IN RE ELI LILLY & CO.(CEPHALEXIN MONOHYDRATE)

• Decision Date: 28 February 1978
• Docket Number: No. 326.,326.
• Citation: 446 F. Supp. 242
• Parties: In re ELI LILLY AND COMPANY (CEPHALEXIN MONOHYDRATE) PATENT LITIGATION.
• Court: Judicial Panel on Multidistrict Litigation

446 F. Supp. 242

In re ELI LILLY AND COMPANY (CEPHALEXIN MONOHYDRATE) PATENT LITIGATION.

No. 326.

Judicial Panel on Multidistrict Litigation.

February 28, 1978.

Before JOHN MINOR WISDOM^*, Chairman, and EDWARD WEINFELD^*, EDWIN A. ROBSON^*, JOSEPH S. LORD, III, STANLEY A. WEIGEL, ANDREW A. CAFFREY and ROY W. HARPER, Judges of the Panel.

OPINION AND ORDER

PER CURIAM.

This litigation consists of three actions, each of which is pending in one of three districts: the Southern District of Florida, the District of New Jersey, or the Southern District of New York.

Zenith Laboratories, Inc. (Zenith) distributes an oral antibiotic known as cephalexin monohydrate. Zenith's complaint in the New Jersey action seeks a declaratory judgment against Eli Lilly and Co. (Lilly) to the effect that two Lilly patents on pharmaceutical substances are invalid and unenforceable and that Zenith's antibiotic does not infringe upon them. Lilly has counterclaimed in the New Jersey action, charging Zenith with infringement upon Lilly's two patents and with unfair competition, basically because Zenith uses a color scheme on its antibiotic capsule similar to that employed by Lilly on its comparable product.

The New York and Florida actions are each brought by Lilly against a different Zenith customer that resells Zenith's antibiotic to the pharmaceutical trade. Lilly charges the defendants in the New York and Florida actions with the same type of patent infringement and unfair competition raised in Lilly's counterclaim in the New Jersey action.

Zenith moves the Panel for an order pursuant to 28 U.S.C. § 1407 transferring the New York and Florida actions to the District of New Jersey for coordinated or consolidated pretrial proceedings with the action pending there. Defendants in the Florida and New York actions have joined in Zenith's motion. Lilly has responded that it does not believe the issues involved in the three actions are sufficiently complex to warrant transfer, but Lilly nevertheless states that it has no objection to transfer should the Panel conclude that transfer under Section 1407 is appropriate.¹

We conclude that transfer under Section 1407 would not necessarily serve the convenience of the parties and witnesses or promote the just and efficient conduct of this litigation and, accordingly, we deny the motion to transfer.

Zenith argues that all three actions involve the questions whether Lilly's two patents are valid and enforceable and whether Zenith's antibiotic infringes upon those patents. Section 1407 transfer, Zenith argues, would thus prevent duplicative discovery. Additionally, Zenith notes that Lilly has already moved for preliminary injunctive relief in the New Jersey action, and Zenith suggests that Lilly may seek similar relief in the New York and Florida actions. Accordingly, Zenith argues, transfer would allow all such motions to be considered by a single judge and would eliminate the possibility of inconsistent pretrial rulings.

We find these arguments unpersuasive. Only three actions are involved here. Although we recognize the existence of common questions of fact among these few actions, movants have not met their burden of convincing us that those common factual questions are sufficiently complex or that the accompanying discovery will be so time consuming as to justify transfer under Section 1407. See In re Scotch Whiskey, 299 F.Supp. 543, 544 (Jud.Pan.Mult.Lit.1969). Furthermore, we note that under the collateral estoppel principles of Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), a holding in one action that...