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ROTEC INDUSTRIES, INC. v. MITSUBISHI CORP.

December 14, 1998

ROTEC INDUSTRIES, INC., AN ILLINOIS CORPORATION, PLAINTIFF,
v.
MITSUBISHI CORPORATION, A CORPORATION ORGANIZED UNDER THE LAWS OF JAPAN; MITSUBISHI INTERNATIONAL CORPORATION, A NEW YORK CORPORATION; TUCKER ASSOCIATES, INC., AN OREGON CORPORATION; AND GARRY TUCKER, AN INDIVIDUAL, DEFENDANTS.



The opinion of the court was delivered by: McCUSKEY, District Judge.

ORDER

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.

FACTS

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 Dam.

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 judgment.

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 counts.

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.

ANALYSIS

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 ...


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