AMAX, INC. et al v. ACCO BRANDS CORP.

Filing 90

Judge Nathaniel M. Gorton: ENDORSED ORDER entered. MEMORANDUM AND ORDER In accordance with the foregoing, defendants motion to dismiss or transfer venue (Docket No. 71) is DENIED and its motion for expedited briefing and a stay (Docket No. 73) is DENIED as moot. So ordered.(Caruso, Stephanie)

United States District Court
District of Massachusetts
)
AMAX, INC. AND WORKTOOLS, INC., )
)
Plaintiffs,
)
)
v.
)
)
)
ACCO BRANDS CORP.,
)
)
Defendant.
)

Civil Action No.
16-10695-NMG

Gorton, J.
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 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.
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 (and maintains its principal place of business in)
California.

Defendant ACCO is a Delaware corporation with a

principal place of business in Lincolnshire, Illinois.

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The 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 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) 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 conference.
In 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.
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II.

The TC Heartland Decision

The 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.
In May, 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
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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] intent”. Id.
III. Motion to Dismiss or Transfer Venue
Defendant 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
complaint alleges two claims of trademark infringement as to
which venue is proper in this Court and 4) judicial economy
instructs against dismissing or transferring the case.
Defendant’s contention that it preserved its defense of
improper venue by stating in its answer that it “denies that
venue is proper in this District” is insufficient.
has found that

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This Court

even a defending party who seasonably asserts Rule 12
defenses in his answer may forfeit those defenses by his
subsequent actions. Failure to press such defenses after
raising them may result in abandonment.
Plunkett v. Valhalla Inv. Servs., Inc., 409 F. Supp. 2d 39, 41
(D. Mass. 2006).
After filing its answer, defendant failed to raise the
defense of improper venue.

In July, 2016, defendant moved to

transfer venue pursuant to 28 U.S.C. 1404(a) which allows a case
to be transferred to any other district in which it could have
been filed “[f]or the convenience of parties and witnesses, in
the interest of justice.” 28 U.S.C. 1404(a).

As the Supreme

Court has observed, “[section] 1404(a) operates on the premises
that the plaintiff has properly exercised his venue privilege.”
Van Dusen v. Barrack, 376 U.S. 612, 634 (1964) (superseded by
statute on other grounds); see also Ponce De Leon Hosp. Corp. v.
Avalon Logistics, Inc., 117 F. Supp. 3d 124, 131 (D.P.R. 2015)
(“[Section 1404(a)] presupposes that venue is proper in the
original district court, but it may also be proper in another
more convenient district.”).

By filing a motion to transfer

venue based upon convenience and failing to assert that venue
was improper in that motion, defendant conceded that venue is
proper in this Court.
Not only did defendant implicitly concede that venue is
proper in this Court, it also attended a scheduling conference

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and requested leave to file an early summary judgment motion at
that conference.

This Court granted that request and defendant

moved for summary judgment in February, 2017.

By filing an

early motion for summary judgment, defendant abandoned its
defense of improper venue.

This Court therefore declines to

consider the merits of venue under 28 U.S.C. § 1404(b).
Moreover, defendant’s contention that an objection to
improper venue under 28 U.S.C. § 1400(b) was previously
unavailable is incorrect.

Under the “raise-or-waive rule” a

party is generally considered to have waived defenses that it
fails to raise.

Although the rule has a “narrow equitable

exception” for unavailable defenses, that exception applies
only if (i) at the time of the procedural default, a prior
authoritative decision indicated that the defense was
unavailable, and (ii) the defense became available
thereafter by way of supervening authority . . . .
Bennett v. City of Holyoke, 362 F.3d 1, 7 (1st Cir. 2004).
Since 1957, the Supreme Court has consistently held that
venue in patent cases is determined by 28 U.S.C. 1400(b). TC
Heartland LLC, 137 S. Ct. at 1520; see also Cobalt Boats, LLC v.
Sea Ray Boats, Inc., No. 2:15-21, 2017 WL 2556679, at *3 (E.D.
Va. June 7, 2017) (“Based on the Supreme Court's holding in TC
Heartland, Fourco has continued to be binding law since it was
decided in 1957, and thus, it has been available to every
defendant since 1957.”).

The Federal Circuit is not empowered

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to overturn a decision of the Supreme Court.

Accordingly, the

objection to improper venue was available to defendant and, by
not raising it, defendant waived that objection. See Cobalt
Boats, 2017 WL 2556679, at *3.
Because this Court finds that defendant abandoned and
therefore waived the available defense of improper venue, it is
unnecessary to consider plaintiffs’ other arguments opposing the
motion to dismiss and transfer venue.
IV.

Motion for Expedited Briefing and for a Stay

There is no need to stay the case pending a decision on
venue because defendant abandoned its venue objection.
Therefore, the motion for expedited briefing and a stay will be
denied as moot.

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ORDER
In accordance with the foregoing, defendant’s motion to
dismiss or transfer venue (Docket No. 71) is DENIED and its
motion for expedited briefing and a stay (Docket No. 73) is
DENIED as moot.

So ordered.

/s/ Nathaniel M. Gorton______
Nathaniel M. Gorton
United States District Judge
Dated June 29, 2017

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