63 F.3d 694 (8th Cir. 1995), 94-3284, Minnesota Min. and Mfg. Co. v. Nippon Carbide Industries Co., Inc.

Docket Nº:94-3284.
Citation:63 F.3d 694
Party Name:35 U.S.P.Q.2d 1791 MINNESOTA MINING and MANUFACTURING COMPANY, a Delaware Corporation, Appellant, v. NIPPON CARBIDE INDUSTRIES CO., INC., a Japanese Corporation, Appellee.
Case Date:August 11, 1995
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit

Page 694

63 F.3d 694 (8th Cir. 1995)

35 U.S.P.Q.2d 1791


Corporation, Appellant,


NIPPON CARBIDE INDUSTRIES CO., INC., a Japanese Corporation, Appellee.

No. 94-3284.

United States Court of Appeals, Eighth Circuit

August 11, 1995

Submitted May 18, 1995.

Rehearing and Suggestion for Rehearing En Banc Denied Oct. 11, 1995.

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Michael Ciresi, Minneapolis, MN, argued (Deborah J. Palmer, Ronn B. Kreps, and Shelley Carthen Watson, on brief), for appellant.

Louis Touton, Los Angeles, CA, argued (Sally J. Whiteside, Minneapolis, MN, on brief), for appellee.

Before RICHARD S. ARNOLD, Chief Judge, WOOD, Jr., [*] Senior Circuit Judge, and FAGG, Circuit Judge.


The District Court dismissed a breach-of-contract action brought by Minnesota Mining & Manufacturing Co. (3M) against Nippon Carbide Industries Co., Inc. (NCI), after finding that NCI did not have the necessary minimum contacts with Minnesota to support personal jurisdiction. For reasons set forth below, we reverse and remand for proceedings consistent with this opinion.


Minnesota Mining & Manufacturing Co., through the work of one of its employees, Dr. Joseph McGrath, invented cellular retroreflective sheeting. This sheeting is made up of cellular or encapsulated lenses which retroreflect light and illuminate signs without temporarily distracting a driver's sight. 3M applied for and received a United States patent, typically referred to as the McGrath Patent. In addition to the United States patent, 3M owns eleven foreign patents for the same invention. 1 Four of those eleven patents are involved in this case.

In the late 1980s, 3M sued Seibu Polymer Chemical Industry Co., Ltd., and Seibulite International, Inc., in France, Australia, Canada, the Republic of China, the United Kingdom, and the United States, alleging that Seibu produced and sold a retroreflective sheeting known as Ultralite Grade (ULG) which infringed upon the McGrath Patent. In trials before the United States International Trade Commission and the High Court

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of Justice in the United Kingdom, the McGrath patent was held to be valid and infringed. NCI then bought part of the Seibu product line, including the retroreflective sheeting assets. In 1991, 3M and NCI began a series of negotiations in an attempt to resolve 3M's claims of patent infringement.

During those discussions, NCI and 3M personnel conducted several meetings: one meeting in Minnesota, one in Los Angeles, one in Honolulu, and two in Tokyo. Also there were extensive phone calls, letters, and facsimiles between Japan and St. Paul, Minnesota, 3M's headquarters. Drafts of an agreement were sent back and forth between the two companies as they were reviewed and edited. When the language of the contract finally had been agreed upon, the contract was signed by NCI and then sent to 3M. The contract became effective and binding upon the parties on the date 3M executed it in St. Paul, Minnesota, April 29, 1992. 2

After entering into this agreement, NCI developed and began making and selling a retroreflective-sheeting product called Nikkalite Ultralite Special Grade Sheeting (ULS). Recognizing that this new sheeting related to the earlier settlement discussions between the parties, NCI contacted 3M in September of 1992 to discuss whether ULS fell within the terms of the April 1992 contract.

This second set of negotiations took place over a year and a half with at least eight meetings in St. Paul and three other meetings in Tokyo. Some testing of the ULS sheeting occurred in Minnesota in the joint presence of NCI and 3M scientists. Throughout this time, numerous phone calls, letters, and facsimiles were sent between the two companies' principal places of business. Also, 3M found out that NCI had continued selling its surplus of ULG after it had executed the agreement. NCI states that 3M...

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