Opinion
No. 74.
August 23, 1971.
Before ALFRED P. MURRAH, Chairman, and JOHN MINOR WISDOM, EDWARD WEINFELD, EDWIN A. ROBSON, WILLIAM H. BECKER, JOSEPH S. LORD, IIIfn_, and STANLEY A. WEIGEL, Judges of the Panel.
Although Judge Wisdom and Judge Lord were not present at the hearing they have, with the consent of all parties, participated in this decision.
OPINION AND ORDER
The common plaintiffs in ten patent infringement suits in seven districts have moved the Panel for transfer under Section 1407 to the Northern District of Illinois. Each of the actions is for infringement of the Suess patent, which plaintiffs assert covers the basic oxygen process of refining steel. Although the plaintiffs urge that common questions of fact are raised in these cases by the issue of patent validity and by the anti-trust counterclaims asserted by several defendants, the most important pretrial issue is collateral estoppel.
Plaintiffs are Kaiser Industries Corp., Vereinigte Oesterreichische Eisen-Und Stahlwerke Aktiengesellschaft (VOEST) and Brassert Oxygen Technik (BOT).
In a prior action brought by these plaintiffs against another alleged infringer, the Suess patent was held invalid. Kaiser Co. v. McLouth Steel Corp., 257 F. Supp. 372 (E.D.Mich. 1966), aff'd, 400 F.2d 36 (6th Cir. 1968), cert. denied, 393 U.S. 1119, 89 S.Ct. 992, 22 L.Ed.2d 124 (1969). Under the recent holding in Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), a preliminary question in each case will be whether that prior adjudication collaterally estops the plaintiffs from suing these defendants on the same patent.
The collateral estoppel issue has also been raised in two additional infringement actions, not before the Panel, which have been tried in the Western District of Pennsylvania before Judge Rosenberg and are awaiting decision on the questions of collateral estoppel as well as validity and infringement. Those defendants which oppose transfer argue that no definitive ruling can be made by a transferee court until Judge Rosenberg has ruled in his cases. We think a better solution is to transfer all cases presently before the Panel to the Western District of Pennsylvania for assignment to Judge Rosenberg. The plaintiffs have suggested that they introduced critical evidence in the Pennsylvania cases which was not available in McLouth and which avoids the collateral estoppel defense. Presumably they intend to meet the defense in a similar manner in the remaining cases.
Henry J. Kaiser v. Jones Laughlin Steel Corp., W.D. of Pa., Civil Action No. 61-551; Henry J. Kaiser v. Jones Laughlin Steel Corp., W.D. of Pa., Civil Action No. 62-272.
Judge Rosenberg is well acquainted with the facts of this litigation and is in a position to deal with this issue expeditiously. Judge Rosenberg's familiarity with the facts will also assist him in controlling any discovery in the common areas of patent validity and antitrust counterclaims. In fact, it may even be possible for him to conclusively determine the patent validity and collateral estoppel issues in all of these actions.
We have concluded that these cases satisfy the criteria of Section 1407 and that only by transfer to the Western District of Pennsylvania can duplicative proceedings and the risk of inconsistent decisions be eliminated. Although the plaintiffs have urged transfer to the Northern District of Illinois and the defendants favor the Eastern District of Michigan (where McLouth was decided), both sides agree that the Western District of Pennsylvania is an acceptable pretrial forum.
It is therefore ordered that all actions on the attached Schedule A be, and the same hereby are, transferred to the Western District of Pennsylvania and assigned to the Honorable Louis Rosenberg for coordinated or consolidated pretrial proceedings under Section 1407.
SCHEDULE A Northern District of Illinois
Kaiser Industries Corp., et al. v. United States Civil Action Steel Corp. No. 71-812 Kaiser Industries Corp., et al. v. International Civil Action Harvester Co. No. 71-816
Northern District of Indiana
Kaiser Industries Corp., et al. v. Inland Steel Co. Civil Action No. 71H92(2) Kaiser Industries Corp., et al. v. Bethlehem Steel Civil Action Corp. No. 71-91(2)
Southern District of Illinois
Kaiser Industries Corp., et al. v. Granite City Civil Action Steel Co. No. 4788
District of Colorado
Kaiser Industries Corp., et al. v. CFI Steel Civil Action Corp. No. 67C311
Northern District of Ohio
Kaiser Industries Corp., et al. v. Republic Steel Civil Action Corp. No. C-71-552
Northern District of West Virginia
Kaiser Industries Corp., et al. v. National Steel Civil Action Corp. No. 68-29-W
District of Delaware
Kaiser Industries Corp., et al. v. Ford Motor Civil Action Company No. 71-4095 Kaiser Industries Corp., et al. v. Wheeling-Pitts- Civil Action burgh Steel Corp. No. 71-4094