Skil Corp. v. Millers Falls Co.

• Decision Date: 26 August 1976
• Docket Number: No. 75-2291,75-2291
• Citation: 541 F.2d 554,191 USPQ 548
• Parties: SKIL CORPORATION, Plaintiff-Appellant, v. MILLERS FALLS COMPANY et al., Defendants-Appellees.
• Court: U.S. Court of Appeals — Sixth Circuit

Page 554

541 F.2d 554

191 U.S.P.Q. 548

SKIL CORPORATION, Plaintiff-Appellant, v. MILLERS FALLS COMPANY et al., Defendants-Appellees.

No. 75-2291.

United States Court of Appeals Sixth Circuit.

Argued March 29, 1976.

Decided Aug. 26, 1976.

Clarence J. Fleming, McDougal, Hersh & Scott, Chicago, Ill., Marc L. Swartzbaugh, Cleveland, Ohio, Charles M. Carter, Chicago, Ill., for plaintiff-appellant.

Richard J. Egan, Baldwin, Egan, Walling & Fetzer, M. Reese Dill, Merkel, Campbell, Dill & Zetzer, Cleveland, Ohio, for defendants-appellees.

Before PHILLIPS, Chief Judge, and WEICK and ADAMS, ^* Circuit Judges.

WEICK, Circuit Judge.

This is an interlocutory appeal from an order of the United States District Court for the Northern District of Ohio denying a motion by Skil Corporation (Skil) to remand a patent infringement action to the District Court in Northern Illinois, which had previously transferred the case to the Ohio Court under the provisions of 28 U.S.C. § 1404(a).

The transferred case is one of several which have been filed during protracted litigation between Skil and Lucerne Products, Inc. (Lucerne), who are the patentees and manufacturers of competing switches used on portable electric tools. This litigation has been pending in various courts since 1968, with cases filed not only in Ohio and Illinois, but also in the Southern District of New York and the District of Connecticut.

Over the years cases have shuttled between the District Courts of Northern Ohio and Illinois by transfer and retransfer in a controversy over choice of forum, with the result that there has been no trial on the merits of the litigation. Various phases of the transfer litigation have been considered by District Judges Green and Lambros of Ohio, and by Judges Will and Hoffman of Illinois. This is the fourth appeal which our court has entertained. ¹

The history of the litigation is detailed in Judge Hoffman's transfer order, a copy of which is appended hereto as Exhibit "A".

Skil filed this particular action in the Northern District of Illinois against several of Lucerne's customers. Lucerne had indemnified its customers, and was permitted to intervene as a defendant. Skill was also plaintiff in an action against Lucerne then pending in the Northern District of Ohio, No. C 69-461, which raised the same issues of patent validity. Judge Hoffman sua sponte ordered this action transferred to the Northern District of Ohio so that it could be consolidated with Skil's action against Lucerne.

Upon the entry of the transfer order Skil filed an Emergency Petition for a Writ of Mandamus and Prohibition in the Court of Appeals for the Seventh Circuit, seeking to vacate Judge Hoffman's order. The basis of the attack was that the record did not show that the transferee court had proper venue as to each defendant, that one of the defendants did not have a principal place of business in Northern Ohio, and that therefore Judge Hoffman was without power to order the transfer under § 1404(a). The petition with a brief and attachments thereto consisted of 123 pages, and a supplemental appendix was filed. Lucerne filed an 80-page response.

Circuit Judges Kiley, Stevens and Sprecher considered the merits of the case, as evidenced by the following order entered on December 26, 1973:

This matter is before the court on the filing by each party of a communication, as required by this court's order of September 6, 1973, advising the court of the disposition of the appeal in No. 73-1738 docketed in the United States Court of Appeals for the Sixth Circuit. On consideration of the plaintiff's emergency petition for writ of prohibition and mandamus, memorandum in support thereof, and supplemental appendix filed August 2, 1973 and of joint answer of respondents filed August 22, 1973,

It is ordered that said petition be, and the same is hereby DENIED. (App. I at 255)

The Seventh Circuit denied Skil's petition for rehearing and another petition for rehearing en banc; it denied Skil's motion for a stay pending certiorari to the Supreme Court. Mr. Justice Rehnquist denied a similar motion for a stay.

Following the entry of the transfer order of Judge Hoffman and the decision of the Seventh Circuit, District Judge Lambros of Northern Ohio entered an order vacating his own previous remand order in Skil v. Lucerne, No. C 69-461, and consolidated that case with the case being transferred from Northern Illinois, No. C 74-121, for all pretrial proceedings. A copy of the Order is appended hereto as Exhibit "B".

Skil then moved to remand Case No. C 74-121 again to Illinois, which motion was denied. Judge Lambros certified the case for an interlocutory appeal, which was granted by a panel of this Court.

Skil contends that Judge Lambros erred in failing to remand this case to the Northern District of Illinois, since the Illinois District Court lacked the power to transfer the case to the Northern District of Ohio. Skil relies upon the case of Hoffman v. Blaski, 363 U.S. 335, 80 S.Ct. 1084, 4 L.Ed.2d 1254 (1960), a decision by a divided court, which held that a § 1404(a) transfer can only be made to a District Court in which the plaintiff could have originally brought the action while complying with the venue and service of process statutes. Skil argues that the record does not show that the Northern District of Ohio is a proper venue as to all defendants, and therefore the Illinois District Court lacked the power under § 1404(a) to transfer the case to the Northern District of Ohio.

This is precisely the very same issue that the Seventh Circuit considered and decided against Skil in the mandamus and prohibition action brought in that Court by Skil to set aside this transfer. It is thus clear that the decision of the Seventh Circuit against Skil is res judicata on the issue of the validity of Judge Hoffman's order of transfer, and we are bound by the decision. In denying the writ, the Seventh Circuit did not base its decision on the ground that mandamus and prohibition were not the appropriate remedies. The order entered by the Seventh Circuit does not permit any such narrow construction.

Skil argues that we must apply the rule of Blaski in spite of the Seventh Circuit's decision, because in that case the Supreme Court affirmed a remand order of the Seventh Circuit in spite of the fact that a mandamus action to prevent the transfer had been unsuccessful in the Fifth Circuit. In Blaski, the Fifth Circuit's action was held not res judicata as to the merits of the transfer because the Fifth Circuit never reached the merits. The party opposing the transfer had merely moved for leave to file a petition for a writ of mandamus, and the Fifth Circuit denied the motion. ² Here, Skil filed a petition, the Seventh Circuit considered the merits of the petition and denied relief after reviewing the petition, the memorandum in support thereof, the supplemental appendix and the joint answer of the respondents.

A further contention of Skil is that the Seventh Circuit's denial of a writ of mandamus and prohibition is not binding on this Court because the standard of review in a mandamus action differs from the standard of review in an interlocutory appeal. This distinction does not change the result in this case. Skil argued in the Seventh Circuit that Judge Hoffman lacked power to transfer the case because of Blaski. Had Skil been correct, the Seventh Circuit would have been required to issue the writ. By denying the writ, the Seventh Circuit must necessarily have decided that Judge Hoffman had power to transfer the case because the District Court in Ohio could properly exercise jurisdiction over the action. The standard for testing jurisdiction does not differ in a mandamus action from the standard used in an appeal. ³ The Seventh Circuit would not have refused to issue the writ had Judge Hoffman lacked power to transfer the case. We should never assume that a court of concurrent jurisdiction neglected to perform its duty, particularly when its order clearly shows full performance. Mandamus is the proper remedy when a transfer has been ordered in violation of the legal limitations of § 1404(a). Van Dusen v. Barrack, 376 U.S. 612, 615 n. 3, 84 S.Ct. 805, 11 L.Ed.2d 945 (1964); Johnson & Johnson v. Picard, 282 F.2d 386 (6th Cir. 1960). ⁴ Finally, Skil contends that this Court cannot consider the Seventh Circuit's order as res judicata because to do so would conflict with some curious dictum ⁵ found in Blaski, 363 U.S. at 340 n. 9, 80 S.Ct. 1084. The Court listed three reasons why the Fifth Circuit's order was not res judicata:

1. The Fifth Circuit's order was interlocutory;

2. Not on the merits; and

3. entered in the same case as the Seventh Circuit's decision in Blaski.

While it would be improper for us to question the applicability of those reasons to the facts in Blaski, we must conclude that those reasons are inapplicable to the facts before us. A proceeding upon a petition for a writ of mandamus is a separate action, not an appeal in Skil's lawsuit. Therefore, the Seventh Circuit's order was not interlocutory, but a final disposition, challengeable only by writ of certiorari in the Supreme Court, which Skil did not seek. Furthermore, the Seventh Circuit must necessarily have decided the power-of-transfer issue on the merits, as explained above. Finally, the Seventh Circuit's order was not issued in the case before us, but was issued in a separate action, Skil Corp. v. Hoffman, No. 73-1697. Thus none of the reasons for denying the effect of res judicata in Blaski are present here.

Alternatively, the order of the Seventh Circuit in refusing to set aside by mandamus the transfer order had the effect of establishing the validity of the transfer order as the law of the case. ⁶ As Professor Moore states:

(S)uppose the district court orders a transfer of the action. If this order is then reviewed by an appellate court on the merits, sustained, and the transfer accordingly...