Clayton v. Warlick

• Decision Date: 09 April 1956
• Docket Number: No. 7148.,7148.
• Citation: 232 F.2d 699
• Parties: Benjamin CLAYTON, doing business under the fictitious name and style of Refining, Unincorporated, Petitioner, v. Honorable Wilson WARLICK, District Judge of the United States District Court for the Western District of North Carolina, Respondent.
• Court: U.S. Court of Appeals — Fourth Circuit

232 F.2d 699 (1956)

Benjamin CLAYTON, doing business under the fictitious name and style of Refining, Unincorporated, Petitioner, v.Honorable Wilson WARLICK, District Judge of the United States District Court for the Western District of North Carolina, Respondent.

No. 7148.

United States Court of Appeals Fourth Circuit.

Argued March 22, 1956.

Decided April 9, 1956.

Charles M. Thomas, Washington, D. C.(John M. Robinson, Charlotte, N. C., and Barron F. Black, Norfolk, Va., on the brief), for petitioner.

James B. Craighill, Charlotte, N. C., for respondent.

Before PARKER, Chief Judge, and SOPER and DOBIE, Circuit Judges.

PARKER, Chief Judge.

This is an application for a writ of mandamus or prohibition to restrain Honorable Wilson Warlick, District Judge for the Western District of North Carolina from entering an order in accordance with an opinion he has rendered, transferring a patent infringement suit from the Western District of North Carolina to the Northern District of Illinois.Plaintiff is a resident of Houston, Texas, and has no place of business in the Western District of North Carolina.The federal court of that district has jurisdiction of the cause under an allegation that the defendant is guilty of infringement and has an established place of business within the district.Defendant is incorporated under the laws of Illinois and has its principal place of business in the Northern District of that state, where its main offices, principal laboratories, main research staff and principal records are located.

The suit for infringement was originally instituted in the Eastern District of Virginia, but upon motion to dismiss or remove being made and, upon the judge's intimating that he would grant the motion, Clayton v. Swift & Co., 132 F.Supp. 154, plaintiff dismissed that suit and instituted one in the Western District of North Carolina.Defendant made a motion there under 28 U.S.C. § 1404(a) to remove the case to the Northern District of Illinois for the convenience of parties and witnesses and in the interest of justice.Affidavits were filed in support of and against the motion, and Judge Warlick filed a memorandum opinion finding the facts and stating that he would grant it.The pertinent facts are set forth in the memorandum as follows:

"It is evident that the trial of the case will be largely technical and will require the testimony of experts as witnesses who are technically trained and who supposedly know what they are talking about.The patent involves certain processes successful in refining vegetable matter.I am told that defendant has been paying royalties to the plaintiff over the whole of the period since the patent was granted to his predecessor in title.The trial will involve the extension of the life of the patent beyond its seventeen year period, and accordingly the proposed rights and the factors that such will likely cover will require a great amount of technical testimony, and obviously will involve many witnesses on both sides and will require much research and likely many tests.This undoubtedly will necessitate the use of the facilities which each side possesses in either the Chicago or the New York area.

* * * * *

"I am therefore of the opinion that to try this case in Charlotte would convenience no one.The witnesses for each side would have to come there.Records would likewise have to be brought along.Each one concerned would travel hundreds of miles and inconvenience after inconvenience would naturally come about.Charlotte, though a grand city, has nothing in common with this trial.Hence I conclude that a more convenient trial of the issues can be had and all parties and witnesses more nearly convenienced and the interest of justice better served, by transferring the cause to the United States District Court for the Northern District of Illinois, Eastern Division.This I consequently do.It is so ordered."

Plaintiff frankly admits that he desires to try his case in this Circuit because of our decision in Proctor & Gamble Mfg. Co. v. Refining, Inc., 4 Cir., 135 F.2d 900.He contends that a contrary view of the patent law controlling a vital aspect of the case is taken by the Court of Appeals of the 7th Circuit, as evidenced by the decision of that court in Weatherhead Co. v. Drillmaster Supply Co., 7 Cir., 227 F.2d 98; and, while admitting that it would be more convenient to the parties to try the case in Chicago, he contends that he has the right to choose the forum and that, in view of the alleged conflict in decision on the patent law between the circuits, it was an abuse of discretion on the part of the District Judge to order the case removed and thus deprive him of the benefit of trying the case in a circuit where the law has been decided in his favor.

As the suit might have been brought in the Northern District of Illinois, there can be no question as to the power of the court to order it removed to that district under 28 U.S.C. § 1404(a), which provides:

"For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought."

And it is well settled that an order entered under this statute is an interlocutory order from which no appeal lies.That question was before us in Jiffy Lubricator Co. v. Stewart-Warner Corp., 4 Cir., 177 F.2d 360, 361, where we said:

"The motion to dismiss must be granted on the ground that the order transferring the case is not a final order from which an appeal lies under 28 U.S.C.A. § 1291.As was said by the Supreme Court in Arnold v. United States for Use of W. B. Guimarin & Co., 263 U.S. 427, at page 434, 44 S.Ct. 144, at page 147, 68 L.Ed. 371: `It is well settled that a case may not be brought here by writ of error or appeal in fragments, that to be reviewable a judgment or decree must be not only final, but complete, that is, final not only as to all the parties, but as to the whole subject-matter and as to all the causes of action involved; and that if the judgment or decree be not thus final and complete, the writ of error or appeal must be dismissed for want of jurisdiction.\'"(citing cases.)

See alsoClinton Foods v. United States, 4 Cir., 188 F.2d 289.

What applicants are seeking is to review by application for mandamus an interlocutory order from which Congress has not seen fit to grant a right of appeal.This may not be done.In Columbia Boiler Co. of Pottstown v. Hutcheson, 4 Cir., 222 F.2d 718, we dealt with an attempt to use a writ of prohibition to review an interlocutory order refusing to dismiss a patent infringement suit on the ground that defendant did not reside or have a regular and established place of business within the district.There, as here, a question of venue was involved and, if the interlocutory order was erroneous, a great loss of time and money might result from its not being promptly reversed.We held, nevertheless, that there was no power in this court to review it by mandamus or prohibition, saying:

"It is admitted that the order denying the motions is not a final order and that petitioner cannot appeal from it.SeeBeury v. Beury, 4 Cir., 222 F.2d 464;E. I. Du Pont De Nemours Co., Inc., v. Hall, 4 Cir., 220 F.2d 514.We think it equally clear that writ of prohibition cannot be used as substitute for an appeal in such a case.Until Congress amends the statute so as to permit appeals from interlocutory orders of this character, we do not think that appellate courts should attempt to circumvent the law by the use of writs of prohibition or mandamus.In re Sylvania Electric Products, Inc., 1 Cir., 220 F.2d 423;Gulf Research & Development Co. v. Leahy, 3 Cir., 193 F.2d 302, affirmed344 U.S. 861, 73 S.Ct. 102, 97 L.Ed. 668;Gulf Research & Development Co. v. Harrison, 9 Cir., 185 F.2d 457.Cf.C-O-Two Fire Equipment Co. v. Barnes, 7 Cir., 194 F.2d 410, affirmed344 U.S. 861, 73 S.Ct. 102, 97 L.Ed. 695."

We made the same holding in the case of Southern Railway Co. v. Madden, 4 Cir., 224 F.2d 320, where an interlocutory order, which we thought erroneous, had been entered granting a new trial confined to the issue of damages, and in Atlantic Coast Line R. Co. v. Sonenshine, 4 Cir., 226 F.2d 220, where an interlocutory order had been entered granting plaintiff a new trial on the issue of damages in the face of a contention by defendant that it was entitled to a judgment n. o. v. on the ground that no liability had been established and that the new trial would involve needless delay and expense.In the Madden casewe said:

"It is clear that the order which we are asked to review is not a final order in the case and hence is not appealable.And we do not think that the statute which allows appeal only from final orders, except in a limited class of cases, can be evaded by the simple device of asking this court to issue one of its extraordinary writs, such as certiorari, or mandamus or prohibition.Columbia Boiler Co. of Pottstown v. Hutcheson, 4 Cir., 222 F.2d 718;Hartford Accident & Indemnity Co. to Use of Silva v. Interstate Equipment Corporation, 3 Cir., 176 F.2d 419, certiorari denied338 U.S. 899, 70 S.Ct. 250, 94 L.Ed. 553;United States Alkali Export Ass\'n v. United States, 325 U.S. 196, 65 S.Ct. 1120, 89 L.Ed. 1554."

In the case of E. I. Du Pont De Nemours Co., Inc. v. Hall, 4 Cir., 220 F.2d 514, we pointed out that cases of the sort dealt with above illustrated the wisdom of the recent proposal approved by the Judicial Conference of the United States that the statute relating to interlocutory appeals be amended so as to grant a limited right of review of interlocutory orders, but adding: "The amendment of the statute, however, is a matter for Congress, not for the courts".It seems manifest that, if an interlocutory order involving error of law, may not be reviewed by mandamus or otherwise, review may not be had of one which involves merely an exercise of...