MOBIL OIL CORPORATION. v. WR Grace & Company, Civ. A. No. 67-H-424.

Citation334 F. Supp. 117
Decision Date04 August 1971
Docket NumberCiv. A. No. 67-H-424.
PartiesMOBIL OIL CORPORATION, Plaintiff, v. W. R. GRACE & COMPANY and Pontiac Refining Corp., Defendants.
CourtUnited States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas

COPYRIGHT MATERIAL OMITTED

George B. Finnegan, Jr., Granville M. Pine and John A. Diaz, Morgan, Finnegan, Durham & Pine, Sanford M. Litvack, Donovan, Leisure, Newton & Irvine, New York City, Ben G. Sewell, Sewell, Junell & Riggs, Houston, Tex., for plaintiff.

William K. Kerr and Herbert F. Schwartz, Fish & Neave, New York City, Palmer Hutcheson, Jr., Hutcheson, Taliaferro & Grundy, Houston, Tex., for defendants.

MEMORANDUM AND ORDER

NOEL, District Judge.

Plaintiff, MOBIL OIL CORPORATION (hereafter Mobil) sued defendant, W. R. GRACE AND CO. (hereafter Grace) and defendant, PONTIAC REFINING CORP., (hereafter Pontiac) now a division of CHAMPLIN PETROLEUM COMPANY (hereafter Champlin) for infringement upon its product and process patent claims.

Pontiac and Champlin have moved the Court to sever the action against them from the one brought against Grace and thereafter to stay the proceedings as to them. They predicate their request upon the dual assertion that they are only secondarily involved in the litigation and that the entire controversy can be satisfactorily resolved by a judgment in the Mobil-Grace controversy. Grace has moved the Court pursuant to 28 U.S.C. § 1404(a) to transfer the severed action against it to the United States District Court for the District of Connecticut, New Haven Division. Grace asserts that such transfer would promote "the convenience of parties and witnesses" and be "in the interest of justice." After careful study the Court finds that the interests of justice, as well as the convenience of the parties and witnesses, require that the defendants' motions be granted.

Plaintiff instituted this complicated suit with its very large financial consequences to the parties, on May 29, 1967. Since then preparations for trial have proceeded with reasonable diligence but have not been completed. Plaintiff and defendant have noticed depositions yet to be taken, and plaintiff has filed interrogatories directed to defendant. Defendant is awaiting plaintiff's tender of documents which this Court recently ordered it to produce.

During the pendency of this cause, Mobil prosecuted a suit against the Filtrol Corporation in the United States District Court for the Central District of California, Mobil Oil Corp. v. Filtrol Corp., Civil Action No. 69-633-F (C.D.Cal. 1/4/71). At issue in that cause was the validity of one or more of the patent claims at issue here. Plaintiff's counsel in that suit represent it here, and Filtrol Corporation's counsel represent Grace, Pontiac and Champlin.

Although not admitted by the parties, the Court has observed that while the California litigation was in active engagement the pretrial discovery in this litigation was not so actively pursued. Pretrial discovery did not start in earnest until October, 1970, when, presumably, the California litigation was winding down.

On December 14, 1970, to expedite adjudication and the previously expressed wishes of counsel, the Court set the instant case for pretrial conference on March 12, 1971 and trial on April 12, 1971. During the pretrial conference counsel informed the Court of the complicated factual and legal issues involved, and asked the Court to prepare its docket for a protracted trial. In answer to the Court's inquiry, counsel announced that they were then ready for trial. However, this announcement proved to be premature.

To insure that the cause would be ready for trial, to aid in the resolution of pending discovery problems, and to discuss with counsel possible reference of the case to a special master by agreement, another pretrial conference was held on March 30, 1971. The request for reference to a special master was predicated upon the Court's announcement that its criminal and civil rights docket would prevent its giving the parties time for a protracted trial commencing April 12, 1971 as previously set. Counsel considered the proposal, and at a pretrial conference held April 2, it appeared to the Court that an agreement between counsel to such reference might be accomplished.

Counsel subsequently informed the Court that they were unable to agree, and on April 14, 1971, defendants filed the motions which are the subject of this Memorandum and Order. These motions were noticed for submission on April 26. As the Court had previously announced it would hear counsel on discovery matters on April 26, 1971, the scope of that hearing was enlarged to include oral argument on the instant motions. The Court heard the oral argument of counsel and took the questions under advisement. Thereafter on May 3, 1971, the Court entered an order staying the submission and/or consideration of discovery and pleading motions until it had acted upon the motions to transfer, sever and stay.

The basic issues in this suit are predicated upon Grace's manufacture, sale and inducement of its customers to use catalysts containing zeolite in their petroleum cracking processes. Mobil asserts that since June, 1964, Grace has manufactured eight types of infringing catalysts, 41,923,815 pounds of which have been shipped into the territorial jurisdiction of the Court for use in the alleged infringing cracking processes. No evidence was offered reflecting the scope of Grace's nationwide infringing activities. Pontiac-Champlin's involvement stems from their purchase and four-year use of 342,000 pounds of one of the products in its Corpus Christi, Texas petroleum refinery. Expressed in percentage, Pontiac-Champlin purchased less than one per cent of the total poundage shipped into this District.

The defendants do not contend that they are not properly joined. Nor do they contend that they were not properly served or that the venue is incorrect. See: 28 U.S.C. § 1404(b); F.R. Civ.P. 4. Instead, defendants argue that the cause should be restructured by severance to enable the primary parties to have trial in a different forum.

As presently postured, this cause is not susceptible to transfer to Connecticut because that forum is not one in which Pontiac-Champlin could have been originally sued without their waiving their statutory service and venue rights. See: 28 U.S.C. §§ 1400(b) and 1404(a); Hoffman v. Blaski, 363 U.S. 335, 80 S.Ct. 1084, 4 L.Ed.2d 1254 (1960); Foster-Milburn Co. v. Knight, 181 F.2d 949 (2nd Cir. 1950) (per Learned Hand, J.). There is no suggestion by plaintiff, however, that Grace could not have been sued originally in Connecticut, its place of incorporation.

This Court is faced first with the threshold questions whether (i) to sever the causes of action against properly joined parties, (ii) to transfer the cause as to the one defendant, and (iii) thereafter stay the cause as to the other. The criteria for determining the three questions involve the same relevant criteria— namely the determination by the Court of whether the movants have made a clear showing that the balance of convenience and the interests of justice require the proposed actions. Wyndham Associates v. Bintliff, 398 F.2d 614 (2nd Cir. 1968), cert. denied 393 U.S. 977, 89 S.Ct. 444, 21 L.Ed.2d 438 (1968); Leesona Corp. v. Cotwool Mfg. Corp., 308 F.2d 895 (4th Cir. 1962); affirming and denying mandamus from; 204 F.Supp. 139 (W.D.S.C.1962); Potter Instrument Co., Inc. v. Control Data Corp., 169 U.S. P.Q. 86-89 (S.D.Ind.1971); Burroughs Corp. v. Newark Electronics Corp., 317 F.Supp. 191 (N.D.Ill.1970); General Tire and Rubber Co. v. Jefferson Chemical Co., 50 F.R.D. 112, 114 (S.D.N.Y. 1970).

This Court has the power to sever the claims against properly joined defendants, Wyndham Associates v. Bintliff, supra; 3 J. W. Moore, Moore's Federal Practice, par. 21.052 (1970), and to stay the proceedings as to one of them in appropriate circumstances. Landis v. North American Co., 299 U.S. 248, 254-255, 57 S.Ct. 163, 81 L.Ed. 153 (1936); 1 J. W. Moore, supra, par. 0.204 (1970).

Mobil cites the cases of Hoffman v. Blaski, supra, Lemelson v. Sears Roebuck and Co., 292 F.Supp. 170 (D.Conn. 1968); and Silver v. Goodman, 234 F. Supp. 415 (D.Conn.1964) for the two-pronged proposition (i) that this Court does not have the power to restructure the parties in this lawsuit to accomplish transfer, and (ii) that even if such power exists, it should not be so exercised because the District Court in the transferee forum would not do so.

To read the cited cases distinguishes them. In none of them was there a discussion of a court's power to transfer a severed cause of action to a forum in which the cause against the transferred defendant could properly have been brought. See for example: Wyndham v. Bintliff, supra, 398 F.2d at 618, Leesona Corp. v. Duplan Corp., 317 F.Supp. 290, 299 (D.R.I.1970).

In Blaski the Supreme Court was confronted with a situation where the district court transferred a multiple defendant suit to a forum in which one of the transferred defendants could not have been sued without waiving his rights to proper venue and service. In that situation the Court held that the transferor court did not have the power to transfer the cause to the transferee forum because it was not a forum "where it might have been brought." The Connecticut District Court cases can be construed no further.

In Silver v. Goodman, supra, Judge Zampano refused to transfer a multiple defendant action from Connecticut to New York because one of the defendants could not have been sued there. Likewise, in Lemelson v. Sears Roebuck and Co., supra, another multiple defendant action in which each of them could not have been sued in New York, Judge Zampano followed Blaski and Goodman in holding that the Court did not have the power to transfer the cause to New York.

There have been numerous federal decisions since Blaski which have...

To continue reading

Request your trial
33 cases
  • Chrysler Credit Corp. v. Country Chrysler, Inc.
    • United States
    • U.S. Court of Appeals — Tenth Circuit
    • March 29, 1991
    ...the transfer. See, e.g., Cain, 630 F.Supp. at 226; Hess v. Gray, 85 F.R.D. 15, 22-27 (N.D.Ill.1979); Mobil Oil v. W.R. Grace & Co., 334 F.Supp. 117, 121-24 (S.D.Tex.1971); General Tire & Rubber Co. v. Jefferson Chem. Co., 50 F.R.D. 112, 114-16 (S.D.N.Y.1970); Leesona Corp. v. Cotwool Mfg., ......
  • Mobil Oil Corporation v. WR Grace & Company
    • United States
    • U.S. District Court — District of Connecticut
    • November 2, 1973
    ...said order were reviewed on appeal, the transfer was finally effected on August 25, 1971. Mobil Oil Corporation v. W. R. Grace & Company, 334 F.Supp. 117 (S.D.1971), 170 U.S.P.Q. 582 (S.D.Texas 1971), affirmed from the bench, 5th Cir., September 1, 1971, without Mobil's amended complaint cl......
  • Burbank Intern. Ltd. v. GULF CON. INTERN. INC.
    • United States
    • U.S. District Court — Northern District of Texas
    • December 7, 1977
    ...Faigenbaum Machinery, Inc. v. Scott & Williams, Inc., 344 F.Supp. 1267 (S.D.N.Y.1972) (minor factor); Mobil Oil Corp. v. W. R. Grace & Co., 334 F.Supp. 117 (S.D.Tex.1971) (Convenience of counsel bears on convenience of 4 The Supreme Court included a partial list of considerations in Gulf Oi......
  • TECHNOGRAPH PRINTED CIR., LTD. v. Martin-Marietta Corp.
    • United States
    • U.S. Court of Appeals — Fourth Circuit
    • February 20, 1973
    ...den., 335 F.Supp. 242 (S.D.N.Y.1971); Nickerson v. Kutschera, 333 F.Supp. 1097, 1098 (D.Del.1971); Mobil Oil Corp. v. W. R. Grace & Co., 334 F.Supp. 117, 131 (S.D.Tex.1971); Blumcraft of Pittsburgh v. Architectural Art Mfg., Inc., 337 F.Supp. 853, 854 (D.Kan.1972), aff'd. 459 F.2d 482 (10th......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT