467 F.2d 242 (9th Cir. 1972), 72-1643, Filtrol Corp. v. Kelleher

Docket Nº:72-1643.
Citation:467 F.2d 242, 175 U.S.P.Q. 400
Party Name:FILTROL CORPORATION and Texaco, Inc., Petitioners, v. The Honorable Robert J. KELLEHER, United States District Judge, Respondent.
Case Date:September 21, 1972
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

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467 F.2d 242 (9th Cir. 1972)

175 U.S.P.Q. 400

FILTROL CORPORATION and Texaco, Inc., Petitioners,


The Honorable Robert J. KELLEHER, United States District Judge, Respondent.

No. 72-1643.

United States Court of Appeals, Ninth Circuit.

Sept. 21, 1972

Certiorari Denied Jan. 8, 1973.

See 93 S.Ct. 914.

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William K. Kerr (argued), of Fish & Neave, New York City, John G. Flett, of Thelen, Marrin, Johnson & Bridges, Los Angeles, Cal., Robert Pringle, San Francisco, Cal., for petitioners.

George B. Finnegan, Jr. (argued), John A. Diaz, George P. Hoare, Jr., J. Robert Dailey, of Morgan, Finnegan, Durham & Pine, New York City, Orville A. Armstrong, of Armstrong & Lloyd, Los Angeles, Cal., for real party in interest.

Before DUNIWAY, GOODWIN and WALLACE, Circuit Judges.

DUNIWAY, Circuit Judge:

Filtrol Corporation and Texaco, Inc., defendants in a patent infringement action brought by Mobil Oil Corporation in the district court for the Central District of California, petition this court for a writ of mandamus directing the district judge (1) to vacate his order denying a stay of the proceedings pending the outcome of similar litigation in the district court for the District of Connecticut and granting Mobil's motion for a separate trial limited solely to the issue of patent infringement and (2) to enter an order staying proceedings in the California action until a decision has been rendered on the merits in the Connecticut case. Because we find the judge's order to have been a lawful exercise of his considerable discretion in these matters, we deny the petition.


Mobil Oil Corporation filed two separate actions (which were later consolidated) in the District Court for the Central District of California in 1964 and 1966, alleging infringement by Filtrol and Texaco of three patents held by Mobil. Mobil filed a similar suit, involving the same patents, against W. R. Grace & Co. in the district court in Texas; that action was later transferred to the District of Connecticut, where it was tried beginning on November 16, 1971, as to two of the three patents (the third patent having been withdrawn with prejudice from the suit). No decision has yet been rendered by the district court in Connecticut.

On February 11, 1972, Filtrol and Texaco asked the district court in the California action to stay all proceedings pending the outcome of the Connecticut action, arguing that a decision there that Mobil's patents are invalid would be binding in the California case under the

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doctrine of Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 1971, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788, and that thus the necessity of any trial in the California case might be eliminated. The court denied the stay and instead ordered an immediate trial limited to the issue of infringement, awaiting the Connecticut court's determination of the validity issue. Petitioners asked the judge to certify an appeal of his order under 28 U.S.C. § 1292(b), but that request was denied. This petition for a writ of mandamus followed.


Although writs of mandamus are among "the most potent weapons in the judicial arsenal" and therefore should be sparingly used only in extraordinary circumstances amounting to a "judicial usurpation of power," Will v. United States, 1967, 389 U.S. 90, 95, 107, 88 S.Ct. 269, 19 L.Ed.2d 305, the writ is available to correct a district judge's abuse of discretion. La Buy v. Howes Leather Co., 1957, 352 U.S. 249, 256-257, 77 S.Ct. 309, 1 L.Ed.2d 290; CMAX, Inc. v. Hall, 9 Cir., 1962, 300 F.2d 265, 268; Chronicle Publishing Co. v. National Broadcasting Co., 9 Cir., 1961, 294 F.2d 744, 746-747. Thus the only question we need decide is whether the judge abused his discretion.

1. Denial of the stay.

The district court has the power to issue the stay requested by petitioners. As this court has held,

"A district court has inherent power to control the disposition of the causes on its docket in a manner which will promote economy of time and effort for itself, for counsel, and for litigants. The exertion of this power calls for the exercise of a sound discretion. Where it is proposed that a pending proceeding be stayed, the competing interests which will be affected by the granting or refusal to grant a stay must be weighed. Among these competing interests are the possible damage which may result from the granting of a stay, the hardship or inequity which a party may suffer in being required to go forward, and the orderly course of justice measured in terms of the simplifying or complicating of issues, proof, and questions of law which could be expected to result from a stay. See Landis v. North American Co., 1936, 299 U.S. 248, 254-255, 57 S.Ct. 163, 81 L.Ed. 153." CMAX, Inc. v. Hall, supra, 300 F.2d at 268.

The propriety of a grant or denial of such a stay may be tested in the Court of Appeals by way of mandamus. Id. ACF Industries, Inc. v. Guinn, 5 Cir., 1967, 384 F.2d 15, 18.

Trial courts in patent infringement actions have often stayed proceedings in those actions until a pending administrative interference proceeding resolves the priority of various claimants to the invention in question. Childers Foods, Inc. v. Rockingham Poultry Marketing Co-op., W.D.Va., 1962, 203 F.Supp. 794; Research Corp. v. Radio Corporation of America, D.Del. 1960, 181 F.Supp. 709. If the decision in the interference proceeding were to go against the party claiming the patent in the court action, then there would be no necessity for a trial, since that party would no longer be the holder of an arguably valid patent. An erroneous refusal to grant a stay pending the outcome of an interference proceeding, which amounts to a clear abuse of the district judge's discretion, will be corrected by the Court of Appeals through a writ of mandamus. ACF Industries, Inc. v....

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