Citations
- 144 F. Supp. 298
Full opinion text
BOOTLE, District Judge.
The plaintiff, Pharma-Craft Corporation, by assignment from W. Kedzie Teller, patentee, is the owner of United States Patent No. 2,732,327, issued January 24, 1956, containing claims to an anti-perspirant deodorant soap gel stick.
This action was filed in this Court on January 25, 1956, the day after the patent was issued. It names as defendants F. W. Woolworth Company, a New York Corporation with principal offices in New York, and Associated Products, Inc., an Illinois Corporation with principal offices in New York, and alleges an infringement of said patent in that Woolworth is selling within the jurisdiction of this Court anti-perspirant sticks and particularly sticks known as “5-Day Stick Deodorant” and in that Associated Products is selling anti-perspirant sticks which are an infringement of the patent to defendant Woolworth for sale in the City of Macon, Georgia. No service has been, or can be, had on Associated Products, Inc. in this district.
Immediately after this action was filed, and on January 27, 1956, plaintiff's counsel applied for, and obtained, an order permitting plaintiff to serve notice for taking depositions under Rule 26(a), Federal Rules of Civil Procedure, 28 U.S. C.A., within twenty days after the commencement of the action, the witnesses named being: J. W. Largen, Macon, Georgia, Manager of Woolworth; George G. Kolar, Gustave Kolar, Joseph Serhant, 7475 Rogers Avenue, Chicago, Illinois, and Morris Levinson, Bernard Gould, Frederick J. Buwen and Matthew C. Baranowski, 445 Park Avenue, New York City, New York.
By agreement of counsel, time for Woolworth to answer or otherwise move with respect to this complaint was extended to, arid including, March 25, 1956. On March 24, 1956, Woolworth filed its motion to transfer this action under 28 U.S.C.A. § 1404(a) to the United States District Court for the Northern District of Illinois, Eastern Division, and also its motion for stay of proceedings in this court, including the taking of depositions, pending a decision on the motion to transfer. The motion to transfer was set for hearing on April 10, 1956 and the motion to stay was granted so that the plaintiff has not yet been at liberty to proceed with the taking of depositions.
On March 26, 1956, Woolworth filed its answer admitting the issuance of the patent; denying that said letters patent were duly and regularly issued; denying that it or Associated Products are infringing said patent; admitting that it is selling a “5-Day Stick Deodorant” in Macon, Georgia; denying that Associated Products is selling to it products which are an infringement of the patent and setting up other defenses including an assertion that the claims of the patent are indefinite, vague and include inoperative materials and proportions; that no invention was required to devise and perfect the alleged improvements in view of the state of the art prior to said alleged invention; that the subject matter of the patent was obvious at the time the alleged invention was made to any person having ordinary skill in the art to which such subject matter pertains and that the alleged improvements were invented, known and used by others before the alleged invention and discovery thereof by Teller and were patented and/or described in printed publications before Teller’s alleged invention listing three patents and three articles.
Also, on March 26, 1956, plaintiff applied for, and obtained permission to file a supplemental complaint alleging that since the filing of the original complaint Woolworth had infringed the patent within the jurisdiction of this Court and elsewhere by selling infringing articles other than “5-Day Stick Deodorant”. Promptly thereafter and, on March 31, 1956, Woolworth filed its motion to set aside the order of March 26, 1956 allowing the filing of the supplemental complaint, which motion, together with the motion to transfer, came on for hearing April 12, 1956. Thereafter and, on April 23, 1956, an order was entered denying the motion to disallow the filing of the supplemental complaint and reciting that the filing of the supplemental complaint should not affect the motion to transfer and relieving Woolworth from the necessity of filing defensive pleadings to the supplemental complaint until further order of the Court. ■
Both parties have filed numerous affidavits, briefs and reply briefs with respect to whether or not this case should now be transferred to the Illinois Court. A succinct statement of these contentions, as they were presented, follows:
Woolworth points out in its motion and in affidavits by Kenneth W. Greenawalt, New York counsel for Woolworth, Morris L. Levinson, of New York City, President of Associated Products, Inc. and Benjamin B. Schneider, Chicago counsel for Associated Products, Inc., that, on January 26,1956, the day after this complaint was filed, this plaintiff sued in the Northern District of Illinois, Eastern Division, at Chicago, Associated Products, Inc. (the defendant named but which cannot be served in this suit), Kolar Laboratories, Inc., and 5-Day Laboratories, Inc., charging an infringement of the Teller patent by reason of the manufacture and sale by them of the same product alleged to be the infringing product in this case; that Kolar Laboratories, Inc. is the manufacturer of the alleged infringing product which is distributed by Associated Products and sold by Woolworth; that in this case only the retailer is before the Court, whereas in the Illinois ease there are before the Court the manufacturer and the distributor and that while Woolworth is not named in the Illinois suit it is as amenable to suit in that Court and is willing to accept service in that case; that plaintiff, before being stayed by order of this Court, had notice for taking the depositions of individuals connected with Woolworth, Associated Products and Kolar Laboratories, Inc.; that persons connected with Kolar Laboratories, Inc., are the only persons having full knowledge of the development, composition and manufacture of the alleged infringing product and are located in Chicago and its suburbs; that the patentee, Teller, resides in a suburb of Chicago, and that plaintiff’s principal counsel and also counsel representing Associated Products and Kolar Laboratories have offices in Chicago.
Then plaintiff says, through an affidavit of its Chicago counsel, Charles J. Merriam, that this case, if transferred to Illinois, could not be tried within one and one-half years; that there is no showing that any necessary witness in this case lives in the Chicago area; that the witnesses upon whom plaintiff intends to call are not in the Chicago area, but are located closer to Macon than to Chicago; that this case is not limited to 5-Day Deodorant Sticks, but that Woolworth has been selling other infringing sticks including specifically Stopette and Odo-Ro-No; that the anti-perspirant stick, the subject matter of this patent, has become an extremely important cosmetic through the efforts of the plaintiff (in one of plaintiff’s briefs it says that the sub1 ject matter of the patent is relatively simple and describes it as follows: "Sodium Zirconium lactate, an anti-perspirant was patented for use in a cream substance. The trade recognized that a soap gel stick is much more saleable and more pleasant to use than a cream. Many suppliers have been selling a soap gel stick with deodorant elements, but without anything to deter perspiration. Mr. Teller discovered that this particular perspiration deterrent does not cause the soap gel stick to melt or disintegrate as had been the case with other perspiration inhibitors. This was new, and this he patented. It is that simple.”); that it began making the sodium zirconium lactate stick about a year ago and since then has sold several million of such sticks; that by the time the patent was issued two infringing articles were on the market, one being the 5-Day Stick and the other a stick marketed by the Coty company ; that a suit against the Coty sticks is pending in Atlanta, Georgia and cannot be removed; that after the commencement ,of this suit additional infringing articles have come on the market including 'Stopette and Odo-Ro-No; that plaintiff expended $740,127.08 in Í955 in advertising its soap gel stick and has an advertising budget of $1,199,920.-20 for 1956 for the stick; that Woolworth is taking advantage of the market plaintiff has created and using confusing advertising and that. Odo-Ro-No is being promoted by price-cutting -tactics in that three free sticks are being given with each twelve purchased; that for all of these reasons it is of the utmost importance to plaintiff that trial be had promptly and not delayed for one and one-half years; that the motion and original set of affidavits fail to show that Chicago would be more convenient to Woolworth than Macon; that Woolworth’s main offices are in New York; that Woolworth does not have counsel in Chicago so far as the record shows; that Mr. Schneider, so far as this case-is concerned,’ represents only Associated Products and certain officers of Kolar Laboratories, who are not sued; that while the convenience of Associated Products is not material, it not being amenable to this suit, nevertheless, it has no office or place of business in Chicago; that Odo-Ro-No, sold by the defendant, is made by the North-am Warren Corporation, a New York Corporation having .principal offices" in Connecticut and not licensed to do. business in Illinois; that affiant, Mr. Merriairij believes its product is made somewhere in the east; that Stopette, sold, by the defendant, is distributed by an Illinois corporation, Jules Montenier, Inc., but affiant is advised that the product is not made in Illinois and that the company has just been purchased by Helene Curtis, Inc.; that plaintiff’s witnesses will be Mr. Largen, manager of Woolworth’s store in Macon, if this item is not stipulated, Dr. Gordon Ford, a Professor at Mercer University, Macon, Georgia, to testify as to the chemistry involved, a witness from Atlanta to testify to the purchase of the Odo-Ro-No stick from defendant in Atlanta, unless this is stipulated, Mr. John T. McPhail, of Chattanooga, Tennessee, to prove the purchase of the Stopette stick from Woolworth’s store there unless that be stipulated, Dr. Maison G. de Navarre, of Detroit, Michigan, plaintiff’s expert (plaintiff says later he is not available), and Mr. Grover Dunn, of Atlanta, Georgia, to testify to the analysis of the infringing sticks, unless that’is stipulated; that plaintiff estimates its part of the case will take less than one day; that Woolworth’s motion and original set of affidavits fail to identify a single witness who will appear in the case; that while plaintiff had served notice to take depositions in Chicago; these were for discovery purposes and plaintiff has no reason to believe that the depositions will be necessary in the trial; that plaintiff’s taking of depositions was postponed at the request of some of the interested parties and then that.no notice was given to affiant, Mr. Merriam, of defendant’s motion to stay the depositions and that plaintiff feels and says that this motion to transfer is solely for the purpose of delay.
,. Then come additional affidavits in support of the motion, one from Mr. Levinson, President of Associated Products, Inc., two from R. Howard. Goldsmith, a member of the Chicago -Law Firm of Schneider & Dressier, one from Mr. Charles J. Bloch, Macon attorney for Woolworth; and one from Mr. Kenneth W. Greenawal-t, New York counsel - for Woolworth, that Teller was not “the first .'to prepare a commercially acceptablp -antirperspirant or deodorant stick”; tha.t •for many years there have been a great number of commercially successful deodorant sticks; that a-Sutton stick'has'a sodium stearate base and is sold and advertised as stopping perspiration' odors; 'that similarly successful sticks are..the Dunhill and the Tussy; that a Stopette stick form of anti-perspirant which -did not contain an alcohol-sodium stearate soap-gel, nor ’ sodium. zirconium.- lactate, was marketed by Jules Montenier,- Incl, of Chicago, Illinois, prior to Teller’s álleg’ed development; that Kolmar Laboratories of Milwaukee, Wisconsin (not to be confused with Kolar Laboratories of Chicago) began shipping the Stopette stick the latter part of December, 1955, prior to the issuance of the Teller patent; that Kolmar developed a formula for the alcohol-sodium stearate soap stick containing sodium zirconium lactate independently and without knowledge of any work by Teller; that the Odo-Ro-No stick was in manufacture in December, 1955, although not on the market until February, 1956, after the issuance of the Teller patent; that Associated Products began to advertise its deodorant stick in November, 1955, and will spend in excess of $1,000,000 in 1956 advertising “its deodorants” ; that while Associated Products has no regular business office in Chicago, it is an Illinois corporation and its President, Mr. Levinson, spends considerable time there as a Director of two corporations attending at their offices several days at a time, several times each month; that he has never been to Macon, Georgia, and has no reason for going there; that the Chicago case will be tried by Judge Campbell, whose Clerk informed affiant, R. Howard Goldsmith, that the Chicago case might reach pre-trial conference by September, 1956, and, “if so, said case would then be set for trial in the late fall or winter of this year. It might be reached for trial in the fall or winter, but more likely sometime after the first of this coming year”; that on information and belief it is Goldsmith’s understanding that the testimony of the following witnesses will be sought as necessary witnesses on behalf of Kolar Laboratories, Inc., and Associated Products, Inc., in the Chicago case:
1. George G. Kolar, of Chicago, connected with Kolar Laboratories, Inc., having full and direct knowledge of the development, composition and manufacture of the 5-Day stick anti-perspirant alleged to infringe the patent in suit and whose testimony will center about Kolar Laboratories’ work with sodium zirconium lactate in alcohol-sodium stearate soap gels to make stick deodorants to show that no patentable invention was involved in making such a product.
2. W. Kedzie Teller, of Chicago, to show the circumstances under which the alleged invention of his patent in suit was made to show that no patentable invention was involved.
3. One or more officers and employees of Kolmar Laboratories, Inc., Milwaukee, Wisconsin, who reside in or about Milwaukee, Milwaukee being about 100 miles from Chicago, whose testimony will center about showing that, in their independent work with sodium zirconium lactate in alcohol-sodium stearate soap gel to make stick deodorants, no patentably inventive act was involved in making such a product.
4. One or more employees of National Lead Company, New York City, N. Y., whose testimony will center around its development of sodium zirconium lactate as an anti-perspirant agent for use in anti-perspirant products or compositions generally, .and its activities in promoting the sale of sodium zirconium lactate for such use, to show that no patentably inventive act was involved in using it in an alcohol-sodium stearate soap gel carrier.
5. An expert witness from the Chicago, Illinois or New York, N. Y. area, to deal with the chemistry involved and related matters;
that plaintiff’s product is manufactured in Batavia, Illinois, in the Northern District of Illinois, Eastern Division, 37 miles from Chicago; that one of the principal issues in this case is the validity of the Teller patent involving the question of whether the subject matter is new, involves patentable invention, and whether Mr. Teller was in fact the first inventor; that an examination and study of the history of anti-perspirants will be required in order for Woolworth to assert and defend its legal rights and that such examination and study will necessarily cover a period of years prior to the institution of this action and will involve an examination of various research workers including, but not limited to, officers and/or employees of Kolmar, of Milwaukee, Wisconsin, Kolar, of Chicago, Illinois, and National Lead, of New York; that Woolworth, being only a retailer, will necessarily turn to and rely upon its suppliers for oral and written evidence in defense of this action on the merits; that should the motion to transfer be granted, Woolworth will expect to engage patent counsel in Chicago, probably Schneider & Dressier, who are already familiar with this matter; that plaintiff is one of the suppliers of Woolworth which sells “Fresh Stick Deodorant”, and presumably plaintiff desires that Woolworth have the benefit of plaintiff’s advertising in the sale of plaintiff’s product; that Woolworth is not engaged in any price-cutting practices but sells the Odo-Ro-No stick at the fair trade retail price fixed by the manufacturer, 69