United States District Court, Northern District of Illinois, E.D
September 30, 1983
S.C. JOHNSON & SON, INC., PLAINTIFF,
THE GILLETTE COMPANY, DEFENDANT.
The opinion of the court was delivered by: Bua, District Judge.
Before the Court is defendant Gillette's Motion to Dismiss or
Transfer the instant lawsuit based on lack of venue. For the
reasons stated herein, the Motion to Dismiss is denied and the
Motion to Transfer is granted.
Plaintiff Johnson is a corporation with its primary place of
business in Racine, Wisconsin. Defendant Gillette is a Delaware
corporation with its headquarters in Boston, Massachusetts.
Gillette also maintains sales offices in Schaumburg, Illinois and
elsewhere across the country.
Gillette is accused of infringing a patent held by Johnson in
connection with the development, marketing, and sale of a shaving
cream known as "Gillette Foamy Gel." Johnson markets a similar
product by the brand name of "Edge."
Johnson brought the instant patent infringement suit in this
district under 28 U.S.C. § 1400(b).*fn1 According to § 1400(b),
Any civil action for a patent infringement may be
brought in the judicial district where the defendant
resides, or where the defendant has committed acts of
infringement and has a regular and established place
Defendant argues that because it does not reside in this
district and because it has committed no acts of infringement in
this district, the requirements of § 1400(b) have not been met,
notwithstanding that defendant admits to having a regular and
established place of business here. This Court does not agree.
At issue, clearly, is whether Gillette's alleged acts of
infringement have been committed in this district. This Circuit
has clearly rejected any test of venue based on "technicalities
of sales law" in favor of an approach which assesses the
practical effect of the infringers' activities on the rights
granted the patentee by 35 U.S.C. § 154. Union Asbestos & Rubber
Co. v. Evans Products Co., 328 F.2d 949 (7th Cir. 1964). In Union
Asbestos, the defendant had conducted a massive sales and
promotion effort including the solicitation of orders and the
demonstration of the accused product to prospective customers.
The Court held that a narrow or limited interpretation of the
term "acts of infringement" was to be rejected and that the
degree of sales activity present was a sufficient impairment of
plaintiff's rights as to constitute an act of infringement for
venue purposes. Id. at 952. Similarly, in Dual Manufacturing &
Engineering, Inc. v. Burris Industries, Inc., 531 F.2d 1382 (7th
Cir. 1976), a broad interpretation of the term was applied to
support a holding that continuous solicitation of sales, coupled
the display of the product, constituted an act of infringement
for venue purposes.
In the case at bar, Gillette has been involved in a concerted
sales effort in this district in an attempt to get various major
local retailers to carry the product under attack. Among the
activities undertaken were various sales calls upon the retailers
by Gillette's local sales people. In these meetings, the sales
people left samples of the product for the various buyers to try
and even presented one retailer with a final price quotation and
detailed information regarding advertising. As a result of these
efforts, one retailer requested certain sample packs to determine
how the product would be presented at its stores. Finally, that
retailer placed an order for over 100,000 cans of the accused
product. Viewed in the broad sense required by the decisions
cited above, it is clear that Gillette's activities constituted
an act of infringement under 28 U.S.C. § 1400(b). The motion to
dismiss for lack of venue must therefore be denied.
Defendants have also moved under 28 U.S.C. § 1404(a) for a
transfer of venue. Under § 1404(a),
For the convenience of parties and witnesses, in the
interest of justice, a district court may transfer
any civil action to any other district or division
where it might have been brought.
Because the defendant in this case has its principal place of
business in Boston and additionally admits that if any
infringement activity was present, it was centered in Boston,
that forum meets either test of venue set out in 28 U.S.C. § 1400(b)
and therefore is a district where the instant case might
have originally been brought. Defendant argues that the
convenience of the parties and witnesses as well as the interests
of justice require that this Court transfer the matter to the
U.S. District Court for the District of Massachusetts. The Court
Clearly, the convenience of the parties will be served by a
transfer of the case to Massachusetts. As noted, Gillette has its
principal place of business in Boston. Additionally, Johnson's
offices are not in this district but in Racine, Wisconsin. Were
the Court to deny the motion to transfer venue, both parties
would be required to transport all of their witnesses, documents,
and other sources of proof to this district. Clearly, maintenance
of this suit in the district in which one of the parties resides
would be preferable.
Johnson argues that it would be inconvenienced by having to try
the instant lawsuit in Boston because flights between Milwaukee
and Boston are infrequent. Johnson claims that it should not be
put to the inconvenience of flying out of Chicago, which has far
more frequent flights to Boston. Nevertheless, Johnson does not
claim it would be unduly burdened by having to prosecute this
case in Chicago. This Court does not believe that having to fly
out of Chicago or deal with the infrequent flights from Milwaukee
would place any significant burden on plaintiff which would not
be present were this case to be litigated in Chicago. Certainly,
from plaintiff's standpoint, litigation of this suit in Wisconsin
would be most convenient. However, that option is not available
under § 1400(b) as venue would not be proper in that district.
Clearly, Boston remains the next most convenient alternative and
the best forum available.
Although the Court concedes that an act of infringement
sufficient for venue to be proper has transpired in this
district, it is clear that a vast majority of the activities
concerning the cause of action took place in either Racine,
Wisconsin, or Boston. As noted, the U.S. District Courts of
Wisconsin are unavailable as a venue in the instant case. Boston,
however, is a forum in which much of the proof required in this
case can be found and is an available forum having a much
stronger connection to the case than this district.
As a general rule, the preferred forum is that which is the
center of the
accused activity. As the Court noted in AMP Incorporated v.
Burndy of Midwest, Inc., 340 F. Supp. 21, 24-25 (N.D.Ill. 1971),
"The trier of fact ought to be as close as possible to the milieu
of the infringing device and the hub of activity centered around
its production." In this case, all development, testing,
research, and production of the subject product occurred in
Massachusetts. Additionally, virtually all marketing and sales
decisions were made there. By contrast, only some very limited
sales activity occurred in this district.
Virtually all of defendant's witnesses are to be found in
Boston. Few, if any, are present in this district, yet neither
are many of the plaintiff's witnesses. Additionally, all
documents relative to the accused product can be found in
Massachusetts. While plaintiff's documents are primarily in
Wisconsin, it would present only a slightly greater burden to
require such evidence be made available for proceedings in Boston
as compared to Chicago.
Essentially, this district is a forum unrelated to the heart of
the instant lawsuit, especially in light of the strong connection
which Boston has with the suit. The only reason this forum was
selected is that the federal courts of Wisconsin are unavailable.
While plaintiff's choice of forum is important, it is of reduced
value where, as here, the chosen forum lacks significant contact
with the underlying cause of action. Hotel Constructors, Inc. v.
Seagrave Corp., 543 F. Supp. 1048 (N.D.Ill. 1982).
From the foregoing, it is clear that in the interest of justice
and for the convenience of the parties and witnesses, the U.S.
District Court for the District of Massachusetts is far a
preferable forum to this one in which to proceed with this case.
Defendant has sustained its burden of showing that the balance of
convenience weighs strongly in favor of the transferee court.
Butterick Co. v. Will, 316 F.2d 111 (7th Cir. 1963); Payne v.
AHFI Netherlands, B.V., 482 F. Supp. 1158 (N.D.Ill. 1980).
Also pending in the instant case is the plaintiff's motion for
a preliminary injunction. Having ruled that transfer of this case
is warranted, the Court will leave the preliminary injunction
matter for the transferee court's consideration and therefore, at
this juncture, denies such motion. See, Wilmot H. Simonson, Co.,
v. Green Textile Associates, Inc., 554 F. Supp. 1229 (N.D.Ill.
1983); MacNeil Bros. Co. v. Cohen, 158 F. Supp. 126 (D.Md. 1958).
For the foregoing reasons, defendants' Motion to Dismiss is
denied, but its Motion to Transfer under 28 U.S.C. § 1404(a) is
granted. The cause is ordered transferred to the District Court
for the District of Massachusetts.
IT IS SO ORDERED.