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BIG BABY CO. v. SCHECTER

February 18, 1993

BIG BABY COMPANY and HENRY KELSTON, Plaintiffs,
v.
MITCHELL SCHECTER and UP AND ADAM, INC., Defendants.



The opinion of the court was delivered by: VINCENT L. BRODERICK, U.S.D.J.

 VINCENT L. BRODERICK, U.S.D.J.

 I

 This is a suit for infringement of U.S. Patent No. 5,150,811 covering a carton intended to enclose and to protect plastic juice containers. Issues presented include whether or not the invention claimed was sufficiently novel and nonobvious to be patentable under 35 USC §§ 101-103, and if so, whether the patent was infringed.

 Plaintiffs ("patentees") have moved to stay a related action in the District of Massachusetts, Up & Adam, Inc. v. Henry Kelston et al., 92-12738H, which was filed November 16, 1992 by Up and Adam, Inc., the corporate defendant in this action. In the Massachusetts action Up & Adam seeks relief against false representations allegedly made by the patentees to induce juice processors to cease buying a competing product from Up and Adam. It also seeks other relief, including a declaratory judgment pursuant to 28 USC §§ 2201-2202 that the patent involved invalid and uninfringed.

 In the action before me defendants have moved for an order enjoining prosecution of the action. They also seek dismissal for lack of personal jurisdiction, and transfer of the action to the District of Massachusetts.

 I grant defendants' motion to transfer this case to the District of Massachusetts and deny the other motions of the parties.

 II

 The parties agree that the issue of the validity of the patent is central, and that it makes no sense for overlapping lawsuits in two districts to proceed simultaneously. For one federal district court to stay proceedings in another is not, however, the optimal procedure for resolving such traffic control problems, any more than it is where state and federal courts are involved (see 28 USC § 2283). Comity is a more flexible tool for dealing with matters of this kind, in keeping with the collegiality of sister district courts in the federal system.

 U.S. District Judge Edward F. Harrington of the District of Massachusetts on January 29, 1993 denied a motion filed on behalf of the patentees to transfer the Massachusetts action to this district. Judge Harrington's ruling may not technically be binding upon me; it does, however, represent a sound judicial evaluation of the issue of where this dispute should be litigated. I agree with that evaluation, and find that transfer to the District of Massachusetts of the case before me is appropriate under 28 USC § 1404(a) on grounds of convenience.

 III

 Up & Adam has attempted to invoke a first-to-file rule. It has argued that the infringement suit before me should be transferred because the suit in Massachusetts was the first to be filed. The plaintiffs before me point out, however, and Up & Adam does not deny, that while the Massachusetts case was filed first, the complaint was not served until after the patentees had initiated their infringement action. The Massachusetts suit was thus one that could be activated should the patentees sue, but which Up & Adam apparently did not intend otherwise to pursue.

 In deciding to grant Up & Adam's transfer request, I have given no weight to its priority of filing. I have concluded that the first-to-file rule is negated by Up & Adam's attempted use of it as described above.

 Were I retaining this case before me, I might even consider directing Up & Adam to show cause why sanctions under 28 USC § 1927 should not be assessed because of the additional litigation which may have been occasioned by the presumably deliberate month-long delay in serving notice of the Massachusetts action. Had the complaint in that action been served immediately, the suit in this district might never have been brought. Instead, plaintiffs before me might well have initially moved to transfer the Massachusetts action to New York, and if that motion was denied, elected to file their infringement claim as a counterclaim ...


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