Steag Energy Services Gmbh v. Ebinger

2012 NCBC 2
CourtNorth Carolina Business Court
DecidedJanuary 6, 2012
Docket11-CVS-14525
StatusPublished
Cited by1 cases

This text of 2012 NCBC 2 (Steag Energy Services Gmbh v. Ebinger) is published on Counsel Stack Legal Research, covering North Carolina Business Court primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Steag Energy Services Gmbh v. Ebinger, 2012 NCBC 2 (N.C. Super. Ct. 2012).

Opinion

Steag Energy Services GmbH v. Ebinger, 2012 NCBC 2. STATE OF NORTH CAROLINA IN THE GENERAL COURT OF JUSTICE SUPERIOR COURT DIVISION COUNTY OF MECKLENBURG 11 CVS 14525

STEAG ENERGY SERVICES GMBH ) f/k/a EVONIK ENERGY SERVICES ) GMBH, ) ) Plaintiff, ) ) v. ) ) ORDER ON DEFENDANTS’ FRANK EBINGER, EBINGER ) MOTION TO DISMISS KATALYSATORSERVICE GMBH & ) CO. KG, ENVICA GMBH n/k/a ) EBINGER GMBH, ENVICA KAT ) GMBH, and EBINGER ) VERWALTUNGS GMBH, ) ) Defendants. ) )

{1} This matter is before the Court on Defendants’ Motion to Dismiss pursuant to Rules 12(b)(1) and 12(b)(2) of the North Carolina Rules of Civil Procedure (“Rule(s)”). For the reasons stated below, the Motion is GRANTED. Alston & Bird LLP, by Mark Vasco, Benjamin F. Sidbury, M. Scott Stevens, and Debra Lofano for Plaintiff Steag Energy Services GmbH f/k/a Evonik Energy Services GmbH.

Robinson, Bradshaw & Hinson, P.A., by Mark W. Merritt, Lawrence C. Moore, III, and Matthew F. Tilley for Defendants Frank Ebinger, Ebinger Katalysatorservice GmbH & Co. KG, Envica GmbH n/k/a Ebinger GmbH, Envica Kat GmbH, and Ebinger Verwaltungs GmbH.

Gale, Judge.

I. INTRODUCTION {2} Plaintiff seeks declaratory and monetary relief related to a European patent and three related United States patent applications, and as to which. Plaintiff contends that the Defendants have made statements or taken actions which place a “cloud” or “taint” over Plaintiff’s ownership of them. Plaintiff now seeks declaratory relief pursuant to G.S. §§ 1-253 and 1-254 and further asserts a claim for slander of title. {3} This action was filed shortly after the dismissal of an earlier action in which the North Carolina Court of Appeals held that Plaintiff failed to establish personal jurisdiction. Evonik Entergy Services GmbH, v. Ebinger, ___ N.C. App. ____, ____, 712 S.E.2d 690, 692 (2011) (the “Initial Action”). While this second action carries forward the factual allegations and the declaratory judgment claim of the earlier action, Plaintiff asserts that it has now presented additional facts which, when considered in tandem with those in the earlier action, demonstrate a prima facie basis for jurisdiction, entitling Plaintiff to pursue jurisdictional discovery prior to a final jurisdictional ruling. Plaintiff has further added the claim for slander of title. {4} Defendants expectedly contend that the Court of Appeals’ decision in the Initial Action is preclusive and bars this action. Defendants additionally contend that even if the Court examines jurisdiction anew, Plaintiff has again failed to make a prima facie showing of personal jurisdiction. Defendants separately raise subject matter jurisdiction questions which the Court need not reach if there is no personal jurisdiction. {5} The Court has carefully reviewed the information that Plaintiff contends was not considered by the Court of Appeals and which Plaintiff believes when added to information in the earlier action tips the scales in favor of finding the prima facie basis for personal jurisdiction. The Court concludes that in substantial part, the new information is additive but not materially different from the facts the Court of Appeals found determinative, and further, that the combination of allegations, even if sufficient to constitute a changed record to avoid issue preclusion, are not sufficient to warrant this Court’s exercise of either specific or general personal jurisdiction. II. PROCEDURAL BACKGROUND {6} On November 17, 2009, Plaintiff filed the Initial Action in Mecklenburg County Superior Court. The Initial Action sought only a declaratory relief that Evonik Energy Services GmbH (“Evonik”) 1 owns the European patent and the United States patent applications. On April 21, 2010, Defendants moved to dismiss the complaint pursuant to Rules 12(b)(1) and 12(b)(2). The trial court denied the motion and Defendants appealed. On June 7, 2011 the North Carolina Court of Appeals reversed, finding a lack of personal jurisdiction. {7} Plaintiff filed this action in Mecklenburg County Superior Court on July 28, 2011. The matter was designated as a Complex Business Case by Chief Justice Sarah Parker on July 29, 2011 and assigned to this Court by Order dated August 2, 2011. On September 29, 2011, Defendants moved to dismiss for lack of jurisdiction (the “Motion”). 2 The Motion has been fully briefed, the Court heard oral arguments, and the matter is ripe for disposition.

III. STATEMENT OF FACTS {8} Defendants have challenged jurisdiction. Accordingly, the Court has looked to facts taken from the pleadings as well as other evidence presented. {9} Plaintiff Steag is a corporation organized and existing under the law of Germany with a principal place of business in Essen, Germany. Steag’s wholly owned subsidiary is Steag Energy Services LLC, a North Carolina limited liability company. {10} Defendant Frank Ebinger (“Ebinger”) is a citizen and resident of Wildeshausen, Germany. Defendants Ebinger Katalysatorservice GmbH & Co. KG (“Ebinger Kat”), Envica GmbH n/k/a Ebinger GmbH (“Ebinger GmbH”), Envica Kat

1 Evonik Energy Services GMBH later became known as Steag Energy Services.

2 Defendants challenge both personal and subject matter jurisdiction. Because the Court determines the motion on personal jurisdictional grounds, it need not resolve any dispute whether there is subject matter jurisdiction because the claims arises under the federal patent laws. Without discussing the issue at length, inventorship is a matter of federal law but ownership is governed by state law. GmbH (“Envica Kat”); and Ebinger Verwaltungs GmbH (“Verwaltungs”) are corporations organized and existing under the laws of Germany with principal places of business in Wildeshausen, Germany. {11} On June 21, 2000, Maik Blohm (“Blohm”), a German citizen and chemical engineer, entered into an employment contract (“Employment Contract”) with Katalysatorservice GmbH (“KAS”) which provided that “Blohm shall treat all internal corporate matters that have been entrusted to him or that he has otherwise been privy to as confidential. This obligation shall continue beyond the termination of the employment relationship.” (Aff. of Frank Ebinger, Ex. A. ¶ 8, April 8, 2010 (“First Ebinger Aff.”).) {12} KAS changed its name to Envica Kat, 3 and on April 2, 2004, Blohm and Envica Kat executed another employment contract (“Service Agreement”) which provided that “Blohm shall maintain the strictest secrecy about all operational and business matters and processes of ENVICA KAT which become known to him in his work and its surrounding circumstances both during the employment relationship and after its termination.” (First Ebinger Aff. Ex. B ¶ 8.2.) Blohm left employment with Envica Kat in June 2004. Evonik, ___ N.C. App. ____, ____, 712 S.E.2d 690, 692 (2011). {13} On December 16, 2005, European patent number EP 1 797 954 B14 (“European Patent”) was filed with the European Patent Office. (Compl. ¶ 22.) The application listed Blohm as a co-inventor of the technology which was directed to a method for treating flue gas catalysts. (Compl. ¶ 22.) Between December 15, 2006 and April 1, 2009, patent application numbers 11/640,475, 12/384,122, and 12/384,159 (“United States Patent Applications”) were filed with the United States Patent Office. (Compl. ¶¶ 23−24.) Each application concerns the method for treating flue gas catalysts, lists Blohm as a co-inventor, and claims priority to the European Patent.

3 Envica Kat has since changed its name to Ebinger Kat.

4 The European patent was originally assigned an application number of 05 027 634.4 and a

publication number of EP 1 797 954 A1.

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