Rotec Industries Inc. v. Mitsubishi Corp.

• Decision Date: 13 June 2000
• Citation: 55 USPQ2d 1001,215 F.3d 1246
• Parties: (Fed. Cir. 2000) ROTEC INDUSTRIES, INC., Plaintiff-Appellant, v. MITSUBISHI CORPORATION, TUCKER ASSOCIATES, INC. and GARRY TUCKER, Defendants-Appellees, and MITSUBISHI INTERNATIONAL CORPORATION, Defendant-Appellee. 99-1275 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1246

215 F.3d 1246 (Fed. Cir. 2000)

ROTEC INDUSTRIES, INC., Plaintiff-Appellant, v. MITSUBISHI CORPORATION, TUCKER ASSOCIATES, INC. and GARRY TUCKER Defendants-Appellees, and MITSUBISHI INTERNATIONAL CORPORATION, Defendant-Appellee.

99-1275

United States Court of Appeals for the Federal Circuit

DECIDED: June 13, 2000

Appealed from: U.S. District Court for the Central District of Illinois Judge Michael P. McCuskey

[Copyrighted Material Omitted]

George P. McAndrews, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois, argued for plaintiff-appellant. With him on the brief were John J. Held, Thomas J. Wimbiscus, Matthew G. McAndrews, and James R. Nuttall.

Michael O. Warnecke, Mayer, Brown & Platt of Chicago, Illinois, argued for defendants-appellees Mitsubishi Corporation, Tucker Associates, Inc., and Garry Tucker and for defendant-appellee Mitsubishi International Corporation. With him on the brief were Debra Rae Bernard and Walter M. Rogers.

David T. Audley, Chapman and Cutler, of Chicago, Illinois, for defendant-appellee Mitsubishi International Corporation.

Before NEWMAN, MICHEL, and GAJARSA, Circuit Judges.

Opinion for the court filed by Circuit Judge GAJARSA. Opinion concurring in the judgment filed by Circuit Judge NEWMAN.

GAJARSA, Circuit Judge.

DECISION

Rotec Industries, Inc. ("Rotec") appeals the December 14, 1998 order of the United States District Court for Central District of Illinois granting summary judgment to Mitsubishi Corporation, Tucker Associates, Inc., Garry Tucker and Mitsubishi International Corporation on Rotec's claims of infringement of United States Patent No. 4,170,291 (the "'291 patent"). See Rotec Indus., Inc. v. Mitsubishi Corp., 36 F. Supp.2d 810 (C.D. Ill. 1998). Because we find that the district court did not err in its determinations, we affirm.

BACKGROUND

Rotec is a manufacturer of crane and conveyor systems designed to carry concrete over long distances. These systems are useful in large construction projects, such as the construction of river dams. Rotec is the assignee of record of the '291 patent. The '291 patent discloses a tower crane supported articulated concrete conveyor belt system. Rotec sells a system disclosed by the '291 patent under the trade name "Tower Belt."

On August 9, 1995, the government of the People's Republic of China ("PRC") solicited bid proposals for five units of a concrete placing system to be used in the Three Gorges Dam project on the Yangtze River. All proposals were required to meet the specifications set forth by the Chinese Three Gorges Dam Project Corporation ("TGDPC"). Defendants Mitsubishi Corporation and Mitsubishi International (collectively, "MC") approached Defendant Potain, a French corporation, to propose that Potain become a partner with MC to submit a joint bid proposal. According to Defendants, Potain was working on the design of a conveyor system at that time jointly with C.S. Johnson ("Johnson"). As a result, Johnson was also invited to join in the proposal. Shortly thereafter, Johnson contacted Defendant Garry Tucker ("Tucker") of Defendant Tucker Associates, Inc. ("TA") for additional help in preparing the bid. Tucker agreed to serve as an independent contractor to perform the design work for the project, and attended a formal pre-qualifying bid conference that took place in the PRC in October of 1995.

On January 16, 1996 Potain and MC submitted their joint bid to the PRC to supply the equipment. The parties subsequently negotiated for nearly a year, and on December 16, 1996, Potain, MC and the TGDPC signed a purchase and sale agreement for two of the complete concrete placing systems requested. The terms of the agreement provided for two alternative arrangements. Under one alternative, Potain would design and manufacture the cranes used in the systems, and Johnson would design and manufacture the conveyors. Under the other alternative, Potain would provide all of the necessary components. Under either arrangement, MC would provide the financing.

According to Rotec, much of the activity that preceded the Potain/MC/TGDPC agreement took place in the United States. Specifically, it asserts, inter alia, that:

1 the offering parties met several times in the United States;

2 a delegation from China visited Johnson's headquarters in Champaign, Illinois during the week of December 8, 1996;

3 Tucker prepared pricing information and worked on finalizing design and financial aspects of the bid proposal at his offices in Oregon and at Johnson's Champaign, Illinois headquarters;

4 Johnson provided relevant technical and financial documents to Potain to be used in the preparation of the project bid; and

5 the offer provided that non-staple components were to be made in the United States by a designated U.S. supplier.

On February 14, 1997 Rotec filed suit against MC, Tucker, TA, Potain and C.S. Johnson in the United States District Court for the Central District of Illinois. The lower court exercised jurisdiction over the case under 28 U.S.C. §§ 1331, 1338(a) and 1367(a) (1994). In its Second Amended Complaint, Rotec alleged that Defendants infringed the '291 patent by making an "offer for sale" of the invention claimed therein in the United States, in violation of 35 U.S.C. §§ 271(a) and 271(f) (1994). Rotec also alleged a civil conspiracy to commit patent infringement between and among Defendants and Johnson,¹ in violation of Illinois state law.

Pursuant to Fed. R. Civ. P. 12(b)(6), Defendants moved to dismiss the Second Amended Complaint on two grounds. First, Defendants moved to dismiss for failure to state a claim, arguing that Rotec could not prove that Defendants committed the alleged act of infringement-- the offer to sell-- within the United States. Second, Defendant Potain moved to dismiss for lack of personal jurisdiction. After allowing limited discovery on these issues, the district court granted Potain's motion to dismiss for lack of personal jurisdiction, and treated the remaining motions as motions for summary judgment under Fed. R. Civ. P. 56.

On December 14, 1998, the district court granted Defendants' summary judgment motions after finding insufficient evidence of an offer for sale within the United States. The court held that there was no genuine dispute as to the following facts:

1 the agreement called for all of the conveyor components to be made in Japan and China, regardless of what may have been provided in earlier proposals;

2 no components were actually made in the United States;

3 the bid proposal, including the description of the product and the proposed price, was finalized in Hong Kong and presented in China;

4 all negotiations with the Chinese government prior to signing the agreement took place in China; and

5 the agreement was signed in China.

See id. at 815, 817. The court also held that Rotec's evidence of a meeting between Johnson and a TGDPC delegate in the United States was incompetent hearsay. As a result, the court concluded, "Plaintiff cannot establish an essential element to its cause of action for patent infringement, an act of infringement in the United States." Id. at 817 (citation omitted). Having dismissed Rotec's federal law claims, the court then declined to exercise supplemental jurisdiction over the remaining state law claim. See id. at 818. On January 12, 1999, the district court denied Rotec's motion for reconsideration. See id. at 818-19. Rotec now appeals the district court's judgment of non-infringement.

DISCUSSION

A. Standard of Review

As noted above, the district court, pursuant to Fed. R. Civ. P. 12(b)(6), treated Defendants' motion to dismiss as a motion for summary judgment. "Rule 12(b)(6) provides that if matters outside the complainant's pleading are presented to the court the motion shall be treated as one for summary judgment under Rule 56." Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157, 1164, 26 USPQ2d 1038, 1044 (Fed. Cir. 1993). Thus, we must treat Defendants' motions as motions for summary judgment in reviewing the propriety of the district court's order.

This court reviews all grants of summary judgment by a district court de novo. See Conroy v. Rebok Int'l, 14 F.3d 1570, 1574, 29 USPQ2d 1373, 1376 (Fed. Cir. 1994). Accordingly, the court must decide for itself "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The moving party is entitled to summary judgment when the nonmoving party "fails to make a showing sufficient to establish the evidence of an element essential to that party's case . . . since a complete failure of proof concerning an essential element . . . necessarily renders all other facts immaterial." Celotex, 477 U.S. at 322-323. In addition, "[w]hen the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (footnote omitted).

B. Rotec's § 271(a) Claim

Under 35 U.S.C. § 271(a) (Supp. 1997), "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States" infringes the patent. According to Rotec, Defendants violated § 271(a) when they "offered to sell" the invention claimed in the '291 patent to TGDPC. For the purposes of the motions now before this court, Defendants do not dispute that the '291 patent claims the system they offered to sell to TGDPC. They do dispute, however, that they made any offer for sale to TGDPC in the United States. Defendants say their offer was made in China, not the United States, thereby absolving them of any § 271(a) liability.

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