In re Multidistrict Patent Litigation Involving the KAEHNI PATENT.

Before ALFRED P. MURRAH, Chairman, and JOHN MINOR WISDOM, EDWARD WEINFELD, EDWIN A. ROBSON^[*], WILLIAM H. BECKER, JOSEPH S. LORD, III, and STANLEY A. WEIGEL, Judges of the Panel.

*1343 OPINION AND ORDER

PER CURIAM.

The nine actions involved in this multidistrict litigation were brought by Frank J. Kaehni and Marie Kaehni and each charge the infringement of United States Patent No. 2,463,280. Like many of the defendants, we were unable to tell from the complaints exactly how the patent was allegedly being infringed but since there were common plaintiffs and a single patent involved in all nine actions, it appeared that there was at least a high probability that common questions of fact were involved in all nine actions. For these reasons, the Panel, on its own initiative, issued an order to show cause why these actions should not be transferred to a single district for coordinated or consolidated pretrial proceedings. A plenary hearing was held in New York City on February 27, 1970.

The responses to our show cause order unfortunately did not fully clarify the situation but it seems clear that this is rather typical multidistrict patent litigation in that the plaintiffs have brought their actions against manufacturers, wholesalers, and retailers of the alleged infringing device. Here there is a single manufacturer (The Diffraction Company, Inc.), two wholesalers or jobbers (Jeri, Inc. and Jewelarama, Inc.) and six retailers.

Like the Butterfield Patent Cases (JPML, February 2, 1970), questions relating to the scope of the patent and its validity are clearly common to all actions. However as there is but a single manufacturer of the alleged infringing device, questions relating to infringement are also common to all actions. Although not as large as the Butterfield Patent Litigation, supra, these nine actions meet the standards for transfer of multidistrict litigation especially since each one involves substantially identical questions of fact.

In the event of transfer, the parties suggest one of two districts as the most appropriate transferee court: the Northern District of Ohio and the District of Maryland. While it is true that there are more actions pending in the Northern District of Ohio, they are all brought against retailers while the three actions in Maryland are brought against the manufacturer and the two wholesalers/jobbers. In addition, it appears that pretrial proceedings are somewhat more advanced in that district. Under these circumstances, the District of Maryland is the most appropriate district for transfer of these related actions under section 1407.

It is therefore ordered that the actions on the attached Schedule A pending in the Northern District of Ohio and the District of New Jersey are *1344 hereby transferred to the District of Maryland under 28 U.S.C. § 1407 and with the consent of that court,^[1] they are hereby assigned to the Honorable Edward S. Northrop for coordinated or consolidated pretrial proceedings with the actions already pending in that court.

A motion to dismiss, filed by the S. S. Kresge Company, the defendant in an action pending in the Northern District of Ohio, is presently pending before that court. Transfer of that action to the District of Maryland will be stayed; if the motion is granted, there of course will be no transfer but if the motion is denied, the stay will be immediately lifted and the action transferred to the District of Maryland.

                             DISTRICT OF NEW JERSEY
    Frank J. Kaehni & Marie Kaehni v. Edmund Scientific       Civil Action
    Co. & Norman W. Edmund                                   No. 473-69
                             DISTRICT OF MARYLAND
    Frank J. Kaehni & Marie Kaehni v. Jewelarama,             Civil Action
    Inc.                                                     No. 20691
    Frank J. Kaehni & Marie Kaehni v. Jeri, Inc.              Civil Action
                                                             No. 20692
    Frank J. Kaehni & Marie Kaehni v. Diffraction             Civil Action
    Company                                                  No. 20693
                    NORTHERN DISTRICT OF OHIO
    Frank J. Kaehni & Marie Kaehni v. The May Company         Civil Action
                                                             No. C69 570
    Frank J. Kaehni & Marie Kaehni v. W. T. Grant             Civil Action
    Company                                                  No. C69 571
    Frank J. Kaehni & Marie Kaehni v. The Higbee              Civil Action
    Company                                                  No. C69 572
    Frank J. Kaehni & Marie Kaehni v. S. S. Kresge            Civil Action
    Company                                                  No. C69 573
    Frank J. Kaehni & Marie Kaehni v. F. W. Woolworth         Civil Action
    Company                                                  No. C69 574

WEIGEL, Judge (concurring).

In contrast to the Butterfield Patent Litigation, in which I would have denied transfer, ___ F.Supp. ___ (JPML, February 2, 1970) (dissenting opinion), there is here but a single device which is alleged to infringe the patent and the liability of all the defendants turns on the determination as to that device. Therefore, the important questions in this case are, in fact, common to all the parties and convenience, justice, and efficiency will be served by transfer under Section 1407.

NOTES

[*] Although Judge Robson did not attend the hearing he has, with the consent of all parties, participated in this decision.

[1] A written consent executed by Chief Judge Roszel C. Thomsen has been filed with the Clerk of the Panel.