(dissenting):
I respectfully dissent.
The jurisdiction of the Panel is properly invoked in this proceeding because the cases included are civil actions (1) pending in different districts and (2) involving one or more common questions of fact.1 28 U.S.C. § 1407.
The presence or absence of these jurisdictional requirements is nearly always readily determinable. The more difficult task of the Panel is to determine whether or not transfers of actions for coordinated or consolidated pretrial proceedings “will be for the convenience of parties and witnesses and will promote the just and efficient conduct of such actions.” Id. In this proceeding, the record presented to us indicates that transfer will serve neither convenience nor justice nor efficiency.
To begin with, the important questions of fact which are common to all the cases are outnumbered by those which are not. The validity of the Butterfield patent presents common factual questions and so does one aspect of the matter of notice of infringement.2 All other important factual questions require separate examination into the respective activities of each of the defendants in the 41 actions.
Turning now to the specifics supporting that conclusion:
The majority opinion is correct in suggesting that laches will be a common question in the actions. But it will be a common question of law or equity, not of fact. The facts relating to laches will vary from defendant to defendant because the defense of laches always turns upon the facts individually relevant. For example, in one case before us, the defendant alleges that he has been notoriously producing the lens in question for eight years while, in other cases, it is *516clear that the defendants are newer to the field. Moreover, laches is not available as a defense unless the defendant urging it shows that the delay of the plaintiff has caused detriment to that defendant. This question is necessarily unique to each defendant claiming laches.
The majority opinion also errs to the extent it suggests that notice of infringement will be a significant question of fact for common discovery. Unless the plaintiff marked his claimed invention or its container with the word “patent” and with the patent number, the exact opposite is true.3 If such mark is absent, then, to recover for infringement, the patentee must prove actual notice to the particular defendant. 35 U.S.C. § 287. The adequacy of the marking is a simple factual question which is common to all the cases. But it is one which will require little discovery. If, however, the marking is inadequate, then the plaintiff will have to prove that he gave notice to each of the defendants in the 41 actions and that each continued thereafter to infringe. That actual notice question will require pretrial discovery of facts unique to each case and common to none.
Finally, the majority opinion fails to recognize that the issue of the scope of the patent involves common questions of fact only in a minor respect. The abstract definition of the scope of the Butterfield patent is, of course, an element common to all the cases.4 But extrapolation of that definition involves little or no pretrial inquiry. On the other hand, the effective scope of the patent, as opposed to its abstract definition, can be determined solely in concrete cases by measuring each of the defendants’ lenses, one by one, against the Butterfield patent. Thus the scope of the patent will be meaningfully determined only by decisions on the issue central to each case— infringement. And infringement does not involve common questions of fact. To prove infringement, the plaintiff will have to establish in each case that the lens made by the defendant is of a particular configuration and fits on the wearer’s cornea in a particular manner.
In sum, then, there are, at most, two issues involving common questions of fact in these 41 actions. One of the two insofar as it may be common, is factually trivial and will require very little discovery. In contrast, at least three major issues raise complex questions requiring discovery of facts unique to each case.
In the light of the foregoing, can it be said that the statutory criteria for transfer — convenience of parties and witnesses, efficiency, and justice — are satisfied?
The first and second statutory criteria —convenience of parties and of witnesses —may be discussed together. In this proceeding, all responding defendants oppose transfer. Only the plaintiff Butterfield supports it. One reason the defendants oppose transfer is clear. They believe that it will substantially increase the costs to them and greatly decrease costs to plaintiff. Plaintiff has brought the actions here involved against 41 widely scattered optometrists and contact lens manufacturers. He indicates an intention to bring hundreds of such actions. Only four of the presently filed suits were brought in Chicago, the transferee district. Thus, more than 90% of these small defendants, scattered from Massachusetts to California, will be forced to conduct pretrial in a forum in which they were not and probably could not have been sued. To suggest that they can employ lead counsel is only to say that they can adopt what may be the *517least inexpensive mode of dealing with this extra burden.5
The extent of the inconvenience to the defendants and their witnesses will turn, in large part, on the range of discovery conducted in the transferee court. Since all the records and witnesses relevant to the question of infringement will be in the areas in which the defendants’ respective businesses are located, it would appear that discovery on this issue should be conducted in the transferor districts. It is hardly an answer to say that such discovery may be remanded. The burden will be on the defendants to move the Panel for such remand. Such motions and decisions upon them add to complication, not efficiency. Moreover, if such motions should be denied, the burdens on the defendants of producing for consolidated discovery will be very heavy, indeed. The majority does note that the transferee judge may make orders to protect the defendants, but, once again, the burden is on the defendants to secure such orders.
The defendants are engaged in small optical businesses. The individual damage claims against most of them are relatively small. To increase, by transfer for pretrial, the defendants’ litigation costs will be to impose substantial pressure on them to settle even if their position on the merits seems stronger than that of the plaintiff.
For all these reasons, transfer will impose great inconvenience on the many defendants and their witnesses. Convenience to the single plaintiff does not justify the inconveniences, indeed, hardships, to the defendants.
Section 1407 further provides that transfer should promote efficiency. Transfer necessarily imposes extra burdens of paper and clerical work on court clerks and others. An outline of the procedural steps involved in transfers makes this abundantly clear.
The Manual for Clerks circulated by the Panel indicates that the most efficient procedure would be as follows: Upon receiving the Panel’s order of transfer, the clerk of the transferee court transmits a certified copy thereof to the clerks of the transferor courts. After receiving and filing this order, each transferor clerk makes an appropriate entry on the docket sheet of each affected case and then forwards to the transferee court the files, records, and a copy of the docket sheet of each transferred case.
The transferee clerk usually maintains a master docket sheet for all transferred eases, individual docket sheets for each such case and a complete combined pretrial file for each transferor court. Thereafter, copies of all motions, depositions, exhibits, and other pretrial papers are included in each combined district file. Notices, orders and pleadings must be served on all counsel for all parties, unless alternative arrangements can be agreed upon.
Motions for remand may be initiated by any party, the transferor or transferee courts or the Panel. Only the Panel has the power to order a remand. Hearings may be necessary. Orders of remands must be transmitted to each transferor court by the transferee court and appropriate entries must be made on all the aforementioned docket sheets. The individual case file, a docket sheet for each remanded case, a copy of the master docket sheet and the combined district file must then be transmitted back to the appropriate district court. If some but not all of the cases from a specific district are remanded, then copies of all subsequent motions, orders and other filings *518must be sent to the transferor court for inclusion in the combined district file. In re Concrete Pipe, 302 F.Supp. 244, 254-255, n. 1 (JPML 1969).
In this proceeding, a total of 37 cases must be transferred to the Northern District of Illinois from 18 different district courts. Just the routine costs of the paperwork and recordkeeping involved in consolidation will be great.
Because of the clerical costs of transfer, because of the paucity of common questions of fact, and because of the likelihood that the parties will have to make and the Panel hear remand motions, transfers are hardly likely to promote efficiency.
The last question is whether transfer will promote justice. In this regard, the majority opinion places great weight on the possibility that a motion for summary judgment by defendants could terminate the litigation.6 To the extent that the majority opinion relies upon that possibility, it treads dangerously close to making an assessment on the merit. Such an assessment would transcend the limited powers vested in the Panel by Congress. Those powers relate solely to the transfer and remand of actions consolidated for pretrial proceedings. 28 U.S.C. § 1407. The statute will be searched in vain for any provision empowering the Panel to adjudicate upon the merits. That power of adjudication remains in the appropriate United States courts.
In any event, posed against the justice which may result if summary judgment is eventually granted is the injustice of the adversary advantage given plaintiff by transfer. In fact, this advantage may attend plaintiff even if summary judgment may result since most of the pretrial preparation would very likely have to be completed before consideration of such a motion.
Moreover, the virtue of consolidation in possibly ensuring uniform decisions is likely to be achieved without consolidation. The first decision or decisions reached in these cases, if they are based on common issues, would have persuasive authority in the other cases.
Transfer here, then, is likely not to be convenient nor efficient nór just. It appears to reward a plaintiff whose case is assessed as being weak. And it may well encourage institution of frivolous suits by plaintiffs exploiting Section 1407 transfers to force nuisance value settlements.
. There are 41 cases pending in 19 widely scattered United States District Courts.
. See infra at 513.
. Although plaintiff alleges proper marking in his pleadings, he also alleges actual notice. In a deposition taken by defendant John H. Rottmann, plaintiff seems to admit that he has never taken steps to enforce patent marking by his licensees.
. In the prosecution of the Butterfield patent, No. 2,544,246, its scope has been generally limited to a contact lens whose interior side conforms to the curvature of the wearer’s cornea.
. The unqualified statement in the majority opinion on the benefits of employing lead counsel may impel some litigants before the Panel to retain counsel they otherwise would not select.
. At least three Butterfield patent cases have already completed pretrial and will go to trial soon. It appears that summary judgment has not been granted in any of them.