Medeco Sec. Locks, Inc. v. Fichet-Bauche

• Decision Date: 22 July 1983
• Docket Number: Civ. A. No. 82-0789.
• Court: U.S. District Court — Eastern District of Virginia
• Parties: MEDECO SECURITY LOCKS, INC., Plaintiff, v. FICHET-BAUCHE, Defendant.

568 F. Supp. 405

MEDECO SECURITY LOCKS, INC., Plaintiff, v. FICHET-BAUCHE, Defendant.

Civ. A. No. 82-0789.

United States District Court, D. Virginia.

July 22, 1983.

Evans B. Jessee, Roanoke, Va., G. Franklin Rothwell, Bernard, Rothwell & Brown, P.C., Washington, D.C., for plaintiff.

William J. Creech, Jr., Gentry, Locke, Rakes & Moore, Roanoke, Va., for defendant.

MEMORANDUM OPINION

TURK, Chief Judge.

Medeco Security Locks, Inc. brings this declaratory judgment action for declaration of non-infringement as well as declaration of invalidity of the defendant's U.S. Patent No. 4,316,371 which was issued to Fichet-Bauche on February 23, 1982 ("Patent No. '371"). Specifically, this case arises from a controversy concerning guard plates for security locks which are manufactured by Medeco. Medeco, a Virginia corporation, produces cylinder locks and cylinder lock plates. One of its products is sold under the trademark "BODYGUARD." Fichet, is a French corporation, which owns the '371 patent and the product covered by it which is sold under the trademark "SECURIM."

On July 8, 1982, Fichet, vis-a-vis its attorneys, mailed a letter to Medeco stating that Medeco's "BODYGUARD" and "Fichet's Multi-Plate Guard Assembly" bore striking similarities. That letter also informed Medeco that Fichet would sue for infringement of its patent if Medeco did not accept a license to produce and market its lock assembly. Needless to say, Medeco did not accept a license from Fichet. More pertinently, prior to institution of the "threatened" patent suit for infringement, Medeco filed this declaratory judgment action. The case is presently before the court on Fichet's motion to dismiss on the grounds that 1) the defendant is a corporation organized under the laws of France and is not subject to service of process within the Western District of Virginia by long-arm service or otherwise and 2) that the defendant has not been properly served with process in this action. Fichet moves alternatively to quash the return of service of summons on the above grounds.

Medeco, by way of affidavits of Ron N. Oliver and Lyndall L. Shaneyfelt, has presented the court with a list of contacts Fichet has had with the State of Virginia. Those contacts include:

1. Sales in Virginia of Fichet's "Secur-Bolt System Lock." Specifically, plaintiff has shown that one lock was bought by a Virginia resident in Falls Church, Virginia, and that Fichet Secur-Bolt Locks are available in the Washington, D.C. and Alexandria, Virginia areas. (See letter from Gene Howard, Customer Relations of Fichet, Inc. to Shaneyfelt, October 29, 1982, Plaintiff's Exhibit B). Medeco has also shown that a Fichet lock for commercial glass doors was in stock at an Alexandria safe and lock company. Other locksmiths and distributors in northern Virginia, Richmond and Norfolk did not have Fichet locks in stock, but could order those locks upon request.

2. Placement of advertisements for the Fichet Secur-Bolt System Lock in national publications which are distributed and sold in Virginia. According to the publisher's statement for "Locksmith Ledger," a circular published monthly for purposes of serving the physical security industry, the paid circulation in the Commonwealth of Virginia for the May, 1981 issue was 463 subscriptions. The Fichet Secur-Bolt System Lock was repeatedly advertised in the Locksmith Ledger during 1982.

3. Mailing of a letter to Medeco at its Salem, Virginia, office, informing Medeco of Fichet's patent and of the striking similarities between the BODYGUARD and Secur-Bolt systems.

4. Creating apprehension in a Virginia corporation and being able to continue to produce and sell its product.

The court notes that no evidence has been presented by the plaintiff to contradict assertions by the defendant regarding its lack of contacts. Included in those uncontroverted assertions are the following:

1. Fichet has never maintained an official sales agent in Virginia;

2. Fichet neither owns nor leases property in this state;

3. Fichet has no bank account, office or telephone listing here;

4. Fichet has no agent, employee, or officers nor has any of its agents, employees, or officers conducted business in Virginia.

It is parenthetically noted that plaintiff filed an almost identical complaint for declaratory judgment of patent non-infringement and invalidity in the United States District Court for the District of Columbia on November 1, 1982 (Civil Action No. 82-3122). That action was filed six days after plaintiff filed his complaint in this district. On July 14, 1983, the District Court for the District of Columbia dismissed that action for lack of in personam jurisdiction.

The sole issue in this case is whether Fichet is subject to the jurisdiction of this court. Two approaches to analyzing the amount of contacts and for ascertaining whether this court has personal jurisdiction over Fichet have been suggested by the parties. The first approach focuses on the contacts with the Commonwealth of Virginia. This inquiry examines the quantity and quality of business transacted in this state. The alternative approach focuses not solely on the contacts with the State of Virginia but on the contacts Fichet has in the United States. Under this approach, it is argued that since this case involves a federal (patent) question, the issue of whether jurisdiction may be asserted over an alien defendant must be determined by reference to federal law. Federal law, as stated by the plaintiff, would allow jurisdiction to be determined on the basis of Fichet's aggregated contacts with the United States as a whole, regardless of whether the contacts with the state in which the district court sits would be sufficient if considered alone.

Prior to analyzing the approaches suggested, and for purposes of review, the court notices the judicially mandated standard for reviewing questions regarding personal jurisdiction. The burden of proving jurisdiction rests with the plaintiff. McNutt v. General Motors Acceptance Corporation, 298 U.S. 178, 56 S.Ct. 780, 80 L.Ed. 1135 (1936); Haynes v. James H. Carr, Inc., 427 F.2d 700, 704 (4th Cir.1970).

I.

In analyzing whether this court may assert in personam jurisdiction over Fichet the court will first look to the contacts the defendant has with the Commonwealth of Virginia. Both parties identified the applicable section of the Virginia long-arm statute which would provide a jurisdictional basis for asserting jurisdiction over the defendant.¹ In short, that statute, Virginia Code § 8.01-328.1 (1950, as amended), provides for jurisdiction over non-resident defendants who transact business in the state of Virginia when the cause of action arises from such transaction. Both parties are correct in stating that the scope of the transacting business requirement of the Virginia long-arm statute is limited only by the parameters of due process. Those parameters have been defined by both the Virginia and the United States Supreme Courts. In particular, "it is essential in each case that there be some act by which the defendant purposefully avails himself of the privilege of conducting activities within the forum state, thus invoking the benefits and protections of its laws." Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 1239, 2 L.Ed.2d 1283 (1958). See John G. Kolbe, Inc. v. Chromodern Chair Co., 211 Va. 736, 180 S.E.2d 664 (1971) (It is necessary that some purposeful activity is engaged in by the defendant in this state.) With these judicial guidelines recited, the court inquires into the nature, quality, and quantity of contacts Fichet has with the state of Virginia to determine whether the minimum contacts standard required under the due process clause is fulfilled.

Plaintiff asserts that Fichet's contacts with Virginia are very similar to the contacts which were evaluated in Antonious v. Kamata-Ri Limited, 204 U.S.P.Q. 110 (D.Md.1979). In Antonious, a patent infringement case, the district court noted that there was evidence of sales in Maryland (although not substantial), that the foreign corporate defendant's American subsidiary had advertised the alleged infringing product nationally, the defendant had previously maintained a sales agent in Maryland, the defendant had made no effort to prevent sales of the infringing product in Maryland, and the defendant was familiar with the Maryland plaintiff's patent. While the Antonious case is instructive (as the plaintiff maintains), its lesson does not necessarily teach in personam jurisdiction over Fichet. The sales evidenced in the Antonious case indicate significantly more contacts than the minimal sales of Fichet's products in Virginia. Moreover, neither Fichet nor its United States subsidiary, Fichet, Inc. of New York have a sales agent in the State of Virginia. Most importantly, the affidavits tendered by the plaintiff indicate the scarcity of contacts the defendant has with this state.

The plaintiff also argues that the defendant's communication with the plaintiff regarding the noticed "similarities" in the parties' two products is itself transacting business in this state. See Medtronic, Inc. v. Mine Safety Appliance Company, 468 F.Supp. 1132, 1147 (D.Minn.1979). In Medtronic, the defendant's communication with the resident plaintiff was not the only contact the defendant had with the forum state. On the contrary, the defendant's letter of infringement was one of several contacts that the court considered. In this case, the mailing of the letter to Medeco at its Virginia offices alone is not a contact significant enough to warrant the exercise of in personam jurisdiction. See Cascade Corp. v. Hiab-Foca Ab, 619 F.2d 36 (9th Cir.1980) (The mere writing of a letter even if...