SunCoke Energy Inc. v. Man Ferrostaal Aktiengesellschaft

563 F.3d 211, 2009 U.S. App. LEXIS 8171, 2009 WL 1034990
CourtCourt of Appeals for the Sixth Circuit
DecidedApril 20, 2009
Docket08-5414
StatusPublished
Cited by15 cases

This text of 563 F.3d 211 (SunCoke Energy Inc. v. Man Ferrostaal Aktiengesellschaft) is published on Counsel Stack Legal Research, covering Court of Appeals for the Sixth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
SunCoke Energy Inc. v. Man Ferrostaal Aktiengesellschaft, 563 F.3d 211, 2009 U.S. App. LEXIS 8171, 2009 WL 1034990 (6th Cir. 2009).

Opinions

OPINION

MERRITT, Circuit Judge.

This is a diversity action for injunctive relief seeking the return of confidential trade information generated and provided by SunCoke Co. of Knoxville, Tennessee to the defendant, MAN Ferrostaal, a German engineering and construction company. Relying on the Tennessee long-arm statute, SunCoke brought suit in federal court in Knoxville, where its principal place of business is located. The District Court dismissed for lack of personal jurisdiction. It held that the activities of the German corporation did not create a sufficiently “substantial connection with the forum state,” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985), to meet the due process standard of “fair play and substantial justice,” Asahi Metal Indus. Co. v. Superior Court of Cal., 480 U.S. 102, 116, 107 S.Ct. 1026, 94 L.Ed.2d 92 (1982). This broad constitutional standard requires us to consider all of the facts concerning the business relationship at issue to determine whether the exercise of federal jurisdiction is reasonable under the circumstances.1 We believe that the defendant’s dealings with Sun-[213]*213Coke in Tennessee were substantial enough to meet the due process standard, and hence we reverse and remand the case for further proceedings.

I.

The two parties entered into a detailed contract in April 2001, focused on the disclosure of the confidential trade information, which the parties described as “highly valuable.” The stated use of the information by Ferrostaal was to develop coke and related co-generation facilities in Brazil. In anticipation of possible future disputes, the contract provided a set of equitable remedies in case of misuse of the information,2 and included two distinct forum-selection provisions, one for equitable claims and the other for legal claims. As to equitable claims, the contract provides that “a claim for equitable relief ... may be brought to any court of competent jurisdiction,” while other claims are to be arbitrated in Paris under certain international rules of arbitration.3

In this equitable action by the Tennessee corporation against the German corporation, the parties have treated the contract forum-selection clause for equitable relief — calling for adjudication in “any court of competent jurisdiction” — to mean any court with personal jurisdiction under the “minimum contacts,” due process test of International Shoe Co. v. Washington, 326 U.S. 310, 66 S.Ct. 154, 90 L.Ed. 95 (1945). The defendant was not personally served with process in the forum state, so the question before us is whether the activities of the defendant with respect to the confidential trade information meet the “minimum contacts” test that would justify finding personal jurisdiction in the Tennessee federal court. We conclude that the test is satisfied primarily because of defendant’s travels to Tennessee and its communications sent to and received from Tennessee about the proprietary information that originated in Tennessee and was to be returned there under the contract between the parties. The parties contemplated in their contract that litigation for injunctive relief might become necessary. A federal court in the United States with the most contacts with the transaction in question would be one logical place to resolve the dispute. The contract itself gives an explanation of differences between law and equity that contemplates a lawsuit brought to a “competent” court presumably familiar with this common law distinction and the various forms of injunctive relief and specific performance referred to in the contract.

[214]*214Concerning visits to Tennessee by Ferrostaal employees, there is a conflict as noted by the District Court:

A Sun Coke representative, Alison Grant, reports that Ferrostaal employees visited Tennessee on several occasions. Specifically, Marco Antonio Marcial, Villian Oliverira, Renata Souza, and Marcos Daré visited Tennessee in July 2001; Joern Walter and Jan Krull visited Tennessee in November 2001; and Howard Barnes, Helmut Kucken, Marco Antonio Marcial, and Jan Krull visited Tennessee in September 2002. Ms. Grant does not know which of these Ferrostaal representatives were from Ferrostaal Germany. Ferrostaal Germany asserts that representatives from Ferrostaal Germany were only present in Tennessee during the September 2002 visit. Additionally, Ms. Grant states that there were multiple phone conversations and email messages from Ferrostaal Germany to Sun Coke employees in Knoxville to arrange meetings.

Sun Coke v. MAN Ferrostaal Do Brasil Commercio E Industria Ltda., 543 F.Supp.2d 836, 838 (E.D.Tenn.2008) (citations omitted). There is no conflict concerning the fact that the confidential trade information, which related to “heat recovery Coke oven technology,” was sent by SunCoke in Tennessee to Ferrostaal in Essen, Germany, its headquarters. The information was sent by computer network and website.

By 2005, SunCoke believed that Ferrostaal was improperly disclosing its protected information to third parties and had improperly put on its website a photograph showing its “proprietary designs.” In October 2005, SunCoke filed an arbitration proceeding in Paris and demanded that all of its confidential information be returned to it. In late 2005, during the pendency of the arbitration proceeding, a high executive of Ferrostaal, Dr. Wolfgang Knothe, traveled to Knoxville for discussions concerning the return of the information and the settlement of their dispute with Mr. M.H.R. Dingus, the president of SunCoke. The principals of the two companies then exchanged letters. Dr. Knothe’s letter says that they had settled the controversy in their Knoxville meeting.4 Mr. Dingus’s reply responds that the [215]*215parties must take further steps to implement the understanding arrived at in the Knoxville meeting.5

The District Court describes the activities of the parties thereafter as follows:

On April 21, 2006, Sun Coke again requested that Ferrostaal return of its [sic] confidential information as defined in the MOU and confidentiality agreement and requested that Ferrostaal remove all depictions of Sun Coke’s proprietary designs from its website. By cover letters dated September 1, 2006, March 9, 2007, and September 17, 2007, Ferrostaal Germany returned some of the information that it had received from Sun Coke. Ferrostaal Germany invited Sun Coke to call if there were any questions about the return of the information, but Sun Coke has never contacted Ferrostaal Germany to verify or discuss the return of any of the information.
On January 8, 2007, Sun Coke filed the instant action requesting that Ferrostaal be required to (1) return the proprietary information; (2) certify it has done so and describe the means taken to assure no copies have been retained, nor other improper uses made of the proprietary information; and (3) permit Sun Coke access to Ferrostaal’s Essen headquarters and Brazilian offices to confirm all proprietary information has been returned.

Sun Coke,

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Bluebook (online)
563 F.3d 211, 2009 U.S. App. LEXIS 8171, 2009 WL 1034990, Counsel Stack Legal Research, https://law.counselstack.com/opinion/suncoke-energy-inc-v-man-ferrostaal-aktiengesellschaft-ca6-2009.