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 ...