Conwed Corporation v. NORTENE, SA

404 F. Supp. 497, 190 U.S.P.Q. (BNA) 246, 1975 U.S. Dist. LEXIS 16276
CourtDistrict Court, D. Minnesota
DecidedSeptember 9, 1975
Docket4-74-Civ. 20
StatusPublished
Cited by24 cases

This text of 404 F. Supp. 497 (Conwed Corporation v. NORTENE, SA) is published on Counsel Stack Legal Research, covering District Court, D. Minnesota primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Conwed Corporation v. NORTENE, SA, 404 F. Supp. 497, 190 U.S.P.Q. (BNA) 246, 1975 U.S. Dist. LEXIS 16276 (mnd 1975).

Opinion

MEMORANDUM ORDER

LARSON, District Judge.

Plaintiff Conwed Corporation seeks a declaratory judgment concerning the validity, infringement, and licensing of certain patents used in the manufacture of plastic net. One of the three defendants, Societe Generale Alimentaire (hereinafter Alimentaire), has conceded by stipulation that this Court has personal jurisdiction over it. The other two defendants, Nortene and Netlon, have moved to dismiss the action against them for lack of personal jurisdiction, insufficiency of process, and insufficiency of service of process. Oral argument was heard on the motions on April 10, 1975, and the parties have extensively briefed the issues. For the reasons set forth herein, the Court will grant the motions of defendants Nortene and Netlon to dismiss the action.

The allegations of the complex complaint are summarized in an earlier Order of this Court, dated September 11, 1974. The following narrative will provide sufficient background for the jurisdictional motions. In approximately 1961, Jacques Hureau, while employed by Nortene in France, invented a process for the manufacture of plastic net. Hureau did not inform his employer of the invention, but made a deal for his personal benefit with Alimentaire. Through this arrangement Alimentaire obtained French patents on the process and, by means of international treaties, obtained satellite patents in other countries, including the United States. These patents will be collectively referred to as the Hureau patents.

In 1966 Alimentaire granted to Con-wed an exclusive license to use the invention in the United States. At approximately the same time, Nortene discovered that Hureau had made the invention while in its employ. Accordingly, in 1967 Nortene brought an action in the French courts against Hureau and Alimentaire, contending that it was the . true owner of all rights under the Hureau patents. In early 1971 Nortene prevailed in the Court of Appeals of Paris, and that judgment was affirmed v by the Court of Cassation — France’s highest court — in January of 1973. The French courts ordered Alimentaire to assign to Nortene all patents, foreign and domestic, which stemmed from the Hureau invention. 1 The courts further ordered Alimentaire to cancel all licenses with its foreign licensees, including Conwed. In a decree dated September 25, 1974, the Court of Appeals of Paris held that an assignment of the United States patents, tendered to Nortene on March 15, 1974, constituted full compliance with the French judgment. Since that proferred assignment provided that it was subject to any rights of Conwed which would be determined in the United States District Court for the District of Minnesota, the French courts have deferred to this Court on the question of whether Conwed retains any rights under its license.

Meanwhile, within a few weeks of the first decision of the Paris Court of Appeals, Nortene’s solicitors had written to Conwed’s offices in St. Paul, Minnesota, on June 30, 1971 [the June 1971 letter], enclosing a copy of the court decision and directing attention to the portion directing cancellation of the Conwed license. In October of 1971 a meeting was held in London at which representatives of Nortene and Netlon advised Conwed that the latter could obtain a license under the Hureau United States patents for one million dollars. Further *500 discussions were held between the parties in September of 1972 at Blackburn, England. On October 19, 1972, a letter from Nortene’s solicitor to Conwed [the October 1972 letter] declared that since Alimentaire had not been the true owner, Conwed owned nothing under the patents. The letter suggested that Nortene would take “overt steps” against Conwed once the Court of Cassation had affirmed the lower court, and concluded with the statement that if no satisfactory agreement could be reached, Nortene would commence infringement proceedings at that time.

In January of 1973 Nortene’s solicitor advised Conwed of the affirmance by the Court of Cassation, and suggested a meeting with Conwed’s representatives in St. Paul, Minnesota. That meeting was held in St. Paul in March of 1973, and was continued in New York. Various possibilities for settling the matter were discussed. During the course of the meetings representatives of Conwed requested Nortene to put its demands in writing so that they could consult with French counsel to get an opinion on the liability of Alimentaire. Nortene complied with this request in a letter dated March 13, 1973. The March 1973 letter declared:

“ . . . Unless you close down immediately your manufacturing and marketing operations in these products Patent infringement proceedings will immediately be commenced against ' you and pursued vigorously and with all possible speed . . . . ”

Conwed commenced this action on January 10, 1974, seeking a declaration that it has a right to an execlusive license under the Hureau United States patents, that the Hureau patents obtained in the United States are invalid, or that its manufacturing processes do not infringe the Hureau patents. It is undisputed that neither Nortene nor Netlon- maintains or has ever maintained any place of business in the United States. As nonresident defendants they were served by (1) personal service of the Summons and Complaint pursuant to M.S.A. § 543.19 Subd. 2;' (2) filing in the office of the Minnesota Secretary of State pursuant to M.S.A. § 3Ó3.13 Subd. 1(3); and (3) registered mail pursuant to Rule 4(i)(D) of the Federal Rules of Civil Procedure. The latter mode of service is permitted only where there is independent authority under Federal or State law to assert jurisdiction over the foreign party. Therefore, this Court’s power to assert in personam jurisdiction over Nortene and Netlon is dependent on the reach of M.S.A. §§ 303.13 2 and 543.19 3 , as circumscribed by the due process clause of the Constitution.

A plaintiff in' a Federal District Court may, of course, avail itself of the “long-arm” statutes of the State *501 in which the court sits in order to obtain in personam jurisdiction over a defendant. See Federal Rule of Civil Procedure 4(e) and (f); United States v. First National City Bank, 379 U.S. 378, 85 S.Ct. 528, 13 L.Ed.2d 365 (1965); S. S. Kresge Co. v. Kamei-Autokomfort, 363 F.Supp. 257, 258 (D.Minn.1973). And, constitutional limitations aside, the reach of State long-arm statutes is a question of State law, to be decided by the highest court of the State. The Minnesota Supreme Court has specifically stated that, in enacting the long-arm statutes, the legislature intended “to extend the extraterritorial jurisdiction of [the State’s] courts to the maximum limits consistent'with constitutional limitations.” Hunt v. Nevada State Bank, 285 Minn. 77, 172 N.W.2d 292, 304 (1969), cert. denied, 397 U.S. 1010, 90 S.Ct.

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Bluebook (online)
404 F. Supp. 497, 190 U.S.P.Q. (BNA) 246, 1975 U.S. Dist. LEXIS 16276, Counsel Stack Legal Research, https://law.counselstack.com/opinion/conwed-corporation-v-nortene-sa-mnd-1975.