United States District Court, D. Massachusetts
AMAX, INC. AND WORKTOOLS, INC., Plaintiffs,
ACCO BRANDS CORP., Defendant.
Nathaniel M. Gorton United States District Judge
Amax, Inc. (“Amax”) and Worktools, Inc.
(“Worktools” and, collectively with Amax,
“plaintiffs”) allege that defendant ACCO Brands
Corp. (“ACCO” or “defendant”)
infringed their patents and trademark in violation of 35
U.S.C. § 271(a) and 15 U.S.C. §§ 1114,
1125(a)(1)(A). Defendant's motions 1) to dismiss or
transfer venue and 2) for an expedited briefing schedule and
to stay are pending before the Court. For the reasons that
follow, those motions will be denied.
plaintiffs are two corporations. Amax is organized under the
laws of Delaware and has a principal place of business in
East Greenwich, Rhode Island. Worktools is organized under
the laws of (and maintains its principal place of business
in) California. Defendant ACCO is a Delaware corporation with
a principal place of business in Lincolnshire, Illinois.
plaintiffs and defendant sell competing desktop staplers.
Worktools is the assignee of U.S. Patent Nos. 7, 178, 709 and
7, 748, 589 as to which Amax holds an exclusive license. Amax
is also the assignee of U.S. Trademark Registration No. 3,
377, 921 for “Long Reach”. Defendant manufactures
and sells the Swingline Quick Touch Full Strip and the
Swingline Quick Touch Compact staplers. Plaintiffs allege
that defendant's staplers infringe its patents and
April, 2016, plaintiffs filed a complaint alleging two counts
of patent infringement in violation of 35 U.S.C. §
271(a) and (b) and trademark infringement in violation of the
Lanham Act, 15 U.S.C. §§ 1114, 1125(a)(1)(A). In
July, 2016, defendant answered and moved to transfer the case
to the United States District Court for the Northern District
of Illinois. In October, 2016 this Court denied the motion to
transfer and in December, 2016 convened a scheduling
February, 2017, with leave of Court, defendant filed an early
motion for summary judgment which plaintiffs opposed. In
June, 2017, defendant filed motions 1) to dismiss or transfer
venue based upon a recent decision of the United States
Supreme Court, TC Heartland LLC v. Kraft Foods Grp.
Brands LLC, 137 S.Ct. 1514 (2017), and 2) to expedite
briefing and stay the case. This memorandum and order
addresses those motions and, for the reasons that follow,
they will be denied.
The TC Heartland Decision
federal patent statue states that plaintiffs may file claims
for patent infringement
in the judicial district where the defendant resides, or
where the defendant has committed acts of infringement and
has a regular and established place of business.
28 U.S.C. § 1400(b). In 1957, the Supreme Court
concluded in Fourco Glass Co. v. Transmirra Prod.
Corp., 353 U.S. 222, 229 (1957), that 28 U.S.C. §
1400(b) “is the sole and exclusive provision
controlling venue in patent infringement actions” and
that 28 U.S.C. § 1391(c), which addresses venue
generally, is not incorporated into 28 U.S.C. § 1400(b).
Moreover, the Fourco Court stated that it would not
infer that Congress changed 28 U.S.C. § 1400(b) through
the revision of other statutes “unless such intention
is clearly expressed.” Id. at 227. The Federal
Circuit Court of Appeals (“Federal Circuit”)
diverged from Fourco in VE Holding Corp. v.
Johnson Gas Appliance Co., 917 F.2d 1574, 1583 (Fed.
Cir. 1990), holding that 28 U.S.C. § 1400(b)
incorporated 28 U.S.C. § 1391(c) and thus venue in
patent cases is proper if a court has personal jurisdiction
over a corporate defendant.
2017, the Supreme Court again addressed venue in patent cases
in its TC Heartland decision. In that case, the
Court reversed VE Holding Corp., determining that,
consistent with its prior holding in Fourco, venue
in patent cases is determined solely by 28 U.S.C. §
1400(b). TC Heartland LLC, 137 S.Ct. at 1520. The
Court rejected the Federal Circuit's assertion that
changes Congress made to 28 U.S.C. § 1391 had been
incorporated into 28 U.S.C. § 1400(b) based upon the
absence of a “clear indication of [Congressional]
Motion to Dismiss or Transfer Venue
moves to dismiss or transfer venue on the grounds that, under
TC Heartland, venue is no longer proper in this
Court because it is neither incorporated nor has a regular
and established place of business in Massachusetts. Defendant
further contends that it preserved its objection to venue by
1) denying that venue was proper in its answer and 2) filing
a prior motion to transfer pursuant to 28 U.S.C. §
1404(a). Plaintiffs respond that defendant's motion
should be denied for four reasons: 1) it waived its objection
to venue, 2) venue is proper in this Court pursuant to 28
U.S.C. § 1400(b), 3) the ...