Regents of University of California, In re

• Decision Date: 18 May 1992
• Docket Number: No. 330,330
• Citation: 22 USPQ2d 1748,964 F.2d 1128
• Parties: 75 Ed. Law Rep. 218, 22 U.S.P.Q.2d 1748 In re the REGENTS of the UNIVERSITY OF CALIFORNIA, Petitioner, Misc.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1128

964 F.2d 1128

75 Ed. Law Rep. 218, 22 U.S.P.Q.2d 1748

In re the REGENTS of the UNIVERSITY OF CALIFORNIA, Petitioner,

Misc. No. 330.

United States Court of Appeals Federal Circuit.

May 18, 1992.

Gerald P. Dodson of Townsend & Townsend, Thomas D. Nevins of Broad, Schulz, Larson & Wineberg, San Francisco, Cal., for petitioner.

Donald R. Dunner of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., for respondent, Eli Lilly & Co. Of counsel were Charles E. Lipsey and Susan Haberman Griffen.

Salem M. Katsh of Weil Gotshal & Manges, New York, N.Y., for respondent, Genetech, Inc. Of counsel were Ira M. Millstein, Howard B. Comet, David K. Barr, and Christina Del Valle.

Before NEWMAN, Circuit Judge, SKELTON, Senior Circuit Judge, and LOURIE, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

The Regents of the University of California petition for extraordinary writ, ordering the Judicial Panel on Multidistrict Litigation to vacate its order consolidating five pending lawsuits for coordinated pretrial proceedings in the Southern District of Indiana. ¹ The petition is opposed by Genentech, Inc. and Eli Lilly and Co. Alternatively, the Regents request that the coordinated pretrial proceedings be conducted in the Northern District of California; Genentech supports this request, and Lilly opposes it.

I

Genentech and Lilly challenge the Federal Circuit's jurisdiction to entertain this mandamus petition, and request dismissal or transfer to the Seventh Circuit Court of Appeals. Genentech and Lilly state that this court does not have jurisdiction under 28 U.S.C. § 1651 ² to review transfer orders generally; and that even if jurisdiction were to exist under § 1651, review of Multidistrict Panel transfer orders is limited by 28 U.S.C. § 1407(e) ³ to the geographic circuit courts of appeal.

The Federal Circuit's authority in extraordinary writ is beyond challenge. When a petition is brought in connection with a case in the Federal Circuit's appellate jurisdiction, this court has conscientiously administered its responsibility. E.g., In re Newman, 782 F.2d 971, 973, 228 USPQ 450, 452 (Fed.Cir.1986) ("Because this court, and only this court, has jurisdiction over any appeal from a final decision in this case, it has jurisdiction to hear and decide this [mandamus] petition.") The Federal Circuit has considered questions of venue when properly raised. E.g., Exxon Chemical Patents, Inc. v. The Lubrizol Corp., 935 F.2d 1263, 19 USPQ2d 1061 (Fed.Cir.1991); VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 16 USPQ2d 1614 (Fed.Cir.1990), cert. denied, --- U.S. ----, 111 S.Ct. 1315, 113 L.Ed.2d 248 (1991); Kahn v. General Motors Corp., 889 F.2d 1078, 12 USPQ2d 1997 (Fed.Cir.1989). Such issues, properly before the Federal Circuit on appeal, are no less within our jurisdiction when raised by extraordinary writ, e.g., In re Cordis Corp., 769 F.2d 733, 226 USPQ 784 (Fed.Cir.1985).

Genentech and Lilly assert that whether or not the Federal Circuit may exercise jurisdiction under § 1651, it does not have "jurisdiction over the transferee district", quoting § 1407(e), a statutory prescription that Genentech and Lilly say applies only to the geographic circuit courts. This misconstrues the statute, for the distinction drawn in § 1407(e) is between the transferee and the transferor district. With the formation of the Federal Circuit and its statutory assignment as exclusive appellate tribunal in patent cases, see 28 U.S.C. § 1295, this court acquired the authority of § 1651 and the responsibility of § 1407(e). The text of § 1407(e), enacted in 1968, readily accommodates the establishment of this court in 1982.

Lilly cites Wood v. United States, 961 F.2d 195 (Fed.Cir.1992) in support of its position. The citation is inapt. The court in Wood discussed two transfers: (1) the transfer of a Federal Tort Claims Act case from the Northern District of California to the Southern District of Florida; the Federal Circuit held that it was without jurisdiction to review this transfer, since a final judgment in an action under the Federal Tort Claims Act is not appealable to the Federal Circuit; and (2) the subsequent transfer of the case from the Southern District of Florida to the Claims Court on the basis that it did not sound in tort, but was based upon a contract and jurisdiction lay only under the Tucker Act; this transfer was reviewed by the Federal Circuit under 28 U.S.C. § 1292(d)(4)(A). The jurisdiction conferred by § 1292(d)(4)(A) was held not to authorize review of the prior transfer from California to Florida, for at the time of that transfer jurisdiction was based solely on the Federal Tort Claims Act. Wood does not hold that only the geographic courts of appeal can review transfer orders in cases over which this court has exclusive appellate jurisdiction. Indeed, Wood supports the contrary position.

The Federal Circuit's jurisdiction over this petition is in accordance with 28 U.S.C. §§ 1295, 1407, and 1651. The request to dismiss or transfer the petition for lack of jurisdiction is DENIED.

II

These five lawsuits arose out of various research arrangements involving the Regents, Genentech, and Lilly, and relate to recombinant DNA technology and its use in the production of human insulin and human growth hormone (hGH).

Two suits are pending in the Northern District of California:

(1) Regents v. Genentech and Lilly, No. C90-2232. The Regents allege that Genentech's production of recombinant DNA hGH products infringes the university's '877 patent entitled "Recombinant DNA Transfer Vectors". Genentech had added Lilly, the exclusive licensee under the '877 patent, to this action.

(2) Regents v. Lilly, No. C90-0373. The Regents allege that Lilly's production of recombinant DNA human insulin products infringes certain patents owned by the university.

Three suits are pending in the Southern District of Indiana:

(3) Lilly v. Genentech, No. 87-219-C. Lilly seeks a declaratory judgment that four patents owned by Genentech are either invalid or not infringed by Lilly's production of recombinant DNA hGH products. Genentech has counterclaimed for infringement of thirteen patents.

(4) Genentech v. Lilly, No. 88-1463-C. Genentech charges Lilly with breach of contract, misappropriation of trade secrets, and related wrongs, based on Lilly's alleged use, in production of hGH, of technology licensed solely for use in production of insulin. Lilly's offset claims are based on agreements between Lilly and the Regents in which Lilly funded research at the university. Issues arise from the movement of scientists from the university to Genentech, bringing with them Lilly-funded materials.

(5) Genentech v. Lilly and Regents, No. 90-1679-C. Genentech seeks a declaration that the Regents' '877 patent is invalid, unenforceable, or not infringed by Genentech's production of recombinant DNA hGH products. Genentech also charges the Regents and Lilly with antitrust and state law violations.

Genentech moved the Panel on Multidistrict Litigation to establish coordinated pretrial proceedings in these five actions in the Northern District of California. After briefing and argument the Panel granted Genentech's request for coordination, but ordered that the coordinated proceedings be conducted by the court in the Southern District of Indiana. This petition ensued.

28 U.S.C. § 1407(a) authorizes the Panel on Multidistrict Litigation to transfer to any district court, for coordinated or consolidated pretrial proceedings, civil actions pending in more than one district and involving one or more common questions of fact. The Panel must determine that coordinated pretrial proceedings "will be for the convenience of parties and witnesses and will promote the just and efficient conduct of such actions." 28 U.S.C § 1407(a). The purpose of this statute is the avoidance of conflicting and duplicative pretrial demands on parties and witnesses in related cases. See H.R.Rep. No. 1130, 90th Cong., 2nd Sess. (1968), reprinted in 1968 U.S.C.C.A.N. 1898, 1899-1900; In re Plumbing Fixture Cases, 298 F.Supp. 484, 490-92 (J.P.M.L.1968). The Regents do not dispute the legitimacy of this purpose, but argue that in this case the transfer is unauthorized, improper, and inefficient.

The Regents state that since the Indiana and California district courts have already considered and decided transfer and venue questions in these cases, their decisions are the law of the case and can not be overruled by the Multidistrict Panel. The Regents argue that the Multidistrict Panel's order is contrary to five district court decisions, and that the Panel abused its discretion in failing to defer to these decisions as the law of the case.

We need not consider the broader aspects of applicability of the doctrine of law of the case in multidistrict litigation, see In re Multi-Piece Rim Products Liability Litigation, 653 F.2d 671, 678 (D.C.Cir.1981), for review of the five decisions to which the Regents refer shows that none of the decisions treated the question that was before the Multidistrict Panel. Following is a summary of these decisions:

(1) The decision of Judge McKinney of the Southern District of Indiana in No. 90-1679-C, dismissing the Regents from Genentech v. Lilly and Regents.

The declaratory judgment action filed by Genentech in Indiana was dismissed in view of the infringement action filed in California one day later by the Regents. Dismissal was based both on discretionary grounds and reliance on the Eleventh Amendment. This dismissal was appealed to the Federal Circuit, and is sub judice.

The Regents characterize this decision as holding that the Northern District of California is the correct venue for determination of the infringement issue. We do not share this characterization, for this decision did not address the issue of choice of venue. The court simply declined to exercise jurisdiction over a declaratory judgment action brought under these...