Coats Co., Inc. v. Vulcan Equipment Co., Inc.

• Decision Date: 06 November 1978
• Docket Number: No. 78 C 1007.,78 C 1007.
• Citation: 459 F. Supp. 654
• Parties: The COATS COMPANY, INC., a Corporation of Iowa, Plaintiff, v. VULCAN EQUIPMENT COMPANY, LTD., a Corporation of Ontario, Canada, Defendant.
• Court: U.S. District Court — Northern District of Illinois

459 F. Supp. 654

The COATS COMPANY, INC., a Corporation of Iowa, Plaintiff, v. VULCAN EQUIPMENT COMPANY, LTD., a Corporation of Ontario, Canada, Defendant.

No. 78 C 1007.

United States District Court, N. D. Illinois, E. D.

October 10, 1978.

On Motion for Reconsideration November 6, 1978.

William A. VanSanten, Jr., and James C. Wood, Wegner, Stellman, McCord, Wiles & Wood, Chicago, Ill., for plaintiff.

Gilbert H. Hennessey, III, Thomas E. Smith, and Leo Smith, Lee & Smith, Chicago, Ill., for defendant.

ORDER

BUA, District Judge.

Before the court are the following motions of the parties:

Defendant Vulcan Equipment Company, Limited's motion to dismiss for lack of personal jurisdiction, Rule 12(b)(2) F.R.Civ. Pro., or in the alternative to transfer the instant action to the Southern District of Iowa, 28 U.S.C. § 1404(a);

Plaintiff Coats Company, Inc.'s motion to enjoin the defendant from pressing at this time the declaratory judgment action, initiated by the Vulcan Equipment Company, now pending in the Southern District of Iowa.

This is an action for patent infringement. The plaintiff, Coats Company, Inc. (hereinafter Coats), is an Iowa corporation having its principal place of business in Tennessee. Coats is also a wholly owned subsidiary of Hennessy Industries, Inc., a Delaware corporation which maintains its principal corporate offices in Elk Grove Village, Illinois. The defendant, Vulcan Equipment Company, Limited (hereinafter Vulcan), is a Canadian corporation. It is not licensed and does no business in Illinois. The complaint contains two counts. Jurisdiction as to Count I lies under 28 U.S.C. § 1338(a), while jurisdiction for Count II is founded on 28 U.S.C. §§ 1332, 1338(b).

In its complaint, Coats argues that certain automobile tire changers manufactured and sold by the defendant infringe on three patents owned by the plaintiff. These patents were originally assigned to Coats, not Hennessy Industries, Inc., and still remain in the plaintiff's name. The instant action was filed in this district on March 17, 1978, but two of the patents now at issue were incorrectly identified. This error was remedied on March 24th, when the plaintiff filed its amended complaint. On March 23rd, however, Vulcan brought a declaratory judgment action in the Southern District of Iowa, naming Coats as the defendant. The same three patents were properly identified and in Vulcan's original complaint and are currently at issue in the Iowa action.

It is quite apparent that the actions now pending in this district and in Iowa are closely related. Not only does each present numerous questions of law and fact common to the other, but concerns over the same patents form the primary issues in both suits.¹ That the parties recognize the duplicity in their respective actions is equally clear, as is evidenced by Vulcan's motion for transfer and consolidation and Coats' request that further prosecution of the Iowa suit be enjoined pending resolution of the instant case. Accordingly, it is incumbent upon this court to resolve this situation quickly, yet in the most appropriate manner, in order to prevent the wasteful and apparently needless duplication of time and effort that would result from the simultaneous trial of two such complex and elaborate cases. General Tire & Rubber Co. v. Watkins, 373 F.2d 361, 369 (4th Cir. 1967); see also Theriault v. Silber, 547 F.2d 1278, 1280 (5th Cir. 1977).

Vulcan's motion for transfer and consolidation presents a possible avenue for resolving the potentially costly and wasteful situation that now exists. Before proceeding with a discussion of its merits, however, the relevant statute, 28 U.S.C. § 1404(a) must be examined. § 1404(a) is not merely a codification of the common law doctrine of forum non conveniens. St. Joe Paper Co. v. Mullins Mfg. Corp., 311 F.Supp. 165, 168 (D.Ohio 1970). Rather the statute is more lenient, Akers v. Norfolk & W. Ry. Co., 378 F.2d 78, 79 (4th Cir. 1967); Alabama Great S. Ry., Co. v. Allied Chem. Co., 312 F.Supp. 3, 9 (D.Va.1970), in that a lesser showing of inconvenience is needed for transfers than was required for dismissals under the common law doctrine. Norwood v. Kirkpatrick, 349 U.S. 29, 32, 75 S.Ct. 544, 99 L.Ed. 789 (1955); Scaramuzzo v. American Flyers Airline Corp., 260 F.Supp. 746, 748 (E.D.N.Y.1966); 15 Wright & Miller, Fed.Prac. & Pro. § 3848. In addition, the plaintiff's choice of forum, while still of considerable importance, is no longer the overriding factor that it once was under the doctrine of forum non conveniens.²Y4 Design Ltd. v. Regensteiner Publ. Enterprises, Inc., 428 F.Supp. 1067, 1070 (S.D.N. Y.1977). As other factors are now to be given equal consideration, Id., the plaintiff's choice of forum is, under the statute, but one of many factors to be viewed by the court when making its determination of convenience. General Signal Corp. v. Western Elec. Co., 362 F.Supp. 878, 880 (N.D.Ill. 1973). Other factors to be considered include: convenience of the parties; convenience of the fact witnesses; the cost of obtaining the presence of witnesses; and the interests of justice in general. Car-Freshener Corp. v. Auto Aid Mfg. Corp., 438 F.Supp. 82, 85 (N.D.N.Y.1977); Wright, Law of Fed. Courts § 44. Considerations of judicial economy and efficiency, while seldom controlling in and of themselves, must also be accorded their proper weight. See Theriault v. Silber, 547 F.2d 1279, 1280 (5th Cir. 1977); General Tire & Rubber Co. v. Watkins, 373 F.2d 361, 369 (4th Cir. 1967). In short, before a proper determination of convenience can be made under § 1404(a), close and careful consideration must be given to all of the relevant facts and circumstances. See F.T.C. v. MacArthur, 532 F.2d 1135, 1142 (7th Cir. 1976).

Of the many factors which bear on the questions of convenience, § 1404(a) shows primary concern for those relevant to the convenience of the parties and witnesses.³ The merits of Vulcan's motion must, therefore, be evaluated in light of this statutory policy. Turning first to the convenience of the parties, it seems that this factor is essentially neutral. At present, both parties are obliged to appear in each forum. While it is true that the actions currently pending in each district are very similar, they are not identical. Even if this court were to grant Coats' motion and enjoin Vulcan from continuing with its declaratory judgment action until such time as the instant case is concluded, it could not be certain that no further proceedings would be required in Iowa. Resolution of Coats' tort claim would not necessarily result in the final determination of every issue raised in the declaratory judgment action. Thus, it is not inconceivable that Coats would be required to defend itself in the other forum long after the instant action has been resolved. As this is the case, it appears that Coats will not be seriously inconvenienced if it is ordered to press its tort claim in Iowa while also defending itself there.

With regard to the convenience of the witnesses, the court must consider not only the number of potential witnesses, but also the nature and quality of their testimony and whether they can be compelled to testify. Delay & Daniels v. Campbell Co., 71 F.R.D. 368, 372 (D.S.C.1976); see Car-Freshner Corp. v. Auto Aid Mfg. Corp., 438 F.Supp. 82, 85 (N.D.N.Y.1977); Wright, Law of Fed. Courts § 44. A primary concern of the court should be to insure whenever possible the live presence of the more material non-party witnesses. Poncy v. Johnson & Johnson, 414 F.Supp. 551, 558 (S.D.Fla.1976); 15 Wright & Miller, Fed. Prac. & Pro. § 3851. In the instant action, many of the individuals likely to be called as witnesses reside in Tennessee, where Coats maintains its production operations, or in Canada, where Vulcan has its facilities. The additional costs, if any, of transporting these persons to Iowa, therefore, would be relatively minor. Furthermore, while it is possible that requiring these individuals to testify in the other forum could, due to difficulties in airline scheduling, lead to their being away from home for an additional day, this problem is not likely to occur and could quite probably be totally avoided through the cooperative efforts of the parties. Thus, it seems clear that any additional inconvenience these witnesses would suffer by having to appear in Iowa rather than in this district would be minimal at worst.

It is true, though, that these witnesses may be inconvenienced, if only to a slight degree, by having to go to Iowa. As the objective of § 1404(a) is to have actions heard in the most convenient forums, this fact would oftentimes be enough to defeat a motion such as the one currently under discussion. The situation presented in the instant case, however, differs noticeably from the ordinary. Here, the nature of the testimony of the aforementioned individuals, who will in all likelihood constitute the majority of those witnesses actually called at trial, is not as yet known. It is in fact quite possible that much of their testimony will be cumulative and repetitive. Thus, those portions which may be significantly material cannot readily be ascertained. In addition, none of these potential witnesses reside within the subpoena powers of the courts of either forum under discussion. As a consequence, the ultimate disposition of Vulcan's motion will have no bearing on whether their personal presence can be judicially compelled.

Several individuals, however, whose potential testimony has been shown to be very material to this litigation, do reside within the subpoena power of the courts of the Southern District of Iowa.⁴ Two of these individuals, Elmer J. Strang and James R. Foster, are listed as inventors of two of the patents currently at issue. A third, Melvin A. Mandelko, was a party in a Patent Office interference proceeding involving another of the contested patents. That their testimony may be significant is...