The opinion of the court was delivered by: McCUSKEY, District Judge.
On November 17, 1997, Plaintiff, Rotec Industries, Inc., filed
a Second Amended Complaint (# 37) against Defendants, Mitsubishi
Corporation (MC), Mitsubishi International Corporation (MIC),
Potain, Tucker Associates, Inc. and Garry Tucker (collectively
referred to as "Tucker"). On July 6, 1998, this court granted
Potain's Motion to Dismiss based upon the lack of personal
jurisdiction. Potain is no longer a party to this action.
There are currently three pending motions before this court. On
January 31, 1998, MIC filed a Motion to Dismiss (# 45). On
October 27, 1998, this court denied this motion, in part, finding
there was no basis to dismiss MIC from the action based upon
misjoinder under Rule 21, The remaining portion of MIC's Motion
remains pending. Tucker also filed a Motion to Dismiss (# 47) on
January 31, 1998. On May 5, 1998, MC filed its Motion to Dismiss
(# 80). Both Tucker and MC raised as an issue, among other
things, that count I of Plaintiffs Second Amended Complaint
should be dismissed because Plaintiff could not show that
Defendants committed an act of patent infringement in the United
States. On October 27, 1998, this court advised Plaintiff that it
may be appropriate to decide that issue by way of summary
judgment. Following careful consideration of all of the documents
and arguments presented by the parties:
(1) This court finds there is no genuine issue of material fact
regarding whether an act of patent infringement was committed in
the United States. Accordingly, all Defendants are entitled to
summary judgment on this issue.
(2) By granting summary judgment to Defendants on Plaintiffs
patent infringement claim (count I), and because Plaintiff has
conceded that its copyright infringement claim (count II) should
be dismissed, no count remains which supports federal
jurisdiction. This court, in its discretion, declines to exercise
supplemental jurisdiction over Plaintiffs remaining state law
claims. Accordingly, this case is terminated.
Plaintiff, an Illinois company whose principal place of
business is in Elmhurst, Illinois, is the assignee of record of a
patent for tower crane supported articulated concrete conveyor
belt systems which are sold under the trademark "Tower Belt." In
1996, Plaintiff sold several of these systems to the Chinese
government to be used in the construction of the Three Gorges Dam
on the Yangtze River in China. On December 16, 1996, MC, a
corporation organized under the laws of Japan, signed a contract
with the Chinese government to provide two tower crane concrete
conveyor systems for use in the construction of the Three Gorges
In its Second Amended Complaint, Plaintiff alleged that MC,
Potain, a French corporation, and C.S. Johnson Co., an Illinois
corporation, formed a joint venture for the purposes of bidding
upon the design and construction of the concrete delivery
systems. C.S. Johnson filed for Chapter 11 bankruptcy in July
1997 and was not named as a Defendant in Plaintiffs Second
Amended Complaint. Plaintiff alleged that Tucker, who resides in
Tigard, Oregon, was hired by C.S. Johnson to perform design work
related to the systems. Plaintiff alleged that Tucker served as
an agent of C.S. Johnson and that MIC served as an agent of its
parent corporation, MC. Plaintiff alleged that Tucker and MIC
willfully participated in, induced and approved the wrongful acts
alleged in the complaint. Plaintiff alleged that all of the
Defendants were liable for damages for patent infringement (count
I) and copyright infringement (count II).
Plaintiff alleged that this court has jurisdiction over the
action based upon these federal claims.
Plaintiff also alleged that all of the Defendants were liable
for damages for trade secret misappropriation, based upon
violation of the Illinois Trade Secrets Act (count III), unlawful
interference with prospective advantage (count IV) and civil
conspiracy to commit all of the above (counts V to VIII).
Plaintiff stated that all of these claims arise under the laws of
Illinois and that this court has supplemental jurisdiction over
the state law claims.
As noted, MIC, Tucker and MC have filed Motions to Dismiss.
Tucker and MC argued that count I should be dismissed because
Plaintiff failed to plead acts of patent infringement which
occurred in the United States and because any infringing acts
occurred outside of the United States. In support of this
contention, both Tucker and MC filed Statements of Undisputed
Facts and an Appendix of documents. Defendants also raised
various reasons why the remaining counts should be dismissed.
On May 4, 1998, Plaintiff was allowed leave to conduct limited
discovery from Tucker solely on the issue of whether an act of
patent infringement was committed in the United States. On
October 27, 1998, this court denied Plaintiff's request for
additional time to complete discovery but allowed Plaintiff
fourteen days to Respond to the Motions to Dismiss filed by
Tucker and MC. This court advised Plaintiff that it may be
appropriate to decide the issue of whether an act of patent
infringement was committed in the United States by way of summary
On November 10, 1998, Plaintiff filed its Response to Tucker's
Statement of Undisputed Facts and its Response to MC's Statement
of Undisputed Facts. On November 13, 1998, Plaintiff was allowed
leave to file its Consolidated Response to Defendants' Motions to
Dismiss. In this Response, Plaintiff contended there are genuine
issues of material facts regarding whether an "offer to sell" was
made in the United States which precludes summary judgment on its
patent infringement claim. However, Plaintiff stated that it did
not object to the dismissal of its claim for copyright
infringement. Plaintiff also argued that its claim for trade
secret misappropriation was sufficient to withstand the Motions
to Dismiss. However, in the alternative, it attached a proposed
Third Amended Complaint which set out factual allegations in
greater detail. This proposed Complaint includes only counts I
through VI as it does not include a copyright infringement claim
or a claim of civil conspiracy based upon copyright infringement.
On November 24, 1998, Tucker and MC filed their Reply to
Plaintiffs Response. Defendants argued strenuously that they are
entitled to summary judgment on Plaintiffs patent infringement
claim. Defendants have conceded, however, that Plaintiffs
proposed Third Amended Complaint "essentially cures the pleading
deficiencies articulated by Defendants" regarding the remaining
On December 3, 1998, Plaintiff hand-delivered a letter to this
court. Plaintiff argued that a case decided on November 12, 1998,
by the Federal Circuit Court of Appeals, 3D Systems, Inc. v.
Aarotech Laboratories, Inc., 160 F.3d 1373 (Fed.Cir. 1998), is
dispositive of the patent infringement issue. On December 8,
1998, this court received a letter from Defendants responding to
Plaintiffs citation of the 3D Systems case.
The issues before this court have been significantly narrowed
based upon Plaintiffs agreement that its copyright infringement
claim should be dismissed and Defendants' concession that
Plaintiffs proposed Third Amended Complaint is sufficient to cure
the pleading deficiencies raised in their Motions to Dismiss.
This court notes that, contrary to Defendants' arguments in their
Motions to Dismiss, civil conspiracy is a recognized cause of
action in Illinois. Adcock v. Brakegate, Ltd., 247 Ill. App.3d ...