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Int'l Mfg. & Eng'g Servs. Co. v. Semiconductor Energy Lab. Co.

July 16, 2007


The opinion of the court was delivered by: John D. Bates United States District Judge


Plaintiff International Manufacturing and Engineering Services Company, Ltd. ("IMES") filed this action against defendant Semiconductor Energy Laboratory Company, Ltd. ("SEL") on July 7, 2006. IMES's amended complaint alleges claims of unfair competition under both the common law and the Paris Convention for the Protection of Industrial Property, Mar. 20, 1883 (as revised on July 14, 1967), 21 U.S.T. 1583, 24 U.S.T. 2140, as well as a common-law tort claim for injurious falsehood. Now pending before the Court are SEL's motion to dismiss, which raises challenges based on lack of subject-matter and personal jurisdiction as well as failure to state a claim, and IMES's motion for a stay of proceedings. For the reasons explained herein, the Court concludes that it has no personal jurisdiction over SEL and therefore dismisses the complaint in its entirety.*fn1


Both plaintiff and defendant in this action are Japanese corporations that have filed applications with the United States Patent and Trademark Office ("PTO") seeking patents for a particular type of organic light emitting device ("OLED").*fn2 As described by plaintiff, the technology at issue enables an OLED to attain and exceed 100% quantum efficiency through the arrangement of organic layers in a unique, stacked structure. Am. Compl. ¶¶ 16-19. IMES alleges that this novel stacking technology was developed by Dr. Junji Kido, a professor at Yamagata University in Japan, in the course of his work as an independent contractor for IMES. Id. ¶¶ 13-16. As part of his research, Dr. Kido also allegedly discovered the revolutionary concept of "multi-photon emission" -- the theoretical underpinning that made possible the development of the stacked OLED structure. Id. ¶ 18.

According to the complaint, the following course of events gave rise to plaintiff's claims. Dr. Kido presented a lecture about OLEDs entitled "Where We Are and Where We Go" at the European Conference on Organic Electronics and Related Phenomena 2001, held in Potsdam, Germany on November 18-21, 2001. Id. ¶¶ 26-27. As part of this lecture, Dr. Kido revealed the concept of multi-photon emission and explained that it promised to increase the brightness and lifetime of OLED devices. Id. ¶¶ 34-38. In the audience was a professor named Dr. Tetsuo Tsutsui from Kyushu University in Japan. Id. ¶¶ 28, 39. Dr. Tsutsui, who is himself an accomplished OLED researcher, id. ¶ 30, challenged Dr. Kido on the concept of multi-photon emission during a public question-and-answer session that followed Dr. Kido's lecture, id. ¶¶ 40-41. At the end of the question-and-answer session, Dr. Kido raised the concept of stacking. Id. ¶ 42. A conversation about multi-photon emission and stacking continued between Dr. Kido, Dr. Tsutsui, and other scientists for hours after the presentation. Id. ¶¶ 43-47. During this conversation, "Tsutsui continued to press Kido . . . for details and proof that 'Multi-Photon Emission' could be achieved." Id. ¶ 45. "In the excitement to dispel the skepticism of his peers regarding the scientific feasibility of Kido's novel ideas and concepts, Dr. Kido answered Tsutsui's questions . . . ." Id. ¶ 84. As IMES alternatively describes the situation, "Kido was induced into disclosing certain details [about the stacking arrangement], when Tsutsui pressed him for details and explanations after his presentation had concluded." Id. ¶ 47.

On December 4, 2002, defendant SEL filed patent application serial number 10/309,843 (hereinafter "SEL '843") with the PTO, id. ¶ 49; other derivative patent applications by SEL followed, id. ¶ 50. The SEL '843 application listed Dr. Tsutsui and others as the inventors of the OLED stacking technology described therein. Id. ¶¶ 119, 122. Plaintiff IMES alleges that SEL knew or should have known that, in fact, "Kido was the inventor of the novel concepts and ideas embodied in" the SEL '843 patent application and the derivative patent applications. Id. ¶¶ 51, 52. On March 1, 2003, IMES filed its own patent application with the PTO, identified by serial number 10/393,952 (hereinafter "IMES '952"), which listed Dr. Kido and others as joint inventors of the pertinent OLED technology.*fn3 Id. ¶ 22. Both the SEL '843 and IMES '952 applications are still pending before the PTO.

IMES now alleges that it has been harmed by the filing and publication of the SEL '843 patent application and the derivative SEL applications because those applications "have placed a cloud over IMES ownership of [the stacking technology] and caused the diminution in value of Plaintiff's Invention and of Plaintiff corporation as a whole." Id. ¶ 73; see also id. ¶ 72. The amended complaint asserts an unfair competition claim under the common law and the Paris Convention based on the alleged "misappropriation" of Dr. Kido's ideas by Dr. Tsutsui during the question-and-answer session and subsequent discussion at the 2001 European conference. IMES also asserts an injurious falsehood claim based on the statement in the SEL '843 patent application that Dr. Tsutsui and others were the inventors of the OLED technology described therein.

Defendant SEL has filed a motion to dismiss for lack of subject-matter and personal jurisdiction pursuant to Rules 12(b)(1) and 12(b)(2) of the Federal Rules of Civil Procedure. SEL also argues that plaintiff has failed to state any claim upon which relief can be granted. See Fed. R. Civ. P. 12(b)(6). IMES has filed its own motion requesting that the Court stay this action until the PTO has made a determination regarding the still-pending patent applications filed by SEL. The Court concludes, for the reasons explained below, that it lacks personal jurisdiction over SEL and therefore declines to reach the remainder of defendant's myriad arguments for dismissal.


Plaintiff bears the burden of establishing personal jurisdiction over the defendant. In order to meet that burden under Rule 12(b)(2), a plaintiff must allege "specific facts upon which personal jurisdiction may be based," Blumenthal v. Drudge, 992 F. Supp. 44, 53 (D.D.C. 1998), and cannot rely on conclusory allegations, see GTE New Media Servs., Inc. v. Ameritech Corp., 21 F. Supp. 2d 27, 36 (D.D.C. 1998), remanded on other grounds sub nom. GTE New Media Servs., Inc. v. BellSouth Corp., 199 F.3d 1343 (D.C. Cir. 2000). When considering challenges to personal jurisdiction, the Court need not treat all of plaintiff's allegations as true and "may receive and weigh affidavits and any other relevant matter to assist it in determining the jurisdictional facts." United States v. Philip Morris Inc., 116 F. Supp. 2d 116, 120 n.4 (D.D.C. 2000); see also Novak-Canzeri v. Al Saud, 864 F. Supp. 203, 206 (D.D.C. 1994) ("[T]he Court must accept Plaintiff's claims as true in ruling on a 12(b)(2) motion, unless they are directly contradicted by an affidavit . . . .").


Plaintiff has described defendant SEL as "a Japanese corporation with a principal place of business at 398 Hase, Atsugi-shi, Kanagawa 243-0036 Japan." Am. Compl. ¶ 3. IMES has asserted only one basis for personal jurisdiction over SEL -- the federal patent long-arm statute, 35 U.S.C. § 293 (2000). Am. Compl. ¶ 4. Section 293 provides in full:

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the District of Columbia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

SEL argues that § 293 is inapplicable because it is not a "patentee" within the meaning of the statute. Instead, SEL contends, it is an applicant for a patent. The Court agrees. The plain language of § 293 limits the exercise of personal jurisdiction to a foreign "patentee." The definitions provision of the Patent Code states that "[w]hen used in this title unless the context otherwise indicates . . . [t]he word 'patentee' includes not only the patentee to whom the patent was issued but also the successors in title to the patentee." 35 U.S.C. § 100(d) (2000) (emphasis added). The generally applicable definition of the word "patentee" in Title 35 ...

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