in the case of patent infringement and that the general venue provisions of section 28 U.S.C. § 1391(c) had to give way where there was a specific section dealing with a certain cause of action, i. e., patent infringement.
It will be noted that the plaintiff in this case states that his patent infringement claim is brought under 28 U.S.C. § 1338(a). It has nothing to do with venue in a patent case but only with jurisdiction. It is noted, however, that § 1338(b) may have something to do with jurisdiction of the claim of unfair competition which is joined with the suit under the patent laws.
While Fourco has been criticized in 1 J. Moore, Federal Practice P 0.144(9) (2d ed. 1978), it is nevertheless the law of the land until overruled by the U.S. Supreme Court and this court must abide by it.
It is noted that the case now before us neither is a suit for a declaratory judgment nor a suit to enjoin threatened infringement. According to Professor Moore, such cases are excepted from the Fourco Rule. The cause of action set forth in Count 4 is only a patent infringement action.
It will be noted that the U.S. Supreme Court has previously held that multiple defendants cannot sue in the same district unless the requirements for both defendants are met as to venue in that district. Stonite Products Co. v. Melvin Lloyd Co., 315 U.S. 561, 62 S. Ct. 780, 86 L. Ed. 1026 (1942).
Since the patent infringement claim must be transferred to the Northern District of Illinois where the defendants reside and the alleged patent infringement occurred, we next must consider whether to sever the patent infringement claim and to retain jurisdiction over Counts 1, 2 and 3 for tortious violation of confidential relationship, unfair competition and imputed liability. It is true that had plaintiff pleaded only the first two causes of action and said nothing about patent infringement, we could retain jurisdiction under Koratron Co. v. Deering Milliken Inc., 418 F.2d 1314 (9th Cir. 1969), where the court pointed out that plaintiff had strained out all patent infringement language from its pleadings and pleaded simply causes of action for common law relief. But here the plaintiff did not do so. We have here a patent infringement action joined with common law causes of action for tortious interference and unfair competition.
It would seem absurd for this court to sever the patent infringement claim and transfer it to the Northern District of Illinois while retaining the common law counts. Plaintiff in its brief, p. 7, admits that the issues, documentation, witnesses and other evidentiary matters as to Counts 1, 2 and 3 are largely the same as those stated in Count 4. For us to retain the three common law counts while the patent infringement action is being tried in the Northern District of Illinois would be intolerable judicial inefficiency leading to possible inconsistent results on the same set of facts.
We agree with Irving R. Kaufmann, now Chief Judge of the Second Circuit as he determined in Bradford Novelty Co. v. Manheim, 156 F. Supp. 489 (S.D.N.Y.1957), decided after the Fourco case, a count of unfair competition must go along with the patent infringement action which is being transferred to a proper district. He states that Ferguson v. Ford Motor Co., 77 F. Supp. 425 (S.D.N.Y.1948) and Dolly Toy Co. v. Bancroft Rellim Corp., 97 F. Supp. 531 (1951), cases which he decided, are not controlling. As Judge Kaufmann points out, the related claims were surrendered in Southern Textile Machine Co. v. Isley, 153 F. Supp. 119 (M.D.N.C.1957). Any retention of these claims would lead to subversion of the Supreme Court ruling.
We therefore determine that the patent infringement claim as well as all other claims in this case must be transferred in the interest of justice under 28 U.S.C. §§ 1406(a) and 1404(a) to the Northern District of Illinois.
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