United States District Court, D. Massachusetts
AMAX, INC. AND WORKTOOLS, INC., Plaintiffs,
ACCO BRANDS CORP., Defendant.
MEMORANDUM & ORDER
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. Defendant's motion
for summary judgment is pending before the Court. For the
reasons that follow, that motion 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 California and maintains its principal place of
business there. 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
(“the ‘709 patent”) and 7, 748, 589
(“the ‘589 patent”) 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” (“the Long Reach trademark”).
Defendant manufactures and sells the Swingline Quick Touch
Full Strip and Quick Touch Compact staplers. Plaintiffs
allege that defendant's staplers infringe their patents
April, 2016, plaintiffs filed a complaint alleging two counts
of patent infringement in violation of 35 U.S.C. §
271(a) and (b) two counts of trademark infringement in
violation of the Lanham Act, 15 U.S.C. §§ 1114,
1125(a)(1)(A). Defendant answered in due course and moved to
transfer venue. In October, 2016 this Court denied that
motion to transfer and in December, 2016 convened a
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 Court
promptly denied those motions. Meanwhile, in February, 2017,
with leave of Court, defendant filed an early motion for
summary judgment which plaintiffs opposes. That motion is the
subject of this memorandum and order.
Defendant's Motion for Summary Judgment
moves for summary judgment, asserting that 1) its staplers do
not infringe the ‘709 patent, 2) the asserted claims of
the ‘589 patent are invalid under the doctrine of
collateral estoppel and 3) its senior use of “Long
Reach” on its staplers is a complete defense to
role of summary judgment is “to pierce the pleadings
and to assess the proof in order to see whether there is a
genuine need for trial.” Mesnick v.
Gen. Elec. Co., 950 F.2d 816, 822 (1st Cir. 1991).
The burden is on the moving party to show, through the
pleadings, discovery and affidavits, “that there is no
genuine dispute as to any material fact and that the movant
is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). A fact is material if it “might
affect the outcome of the suit under the governing
law.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). A genuine issue of
material fact exists where the evidence with respect to the
material fact in dispute “is such that a reasonable
jury could return a verdict for the nonmoving party.”
moving party has satisfied its burden, the burden shifts to
the non-moving party to set forth specific facts showing that
there is a genuine, triable issue. Celotex Corp.
v. Catrett, 477 U.S. 317, 324 (1986). The
Court must view the entire record in the light most favorable
to the non-moving party and indulge all reasonable inferences
in that party's favor. O'Connor v.
Steeves, 994 F.2d 905, 907 (1st Cir. 1993). Summary
judgment is appropriate if, after viewing the record in the
non-moving party's favor, the Court determines that no
genuine issue of material fact exists and that the moving
party is entitled to judgment as a matter of law.
Alleged Infringement of ...