Daily Archives: July 10, 2011

“Supreme Court Decision Limits Use of “Stream of Commerce” Jurisdiction Theory to Subject Foreign Manufacturers to Suit in the U.S.” – Litigation Alert

At the end of its recent term, the United States Supreme Court decided J. McIntyre Machinery, Ltd. v. Nicastro (Case No. 09-1343, June 27, 2011). In McIntyre Machinery, the Court reversed a decision by the Supreme Court of New Jersey, finding that the New Jersey courts improperly asserted jurisdiction over an English machinery manufacturer in a product liability suit brought by an individual who was injured while using the manufacturer’s product in New Jersey.

The facts of the case are as follows: The defendant, McIntyre Machinery, is an English company that manufactures metal shearing devices used in the scrap metal industry. The plaintiff, Robert Nicastro, was severely injured while using a McIntrye shear in New Jersey. McIntyre sold its machines through an independent U.S. distributor, not controlled by McIntyre and not located in New Jersey. The distributor, however, followed McIntyre’s direction and guidance whenever possible. McIntyre officials also attended trade shows in the U.S., but not in New Jersey. McIntyre held U.S. and European patents on the machine. McIntyre generally desired to sell machines in the U.S., but there was no showing that New Jersey was targeted for sales, by advertising or otherwise. There was some evidence suggesting that as many as four McIntyre machines were located in New Jersey.

On these facts, six Justices of the Court agreed that the assertion of personal jurisdiction over McIntyre Machinery in New Jersey was improper. The six Justices did not agree on their reasoning. Justice Kennedy wrote the plurality opinion, joined by Chief Justice Roberts, Justice Scalia and Justice Thomas. Justice Breyer, joined by Justice Alito, concurred in the judgment. Justice Ginsburg dissented, joined by Justice Sotomayor and Justice Kagan.

The plurality stressed that the exercise of personal jurisdiction under the Due Process Clause of the Constitution generally depends on the defendant having purposefully availed itself of the privilege of doing business in the forum state, thus invoking the benefits and protections of its laws. Product liability cases, the plurality wrote, fall within this general rule. The plurality specifically rejected the notion that placing products in the stream of commerce in a manner such that it is foreseeable they will end up in a particular state is not enough: “The defendant’s transmission of goods permits the exercise of jurisdiction only where the defendant can be said to have targeted the forum; as a general rule, it is not enough that the defendant might have predicted that its goods will reach the forum State.” (Slip Op. at 7). Further, although the facts showed a general intent by McIntyre to serve the U.S. market, “they do not show that J. McIntyre purposefully availed itself of the New Jersey market.”

In the concurring opinion, Justice Breyer stated that he did not believe it was appropriate to use the facts of this case to set strict rules. He noted that the case does not “implicate modern concerns” (such as targeting the world for sales by selling on the Internet). Justice Breyer supported the view that a single isolated sale in a state is not enough, and that “something more” is required than simply putting a product in the stream of commerce with knowledge that it may be swept into the forum state. Justice Breyer also stressed his view that due process requirements, including “purposeful availment,” rest upon a notion of “defendant-focused fairness.” Such considerations may vary when comparing a large national manufacturer to a small manufacturer selling a small number of products through a distributor. “Further, the fact that the defendant is a foreign, rather than a domestic, manufacturer makes the basic fairness of an absolute rule yet more uncertain.” (Breyer J., concurring, Slip. Op. at 6).

McIntyre Machinery is important because it limits the grounds for U.S. courts asserting personal jurisdiction against foreign manufacturers. In this context, “foreign” means out-of-state manufacturers as well as international companies. Six of the nine Justices clearly indicated that the simple fact that a product has found its way into a jurisdiction is not enough to establish jurisdiction over a non-resident manufacturer even though the manufacturer realizes that the product might end up in the state. The case will likely lead lower courts to dismiss certain cases which would otherwise have remained in court. Because of the fractured nature of the decision, however, its overall significance remains to be seen. Issues of personal jurisdiction will remain highly dependent on the facts of a particular case.

Patents / Injunction Bond Wrongful Injunction Raises Presumption of Recovery of Bond

In a case of first impression, the U.S. Court of Appeals for the Second Circuit ruled that wrongfully enjoined parties are entitled to a presumption in favor of recovery against an injunction bond for provable damages.  However, the Court concluded that while InterDigital contention that it deserves damages associated with a stay of patent infringement action against Nokia has merit, the case record was insufficient for appellate review.  Nokia Corp. v. InterDigital Inc. et al., Case No. 10-1358 (2d Cir., May 23, 2011) (Parker, J.).

The parties’ dispute first arose at the International Trade Commission, where InterDigital alleged that Nokia had infringed its patents.  In 2007, the ITC granted Nokia’s motion to consolidate the investigation with a separate investigation filed by InterDigital against Samsung over the same patents.  In December 2007, Nokia moved to stay the consolidated investigation, arguing that a pre-existing agreement between Nokia and InterDigital required arbitration.  The ITC denied the motion, and Nokia then sued in federal district court.  The district court granted Nokia’s motion for a preliminary injunction in March 2008 and ordered InterDigital to stay or terminate the ITC proceedings against Nokia and submit to arbitration.  The court required Nokia to post a $500,000 bond as a condition of obtaining the injunction.

The 2d Circuit subsequently vacated the injunction (see IP Update, Vol. 11, No. 8), and the district court dismissed Nokia’s suit.  Thereafter, InterDigital filed a motion in the district court to recover attorneys’ fees and expenses incurred in moving to stay the ITC proceedings and preparing to arbitrate with Nokia.   It asked to be awarded attorneys’ fees and costs incurred as a result of litigating separate proceedings against Nokia and Samsung.  The district court rejected InterDigital’s request, finding that InterDigital had failed to show that the damages sought were “proximately caused” by the injunction.  InterDigital appealed.

The 2d Circuit held that a wrongfully enjoined party is entitled to a presumption in favor of recovery, finding that the existence of such a presumption was implied by the text of Fed. R. Civ. Pro. 65(c), and that the First, Seventh, Ninth, Eleventh and D.C. Circuits followed similar rules.  However, the court ruled that the improperly enjoined party must still show that any damages claimed were proximately caused by the injunction.  Based on the lack of explanation by the district court for the denial of recovery, the 2d Circuit vacated the lower court’s order and remanded the issue for reconsideration and clarification.  However, the 2d Circuit noted that certain legal expenses, such as filing a motion to stay the ITC case with respect to Nokia that were ordered by the district court in its injunction order, should be recoverable absent a compelling reason otherwise.

Board Proposes Rules to Reform Pre- and Post-Election Representation Case Procedures

The National Labor Relations Board will publish in the Federal Register tomorrow a Notice of Proposed Rulemaking, which proposes amendments to its existing rules and regulations governing procedures in representation cases. The proposed amendments are intended to reduce unnecessary litigation, streamline pre- and post-election procedures, and facilitate the use of electronic communications and document filing.

“One of the most important duties of the NLRB is conducting secret-ballot elections to determine whether employees want to be represented by a labor union,” said Chairman Wilma B. Liebman in a statement. “Resolving representation questions quickly, fairly, and accurately has been an overriding goal of American labor law for more than 75 years.” Click here to view her full statement. 

If finally adopted after a public notice-and-comment process, the proposed amendments would:

  •  Allow for electronic filing of election petitions and other documents.
  • Ensure that employees, employers and unions receive and exchange timely information they need to understand and participate in the representation case process.
  • Standardize timeframes for parties to resolve or litigate issues before and after elections.
  • Require parties to identify issues and describe evidence soon after an election petition is filed to facilitate resolution and eliminate unnecessary litigation.
  • Defer litigation of most voter eligibility issues until after the election.
  • Require employers to provide a final voter list in electronic form soon after the scheduling of an election, including voters’ telephone numbers and email addresses when available.
  • Consolidate all election-related appeals to the Board into a single post-election appeals process and thereby eliminate delay in holding elections currently attributable to the possibility of pre-election appeals.
  • Make Board review of post-election decisions discretionary rather than mandatory.

For details on the proposed amendments, view our fact sheet here and summary here.

As the Notice of Proposed Rulemaking states:

The Board believes that the proposed amendments would remove unnecessary barriers to the fair and expeditious resolution of questions concerning representation. The proposed amendments would simplify representation-case procedures and render them more transparent and uniform across regions, eliminate unnecessary litigation, and consolidate requests for Board review of regional directors’ pre- and post-election determinations into a single, post-election request.  The proposed amendments would allow the Board to more promptly determine if there is a question concerning representation and, if so, to resolve it by conducting a secret ballot election.

Board Member Brian Hayes dissented from the proposed rulemaking.  In his opinion,

The Board and General Counsel are consistently meeting their publicly-stated performance goals under the current representation election process, providing an expeditious and fair resolution to parties in the vast majority of cases, less than 10 percent of which involve contested preelection issues.  Without any attempt to identify particular problems in cases where the process has failed, the majority has announced its intent to provide a more expeditious preelection process and a more limited postelection process that tilts heavily against employers’ rights to engage in legitimate free speech and to petition the government for redress.  Disclaiming any statutory obligation to provide any preliminary notice and opportunity to comment, the majority deigns to permit a limited written comment period and a single hearing when the myriad issues raised by the proposed rules cry out for far greater public participation in the rulemaking process both before and after formal publication of the proposed rule.  The majority acts in apparent furtherance of the interests of a narrow constituency, and at the great expense of undermining public trust in the fairness of Board elections.

His dissent may be found here.

In the Notice of Proposed Rulemaking, the Board responded to the dissent.

Public comments are invited on all aspects of the proposed rules and should be submitted within 60 days of publication in the Federal Register, either electronically to www.regulations.gov, or by mail or hand-delivery to Lester Heltzer, Executive Secretary, NLRB, 1099 14th Street NW, Washington DC 20570.  Reply comments to the initial comments may be filed during an additional 14 day period. In addition, members of the public will be invited to attend a public hearing, to be scheduled for July 18 and July 19, if necessary, to comment on the proposed amendments and make other suggestions for improving the Board’s representation case procedures.