Before 2017

Suit Against Kimberly-Clark Transferred from Western District of Washington Mirrors Recently-Filed Complaint

In a recent post, we reported that Pedigo Products, Inc. (“Pedigo”) and its subsidiary OR Specific (“OR-S”) (collectively, “Pedigo”) filed suit on February 5, 2013 in the Northern District of Georgia against Kimberly-Clark Worldwide, Inc. and Kimberly-Clark Global Sales, LLC (collectively, “Kimberly-Clark”), alleging infringement of U.S. Patent No. 6,091,102 (“the ‘102 Patent”) through its manufacture and sale of certain surgical drape products.  But that filing was not the beginning of the dispute between Pedigo and Kimberly-Clark; Pedigo had filed a nearly identical suit against Kimberly-Clark on June 7, 2012 in the Western District of Washington, Pedigo’s home forum.[1]

On December 19, 2012, Kimberly-Clark moved to transfer the suit to the Northern District of Georgia.  In its motion, Kimberly-Clark noted that OR-S had previously asserted the ‘102 Patent in November 2010, when it sued Drape Options, LLC, a Tennessee-based company, in the Northern District of Georgia.  That case, Kimberly-Clark observed, proceeded through early discovery before it was dismissed in June 2011.  Kimberly-Clark also stated that the design, development, marketing and sale of its accused surgical drape products are centered in Roswell, Georgia (which is in the Northern District of Georgia).  As a result, Kimberly-Clark urged the Court to exercise its discretion to transfer the case to Georgia under 28 U.S.C. § 1404(a).  On January 30, 2013, Judge Benjamin Settle of the Western District of Washington granted Kimberly-Clark’s motion and ordered that the case be transferred to the Northern District of Georgia.  The case was officially transferred on February 15, 2013.   

Based on the timing of the transfer and of the recently-filed complaint, it appears that Pedigo decided it was in its interest to file a new suit rather than wait for the transfer to take effect.  Pedigo’s filing of a motion for preliminary injunction in the related suit supports the idea that time was of the essence to Pedigo.  Interestingly, Kimberly-Clark mentioned in its motion to transfer–before Pedigo’s motion for a preliminary injunction–that Pedigo had first threatened to seek injunctive relief many months into the case, thus presumably undercutting a claim of irreparable harm.  At this point, no action has taken place in the transferred case, and one would think that one or both parties will seek to consolidate the two related actions in the near future.  In the related action, briefing on Pedigo’s motion for a preliminary injunction is ongoing.

The case is Pedigo Prods., Inc. and OR Specific v. Kimberly-Clark Worldwide, Inc., No. 1-12-cv-00490-RLV, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Senior Judge Robert L. Vining. 
[1] In the first complaint, Kimberly-Clark Global Sales, LLC was not a named defendant.  Kimberly-Clark represented in its motion briefing that this entity is “principally involved in the activity related to the accused surgical drapes.” 

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