AC Nielsen Company v. Hoffman

• Decision Date: 07 October 1959
• Docket Number: No. 12606.,12606.
• Citation: 270 F.2d 693
• Parties: A. C. NIELSEN COMPANY, Petitioner, v. Honorable Julius J. HOFFMAN, United States District Judge, Respondent.
• Court: U.S. Court of Appeals — Seventh Circuit

270 F.2d 693 (1959)

A. C. NIELSEN COMPANY, Petitioner, v. Honorable Julius J. HOFFMAN, United States District Judge, Respondent.

No. 12606.

United States Court of Appeals Seventh Circuit.

October 7, 1959.

M. Hudson Rathburn, Walther E. Wyss, Mason, Kolehmainen, Rathburn & Wyss, and Clemens Hufmann, Chicago, Ill., for petitioner.

Alfred B. Teton, Chicago, Ill., for respondent.

Before DUFFY, SCHNACKENBERG and PARKINSON, Circuit Judges.

DUFFY, Circuit Judge.

This is a petition for a writ of mandamus. The petitioner asks this Court to direct the Honorable Julius J. Hoffman, United States District Judge, to vacate and set aside an order of transfer entered by him on March 26, 1959 in a patent infringement case pending in the District Court for the Northern District of Illinois, Eastern Division.

On November 3, 1958, petitioner, as plaintiff, filed its complaint in the District Court for the Northern District of Illinois, Eastern Division, against American Research Bureau, Inc. charging infringement by defendant in the Northern District of Illinois of two patents owned by plaintiff. On January 9, 1959, defendant filed a motion entitled: "Motion to Dismiss and for Change of Venue" the latter part of the motion alleging the cause should be transferred to the Southern District of New York for the convenience of the parties and witnesses and in the interest of justice. Supporting affidavits were filed. On January 26, 1959, plaintiff filed an amended complaint alleging infringement of the patents described in the original complaint, and likewise two additional patents owned by plaintiff. Defendant's original motions to dismiss and for change of venue were permitted to stand against the amended complaint.

Defendant in the suit out of which this proceeding arose is a Delaware corporation. Its principal place of business is Beltsville, Maryland, which is 225 miles distant from New York City. It maintains a large office in New York City. The records of defendant are maintained in either Beltsville or New York City. Defendant claims that all officers and employees who have personal knowledge of defendant's system reside within 100 miles of the city of New York.

Defendant maintains and operates a substantially instantaneous electronic television audience sampling system. This system provides information as to the tuning conditions of sample television receivers in seven cities. One of these cities is Chicago. The central control station of the system is in New York City.

Although no answer was filed, and discovery proceedings had not developed so that plaintiff could say which of the 65 claims would be relied on in the infringement suit, defendant asserted it would raise the defense of invalidity on the grounds: 1) patentees were not the first inventors; 2) prior public use in New York City; 3) lack of novelty; 4) inoperativeness and 5) unpatentability over prior art and publications. Defendant also claimed non-infringement.

Plaintiff alleged it was an Illinois corporation with principal place of business in Chicago; that the six inventors of the various patents in suit reside in the Northern District of Illinois; that if transferred, disposition of the case would be delayed due to the congested state of the calendar in the Southern District of New York; that plaintiff's rights are violated in the Northern District of Illinois by the continuous commercial operation of defendant's Arbitron System; that it exercised its venue privilege in good faith.

On March 26, 1959, Judge Hoffman granted defendant's motion to transfer under Title 28 U.S.C. § 1404(a), and issued an order accordingly, concluding that in view of this action he did not need to rule on the venue question. He delivered a lengthy oral opinion from the bench. On the same day, and upon request of plaintiff, an order was entered staying the transfer of the action to and including April 6, 1959.

On April 3, 1959, plaintiff served on defendant its petition for reconsideration, supported by affidavits from Rahmel, an Executive Vice President of plaintiff, and of Attorney Walther Wyss. This petition urged error by the Court in its original decision and raised additional factors. Plaintiff claimed these factors were only pertinent because the District Court had accepted, at face value, affidavits presented by defendant which plaintiff characterized as being purely speculative. Plaintiff's petition included the identification of numerous Chicago-area witnesses if defendant eventually attempted to prove the so-called speculative defenses which it had suggested.

The matter came before Judge Hoffman on April 6, 1959. He refused to read or otherwise consider the petition, affidavits or brief filed by plaintiff. He stated: "I approach it as a matter to which I gave careful consideration on the papers, every paper I had before me, the briefs and the affidavits of the defendant and plaintiff, and I think I will deny this petition." The Judge's attention was then invited to the fact that new points had been raised in the petition. He stated he was not going to re-try motions and then said: "I would say if you want to argue them out with counsel out of my presence and convince him that I was mistaken, and obviate the possible defense of a mandamus proceeding which I suppose you will institute if I deny your petition as I propose to do, * * *".

The Court stated that he was sure that the attorney for defendant, who is a very able and resourceful lawyer, wouldn't want to put his client to the useless defense of a petition for mandamus.

The Attorney for plaintiff then asked for a stay for an additional ten days so that he could file a petition for mandamus. The Court refused to grant the stay. The Attorney for plaintiff explained that some court decisions indicated that if the transfer order issues and the record is filed in the other court, the first court loses jurisdiction as well as the Court of Appeals in that Circuit. Plaintiff's counsel stated that was the only reason he wanted the order for a further stay. The Judge replied: "We dispose of litigation here" and again announced that he denied...