309 F. Supp. 161 | D. Del. | 1970
MEMORANDUM OPINION
The above cases pending in this Court between General Foods Corporation (“General Foods”) and Struthers Scientific and International Corporation (“Struthers”) raise the issues of validity and infringement of Struthers’ United States Patents Nos. 3,381,302, 3,404,007 and 3,449,129 and unfair competitive activities by both parties.
General Foods has moved to stay the above actions in so far as they relate to the '007 patent pending the conclusion of interference proceedings
Prior thereto, on June 18, 1968, General Foods filed a declaratory judgment action in this Court against Struthers alleging the invalidity of Struthers’ patent '302, dealing with a method for dewaxing coffee preparatory to freeze concentration of coffee extract. After the '007 patent issued, General Foods on October 22, 1968 moved to amend its complaint in Civil Action No. 3566 to add another count alleging the invalidity and noninfringement of the '007 patent. The amendment was allowed by order of
Extensive discovery has been taken in these cases by oral depositions, interrogatories and production with respect to all the patents-in-suit, including the '007 patent.
In urging this Court to stay the proceeding relating to the '007 patent, General Foods places principal reliance upon the well-reasoned opinion of Chief Judge Wright in Research Corporation v. Radio Corporation of America, 181 F.Supp. 709 (D.C.Del.1960). Judge Wright was undoubtedly correct in granting the stay in the RCA case upon the facts and circumstances there present. In RCA, the interference was first declared on September 25, 1956. More than three years later, on November 25, 1959, the infringement action was filed and promptly thereafter the defendant moved for a stay. Judge Wright found that the interference had long been pending, that it presumably had progressed substantially toward a conclusion, that a decision in the interference proceedings might “very well be crucial” with regard to the issues in the district court suit, and that the stay motion had been promptly filed. In those circumstances, Judge Wright was entirely justified in granting the stay. In relying upon these findings, however, Judge Wright made clear that:
“Different circumstances might warrant the invocation of policy considerations other than those indicated, compelling a different determination. No such case has been presented here.” 181 F.Supp. 709, 711.
Here those different circumstances are present and persuade the Court to deny the stay.
First, unlike the RCA case, the interferences here were declared long after Struthers instituted the Texas action on the '007 patent and long after General Foods was permitted to amend its complaint in the Delaware action to incorporate the claims relating to patent '007, and after extensive and expensive discovery proceedings have been conducted. Rather than reduce economic hardship, the stay would tend to intensify such hardship.
Second, the motion for a stay here relates only to a portion of the pending litigation rather than to the full range of the dispute between the parties as in RCA. The factual background relating to the other two patents and the several claims of unfair competition are so intertwined that a stay of only a part of the litigation would not materially reduce the discovery and expenses of the other phases of the litigation not affected by the stay.
Third, the interference proceedings will not dispose of all the issues in the pending litigation so that two tribunals would be involved at the same time with related matters in any event.
For these reasons, the Court finds that the facts and circumstances of this litigation are so different from the RCA case that General Foods’ motion for a stay should be denied.
An order in accordance with this opinion has been entered.
. Interferences Nos. 37,038 and 37,039.
. It is represented that over 13,000 pages of oral depositions have been taken, some 20,000 documents produced, and several sets of extensive interrogatories answered by both sides.