232 F.3d 1369 (Fed. Cir. 2000), 00-1052, LSI Industries Inc. v. Hubbell Lighting, Inc.

Docket Nº:00-1052.
Citation:232 F.3d 1369
Opinion Judge:GAJARSA, Circuit Judge.
Party Name:LSI INDUSTRIES INC., Plaintiff-Appellant, v. HUBBELL LIGHTING, INC., Defendant-Appellee.
Attorney:J. Robert Chambers, Wood, Herron, & Evans, L.L.P., of Cincinnati, Ohio, argued for plaintiff-appellant. With him on the brief was Theodore R. Remaklus. Marks S. Bicks, Roylance, Abrams, Berdo & Goodman, L.L.P., of Washington, DC, argued for defendant-appellee. With him on the brief was Alfred N. ...
Judge Panel:Before GAJARSA, LINN, and DYK, Circuit Judges.
Case Date:November 29, 2000
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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232 F.3d 1369 (Fed. Cir. 2000)

LSI INDUSTRIES INC., Plaintiff-Appellant,

v.

HUBBELL LIGHTING, INC., Defendant-Appellee.

No. 00-1052.

United States Court of Appeals, Federal Circuit.

November 29, 2000

Manufacturer of canopy luminaire brought action for design patent infringement and trademark infringement against competitor. The United States District Court for the Southern District of Ohio, Sandra S. Beckwith, J., 64 F.Supp.2d 705, dismissed for lack of personal jurisdiction, and manufacturer appealed. The Court of Appeals, Gajarsa, Circuit Judge, held that competitor was subject to personal jurisdiction in Ohio based on its continuous and systematic contacts there.

Reversed and remanded.

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J. Robert Chambers, Wood, Herron, & Evans, L.L.P., of Cincinnati, Ohio, argued for plaintiff-appellant. With him on the brief was Theodore R. Remaklus.

Marks S. Bicks, Roylance, Abrams, Berdo & Goodman, L.L.P., of Washington, DC, argued for defendant-appellee. With him on the brief was Alfred N. Goodman.

Before GAJARSA, LINN, and DYK, Circuit Judges.

DECISION

GAJARSA, Circuit Judge.

LSI Industries, Inc. (" LSI" ) appeals the September 17, 1999 final judgment of the United States District Court for the Southern District of Ohio dismissing its complaint against Hubbell Lighting, Inc. (" Hubbell" ) pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction. LSI Industries, Inc. v. Hubbell Lighting, Inc., 64 F.Supp.2d 705 (S.D.Ohio 1999). We reverse and remand.

BACKGROUND

LSI manufactures and sells lighting products, including its Scottsdale canopy luminaire. Hubbell sells a competing product that LSI contends infringes, inter alia, one of its design patents and its trademark rights. Hubbell is a Connecticut corporation that maintains its principal place of business in Virginia. It employs multiple distributors in Ohio and nets several millions of dollars per year from sales in Ohio. Hubbell, however, has not sold any of its allegedly infringing products in Ohio.

LSI filed a complaint in the United States District Court for the Southern District of Ohio on May 24, 1999 against Hubbell. Five weeks later, LSI filed a motion for a temporary restraining order and a preliminary injunction to prevent Hubbell from selling its allegedly infringing product. In response, Hubbell moved to dismiss the case for lack of personal jurisdiction and improper venue, or, in the alternative, for a change of venue. On July 8, 1999, the district court conducted a preliminary hearing. It determined a reasonable probability existed that LSI would establish that the district court could exercise personal jurisdiction over Hubbell. The court, however, denied LSI's motion for a temporary restraining order. Subsequently, Hubbell renewed its motion to dismiss for lack of personal jurisdiction, or, alternatively, for a change of venue.

On rehearing, the district court determined that the Ohio long-arm statute, Ohio Revised Code (" O.R.C." ) section 2307.382, fails to reach the limits of the Due Process Clause of the United States Constitution. Accordingly, the district court stated that satisfaction of both the Due Process Clause and the Ohio long-arm statute was required for it to exercise personal jurisdiction over Hubbell. Based on Hubbell's significant contacts with the state of Ohio, the court concluded that it could properly exercise general jurisdiction over Hubbell pursuant to the Due Process Clause. The court, however, citing Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 30 U.S.P.Q.2d 1001 (Fed.Cir.1994), held that the locus of LSI's injury could not be in Ohio because Hubbell did not sell its allegedly infringing product in Ohio. Pursuant to this determination, the district court stated that Hubbell's sales activity failed to comply with the Ohio long-arm statute, and in particular with

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O.R.C. section 2307.382(A)(4).1 Therefore, the court concluded it could not exercise personal jurisdiction over Hubbell and consequently, granted Hubbell's motion to dismiss for lack of personal jurisdiction.

DISCUSSION

A. Standard of Review

Whether a court maintains personal jurisdiction over a party is a question of law that we review de novo. 3D Systems, Inc. v. Aarotech Laboratories, Inc., 160 F.3d 1373, 1376, 48 U.S.P.Q.2d 1773, 1775 (Fed.Cir.1998).

B. Jurisdiction and Choice of Law

The Federal Circuit maintains exclusive jurisdiction over an appeal from a district court when that court's jurisdiction is based at least in part on a claim arising under the patent laws of the United States. 28 U.S.C. §§ 1295(a); 1338(a) (1994 & Supp. IV 1998).

When analyzing personal jurisdiction for purposes of compliance with federal due process, Federal Circuit law applies. 3D Sys., 160 F.3d at 1377, 48 U.S.P.Q.2d at 1776. We defer to a state's highest court to interpret whether a defendant is amenable to process in the forum state. See Hortonville Joint Sch. Dist. No. 1 v. Hortonville Educ. Ass'n, 426 U.S. 482, 488, 96 S.Ct. 2308, 2312, 49 L.Ed.2d 1 (1976); see also 3D Sys., 160 F.3d at 1377, 48 U.S.P.Q.2d at 1775-76.

C. Personal Jurisdiction

A two-prong inquiry governs the determination of whether a court may properly exercise personal jurisdiction over an out-of-state defendant. First, a defendant must be amenable to process in the forum state. Second, the court's exercise of personal jurisdiction over the defendant must comply with the precepts of federal due process as delineated in International Shoe Co. v. State of Wash., Office of Unemployment Compensation and Placement, 326 U.S. 310, 66 S.Ct. 154, 90 L.Ed. 95 (1945) and its progeny.

The first prong of the personal jurisdiction inquiry was outlined by the United States Supreme Court in Omni Capital International, Ltd. v. Rudolf Wolff & Co., Ltd., 484 U.S. 97, 104, 108 S.Ct. 404, 409,98 L.Ed.2d 415 (1987):

Before a court may exercise personal jurisdiction over a defendant, there must be more than notice to the defendant and a constitutionally sufficient relationship between the defendant and the forum. There must also be a basis for the defendant's amenability to service of summons.... [S]ervice of process in a federal action is covered generally by Rule 4 of the Federal Rules of Civil Procedure....

A defendant is amenable to service of process if it " could be subjected to the jurisdiction of a court of general jurisdiction in the state in which the district is located." Fed.R.Civ.P. 4(k)(1)(A). Satisfaction of this standard may be attained in a variety of ways. For example, this requirement is fulfilled when a defendant's conduct falls within the bounds of one of a forum state's jurisdictional statutes, such as a long-arm statute or a nonresident motorist statute. Alternatively, in Ohio, this prong of the personal jurisdiction inquiry is fulfilled when the requirements outlined by the Ohio Supreme Court in Perkins v. Benguet Consolidated Mining Co., 158 Ohio St. 145, 107 N.E.2d 203 (Ohio 1952), are met.

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In Perkins, Idonah Slade Perkins (" Perkins" ) brought two actions in the common pleas court of Ohio against several parties including the Benguet Consolidated Mining Company (" Benguet" ), a foreign corporation organized under the laws of the Philippine Islands. Perkins v. Benguet Consol. Min. Co., 99 N.E.2d 515, 63 Ohio Law Abs. 131 (Ohio Com.Pl.1948). Benguet had been conducting business in Ohio, but the causes of action sued on did not arise in Ohio and did not relate to the corporation's activities in Ohio.2 Id. In each case, Benguet moved to quash the service of process on its president in Ohio. Id. The common pleas court granted Benguet's motions on the grounds that (1) the defendant was a foreign corporation and therefore could not be served with summons in accordance with the provisions of the Ohio statutes referencing service on a partnership, and (2) the business conducted by the defendant in Ohio was insufficient legally to authorize service of process on the defendant in Ohio. Perkins v. Benguet Consol. Min. Co., 155 Ohio St. 116, 98 N.E.2d 33, 35 (Ohio 1951).

These decisions were affirmed by the Ohio Court of Appeals and by the Ohio Supreme Court. Perkins v. Benguet Consol. Min. Co., 88 Ohio App. 118, 95 N.E.2d 5 (Ohio Ct.App.1950); Perkins, 98 N.E.2d at 33. The Ohio Supreme Court held:

The doing of business in this state by a foreign corporation ... will not make the corporation subject to service of summons in an action in personam brought in the courts of this state to enforce a cause of action not arising in this state and in no way related to the business or activities of the corporation in this state.3

Perkins, 98 N.E.2d at 34. Perkins appealed to the United States Supreme Court.

The United States Supreme Court stated that it was unclear whether the Ohio Supreme Court rested its decision on Ohio law or on the Fourteenth Amendment. Perkins v. Benguet Consol. Min. Co., 342 U.S. 437, 441, 72 S.Ct. 413, 416, 96 L.Ed. 485 (1952), reh'g denied, 343 U.S. 917, 72 S.Ct. 645, 96 L.Ed. 1332 (1952). It then determined, on the facts at issue, that federal due process neither compelled nor prohibited Ohio from taking or declining jurisdiction over Benguet. Id. at 446, 72 S.Ct. at 418. The Court vacated the case and remanded it to the Ohio Supreme Court to determine whether personal jurisdiction was appropriate under Ohio law. Id. at 448, 72 S.Ct. at 420.

Pursuant to the Supreme Court's determination that federal due process neither

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compelled nor prohibited the exercise of jurisdiction, the Ohio Supreme Court held:

Where jurisdiction is not limited by statutes to causes of action arising within the state, an action on a transitory cause may be maintained in the courts of this state by a nonresident against a foreign corporation doing business here, although the cause did not...

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