314 F.3d 494 (10th Cir. 2002), 02-2020, K & V Scientific Co., Inc. v. Bayerische Motoren Werke Aktiengesellschaft ('BMW')

Docket Nº:02-2020.
Citation:314 F.3d 494
Party Name:65 U.S.P.Q.2d 1298 K & V SCIENTIFIC CO., INC., a New Mexico corporation, Plaintiff-Appellant, v. BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT ("BMW"), a corporation organized and existing under the laws of Germany, Defendant-Appellee.
Case Date:December 23, 2002
Court:United States Courts of Appeals, Court of Appeals for the Tenth Circuit
 
FREE EXCERPT

Page 494

314 F.3d 494 (10th Cir. 2002)

65 U.S.P.Q.2d 1298

K & V SCIENTIFIC CO., INC., a New Mexico corporation, Plaintiff-Appellant,

v.

BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT ("BMW"), a corporation organized and existing under the laws of Germany, Defendant-Appellee.

No. 02-2020.

United States Court of Appeals, Tenth Circuit

December 23, 2002

Page 495

John W. Boyd (David A. Freedman with him on the brief), Freedman Boyd Daniels Hollander Goldberg & Cline P.A., Albuquerque, NM, for the appellant.

Edward Ricco (Travis R. Collier and James P. Bieg with him on the brief), Rodey, Dickason, Sloan, Akin & Robb, P.A., Albuquerque, NM, for the appellee.

Before HENRY, PORFILIO, and BRISCOE, Circuit Judges.

BRISCOE, Circuit Judge.

Plaintiff K & V Scientific Co., Inc., appeals the district court's grant of defendant Bayerische Motoren Werke Aktiengesellschaft's motion to dismiss for improper venue pursuant to Fed.R.Civ.P. 12(b) (3). We exercise jurisdiction pursuant to 28 U.S.C. § 1291, and reverse and remand for further proceedings.

I.

Plaintiff is a New Mexico corporation with its principal place of business in Los Alamos, New Mexico. Plaintiff is "engaged in development and commercialization of advanced technology products and processes," including "automotive safety product engineering." App. at 8. Alan Kammerman, who along with his wife Rosalie owns plaintiff, "is an engineer and scientist" who specializes "in marrying sophisticated technologies for new applications." Id.

In 1995, plaintiff began "developing concepts for advanced automotive safety systems, including ... the use of semiconductor bridge technology as the foundation for 'smart' systems for triggering air bags." 1 Id. at 11. The semiconductor bridge technology was first developed by Sandia Laboratories for use in certain defense programs, and was subsequently transferred to SCB Technologies, Inc.

Page 496

(SCBT), a corporation formed for the purpose of commercializing the technology. In early 1996, SCBT, its sister company The Ensign-Bickford Company, and its parent corporation Ensign-Bickford Industries, Inc., entered into agreements with plaintiff, pursuant to which the three companies "encouraged [plaintiff] to pursue relationships with the auto industry and agreed ... to protect [plaintiff's] work-product." 2 Id. at 11-12.

In 1996, plaintiff contacted defendant, a German corporation based in Munich and engaged in the design and manufacture of automobiles. Defendant expressed interest in the igniter technology. On July 8, 1996, plaintiff and defendant signed a confidential disclosure agreement to allow them to "evaluat[e] the ... technology for potential implementation in vehicles manufactured by [defendant]." Id. at 30. After entering into the agreement, the parties began disclosing confidential information to each other so they could explore the possibility of using the igniter technology in defendant's air bag systems. Further, in November 1996, the parties met in Munich and agreed that plaintiff would "design for [defendant's] 'next generation' air bag system[s]." Id. at 13. At the same time, plaintiff and defendant "agreed on a schedule for development and manufacture extending into the year 2005." Id.

On January 27, 1997, without any prior discussion or solicitation, defendant mailed plaintiff a new confidentiality agreement signed by an authorized representative of defendant. The stated purpose of the new agreement was to allow the parties "to exchange confidential information" regarding a "Squib for Airbag," and to "avoid any misuse of such information." Id. at 33. Unlike the July 1996 agreement, the new agreement contained a jurisdictional and choice of law provision which stated: "Jurisdiction for all and any disputes arising out of or in connection with this agreement is Munich. All and any disputes arising out of or in connection with this agreement are subject to the laws of the Federal Republic of Germany." Id. at 34. Plaintiff signed the agreement on February 4, 1997.

After the new agreement was signed, defendant allegedly requested that plaintiff proceed with the igniter design and allegedly reassured plaintiff that, assuming defendant used the technology for its air bag system, the parties would then work out the financial details of their relationship. Plaintiff continued its development work and ultimately provided defendant "with a series of sophisticated designs for interfacing a semiconductor bridge igniter with [defendant's] air bag systems needs." Id. at 14.

Further communication between plaintiff and defendant followed, including another meeting in Munich. Plaintiff alleges that following that meeting, defendant asked plaintiff to "make an offer for development and production of a new air bag igniter." Id. at 15. In response, plaintiff "expressed a willingness either to appropriately license the necessary technology from SCBT, or to become partners with SCBT and The Ensign-Bickford Company and its parent corporation, in pursuing the BMW opportunity." Id. Ensign-Bickford, however, "insisted that [plaintiff] not submit any pricing proposal to [defendant] that Ensign-Bickford had not approved." Id.

Although plaintiff alleges it made a number of proposals to Ensign-Bickford in

Page 497

1997, no agreement was reached. In September 1997, defendant contacted plaintiff "and finally informed [plaintiff] that [defendant] did not intend to pursue any business activities with [plaintiff]." Id. at 19. Plaintiff alleges that defendant, Ensign-Bickford and SCBT then proceeded to engage "in the development and manufacture of the...

To continue reading

FREE SIGN UP