Chas. Pfizer & Co. v. Olin Mathieson Chemical Corp.

• Decision Date: 17 March 1955
• Docket Number: 5083,5084.,Civ. A. No. 5082
• Citation: 131 F. Supp. 21
• Parties: CHAS. PFIZER & CO., Inc., v. OLIN MATHIESON CHEMICAL CORPORATION. CHAS. PFIZER & CO., Inc., v. The UPJOHN COMPANY. CHAS. PFIZER & CO., Inc., v. BRISTOL LABORATORIES, Inc.
• Court: U.S. District Court — Northern District of Georgia

131 F. Supp. 21

CHAS. PFIZER & CO., Inc., v. OLIN MATHIESON CHEMICAL CORPORATION.

CHAS. PFIZER & CO., Inc., v. The UPJOHN COMPANY.

CHAS. PFIZER & CO., Inc., v. BRISTOL LABORATORIES, Inc.

Civ. A. Nos. 5082, 5083, 5084.

United States District Court N. D. Georgia, Atlanta Division.

March 17, 1955.

Ernest P. Rogers, Smith, Kilpatrick, Cody, Rogers & McClatchey, Atlanta, Ga., Arthur G. Connolly, Connolly, Cooch & Bove, Wilmington, Del., for plaintiff.

Robert B. Troutman, Griffin B. Bell, Spalding, Sibley, Troutman & Kelley, Atlanta, Ga., Charles H. Walker, Henry J. Zafian, Fish, Richardson & Neave, New York City, Charles J. Merriam, Chicago, Ill., for defendants.

SLOAN, District Judge.

The plaintiff, Pfizer (by assignment from Lloyd H. Conover, patentee), is the owner of United States Patent No. 2,699,054 issued January 11, 1955, which contains claims to tetracycline, its salts, and antibiotic compositions containing the products.

These three actions were filed on the day the patent issued, and they charge the defendants with having infringed the patent. They charge the defendants with having manufactured and sold tetracycline and with threatening to continue to do so in violation of plaintiff's rights under its patent.

Plaintiff requests, inter alia, an injunction against future infringement of its patent and an award of damages for defendants' violation of its patent rights.

The defendant, Bristol Laboratories, Inc., a New York corporation, is the only one of the defendants that manufactures tetracycline and this is done at its plant at Syracuse, New York.

The defendant, Olin Mathieson Corporation is a Virginia corporation, while the defendant, The Upjohn Company, is a Michigan corporation, and each of these defendants are qualified to do business in most of the states of the Union, including New York, and neither of these defendants manufacture tetracycline, but it is not disputed that they purchase it from Bristol Laboratories, Inc., package and sell it.

On January 25, 1955, each defendant filed a complaint against Pfizer in the United States District Court for the Southern District of New York seeking a declaratory judgment that no valid claims of the Pfizer patent has been or is being infringed by defendants.

The defendants without making answer, file motions to dismiss the complaints in this Court for lack of jurisdiction, or alternatively, to transfer or stay the cases here.

The motion to dismiss for lack of jurisdiction is on the ground that no cause of action based on the patent existed at the time the complaints were filed. This motion is predicated upon the proposition that in computing the time that the patent is to run (17 years), the day of its grant is not to be included and therefore that the patent was not in effect on the day it was issued and consequently not in effect at the time of the filing of the complaint.

If the motions to dismiss should be denied, each defendant then asks for an order pursuant to 28 U.S.C. § 1404 transferring the complaint against it, for the convenience of the parties and witnesses, and in the interest of justice, to the United States District Court for the Southern District of New York for consolidation with the pending actions there brought by defendants against plaintiff involving the same issues as those tendered by the complaints in the actions here pending.

If neither of the foregoing motions are granted, each defendant asks for an order staying these actions for the convenience of the parties and witnesses, and in the interest of justice, pending the adjudication of the declaratory judgment action in the United States District Court for the Southern District of New York.

In support of these motions defendants present an affidavit of Honorable Charles H. Walker to which affidavit is attached the following exhibits:

"A. Copy of Patent No. 2,699,054.

B. Patent Office file of Conover application.

C. Copy of telegram from the office of the Secretary of State of New York.

D. Map showing central location of New York with respect to the sources of proof.

E. Complaint filed by Bristol Laboratories, Inc., against Pfizer in the United States District Court for the Southern District of New York.

F. Notice of taking depositions.

G. Letter to Arthur B. Connolly."

This Court issued a show cause order requiring plaintiff to show cause in Atlanta, Georgia on March 14, 1955 why the motions should not be granted. Pending the motions the deposition of Lloyd H. Conover, the patentee in the patent here involved, was taken and is now of record in the cases.

In opposition to these motions in each case, the plaintiff files affidavits of Honorable Arthur B. Connolly, Honorable Paul S. Bolger and Honorable Ernest P. Rogers, and at the same time plaintiff files a motion for preliminary injunction enjoining the defendants from prosecuting the declaratory judgment action now pending in the United States District Court for the Southern District of New York.

The motions came on to be heard by this Court in Atlanta, Georgia on March 15, 1955, and after the filing of briefs and written arguments, oral arguments were heard and the motions are now before the Court for determination.

From the briefs and arguments (no answers having been filed), it appears that the principal issue in the cases is the validity of the patent, this issue involving the questions of whether the subject matter of the...