284 F. Supp. 682 | S.D.N.Y. | 1968
Two motions were made in each of these related actions. The four are considered together. Both actions seek judgments declaring that three patents owned by Columbia Broadcasting System, Inc. (hereafter CBS) which relate to color picture tubes for television receivers are invalid and not infringed by the products
Zenith and Rauland have severally moved to enjoin CBS from prosecuting its action against Lechmere or similar actions against any other dealers in television receivers which use the respective plaintiffs’ products.
CBS has moved to stay each of the instant actions pending determination of its action against Lechmere or, in the alternative, to transfer the instant actions to the United States District Court for Massachusetts where they “might have been brought.”
Zenith is a Delaware corporation with manufacturing facilities in Illinois. Rauland is an Illinois corporation having a place of business in that state. Neither, as far as appears, is authorized to do or does business in New York. CBS is a New York corporation having its principal place of business in the Southern District of New York. It is also authorized to do business in Massachusetts and does so at Boston.
It has long been the general rule in this circuit that in priority contests such as we have here, the first action filed should not be stayed unless special circumstances justify giving priority to the action started later. Two situations have been held to constitute such circumstances: one is where “shopping” alone accounts for the choice of forum for the first action; the second is where the first action is against a customer of an alleged infringer while the second involves the alleged infringer himself.
There are presently pending in the United States District Court for Massachusetts three actions by CBS against alleged infringers of the relevant patents, in addition to the Lechmere action, and all four actions have been assigned to Judge Caff rey of that court. The first was commenced on January 11, 1966, against Sylvania Electric Products, Inc. (hereafter Sylvania), a manufacturer of color picture tubes and, at least up to 1966, a supplier of Zenith.
Neither the instant plaintiffs nor the issues raised in their actions have any particular connection with New York. Indeed, as far as appears, the only relevant transactions which occurred here were certain letter and telephone communications by CBS to counsel for Zenith and Rauland in 1965 concerning the latter’s possible infringement of the patents in issue. Furthermore, Boston and New York are equally accessible from Chicago where Zenith and its patent counsel, who also represent Rauland, have their offices. Transfer of the cases to Boston, therefore, would not inconvenience the instant plaintiffs, whereas, as will appear, a denial of the transfer motions would inconvenience CBS. In view of all this, it is a fair inference that “forum shopping” played some part at least in the selection of this district as the forum for the instant actions.
It appears from unchallenged affidavits submitted by CBS that all of its documentary evidence concerning the relevant patents is now in Massachusetts either in the custody of Judge Caffrey or of Boston patent counsel for CBS. It also appears from those affidavits that many of these documents are “irreplaceable and their loss in transit would irreparably injure CBS.”
No injustice or inconvenience to Zenith or Rauland will result if the instant actions are transferred to the United States District Court for Massachusetts but substantial inconvenience to CBS will result if they are not so transferred. Moreover, transfer will avoid duplication of judicial time and effort and offer opportunity for speedier and more orderly resolution of, at least, the issue of the relevant patents’ validity.
The motion of CBS to transfer these actions to the United States District Court for Massachusetts is granted. This makes moot its alternative motion for a stay of these actions.
The plaintiffs’ motions are severally denied but with leave, if so advised, to move in the Massachusetts District Court
Settle order.
. The patents are U. S. Patents Nos. 2,690,518, 3,179,836 and 3,222,172. The first two relate to the structure of color picture tubes, the third relates to a process for manufacturing such tubes.
. 28 U.S.C. § 1391(b), (c). See Sweetheart Plastics, Inc. v. Illinois Tool Works, Inc., 267 F.Supp. 938, 940-941 (S.D.N.Y.1967).
. Mattel, Inc. v. Louis Marx & Co., 353 F.2d 421, 424 n. 4 (2d Cir. 1965), cert. denied, 384 U.S. 948, 86 S.Ct. 1475, 16 L.Ed.2d 546 (1966).
. Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 342 U.S. 180, 183, 72 S.Ct. 219, 96 L.Ed. 200 (1952).
. Affidavit of Milton R. Neaman, General Attorney for CBS, dated April 1,
. Neaman affidavit supra note 5, par. 4. See Sweetheart Plastics, Inc. v. Illinois Tool Works, Inc., supra note 2, 267 F.Supp. at 943.
. Affidavit of George W. Crowley, associate trial counsel for CBS, dated March 39, 1968, par. 7.