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Amax, Inc. v. Acco Brands Corp.

United States District Court, D. Massachusetts

August 8, 2017

AMAX, INC. AND WORKTOOLS, INC., Plaintiffs,
v.
ACCO BRANDS CORP., Defendant.

          MEMORANDUM & ORDER

          Nathaniel M. Gorton, United States District Judge.

         Plaintiffs 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.

         I. Background

         The 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.

         The 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 and trademark.

         In 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 scheduling conference.

         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 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.

         II. Defendant's Motion for Summary Judgment

         Defendant 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 trademark infringement.

         A. Legal Standard

         The 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.” Id.

         If the 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.

         B. Application

         1. Alleged Infringement of ...


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