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S.C. JOHNSON & SON, INC. v. GILLETTE CO.

September 30, 1983

S.C. JOHNSON & SON, INC., PLAINTIFF,
v.
THE GILLETTE COMPANY, DEFENDANT.



The opinion of the court was delivered by: Bua, District Judge.

ORDER

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."

I.

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
  of business.

Id.

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 with 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.

II.

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 ...

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