21 F.3d 1558 (Fed. Cir. 1994), 92-1326, Beverly Hills Fan Co. v. Royal Sovereign Corp.

Docket Nº:92-1326.
Citation:21 F.3d 1558
Party Name:30 U.S.P.Q.2d 1001 BEVERLY HILLS FAN COMPANY, Plaintiff-Appellant, v. ROYAL SOVEREIGN CORP. and Ultec Enterprises Co., Ltd., Defendants-Appellees.
Case Date:March 08, 1994
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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21 F.3d 1558 (Fed. Cir. 1994)

30 U.S.P.Q.2d 1001



ROYAL SOVEREIGN CORP. and Ultec Enterprises Co., Ltd.,


No. 92-1326.

United States Court of Appeals, Federal Circuit

March 8, 1994

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G. Franklin Rothwell, Rothwell, Figg, Ernest & Kurz, P.C., of Washington, DC, argued for plaintiff-appellant. With him on the brief were Raymond A. Kurz and Celine M. Jimenez.

Jeffrey G. Sheldon, Sheldon & Mak, of Pasadena, CA, argued for defendants-appellees. With him on the brief was Elizabeth L. Swanson.

Before NEWMAN, Circuit Judge, SMITH, Senior Circuit Judge, and PLAGER, Circuit Judge.

PLAGER, Circuit Judge.

This is a patent infringement case in which we are called upon to determine whether the district court properly declined to exercise personal jurisdiction over foreign (from the standpoint of the forum) accused infringers or whether, applying the stream of commerce theory, plaintiff made the required jurisdictional showing. Beverly Hills Fan Company (Beverly) appeals the judgment of the United States District Court for the Eastern District of Virginia (Civil Action No. 91-1834-A), dated March 6, 1992, dismissing Beverly's complaint for lack of personal jurisdiction over defendants Royal Sovereign Corp. (Royal) and Ultec Enterprises Co., Ltd. (Ultec). That judgment was entered upon defendants' motion brought pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure. We

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reverse and remand for further proceedings consistent with this opinion.


Beverly is the current owner of U.S. Design Patent No. 304,229 (the '229 patent), which issued on October 24, 1989. That patent is directed to the design of a ceiling fan. Beverly is incorporated in Delaware and has its principal place of business in California.

Ultec is the manufacturer of a ceiling fan which Beverly alleges infringes the '229 patent. Ultec is incorporated in the People's Republic of China (PRC) and manufactures the accused fan in Taiwan. Royal imports into and distributes the accused fan in the United States. It is incorporated in New Jersey.

On December 11, 1991, Beverly filed suit against Ultec and Royal in the United States District Court for the Eastern District of Virginia. Beverly's complaint alleged in relevant part that both defendants are infringing and inducing infringement of the '229 patent by selling the accused fan to customers in the United States, including customers in Virginia; and that defendants are selling the accused fan to the Virginia customers through intermediaries.

Ultec and Royal subsequently filed a motion to dismiss for lack of personal jurisdiction pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure. In support of their motion, defendants submitted several declarations. A first declaration was from James Cheng (the Cheng Declaration), the President of Ultec. In that declaration, Mr. Cheng stated that Ultec has no assets or employees located in Virginia; has no agent for the service of process in Virginia; does not have a license to do business in Virginia; and has not directly shipped the accused fan into Virginia. A second declaration was from T.K. Lim (the Lim Declaration), the President of Royal. In that declaration, Mr. Lim stated that Royal, as well, has no assets or employees in Virginia; has no agent for the service of process in Virginia; does not have a license to do business in Virginia; made a one-time sale of unrelated goods to Virginia in 1991 which represented less than three percent of Royal's total sales that year; and has not sold the accused fan to distributors or anyone else in Virginia.

Beverly then submitted several declarations in opposition to the motion. A first declaration was from Lyndal L. Shaneyfelt (the first Shaneyfelt Declaration), a private investigator. In that declaration, Mr. Shaneyfelt stated that, on December 4, 1991, he purchased one of the accused fans from the Alexandria, Virginia outlet of a company known as Builder's Square; that a manual accompanying the fan identified Royal as the source of the fan; that the fan was accompanied by a warranty which Royal would honor; and that Builder's Square has approximately six retail outlets located throughout Virginia. A second declaration was from Shelley A. Greenberg (the Greenberg Declaration), the President of Beverly. In that declaration, Mr. Greenberg stated that Beverly does a substantial amount of business in Virginia; that Beverly's Virginia customers include all six Builder's Square outlets; and that Beverly sells a commercial embodiment of the '229 patent to customers in Virginia through these outlets.

The trial court, after argument from the parties and consideration of their written submissions, ruled on the motion. The court correctly recognized that there were two limits to its jurisdictional reach: Virginia's long-arm statute and the Due Process Clause of the U.S. Constitution. 1 The court found its analysis of the limits imposed by the Due Process Clause conclusive of the matter.

Relying on Supreme Court precedent as interpreted by the Fourth Circuit in Chung v. NANA Development Corp., 783 F.2d 1124 (4th Cir.), cert. denied, 479 U.S. 948, 107 S.Ct. 431, 93 L.Ed.2d 381 (1986), the court concluded that the relevant inquiry was whether defendants' contacts with the forum were sufficiently purposeful that litigation in

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the forum could reasonably have been foreseen. The only purposeful contact the court considered relevant was the one-time shipment of unrelated goods referred to in the Lim Declaration. 2 Finding that such contact was not sufficient to make litigation in Virginia reasonably foreseeable, the court granted the motion to dismiss. On March 6, 1992, an order granting judgment for defendants was entered consistent with the court's ruling.

Beverly subsequently filed a motion for reconsideration of the March 6 judgment. In support of that motion, Beverly submitted a second declaration by Mr. Shaneyfelt (the second Shaneyfelt Declaration). In that declaration, Mr. Shaneyfelt stated that, as of March 17, 1992, based on telephone conversations with unnamed employees at the six Builder's Square outlets, fifty-two of the accused fans were available for sale at these outlets. Defendants then moved to strike this evidence, and opposed the motion for reconsideration. On April 8, 1992, the court denied the motion for reconsideration, presumably denying the motion to strike. 3 This appeal followed.


  1. During the pendency of this appeal, defendants moved in this court to strike the second Shaneyfelt Declaration on the grounds that it is not properly before us. A motions panel of this court denied defendants' motion, deferring the matter to the merits panel. We turn to this issue first. When appropriate, we are guided by Fourth Circuit law on the purely procedural aspects of this question. 4

    Defendants make several arguments why we cannot consider the second Shaneyfelt Declaration. Their first argument is premised on a purported deficiency in Beverly's papers. The first sentence in Beverly's notice of appeal refers only to the March 6 Order and Judgment:

    Notice is hereby given that [Beverly] hereby appeals ... from the Order and Judgment dated March 6, 1992, granting Defendants' Motion to Dismiss for Lack of Personal Jurisdiction in Civil Action No. 91-1834-A.

    Thus, argue defendants, as to the April 8 decision on the motion for reconsideration, the notice fails to comply with Fed.R.App.P. 3(c), which states in relevant part: "The notice of appeal ... shall designate the judgment, order or part thereof appealed from." Defendants further argue that since a failure to comply with Fed.R.App.P. 3(c) is a fatal jurisdictional defect, Torres v. Oakland Scavenger Co., 487 U.S. 312, 314, 108 S.Ct. 2405, 2407, 101 L.Ed.2d 285 (1988), this court would lack jurisdiction to review the April 8 decision, and thus the power to consider the record pertaining to that decision, including the second Shaneyfelt Declaration.

    Defendants' focus is misplaced and too narrow; the proper focus is on the record as a whole. See Foman v. Davis, 371 U.S. 178, 181, 83 S.Ct. 227, 229, 9 L.Ed.2d 222 (1962); 9 James W. Moore et al., Moore's Federal Practice, p 203.17, at 3-79 to -82 (2d ed. 1993). The second sentence of Beverly's notice expressly refers to the April 8 decision. 5 The parties briefed and argued the merits of that decision. And there is a substantial connection between the March 6 judgment, which is referred to in the first sentence of the notice, and the April 8 decision. Under similar circumstances, courts have not hesitated to exercise jurisdiction over a judgment or decision not expressly referred to in the notice of appeal. See Trust Co. Bank v.

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    United States Gypsum Co., 950 F.2d 1144, 1147-48 (5th Cir.1992); Lockman Found. v. Evangelical Alliance Mission, 930 F.2d 764, 772 (9th Cir.1991); Matute v. Procoast Navigation Ltd., 928 F.2d 627, 629-30 (3d Cir.), cert. denied, --- U.S. ----, 112 S.Ct. 329, 116 L.Ed.2d 270 (1991); Matarese v. LeFevre, 801 F.2d 98, 105-06 (2d Cir.1986), cert. denied, 480 U.S. 908, 107 S.Ct. 1353, 94 L.Ed.2d 523 (1987).

    Defendants next argue that we cannot consider the second Shaneyfelt Declaration because there has been no showing that the information therein was "newly discovered evidence which by due diligence could not have been discovered [earlier]" as required by Fed.R.Civ.P. 60(b)(2). But Rule 60(b)(2) is not governing. The universal rule is that "if a post-judgment motion is filed within ten days of the entry of judgment and calls into question the correctness of that judgment it should be treated as a motion under Rule 59(e), however it may...

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