CHAS. PFIZER & CO., Inc., v. OLIN MATHIESON CHEMICAL CORPORATION; CHAS. PFIZER & CO., Inc. v. The UPJOHN COMPANY; CHAS. PFIZER & CO., Inc. v. BRISTOL LABORATORIES, Inc.

United States Court of Appeals for the Fifth Circuit1955-09-16No. Nos. 15552-15554

225 F.2d 718

Summary · law.co

Holding. The court dismissed the appeals from the transfer orders, holding that such orders are interlocutory and not appealable, and rejecting Pfizer's attempt to recharacterize the appeal as one from a denial of injunctive relief.

Pfizer obtained a patent on tetracycline and sued three pharmaceutical companies for infringement in Georgia federal court on the same day the patent issued. Each defendant subsequently filed declaratory judgment actions in New York federal court and moved to dismiss, transfer, or stay the Georgia cases. The district court transferred the Georgia cases to New York under the applicable transfer statute without ruling on Pfizer's request to enjoin the New York proceedings. Pfizer appealed, arguing the defendants failed to satisfy transfer requirements and that the court should have blocked the New York litigation.

The appellate court rejected Pfizer's appeal on jurisdictional grounds. The court held that transfer orders are interlocutory and not appealable under controlling precedent. Pfizer attempted to reframe the appeal as challenging a denial of injunctive relief, but the court found this argument unavailing because the trial judge never actually ruled on Pfizer's injunction motions—those requests remained pending in the transferred cases.

Summary generated by law.co from the public-domain opinion. The opinion text itself is public domain.

Key issues

Appealability of orders transferring venue under 28 U.S.C.A. § 1404(a)
Whether transfer orders constitute interlocutory orders
Proper characterization of an appeal when the trial court has not ruled on a motion for injunctive relief

Procedural posture

Pfizer appealed a district court order transferring patent infringement cases from Georgia to New York, contending the transfer was improper and that injunctive relief should have been granted to prevent parallel litigation.

Authorities cited

No cited authorities resolved to law.co cases yet.

Opinion · public domain

majority opinion

JONES, Circuit Judge.

Lloyd H. Conover made application for a patent on an antibiotic entitled Tetracycline. He made an assignment to Chas. Pfizer & Co., Inc., herein called Pfizer. Patent No. 2,699,054 was issued on January 11, 1955. On the same day Pfizer brought three suits in the Atlanta Division of the United States District Court for the Southern District of Georgia alleging infringement of the patent and praying for injunctions, damages, attorneys’ fees, and general relief. Pfizer is a Delaware corporation with its principal office in New York City, New York. It has manufacturing plants in Brooklyn, New York, Groton, Connecticut, and Vigo, Indiana. The infringement suits were brought against (1) Olin Mathie-son Chemical Corporation, a Virginia corporation; (2) the Upjohn Company, a Michigan corporation; and (3) Bristol Laboratories Inc., a New York corporation. Each defendant, as well as Pfizer, has an office in New York and in many other states of the Union.

Each of the defendants, on January 25, 1955, brought suit against Pfizer in the United States District Court for the Southern District of New York seeking a declaratory judgment that it had not infringed any valid claim of the Pfizer patent. Each defendant filed in the Atlanta Court a motion seeking, in the alternative, (a) the dismissal of the complaint, (b) a transfer to the Southern District of New York, or (c) a stay pending a determination in New York of the suit for declaratory judgment. Pfizer countered in each of the Atlanta cases with a motion for a preliminary injunction to restrain the defendants from prosecuting their actions in New York. Affidavits were filed on behalf of all of the parties.

The motions were heard by Judge Boyd Sloan to whom this Court is indebted for a succinct statement of the facts and the issues before him as reported in 131 F.Supp. 21. By the District Court’s order the Atlanta cases were transferred to the Southern District of New York under 28 U.S.C.A. § 1404(a). There was no ruling upon the Pfizer motion to enjoin the prosecution of the New York actions.

Pfizer appeals and on appeal contends that the defendants failed to make the showing required for a transfer under § 1404(a); and that the Court should have enjoined the prosecution of the New York actions.

In Crummer Co. v. DuPont, 5 Cir., 1952, 196 F.2d 468, certiorari denied 344 U.S. 851, 856, 73 S.Ct. 91, 97, 97 L.Ed. 662, 665, this Court held that an order made pursuant to § 1404(a) transferring a cause to another District Court was interlocutory and not appealable. Pfizer seeks to avoid the impact of this precedent by urging that the order of the District Court denied the injunctive relief it sought. If, says Pfizer, we regard the appeals as being from orders denying applications for injunctions, we may consider such appeals and with them the incidence of transfer. The answer to this is that the District Court did not make any order upon Pfizer’s motions for injunctions, nor was there any occasion to do so. Such motions remain a part of the causes as transferred to the New York Court.

The appeals from the orders transferring the actions, respectively, are dismissed.

Argued before us at the same time as the above considered appeals was a motion of Pfizer for leave to file a petition for a Writ of Mandamus in a proceeding entitled Ex parte Chas. Pfizer & Co., Inc., 225 F.2d 720. This has been disposed of by a separate opinion filed this day.