Opinion
No. 182.
November 26, 1974.
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.
Judge Lord was unable to attend the Panel hearing and, therefore, took no part in the consideration or decision of this matter.
OPINION AND ORDER
The Triax Company is the owner of four patents, which are intricate elements of an electrical control system utilized in warehouse equipment to automatically discharge and retrieve various storage items. It has commenced three patent infringement actions against three separate defendants: one in the Northern District of Illinois and two in the Northern District of Ohio. Plaintiff alleges that each defendant has infringed and is continuing to infringe at least two of its four patents by manufacturing, utilizing and/or selling automatic warehousing equipment that embodies these patents.
Triax moves the Panel for an order transferring the Illinois action to the Northern District of Ohio for coordinated or consolidated pretrial proceedings with the two similar actions currently pending there. Transfer is opposed by defendants TRW, Inc. and Conco, Inc., but not by defendant Otis Elevator Co. We find that these actions involve common questions of fact and that their transfer to the Northern District of Ohio, pursuant to 28 U.S.C. § 1407, will best serve the convenience of the parties and witnesses and promote the just and efficient conduct of the litigation.
Plaintiff contends that common factual questions exist because the validity of at least two of the four patents is involved in all of the actions. It urges that transfer under Section 1407 would prevent the danger of inconsistent pre-trial rulings and eliminate duplicative discovery on the common issues.
Defendant Hartman Metal Fabricators, Inc. argues that there are no common questions of fact in this litigation because the infringement issues are unique as to each defendant. While defendant Conco generally agrees with defendant Hartman's contention, Conco further avers that its warehousing system controls have been developed at considerable expense and involve proprietary information that should not be available to its competitors via coordinated or consolidated discovery proceedings.
Pursuant to a contract between Hartman Metal Fabricators, Inc. and TRW, Inc., Hartman is now obligated to defend TRW in its action and has submitted a brief in opposition to transfer.
An examination of the pleadings in this litigation reveals that, despite the unique infringement issues, significant common factual questions are raised regarding the validity of these patents. If pretrial proceedings in each action are neither coordinated nor consolidated, inconsistent pretrial rulings and unnecessary duplication of discovery might result. Moreover, defendant Conco's concern that its proprietary information about automatic warehouse system controls would be divulged during the course of coordinated or consolidated pretrial proceedings is unwarranted. Defendant Conco can preserve the confidentiality of its trade secrets by seeking an appropriate protective order from the transferee court.
Regarding the logical transferee court, defendant Conco opposes transfer of its action to Ohio because its witnesses and documents pertaining to the allegedly infringed patents are located in Illinois. Nonetheless, we agree with plaintiff Triax that the most appropriate transferee forum is the Northern District of Ohio, particularly since two of the three actions in this litigation are pending there and because discovery in both actions is proceeding before Chief Judge Frank Battisti. Furthermore, plaintiff Triax is incorporated and doing business in Ohio and most of its relevant witnesses and documents concerning the common factual issues of validity are located in that district. And it is of little consequence that defendant Conco's records and witnesses are located in Illinois because discovery concerning Conco presumably will occur in Illinois regardless of transfer. While the same point can be asserted against plaintiff Triax, it is clear that additional factors favor transfer of the Illinois action to Ohio.
It is therefore ordered that the action entitled The Triax Company v. Conco, Inc., N.D.Illinois, Civil Action No. 74-C-2157, be, and the same hereby is, transferred to the Northern District of Ohio and, with the consent of that court, assigned to the Honorable Frank J. Battisti for coordinated or consolidated pre-trial proceedings pursuant to 28 U.S.C. § 1407 with the actions listed on Schedule A that are pending in that district.
SCHEDULE A ----------
Northern District of Ohio -------------------------
The Triax Company v. TRW, Inc. Civil Action No. C 73-820 The Triax Company v. Otis Civil Action Elevator No. C 74-528
Northern District of Illinois -----------------------------
The Triax Company v. Conco, Inc. Civil Action No. 74-C-2157