## Facts

- International Playtex Corp. (Playtex) owned a patent and alleged infringement involving a brassiere sold at a Woolworth store in Gainesville, Georgia.
- On April 25, 1968, Playtex sued F.W. Woolworth & Co. (Woolworth) for patent infringement in the Northern District of Georgia.
- The accused brassiere was manufactured by William Gluckin & Co., Inc. (Gluckin), a New York corporation with its principal place of business in New York City.
- Gluckin was not licensed to do business in Georgia and was apparently not subject to suit there.
- On May 28, 1968, Gluckin filed a declaratory judgment action against Playtex in the Southern District of New York seeking declarations of patent invalidity and/or noninfringement.
- Relevant witnesses and evidence were concentrated in or near New York: personnel with design/marketing knowledge were in New York or New Jersey, Playtex’s records were in New York, and negotiations occurred in New York.
- On July 2, 1968, the Southern District of New York issued a preliminary injunction restraining Playtex from further prosecuting the Georgia action until final disposition of the New York declaratory judgment case.
- Playtex appealed the preliminary injunction to the Second Circuit.

## Issues

1. Whether the Southern District of New York abused its discretion by preliminarily enjoining Playtex from prosecuting its earlier-filed Georgia infringement action against Woolworth pending resolution of Gluckin’s later-filed New York declaratory judgment action.
2. Whether, in competing patent actions, a later-filed manufacturer declaratory judgment suit may take precedence over an earlier-filed customer infringement suit based on equitable and convenience considerations.

## Decision

- The Second Circuit affirmed the preliminary injunction.
- The court held the district court did not abuse its discretion in staying the Georgia customer suit pending the New York manufacturer declaratory judgment action.
- The court emphasized that the New York action more directly addressed the core dispute between patentee and manufacturer and that New York was the more convenient forum for witnesses and evidence.
- The injunction was limited in scope, restraining prosecution of the Georgia action only until final resolution of the New York case.

## Legal Principles

- A federal court may, in equity, enjoin a party from prosecuting parallel litigation to avoid duplicative proceedings and inconsistent adjudications when another action better resolves the controversy.
- In patent disputes, litigation between the patentee and the manufacturer (as the real party in interest) is generally preferable to litigation against a downstream customer when the manufacturer cannot be joined in the customer forum.
- The first-filed action rule is not dispositive; courts may give priority to a later-filed case when the balance of convenience and the interests of justice favor that forum.
- Appellate review of a preliminary injunction is for abuse of discretion; a reasoned weighing of convenience, completeness of relief, and practical litigation realities supports affirmance.

## Conclusion

The Second Circuit sustained a preliminary injunction staying a patentee’s first-filed customer infringement suit because the manufacturer’s later-filed declaratory judgment action in a more connected and convenient forum offered a more direct and efficient vehicle to resolve validity and infringement, and the district court’s management of the competing cases fell within its equitable discretion.


William Gluckin & Co. v. Int'l Playtex Corp., 407 F.2d 177 (2d Cir. 1969)