("Klingelnberg"), Oerlikon Geartec AG ("Oerlikon"), and Liebherr
America, Inc. ("Liebherr"). Klingelnberg, a German corporation
with its principal place of business in Germany, and Oerlikon, a
Swiss corporation with its principal place of business in
Switzerland, are allegedly related companies, although at this
stage the precise nature of their relationship is not clear. The
complaint alleges that Klingelnberg and Oerlikon manufacture
gear-making machines that infringe a patent held by Gleason for a
computer-controlled gear-generating machine. Gleason alleges that
Liebherr, a Virginia corporation with its principal place of
business in Virginia, sells the infringing products on behalf of
Klingelnberg and Oerlikon in the United States.
Klingelnberg and Oerlikon have each moved to dismiss the
complaint pursuant to Rule 12(b)(2) of the Federal Rules of Civil
Procedure on the ground of lack of personal jurisdiction. After
Klingelnberg filed its motion, Gleason and Klingelnberg entered
into a stipulation whereby plaintiff voluntarily dismissed
Klingelnberg from the action, based on certain representations
made by Klingelnberg in support of its motion to dismiss, but
retained leave to reinstate Klingelnberg in the event that
later-discovered facts revealed a basis for personal
jurisdiction. Thus, only Oerlikon's motion is now pending before
The relevant facts are largely undisputed. Oerlikon
manufactures the allegedly infringing gear-cutting machine, which
is known as Model C-28. In the United States, all of Oerlikon's
machines are sold exclusively through Liebherr, an independent
One particular machine is at issue here. In October 1997,
Oerlikon sent a C-28 machine to Liebherr, which accepted it on
consignment for sale. The arrangement between Oerlikon and
Liebherr was that if the machine were sold, Liebherr would
purchase it from Oerlikon and then sell it to the customer.
Liebherr displayed the machine at a tradeshow in Michigan in
October 1997. Representatives of Oerlikon attended the show to
operate the machine and answer spectators' questions.
After the show ended, the machine was placed at Liebherr's
facilities in Saline, Michigan, where it was used as a
demonstration machine for customers. In December 1997, Liebherr
received a purchase order to place the machine in a Buffalo, New
York facility of American Axle & Manufacturing, Inc. ("AAM") for
demonstration and testing. The machine was sent there in March
1998, and remained there for at least several months, during
which time AAM compared it against a Gleason machine that had
been sent by Gleason to AAM, also for testing purposes. Again,
Oerlikon personnel went to AAM on several occasions to provide
I. Legal Standards
"A plaintiff facing a Fed.R.Civ.P. 12(b)(2) motion to dismiss
made before any discovery need only allege facts constituting a
prima facie showing of personal jurisdiction." PDK Labs, Inc. v.
Friedlander, 103 F.3d 1105, 1108 (2d Cir. 1997). Since there has
been no discovery in this case, then, plaintiff may defeat
Oerlikon's motion "based on legally sufficient allegations of
jurisdiction." Metropolitan Life Ins. Co. v. Robertson-Ceco
Corp., 84 F.3d 560, 566 (2d Cir.), cert. denied,
519 U.S. 1006, 117 S.Ct. 508, 136 L.Ed.2d 398 (1996); accord Ball v.
Metallurgie Hoboken-Overpelt, S.A., 902 F.2d 194, 197 (2d Cir.),
denied, 498 U.S. 854, 111 S.Ct. 150, 112 L.Ed.2d 116 (1990). In
deciding the motion, the court must also "construe the pleadings
and affidavits in plaintiff's favor at this early stage." PDK
Labs, 103 F.3d at 1108.
In addition, on a motion of this type, the court "has
considerable procedural leeway. It may determine the motion on
the basis of affidavits alone; or it may permit discovery in aid
of the motion; or it may conduct an evidentiary hearing on the
merits of the motion." Marine Midland Bank, N.A. v. Miller,
664 F.2d 899, 904 (2d Cir. 1981). While plaintiff has the ultimate
burden of establishing jurisdiction by a preponderance of the
evidence, prior to an evidentiary hearing or trial "a prima facie
showing suffices, notwithstanding any controverting presentation
by the moving party, to defeat the motion." Id.; accord Benjamin
Sheridan Corp. v. Benjamin Air Rifle Co., 827 F. Supp. 171, 174
I do not believe that discovery or a hearing is necessary for
the court to decide Oerlikon's motion. Most of the relevant facts
are undisputed, and the only real issue is their legal
significance, specifically whether those facts are enough to
create a basis for jurisdiction over Oerlikon.
Personal jurisdiction over Oerlikon in this case is determined
by reference to the law of the jurisdiction in which the court
sits. United States v. First Nat'l City Bank, 379 U.S. 378,
381-82, 85 S.Ct. 528, 13 L.Ed.2d 365 (1965). In opposing
Oerlikon's motion, Gleason relies primarily on N.Y.C.P.L.R. §§
302(a)(1) and 302(a)(2), which respectively provide for personal
jurisdiction in New York over any defendant who "transacts any
business within the state or contracts anywhere to supply goods
or services in the state," or who "commits a tortious act within
the state. . . ."
Considerably less is required to establish that a defendant
"transacts business" in New York than to show that it is "doing
business" here under N.Y.C.P.L.R. § 301. Hoffritz for Cutlery,
Inc. v. Amajac, Ltd., 763 F.2d 55, 58 (2d Cir. 1985). That
relative liberality, however, is offset by the added requirement
under § 302 that the claim must arise out of the business
transacted. CutCo Indus., Inc. v. Naughton, 806 F.2d 361, 365
(2d Cir. 1986); Marketing Showcase, Inc. v. Alberto-Culver Co.,
445 F. Supp. 755 (S.D.N.Y. 1978); Longines-Wittnauer Watch Co. v.
Barnes & Reinecke, Inc., 15 N.Y.2d 443, 261 N.Y.S.2d 8,
209 N.E.2d 68 (1965), cert. denied, 382 U.S. 905, 86 S.Ct. 241, 15
L.Ed.2d 158 (1965). Transacting business, then, "requires only a
minimal quantity of activity, provided that it is of the right
nature and quality." Manhattan Life Ins. v. A.J. Stratton
Syndicate, 731 F. Supp. 587 (S.D.N.Y. 1990).
Although a single purposeful act in New York can suffice to
confer jurisdiction in New York over a claim arising out of that
act, Longines-Wittnauer, 15 N.Y.2d at 456, 261 N.Y.S.2d 8,
209 N.E.2d 68, the court need not find that any one act gives rise to
jurisdiction. Instead, the court must consider the quantity and
composite quality of the defendant's actions in the aggregate.
Id.; George Reiner & Co. v. Schwartz, 41 N.Y.2d 648, 651,
394 N.Y.S.2d 844, 363 N.E.2d 551 (1977).
As stated, most of the relevant facts are not in dispute; the
parties simply dispute whether those facts support a finding of
personal jurisdiction. It is undisputed, for instance, that Rolf
Gianesi, a technical service employee of Oerlikon, went to the
AAM plant in Buffalo to assist AAM in the operation of the C-28
machine. Since that machine was there for purposes of evaluating
it as compared with the Gleason machine, it is reasonably to
infer that Gianesi was sent to Buffalo to boost Oerlikon's
chances of its machine being chosen over Gleason's.
In addition, Diether Klingelnberg, the Chairman and Chief
Executive Officer of
Oerlikon, states that he himself has been to the Buffalo AAM
plant approximately three times in the past three years.
Plaintiff also alleges that Urs Koller, Oerlikon's Managing
Director, has been seen at the AAM Buffalo facility talking to
AAM personnel while the Oerlikon machine was in use.
The obvious conclusion to be drawn from these facts is that
Oerlikon viewed AAM as at least a potential purchaser of its
machines. The mere fact that if AAM did purchase an Oerlikon
machine, it would take title from Liebherr rather than directly
from Oerlikon, does not alter the fact that Oerlikon has a
financial interest in AAM purchasing its machines, and that it
has taken actions in New York with an eye toward promoting the
sale of its machines. Having done so, Oerlikon cannot shield
itself from personal jurisdiction simply by selling its machines
through a third party. See Kernan v. Kurz-Hastings, Inc.,
997 F. Supp. 367, 373 (W.D.N.Y. 1998) (Pennsylvania corporation's
agreement to sell Japanese manufacturer's products in United
States was sufficient to establish long-arm jurisdiction over
Japanese corporation with respect to sale occurring in New York),
aff'd, 175 F.3d 236 (2d Cir. 1999); Air-Flo M.G. Co. v. Louis
Berkman Co., 933 F. Supp. 229, 232 (W.D.N.Y. 1996) (fact that
defendant initially distributed its goods from Illinois, and that
retail sale in New York was made by independent distributor, did
not put defendant beyond the reach of § 302); see also GB
Marketing USA, Inc. v. Gerolsteiner Brunnen GmbH & Co.,
782 F. Supp. 763, 767-68 (W.D.N.Y. 1991) (German corporation subject
to personal jurisdiction in New York where corporation
"understood that its [product] was being sold in New York . .
Although Oerlikon correctly states that a mere social visit is
not enough, in itself, to create grounds for personal
jurisdiction, "few business discussions can be characterized as
entirely social." CutCo Indus., 806 F.2d at 367. Moreover,
"meetings which are partially social in nature, as well as
meetings which merely create the likelihood of a more solid
business relationship are a sufficient basis for the exercise of
in personam jurisdiction." Interface Biomedical Lab. Corp. v.
Axiom Medical, Inc., 600 F. Supp. 731, 737 (E.D.N.Y. 1985);
Round One Producs., Inc. v. Greg Page Enters., Inc.,
566 F. Supp. 934, 937-38 (E.D.N.Y. 1982). It seems unlikely, to say
the least, that the previously mentioned Oerlikon officers and
employees would have gone to the AAM facility for purely social
Construing the record in plaintiff's favor, as I must at this
point, I find that Gleason has made a prima facie showing of
personal jurisdiction over Oerlikon, and that Oerlikon's motion
to dismiss must therefore be denied. The facts alleged by
plaintiff indicate that Oerlikon has "purposefully avail[ed]
[itself] of the privilege of conducting activities within [New
York], thus invoking the benefits and protections of its laws,"
and has therefore "transacted business" in New York within the
meaning of § 302(a)(1). CutCo, 806 F.2d at 365 (quoting McKee
Elec. Co. v. Rauland-Borg Corp., 20 N.Y.2d 377, 382,
283 N.Y.S.2d 34, 229 N.E.2d 604 (1967)). Moreover, there can be no
dispute that plaintiff's cause of action for patent infringement
arises out of Oerlikon's transaction of business here, since
Oerlikon has taken affirmative steps to encourage AAM to purchase
one of its machines from Liebherr.
I also find that Gleason's allegations are sufficient to make
out a prima facie showing of jurisdiction under § 302(a)(2),
i.e. the commission by Oerlikon of a tortious act within New
York. A "cause of action for patent infringement is deemed to
arise where the infringing sales are made." Air-Flo, 933
F. Supp. at 233. Although Oerlikon contends that there is no
evidence that AAM did ultimately purchase any C-28 machines,
"[t]he offer for sale of one copy of an infringing work in New
York, even if the offer results in no sale, `constitutes
commission of a tortious
act within the state sufficient to imbue this Court with personal
jurisdiction over the infringers,' even if the products are
offered for sale through independent brokers in New York."
Basquiat v. Kemper Snow-boards, No. 96 CIV. 0185, 1997 WL
527891 (S.D.N.Y. 1997) at *3 (copyright case) (quoting
Houbigant, Inc. v. ACB Mercantile, Inc., 914 F. Supp. 964,
979-80 (S.D.N.Y. 1995)).
In short, Oerlikon is simply attempting to use Liebherr as a
shield, claiming that all of the relevant actions were taken by
Liebherr and were entirely outside Oerlikon's control, but it is
plain that Oerlikon was directly involved in those activities.
Oerlikon's contention that it "simply supported Liebherr in its
sale efforts," Oerlikon's Reply Memorandum at 4, seems
disingenuous at best. The facts alleged by Gleason — many of
which are admitted by Oerlikon — indicate that Oerlikon has
deliberately entered New York and engaged in activities intended
to promote the sale of its products here. That is clearly enough
to create a basis for jurisdiction under §§ 302(a)(1) and (a)(2).
Oerlikon's contention that it lacks the minimum contacts with
New York needed to satisfy constitutional standards, see
International Shoe Co. v. State of Washington, 326 U.S. 310,
319, 66 S.Ct. 154, 90 L.Ed. 95 (1945), requires little comment.
It was clearly foreseeable to Oerlikon that its products might be
sold in New York, especially once Oerlikon learned that AAG had
ordered a C-28 for evaluation purposes, and Oerlikon took
deliberate steps within this state intended to foster such sales.
That is more than enough to satisfy the requirements of due
process. Kernan, 175 F.3d at 241 (agreeing with district
court's conclusion that distributor's agreement to sell
defendant's products in (among other places) the United States
was sufficient in and of itself to support a finding of
"`foreseeability . . . coupled with a purposeful act'" for
purposes of § 302(a)(3)(ii)).
Defendant Oerlikon Geartec AG's Motion to Dismiss (Item 9) is
IT IS SO ORDERED.