify transfer under Section 1407. See	In re Scotch Whiskey,
| 299 F. Supp. 543, 544 (J.P.M.L. 1969). Furthermore, we note that
under the collateral estoppel principles of Blonder-Tonque
Laboratories, Inc. v. University of Tllinois Foundation, 402 |
U.S. 313 (1971), a holding in one action that the Wyeth
patent is invalid would likely prove dispositive of that -
issue in the other actions. See also In re Tllinois Tool,
Inc. v. Foster Grant Co., Inc., 547 F.2d 1300, 1302-03 (7th
Cir. 1976).
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; Case MDL No. 325 Document 2 Filed 05/04/15 Page	4 of 5 :
® ’ We observe that suitable alternatives to Section 1407
transfer are available in order to minimize the possibility
of duplicative discovery. For example, notices for a particular
deposition could be filed in all actions, thereby making the
deposition applicable in each action; the parties could seek to
agree upon a stipulation that any discovery relevant to more than
one action may be used in all those actions; and any party could seek
orders from the three involved district courts directing the parties
to coordinate their pretrial efforts. See In re Commercial
Lighting Products, Inc. Contract Litigation, 415 F. Supp. 392,
393 (J.P.M.L. 1976). See also Manual for Complex Litigation,
Parts I and II, §§3.11 (rev. ed. 1977). Moreover, the parties
may seek stays of all or part of two of the actions pending the
2/ |
® outcome of the third. :
Additionally, consultation and cooperation among the a :
three courts, if deemed appropriate by those courts, coupled
with the cooperation of the parties, would be sufficient to ’bi
minimize the possibility of conflicting pretrial rulings,
See In re Texas Instruments, Inc. Employment Practices )
Litigation, 441 F. Supp. 928, 929 (J.P.M.%L. 1977).
: IT 1S THEREFORE ORDERED that the motion to transfer the |
actions listed on the following Schedule A be, and the same )
hereby is, DENIED. :
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2/ We are advised that PepsiCo has filed a motion in the {Delaware action for a stay pending the resolution of the |
@ Ohio action. !
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Case MDL No. 325 Document 2 Filed 05/04/15 Page 5 of 5
: SCHEDULE A
® | DOCKET NO. 325
— NORTHERN DISTRICT OF OHIO
Owens-Illinois, Inc. and The Continental Civil Action
Group, Inc. v. E.I. du Pont de Nemours No. C-77-39
& Co.
DISTRICT OF DELAWARE
E.I. du Pont de Nemours & Co. v. PepsiCo, Civil Action B
"Inc. No. 77-450
EASTERN DISTRICT OF PENNSYLVANIA
E.I. du Pont de Nemours & Co. v. Pepsi- Civil Action
Cola Metropolitan Bottling Co., Inc. No. 78-99