Formflex Foundations, Inc. v. Cupid Foundations, Inc., 74 Civ. 2622.

• Decision Date: 09 August 1974
• Docket Number: No. 74 Civ. 2622.,74 Civ. 2622.
• Parties: FORMFLEX FOUNDATIONS, INC., Plaintiff, v. CUPID FOUNDATIONS, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

383 F. Supp. 497

FORMFLEX FOUNDATIONS, INC., Plaintiff, v. CUPID FOUNDATIONS, INC., Defendant.

No. 74 Civ. 2622.

United States District Court, S. D. New York, Civil Division.

August 9, 1974.

Armand E. Lackenbach, Mamaroneck, N. Y., for plaintiff.

Hubbell, Cohen & Stiefel, New York City, by Maurice B. Stiefel, New York City, of counsel, Lerner, David, Littenberg & Samuel, Westfield, N. J., by Lawrence I. Lerner, Sidney David, Westfield, N. J., of counsel to Hubbell, Cohen & Stiefel, New York City, for defendant.

MEMORANDUM AND ORDER

WHITMAN KNAPP, District Judge.

This action for a declaration of patent invalidity and non-infringement was filed on June 19, 1974. Two weeks prior thereto, Cupid Foundations, Inc., the defendant in this action, had filed an action for infringement of the same patent in issue here, against J. C. Penney, Inc., a customer of Formflex and against Formflex itself, in the United States District Court for the Southern District of Georgia (Civil Action No. 174-60). On July 17, 1974, Formflex brought on a motion pursuant to Fed.Rule Civ.Proc. 65 to enjoin the Georgia action and Cupid filed a companion motion to stay the New York action pending determination of the earlier Georgia action, or alternatively, to transfer the present action to Georgia for consolidation with Civ. Action No. 174-60.

As established in this Circuit, the law is that a district court in which a patent infringement action has been filed may not enjoin a similar action previously filed in another district unless "special circumstances" can be shown to exist. Joseph Bancroft & Sons Co. v. Spunize Co. of America (2d Cir. 1959) 268 F.2d 522.

There is he so-called "cusuations in which departure from the "first filed" rule of priority is justified. The first instance is the so-called "customer action", where the first filed suit is against a customer of the alleged infringing manufacturer while the second suit involves the alleged infringer himself. Delamere Company v. Taylor-Bell Company (S.D.N.Y.1961), 199 F.Supp. 55. Since the alleged infringer is not a party to the first action he obviously cannot participate therein and thus must bring a second action in order to vindicate his interests.

Although the movants conceded in oral argument that the Georgia action was not a pure customer action since they are a party thereto, they claim nevertheless that the Second Circuit in William Gluckin & Co., Inc. v. International Playtex Corporation (2d Cir. 1969) 407 F.2d 177 approved a separate and independent standard for determining whether the first suit is a customer action. Specifically, they point to the fourteen factors of substance listed by the court in support of its finding that the second filed suit should be given priority, as a recognition by the court of an independent exception to the "first filed" rule of priority. We do not read Gluckin to have so held. Rather, those fourteen factors indicating that the balance of convenience supported priority for the second filed suit were merely subsidiary considerations intended to aid the court in the exercise of its discretion once it had already determined that the first suit was a customer action. They do not represent an independent exception to the first filed...