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Title BP Chemicals Ltd. v. Formosa Chemical and Fibre Corp.

Date 2000

Subject Other\Concurring

Contents

Page 1

13 of 52 DOCUMENTS

BP CHEMICALS LTD. (an English corporation) v. FORMOSA CHEMICAL & FIBRE CORPORATION (a Taiwanese corporation); JOSEPH OAT CORPORATION (a Pennsylvania corporation); Formosa Chemical & Fibre Corporation Appellant in Nos. 98-

5468 and 99-5423; Joseph Oat Corporation Appellant in Nos. 98-5469 and 99-5451; BP CHEMICALS LTD. (an English corporation) Appellant in No. 99-5452 v. FORMOSA CHEMICAL & FIBRE CORPORATION (a Taiwanese corporation); JOSEPH OAT CORPORATION (a Pennsylvania corporation)

NOS. 98-5468/98--5469 and 99-5423/99--5451/99-5452

UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT

229 F.3d 254; 2000 U.S. App. LEXIS 24789; 56 U.S.P.Q.2D (BNA) 1321

February 29, 2000, Argued

October 3, 2000, Filed

PRIOR HISTORY: **1 On Appeal From the United

States District Court For the District of New Jersey.

(D.C. Civil Action No. 97-cv--04554). District Judge: Honorable Joseph J. Rodriguez.

DISPOSITION: Reversed the District Court's order of May 14, 1999, and direct that it: (a) dismissed FCFC for want of personal jurisdiction, and (b) conduct further proceedings with respect to BP's claim against JOC in a manner consistent with this opinion.

CASE SUMMARY:

PROCEDURAL POSTURE: Defendants domestic and foreign corporations appealed order from United States District Court for District of New Jersey wherein it ex- ercised personal jurisdiction over defendant foreign cor- poration and applied New Jersey law granting plaintiff injunctive relief in plaintiff's trade secrets action.

OVERVIEW: Plaintiff foreign corporation was granted temporary injunctive relief in its trade secrets case to pre- vent the enforcement of a contract between defendants domestic and foreign corporations. Defendants appealed asserting that the district court lacked jurisdiction over defendant foreign corporation and that it erred in apply- ing New Jersey law in issuing the injunction. On appeal, the court reversed and remanded. Defendant foreign cor- poration's contacts with the United States did not support an assertion of general personal jurisdiction and there was no basis to conclude that defendant had a continuous presence in the United States. The district court erred in concluding that New Jersey had the most significant re- lationship with the case and in applying its law to find a

likelihood of success on the merits; however, because ev- idence was disputed whether the law in Taiwan and New Jersey were in conflict, the case was remanded to resolve that conflict.

OUTCOME: Judgment reversed and remanded to dis- miss defendant foreign corporation for lack of personal jurisdiction and to resolve conflict concerning whether Taiwan and New Jersey laws were in conflict because if they were, Taiwan had greater interest in case and its law would apply to determine issues.

LexisNexis(R) Headnotes

Civil Procedure > Jurisdiction > Personal Jurisdiction

& In Rem Actions

HN1 See Fed. R. Civ. Proc. 4(k)(2).

Civil Procedure > Jurisdiction > Personal Jurisdiction

& In Rem Actions

HN2 Specific personal jurisdiction exists when the de- fendant has purposefully directed his activities at residents of the forum and the litigation results from alleged injuries that arise out of or related to those activities. General per- sonal jurisdiction exists when the defendant's contacts with the forum, whether or not related to the litigation, are continuous and systematic.

Civil Procedure > Jurisdiction > Personal Jurisdiction

& In Rem Actions > Constitutional Limits

HN3 The constitutional touchstone of due process anal- ysis is whether the defendant purposefully established minimum contacts in the forum. The foreseeability that is critical to due process analysis is that the defendant's conduct and connection with the forum are such that he

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56 U.S.P.Q.2D (BNA) 1321

Page 2

should reasonably anticipate being haled into court there. It is essential in each case that there be some act by which the defendant purposely avails itself of the privilege of conducting activities within the forum, thus invoking the benefits and protections of its laws. This purposeful avail- ment requirement ensures that a defendant will not be haled into a jurisdiction solely as a result of random, for- tuitous, or attenuated contacts.

Civil Procedure > Jurisdiction > Personal Jurisdiction

& In Rem Actions > Constitutional Limits

HN4 Parties who reach out beyond one state and create continuing relationships and obligations with citizens of another state' are subject to regulation and sanctions in the other State for the consequences of their activities. On the other hand, if the question is whether an individual's contract with an out-of--state party alone can automati- cally establish sufficient minimum contacts in the other party's home forum, the answer is clearly that it cannot. Civil Procedure > Jurisdiction > Personal Jurisdiction

& In Rem Actions > Personal Jurisdiction

HN5 It is these factors--prior negotiations and contem- plated future consequences, along with the terms of the contract and the parties' actual course of dealing--that must be evaluated in determining whether the defendant purposefully established minimum contacts within the fo- rum.

Civil Procedure > Jurisdiction > Personal Jurisdiction

& In Rem Actions > Personal Jurisdiction

HN6 Once it has been decided that a defendant pur- posefully established minimum contacts within the fo- rum, these contacts may be considered in light of other factors to determine whether the assertion of personal ju- risdiction would comport with fair play and substantial justice. Thus courts in appropriate cases may evaluate the burden on the defendant, the forum State's interest in ad- judicating the dispute, the plaintiff's interest in obtaining convenient and effective relief, the interstate judicial sys- tem's interest in obtaining the most efficient resolution of controversies, and the shared interest of the several States in furthering fundamental substantial social policies. Civil Procedure > Jurisdiction > Personal Jurisdiction

& In Rem Actions > Constitutional Limits

HN7 A defendant who purposefully has directed his ac- tivities at forum residents seeks to defeat jurisdiction, he must present a compelling case that the presence of some other considerations would render jurisdiction unreason- able. Nevertheless, minimum requirements inherent in the concept of fair play and substantial justice may defeat reasonableness of jurisdiction even if the defendant has purposefully engaged in forum activities.

Civil Procedure > Jurisdiction > Personal Jurisdiction

& In Rem Actions > Personal Jurisdiction

Trade Secrets Law > Misappropriation Actions > General Overview

Trade Secrets Law > Protected Information > Machines

HN8 Telephone calls between a defendant and a vendor can be evidence of a continuous and systematic business relationship, however, while phone contacts remain a con- sideration, they are insufficient, alone, to confer personal jurisdiction.

Civil Procedure > Injunctions > Preliminary & Temporary Injunctions

HN9 In order to obtain a preliminary injunction, the moving party must show (1) irreparable injury, (2) a rea- sonable probability of success on the merits, (3) the harm to it outweighs the possible harm to other interested par- ties, and (4) harm to the public.

Civil Procedure > Injunctions

Trade Secrets Law > Civil Actions > Remedies > Damages > General Overview

HN10 Injuries to reputation are difficult to calculate, and thus money damages are an inadequate remedy.

Civil Procedure > Injunctions > Preliminary & Temporary Injunctions

HN11 To the extent that delay can justify denial of a motion for a preliminary injunction, a delay caused by a plaintiff's good faith efforts to investigate an infringement or to determine how serious an infringement is does not preclude a finding of irreparable harm.

Torts > Procedure > Conflicts of Laws

HN12 A state's interest in protecting its citizens from in- jury by protecting intellectual property which they choose to license to foreign companies cannot outweigh the in- terests of the foreign sovereign in setting the standards for the protection of intellectual property within its own borders.

Torts > Procedure > Conflicts of Laws

HN13 The following factors should be taken into ac- count in determining which state has the most significant relationship with a particular issue in tort law: (a) the place where the injury occurred, (b) the place where the conduct causing the injury occurred, (c) the domicile, residence, nationality, place of incorporation and place of business of the parties, and (d) the place where the relationship, if any, between the parties is centered.

Torts > Procedure > Conflicts of Laws

HN14 The place where the conduct occurred is given particular weight in the case of torts involving unfair com- petition. Moreover, while the general rule is that in deter- mining whether an interest is entitled to legal protection, the applicable law will usually be the local law of the state where the injury occurred. Situations do arise, however,

229 F.3d 254, *; 2000 U.S. App. LEXIS 24789, **1;

56 U.S.P.Q.2D (BNA) 1321

Page 3

where the place of injury will not play an important role in the selection of the state of applicable law. This will be so when there may be little reason in logic or persua- siveness to say that one state rather than another is the place of injury, or when, such as in the case of multistate defamation, injury has occurred in two or more states. Trademark Law > Federal Unfair Competition Law > False Advertising > General Overview

Torts > Procedure > Conflicts of Laws

HN15 The place of injury is less significant in the case of such unfair competition as consists of false advertising and the misappropriation of trade values.

COUNSEL: John E. Caruso, Montgomery, McCracken, Walker & Rhoads, Philadelphia, PA and Daniel L. Brockett (Argued), Robin G. Weaver, Squire, Sanders & Dempsey, Cleveland, OH, Attorneys for Appellee/Cross- Appellant BP Chemicals Ltd.

Marc S. Palay (Argued), Winston & Strawn, Switzerland and Jerome W. Pope, Winston & Strawn, Chicago, IL and Jonathan F. Bloom, Robert D. Carmignani, Stradley, Ronon, Stevens & Young, Philadelphia, PA, Attorneys for Appellant/Cross Appellee Formosa Chemical & Fibre Corporation.

Allison E. Accurso, Jon C. Martin, Fox, Rothschild, O'Brien & Frankel, LLP, Lawrenceville, NJ, Attorneys for Appellant/Cross-Appellee Joseph Oat Corporation.

JUDGES: Before: ALITO and STAPLETON, Circuit

Judges, and POLLAK, * District Judge.

* Honorable Louis H. Pollak, Senior United States District Judge for the Eastern District of Pennsylvania, sitting by designation.

**2

OPINIONBY: STAPLETON

OPINION:

*257 OPINION OF THE COURT

STAPLETON, Circuit Judge:

This is a trade secret case filed in the United States District Court for the District of New Jersey by BP Chemicals Ltd. (BP), a British corporation, against Formosa Chemical & Fibre Corporation (FCFC), a Taiwanese corporation, and Joseph Oat Corporation

(JOC), a Pennsylvania corporation with its principal place of business in New Jersey. BP asserts claims under §

44(b) and (h) of the Lanham Act, 15 U.S.C. § 1126(b)

and (h), Articles 2 and 10 bis of the Paris Convention for the Protection of Industrial Property (hereinafter "the Paris Convention"), and New Jersey common law. BP alleges that FCFC misappropriated trade secrets relating to its methanol carbonylation process for making acetic acid by copying elements of an acetic acid plant de- sign that BP's predecessor, Monsanto, had provided in

1980 to a licensee, China Petrochemical Development Corporation (CPDC). BP further alleges that FCFC and JOC entered into a contract whereby JOC would fabricate in New Jersey a number of chemical process vessels and heat exchangers using misappropriated technical specifi- cations for ultimate use **3 in the construction of an acetic acid plant in Taiwan. BP sought a preliminary in- junction preventing JOC and FCFC from exporting these vessels to Taiwan. BP's amended complaint made clear that it sought to enjoin FCFC not only from taking pos- session of the JOC equipment, but from taking possession of any equipment manufactured in the United States by U.S. companies using BP's trade secrets. BP also sought compensatory and punitive damages from FCFC.

FCFC moved to dismiss the claim against it for lack of personal jurisdiction. The District Court deferred rul- ing on the motion until the conclusion of the five-month preliminary injunction hearing. The Court ultimately de- nied FCFC's motion to dismiss and ruled that BP had demonstrated its entitlement to preliminary injunctive re- lief against FCFC and JOC. The injunction entered per- tained only to the JOC equipment. Following further sub- missions of the parties, the District Court established the length and terms of the injunction, limiting the duration to thirty months, beginning April 20, 1998, and ending October 20, 2000. FCFC and JOC filed timely notices of appeal. BP filed a timely cross-appeal.

The undisputed facts are as follows. FCFC **4 is a publicly-traded Taiwanese corporation with its prin- cipal place of business in Taipei, Taiwan. FCFC is a subsidiary of a Taiwanese conglomerate known as the Formosa Plastics Group (FPG), which is owned by Y.C. Wang. In 1996, FPG's U.S. operations produced revenue of $2.58 billion. FCFC has a 3.51% stock interest in Formosa Plastics Corporations (FPC), a Delaware cor- poration with headquarters in New Jersey. In developing the design for its acetic acid plant, FCFC used "ASPEN" software that it leased from Nan Ya Plastics Corporation, another affiliate of FPG.

FCFC has a contract with JOC under which JOC will fabricate vessels in New Jersey for delivery to FCFC in Taiwan. It is performance of this contract that the instant action seeks to enjoin. Correspondence by fax or other- wise between FCFC and JOC regarding this contract has occurred "at least once a week" over a period of a number

229 F.3d 254, *257; 2000 U.S. App. LEXIS 24789, **4;

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of months. (A. 19597-600.)

FCFC has contracts for the purchase of equipment for its acetic acid plant with at least eight U.S. vendors in addition to JOC. These vendors received "bid pack- ages" containing specifications that allegedly incorporate misappropriated trade secrets. The process for soliciting

**5 bids was that FCFC's engineering team would pre- pare a bid package and send it to a purchasing group. BP asserts, and FCFC does not dispute, that the purchas- ing group was actually the purchasing group of FPG, not FCFC. The purchasing group would then send the bid packages to the

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*258 Taiwanese agents of U.S. vendors, who would in turn send them to their U.S. clients. All meetings between FCFC representatives and representatives of equipment vendors and their agents took place in Taiwan. No FCFC personnel visited the United States for any purpose in connection with the design or construction of the acetic acid plant. There is no evidence that any U.S. vendor re- ceived bid packages directly from FCFC, or even from FPG's purchasing group, rather than through Taiwanese agents of the U.S. vendors.

FCFC's contract with Nooter, one of the U.S. equip- ment vendors, contains a provision requiring arbitration in New York of any disputes concerning that contract. The contracts with the other vendors call for arbitration in Taiwan.

FCFC also has business contacts with the United States that are unrelated to its acetic acid plant project. In the past five years, FCFC entered into four contracts with U. **6 S. companies for the purchase of chemical process technology, at least two of which involved the training of FCFC personnel in the United States. For ex- ample, FCFC has recently contracted with ABB Lummus Global, Inc., a New Jersey engineering firm. In perform- ing this contract, Lummus is receiving daily faxes from FCFC in Taiwan.

For more than a decade, FCFC has exported products

(primarily rayon and fiber) to customers in the U.S. The parties agree that in 1996, these sales totaled about four million dollars. However, these sales were normally made in Taiwan through Taiwanese agents, and there is no evi- dence of direct sales by FCFC to purchasers in the United States. FCFC has no sales force, no representative offices, and no warehouses or other facilities in the U.S. There is no evidence that FCFC ever advertised its products in the U.S.

FCFC argues on appeal that the District Court did not have personal jurisdiction over it. Both FCFC and JOC further argue that the District Court erred in issuing the preliminary injunction by (1) determining the likelihood of success on the merits under the law of New Jersey rather than Taiwan, and (2) finding that the injunction

was necessary to **7 prevent imminent, irreparable harm. BP cross-appeals, asserting that the District Court erred in limiting the duration of the injunction to thirty months.

The District Court found that "the nature and extent of

FCFC's contacts with New Jersey and with the United States as a whole allow ed it to assert jurisdiction over FCFC under Fed. R. Civ. P. 4(k)(2)." (Dist. Ct. Op. at

10.) We hold that the District Court did not have personal jurisdiction over FCFC.

HN1 Rule 4(k)(2) provides that:

if the exercise of jurisdiction is consistent with the Constitution and laws of the United States, serving a summons or filing a waiver of service is also effective, with respect to claims arising under federal law, to establish personal jurisdiction over the person of any defendant who is not subject to the jurisdic- tion of the courts of general jurisdiction of any state.

Fed. R. Civ. Proc. 4(k)(2).

Rule 4(k)(2) thus sanctions personal jurisdic- tion over foreign defendants for claims aris- ing under federal law when the defendant has sufficient contacts with the nation as a whole to justify the imposition of United States' law but without sufficient contacts to satisfy the

**8 due process concerns of the long-arm statute of any particular state.

World Tanker Carriers Corp. v. MV YA Mawlaya, 99

F.3d 717, 720 (5th Cir. 1996). FCFC argues that while the District Court correctly found that FCFC did not have sufficient contacts with New Jersey to justify assertion of jurisdiction under the State's long-arm statute, it incor- rectly concluded (1) that BP's cause of action arose

229 F.3d 254, *259; 2000 U.S. App. LEXIS 24789, **8;

56 U.S.P.Q.2D (BNA) 1321

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*259 under federal law, and (2) that FCFC had sufficient contacts with the United States as a whole to justify asser- tion of jurisdiction under Rule 4(k)(2). Because we agree that the District Court erred in concluding that FCFC's contacts with the United States were sufficient to war- rant the assertion of personal jurisdiction over it, we may assume, without deciding, that BP's claim arises under federal law. n1

n1 Great Britain and the United States are sig- natories to the Paris Convention. BP characterizes its claim as arising under Articles 2 and 10 bis of the Paris Convention and § 44 of the Lanham Act. Article 2 provides that nationals of signatory countries "shall, as regards to the protection of in- dustrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals." Paris Convention, Art. 2, I.E.L. IV-A. Article 10 bis provides that "the countries of the Union are bound to assure to nationals of such countries ef- fective protection against unfair competition." Id. Art. 10 bis. In L'Aiglon Apparel, Inc. v. Lana Lobell, Inc., 214 F.2d 649 (3d Cir. 1954), we found that § 44 subsections (b) and (h) were intended by Congress

"to implement international agreements like the

Paris Convention that are not self-executing" and

"to fashion a remedy to coincide with rights grow- ing from the . . . substantive provisions of those agreements." Id. at 654. BP thus asserts that as a matter of federal law it is entitled to the same pro- tection that New Jersey law affords to U.S. citizens. Its pleadings expressly disavow any right to relief based on conduct of FCFC in Taiwan so it claims no extraterritorial effect for the Lanham Act. Compare Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633,

644 (2d Cir. 1956). Given FCFC's limited contacts with the United States, we find it unnecessary to decide whether BP's claim against it arises under federal law and, if so, whether it states a claim against FCFC upon which relief could be granted.

**9

Once FCFC moved to dismiss, BP had the burden

of coming forth with competent evidence demonstrat- ing that FCFC had sufficient contacts with the United States to justify the court's assertion of either specific or general personal jurisdiction. See Stranahan Gear Co. v. NL Indus., Inc., 800 F.2d 53, 58 (3d Cir. 1998). HN2 Specific personal jurisdiction exists when the defendant has "purposefully directed his activities at residents of the forum and the litigation results from alleged injuries that 'arise out of or related to' those activities." Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472, 85 L. Ed. 2d

528, 105 S. Ct. 2174 (1985). General personal jurisdic- tion exists when the defendant's contacts with the forum, whether or not related to the litigation, are "continuous and systematic." Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408, 416, 80 L. Ed. 2d 404, 104 S. Ct. 1868

(1984). We examine in turn whether the District Court has specific or general personal jurisdiction over FCFC.

FCFC's contacts with the United States do not give rise to specific jurisdiction. HN3 The constitutional touch- stone of due process analysis is "whether the **10 de- fendant purposefully established 'minimum contacts' in the forum." Burger King Corp., 471 U.S. at 474. "The foreseeability that is critical to due process analysis . . . is that the defendant's conduct and connection with the forum . . . are such that he should reasonably anticipate being haled into court there." Id. (quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 295, 62 L. Ed. 2d 490, 100 S. Ct. 559 (1980)). "It is essential in each case that there be some act by which the defendant purposely avails itself of the privilege of conducting ac- tivities within the forum . . ., thus invoking the benefits and protections of its laws." 471 U.S. at 475 (quoting Hanson v. Denckla, 357 U.S. 235, 253, 2 L. Ed. 2d 1283,

78 S. Ct. 1228 (1958)). "This 'purposeful availment' re- quirement ensures that a defendant will not be haled into a jurisdiction solely as a result of 'random,' 'fortuitous,' or

'attenuated' contacts . . . ." Id. (quoting Keeton v. Hustler

Magazine, Inc., 465 U.S. 770, 774, 79 L. Ed. 2d 790, 104

S. Ct. 1473 (1984)).

The Supreme Court has given several reasons why a forum may legitimately exercise jurisdiction over **11 a nonresident who

229 F.3d 254, *260; 2000 U.S. App. LEXIS 24789, **11;

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*260 "purposefully directs" his activities toward fo- rum residents. "A State generally has a 'manifest interest' in providing its residents with a convenient forum for redressing injuries inflicted by out-of--state actors." 471

U.S. at 473 (quoting Keeton, 465 U.S. 770 at 776, 104

S. Ct. 1473). "Moreover, where individuals 'purposefully derive benefit' from their interstate activities, it may well be unfair to allow them to escape having to account in other States for consequences that arise proximately from such activities." 471 U.S. at 473-74. Finally, "because

'modern transportation and communications have made it much less burdensome for a party sued to defend himself in a State where he engages in economic activity,' it usu- ally will not be unfair to subject him to the burdens of litigating in another forum for disputes relating to such activity." Id. at 474 (quoting McGee v. International Life Ins. Co., 355 U.S. 220, 223, 2 L. Ed. 2d 223, 78 S. Ct. 199

(1957)).

"With respect to interstate contractual obligations,

the Supreme Court has emphasized that HN4 parties who 'reach out beyond one state and create continuing re- lationships and obligations with citizens of another **12 state' are subject to regulation and sanctions in the other State for the consequences of their activities." 471 U.S. at 473 (quoting Travelers Health Ass'n v. Virginia, 339

U.S. 643, 647, 94 L. Ed. 1154, 70 S. Ct. 927 (1950)). On the other hand, "if the question is whether an individual's contract with an out-of--state party alone can automati- cally establish sufficient minimum contacts in the other party's home forum, . . . the answer is clearly that it can- not." 471 U.S. at 478. The Supreme Court has endorsed

"a 'highly realistic' approach that recognizes that a 'con- tract' is 'ordinarily but an intermediate step serving to tie up prior business negotiations with future consequences which themselves are the real object of the business trans- action.' " Id. at 479 (quoting Hoopeston Canning Co. v. Cullen, 318 U.S. 313, 316, 87 L. Ed. 777, 63 S. Ct. 602

(1943)). " HN5 It is these factors--prior negotiations and contemplated future consequences, along with the terms of the contract and the parties' actual course of dealing-- that must be evaluated in determining whether the defen- dant purposefully established minimum contacts within the forum." Id.

" HN6 Once it has been decided that **13 a defen- dant purposefully established minimum contacts within the forum . . ., these contacts may be considered in light of other factors to determine whether the assertion of personal jurisdiction would comport with 'fair play and substantial justice.' " Id. (quoting International Shoe, 326

U.S. 310 at 320, 90 L. Ed. 95, 66 S. Ct. 154). "Thus courts

'in appropriate cases' may evaluate 'the burden on the de- fendant,' 'the forum State's interest in adjudicating the dis- pute,' 'the plaintiff's interest in obtaining convenient and effective relief,' 'the interstate judicial system's interest in obtaining the most efficient resolution of controversies,' and the 'shared interest of the several States in further- ing fundamental substantial social policies.'" 471 U.S. at

476-77 (quoting World-Wide Volkswagen, 444 U.S. at

292). "These considerations sometimes serve to establish the reasonableness of jurisdiction upon a lesser showing of minimum contacts than would otherwise be required."

471 U.S. at 477. "On the other hand, where HN7 a defen- dant who purposefully has directed his activities at forum residents seeks to defeat jurisdiction, he must present a compelling case that the presence of some other consid- erations **14 would render jurisdiction unreasonable." Id. "Nevertheless, minimum requirements inherent in the concept of 'fair play and substantial justice' may defeat reasonableness of jurisdiction even if the defendant has purposefully engaged in forum activities." 471 U.S. at

477-78.

Applying these principles in Burger King, the Supreme Court found jurisdiction proper where the defen- dant, "eschewing the option of operating an independent

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*261 local enterprise, . . . deliberately 'reached out beyond' his home forum and negotiated with a Florida corporation for the purchase of a long-term franchise and the manifold benefits that would derive from affil- iation with a nationwide organization." Id. at 479-80. The Court emphasized that he entered "a 20-year rela- tionship that envisioned continuing and wide-reaching contacts with Burger King in Florida," which relation- ship could be viewed as neither "random," "fortuitous," or "attentuated." Id. Moreover, the Court stated that the Court of Appeals, in finding jurisdiction improper, "gave insufficient weight to provisions in the various franchise documents providing that all disputes would be governed by Florida law." Id. at 481. The Court reasoned that "al- though **15 such a provision standing alone would be insufficient to confer jurisdiction, . . . when combined with the 20-year interdependent relationship the defen- dant established with Burger King's Miami headquarters, it reinforced his deliberate affiliation with the forum State and the reasonable foreseeability of possible litigation there." Id.

In this case FCFC's alleged misappropriation and im- proper use of BP's trade secrets have occurred and con- tinue to occur in Taiwan. The primary alleged injury to BP has occurred and continues to occur in Great Britain. See Horne v. Adolph Coors Co., 684 F.2d 255, 259-60

(3d Cir. 1982) (holding that in a trade secret case, the injury occurs to the owner of the trade secret wherever he resides). Thus, the primary tortious conduct giving rise to BP's claim against FCFC and to the injury caused thereby is unrelated to the United States. The only FCFC con- tacts with the United States that are in any way related to BP's claim against it are that (1) it placed orders in Taiwan with eight United States based equipment suppli- ers to enable it to build the offending plant in Taiwan, (2) in furtherance of those orders it has sent correspondence

**16 from Taiwan into the United States, and (3) in

one of those eight orders it agreed to arbitrate with that supplier in New York. Thus, in substance, this is a case where FCFC availed itself of the assistance of eight U.S. based companies who solicited its business in Taiwan in order to build a plant in Taiwan allegedly with resulting injury to BP in Great Britain. Accordingly, we find no act by which FCFC "purposefully availed itself of the priv- ilege of conducting activities within the forum . . ., thus invoking the benefits and protections of its laws." Burger King, 471 U.S. at 475.

Burger King teaches that "a non-resident's contracting with a forum resident, without more, is insufficient to es- tablish the requisite 'minimum contacts.' " Sunbelt Corp. v. Noble, Denton & Assoc., Inc., 5 F.3d 28, 32 (3d Cir.

1993). The same is true of "informational communica- tions in furtherance of such a contract." Id. at 32. Besides the contracts and implementing correspondence, there are no significant contacts here with the United States. The fact that these contracts were for a one-time purchase of equipment that was to be shipped to Taiwan and were solicited **17 and negotiated through the Taiwanese agents of the U.S. vendors seems to us to negate any inference of "purposeful availment."

In our view, FCFC's undertaking, in its contract with Nooter, to arbitrate in New York any disputes arising un- der the contract is the single fact that offers most substan- tial support for the proposition that the manner in which FCFC conducted its program of purchases of American equipment for its acetic acid plant reflected a measure of acquiescence in the possible need to submit to the juris- diction of American courts, should disputes arise. But we think that this fact is not sufficient to carry the day. We of course recognize that, in the event of a dispute between FCFC and Nooter, the contractual agreement between FCFC and Nooter would probably -- and properly -- be regarded as a waiver of objections to judicial jurisdiction

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*262 as well, whether that jurisdiction was to be ex- ercised by a New York state court or, in the alternative, by a federal court, located anywhere in the United States, with respect to a claim arising under federal law. But the dispute in the case at bar does not involve Nooter, and the FCFC-JOC contract contains no comparable venue- selection **18 provision. More to the point, the pro- vision in the FCFC-Nooter contract only involved venue selection. It was not a provision stipulating that New York law, or the law of any other American jurisdiction, would govern such disputes as might arise. Accordingly, we are not persuaded that the provision constitutes purposeful availment of the benefits and protections of United States law. Given the attenuated connection between the arbi- tration clause and the instant litigation, it is insufficient to make the Court's exercise of jurisdiction comport with

"traditional notions of fair play and substantial justice." Cf. Kahn Lucas Lancaster v. Lark Int'l Ltd., 956 F. Supp.

1131, 1138-39 (S.D.N.Y. 1997) (New York arbitration clause is insufficient basis for jurisdiction over suit even between the parties to the contract containing the clause until the plaintiff indicates a desire to arbitrate the suit). Finally, we note that the United States has, at best, a very limited interest in adjudicating this dispute between two non-citizens, which is primarily a dispute regard- ing acts that took place in Taiwan that caused an injury in Great Britain. Although BP emphasizes that this suit

**19 seeks only to enjoin and recover damages for FCFC's actions in the United States, and not its acts of misappropriation in Taiwan, it cites no authority for the proposition that a plaintiff can strengthen the relation- ship between the defendant, the forum and the litigation by limiting the relief sought. Regardless of whether BP seeks relief for the actions of FCFC in Taiwan, the fact remains that FCFC has done nothing of substance other than contract in Taiwan with the United States based ven- dors to make one-time deliveries of equipment in Taiwan. Under Burger King, those purchases and the associated correspondence sent from Taiwan are insufficient to create

specific personal jurisdiction.

We find substantial support for our holding in

Burlington Indus., Inc. v. Maples Indus., Inc., 97 F.3d

1100, 1103 (8th Cir. 1996). The plaintiff there brought a claim for misappropriation of trade secrets in the Eastern District of Arkansas. As a basis for specific jurisdic- tion, the plaintiff pointed to the fact that the four ma- chines incorporating the misappropriated trade secrets were purchased from a third-party Arkansas resident. See id. However, none of the defendant's employees **20 went to Arkansas to negotiate their purchase or supervise their manufacture. See id. The Court acknowledged that

HN8 telephone calls between the defendant and the ven- dor, numbering at least one hundred, "can be evidence of a continuous and systematic business relationship," but it found that while these phone contacts "remain a con- sideration, they are insufficient, alone, to confer personal jurisdiction." Id.

We conclude, as well, that FCFC's United States con- tacts are not such that an assertion of general personal jurisdiction comports with the demands of due process. As we have noted, even where the connection between a defendant's contacts and the litigation are insufficient to give rise to specific jurisdiction, general jurisdiction will be available where the defendant's contacts unre- lated to the litigation are "continuous and systematic." Helicopteros Nacionales de Colombia v. Hall, 466 U.S.

408, 416, 80 L. Ed. 2d 404, 104 S. Ct. 1868 (1984).

While FCFC exports its products to the United States, it is undisputed that it has no personnel or facilities here and there is no evidence that it has in any way adver- tised or solicited business here. As a result there is **21 simply no basis for concluding that it has a continuous presence in the United States.

229 F.3d 254, *263; 2000 U.S. App. LEXIS 24789, **21;

56 U.S.P.Q.2D (BNA) 1321

Page 10

*263 Contrary to BP's suggestion, FCFC's relation- ship with FPG and its chairman, Mr. Wang, does not provide the requisite presence here. FCFC is a legally separate entity. The mere fact that FCFC had an arrange- ment with FPG, the details of which are not revealed in the record, whereby FCFC would submit bid packages to FPG's purchasing group, who would in turn submit them to other agents, and the fact that FCFC leased software from Nan Ya, another FPG affiliate, is not a sufficient basis on which to pierce the corporate veil and assert ju- risdiction over FCFC on the basis of the United States contacts of other FPG affiliates. See Cohn v. Insurance Co., 54 F.3d 1108, 1116 (3d Cir. 1995) ("party seeking to pierce corporate veil must establish that controlling cor- poration wholly ignored separate status of controlled cor- poration and so dominated and controlled its affairs that separate existence is a mere sham"). Moreover, FCFC's passive ownership of 3.5% of the stock of a Delaware corporation cannot constitute the kind of continuous and systematic business contacts that give rise to general ju- risdiction. **22 See Shaffer v. Heitner, 433 U.S. 186,

213, 53 L. Ed. 2d 683, 97 S. Ct. 2569 (1977); Grimes v. Vitalink Communications Corp., 17 F.3d 1553, 1559 (3d Cir. 1994). Finally, the fact that FCFC has entered into four other recent contracts for the purchase of chemical technology, two of which involved FCFC personnel trav- eling to the United States for training, is insufficient. See Helicopteros, 466 U.S. at 416-17 (visits in connection with training and purchases, even if occurring at regular intervals, are insufficient basis for general jurisdiction). Even considering the cumulative effect of these various contacts together, the requirements for general jurisdic- tion are not met.

II.

" HN9 In order to obtain a preliminary injunction, the moving party must show (1) irreparable injury, (2) a

reasonable probability of success on the merits, (3) the harm to it outweighs the possible harm to other interested parties, and (4) harm to the public." Frank Russell Co. v. Wellington Management Co., 154 F.3d 97, 101 (3d Cir.

1998). A District Court then balances these four factors to determine if an injunction should issue. See id. JOC asserts that the **23 District Court erred in finding that BP had demonstrated both imminent and irreparable injury and a likelihood of success on the merits.

We find that the record supports the District Court's conclusion that an injunction was necessary to prevent imminent and irreparable harm. The District Court did not clearly err in crediting BP's witness who testified as to the damage that would be done to BP's reputation, cred- ibility and ability to license its technology if FCFC's plant became operational, giving rise to the public perception that BP was unable to protect its proprietary trade secrets. Such HN10 injuries to reputation are difficult to calcu- late, and thus money damages are an inadequate remedy. See Ferrero v. Associated Materials Inc., 923 F.2d 1441,

1449 (11th Cir. 1991) (holding that injury to goodwill is irreparable). Moreover, although the evidence suggests that FCFC's plant would not have become operational for at least a year after the injunction was issued, the history of the instant proceedings belies JOC's unsupported as- sertion that a year was ample time to obtain a trial on the merits in Taiwan in the event that the equipment were al- lowed to leave this country. **24 See Geritrex Corp. v. Dermarite Indus., LLC, 910 F. Supp. 955, 966 (S.D.N.Y.

1996); Wright et al., Federal Practice and Procedure §

2948.1, at 139 (2d ed. 1995) (explaining that imminence requires that the harm will occur before a trial on the merits can be had). The operation of FCFC's plant is not so remote in time as to be uncertain or speculative. See Continental

229 F.3d 254, *264; 2000 U.S. App. LEXIS 24789, **24;

56 U.S.P.Q.2D (BNA) 1321

Page 11

*264 Group, Inc. v. Amoco Chems. Corp., 614 F.2d

351, 359 (3d Cir. 1980). Finally, the District Court's find- ing that any delay on BP's part in filing suit "was caused by BP's conscientious decision to fully investigate the very serious charges before filing suit" is not clearly erroneous. BP Chems., Ltd. v. Formosa Chem. & Fibre Corp., No.

97-cv--4554, at 41 (D.N.J. Sept. 15, 1998). HN11 To the extent that delay can justify denial of a motion for a pre- liminary injunction, see, e.g., Citibank, N.A. v. Citytrust,

756 F.2d 273, 276 (2d Cir. 1985), "a delay caused by a plaintiff's good faith efforts to investigate an infringe- ment" or to determine how serious an infringement is does not preclude a finding of irreparable harm. Tom Doherty Assocs., Inc. v. Saban Entertainment, Inc., 60 F.3d 27, 39

(2d Cir. 1995). **25

In determining whether BP had shown a likelihood of success, however, the District Court concluded that New Jersey had the most significant relationship with the case and applied New Jersey law in analyzing each issue. We conclude that it erred in doing so. n2

n2 FCFC and JOC argued before us, under appropriate argument headings, that BP had not shown a likelihood of success on the merits and, un- der appropriate subheadings, that the record would not support a finding (1) that any information Tu gave FCFC was a trade secret, or (2) that Tu breached a duty by giving information to FCFC. Both briefs (see FCFC's opening brief at 50 and JOC's opening brief at 17-18) took the position that, contrary to the ruling of the District Court, both of these issues are governed by Taiwanese law. FCFC's brief cited authority in support of this posi- tion, and JOC expressly incorporated that authority. Having considered the conflicts of law issues thus

raised, we have concluded that the District Court has entered an injunction, and is currently proceed- ing to the merits issues, based on an erroneous view of the law. Under these circumstances, we deem it appropriate and prudent to advise the District Court at this time regarding our view of the conflicts of law issues.

**26

BP bases its claim against JOC on the following Restatement rule to which it maintains the New Jersey courts are committed:

One who discloses or uses another's trade se- cret without a privilege to do so is liable to the other if . . . (c) he learned the secret from a third person with notice of the facts that it was a secret and that the third person discov- ered it by improper means or that the third person's disclosure was otherwise a breach of duty to the other.

Restatement (First) of Torts § 757 (1939); see also Williams v. Curtiss-Wright Corp., 681 F.2d 161, 164 & n.3 (3d Cir. 1982) (holding that New Jersey has substan- tially adopted Restatement section 757(c)).

JOC does not dispute, as we understand it, that New Jersey courts follow this rule. n3 It stresses, however, that under New Jersey's flexible "governmental-interest anal- ysis, . . . the determinative law is that of the state with the greatest interest in governing the particular issue to be de- cided." Veazey v. Doremus, 103 N.J. 244, 510 A.2d 1187,

1189 (N.J. 1986) (emphasis supplied); accord O'Connor v. Busch Gardens, 255 N.J. Super. 545, 605 A.2d 773, 774

(N.J. Super.

229 F.3d 254, *265; 2000 U.S. App. LEXIS 24789, **26;

56 U.S.P.Q.2D (BNA) 1321

Page 12

*265 Ct. App. Div. 1992) **27 ("Choice of law deci- sions can and should be made on an issue-by--issue basis, and thus the law of different states can apply to different issues in the same case.); see also Restatement (Second) of Conflict of Laws § 145, § 145 cmt. d. JOC points out that in addition to issues regarding its knowledge and con- duct, the likelihood of BP's success on its claim depends on whether it can establish (1) that it had a protectable interest in its proprietary information -- i.e., a "trade se- cret" (and, in particular, that Monsanto and CPDC took the requisite security measures to protect the methanol carbonylation technology) and (2) that FCFC tortiously acquired BP's trade secret (and, in particular, that FCFC's consultant, Mr. Tu, owed a duty of confidentiality with re- spect to the technology and that FCFC had knowledge of a breach of duty in receiving and using BP's technology). Thus, while it appears to be undisputed that New Jersey law governs the issues of JOC's knowledge and conduct, this does not necessarily signify that New Jersey law -- as opposed to Taiwanese law -- applies to the two additional issues necessary to BP's case against JOC.

n3 It does dispute the application of the rule to the facts of this case, asserting that JOC did not have notice that FCFC had discovered the secret by improper means at the time it learned the secret from FCFC, and that therefore Restatement sec- tion 758 rather than section 757 applies. Section

758 governs where the defendant does not have no- tice that the third party who disclosed the secret obtained it by improper means until after the de- fendant learns the secret. See Restatement (First) of Torts § 758 & cmt. a. Section 758 protects from liability an innocent third party who learns of the secret if prior to receiving notice "he has so changed his position that to subject him to liability would be inequitable." Id. § 758(b). JOC argues that its substantial investment of time and money in the manufacturing process thus precludes liability. The events from which the District Court inferred no- tice, however, all occurred prior to JOC's entering into its contract with FCFC. Thus, sections 757 and

758 do not differ in any respect that is relevant to the issue before us in this appeal.

**28

JOC has tendered affidavits tending to show that Taiwanese law governing the protectability of commer- cially valuable information and what constitutes a tortious conversion of such a protectable interest is different from, and more difficult for BP than, the New Jersey law gov- erning those issues. As to the issue of protectability, the affidavits indicate, for example, that " a single unpro-

tected disclosure by either BP, Monsanto, CPDC or other Monsanto licensees of the secret terminates its trade se- cret status immediately (like a needle hits a balloon)," (A.

6024), and that "BP is required to show that CPDC ac- tually took steps to safeguard the information," (A. 1046

(emphasis added)). As to the issue of whether FCFC tor- tiously acquired the information from Tu, the affidavits indicate that:

BP is required to show that CPDC actually entered into a confidentiality agreement with Mr. Tu. There must be evidence that Mr. Tu was put on notice or instructed as to what materials he should consider confidential. Under Taiwanese law, corporate obligations do not attach to a corporation's employee. The employee has to be subject to sic spe- cific agreement or clear instructions **29 as to exactly what he was required to keep confidential.

(A. 1046).

We recognize that BP has tendered conflicting affi- davits tending to show that JOC's affidavits do not ac- curately characterize Taiwanese law and that Taiwanese and New Jersey law are the same as to these issues. It is enough for present purposes, however, to find that there is record evidence that, if believed, would support a finding that there are relevant differences in the laws of the two sovereigns that the parties claim to be governing. This requires us to determine whether Taiwan or New Jersey has the more substantial interest in determining:

(1) whether proprietary information licensed by its purported owner for use in Taiwan was protectable and whether at the time of its alleged conversion in Taiwan it had been re- turned to the public domain; and

(2) whether FCFC's acquisition of the alleged trade secret in Taiwan was wrongful.

In both instances, we conclude based on the current record that Taiwan had the more substantial interest in having its law applied and that a New Jersey court would apply that law in a case like this.

We believe Taiwan has the greater interest in setting

**30 the standards regarding whether information that has been licensed by a British company to a Taiwanese company has been sufficiently safeguarded to warrant le- gal protection or whether it has entered the Taiwanese public domain. This issue implicates policy judgments regarding the appropriate balance

229 F.3d 254, *266; 2000 U.S. App. LEXIS 24789, **30;

56 U.S.P.Q.2D (BNA) 1321

Page 13

*266 between protecting trade secrets, thereby encour- aging both the development of new technology and the willingness of foreign companies to share their technol- ogy with Taiwanese businesses, and free interchange and access to information, which also has profound impli- cations for the health of the Taiwanese economy. New Jersey's interest, on the other hand, would appear to be virtually nil. As we have previously pointed out, BP, the purported owner of the trade secret, is not a resident of New Jersey and, while it may suffer some marginal injury there, New Jersey is assuredly not the principal situs of ei- ther the direct or the indirect injury inflicted. n4 Moreover, we are doubtful that a New Jersey court would apply New Jersey law even if BP were a New Jersey corporation.

HN12 A state's interest in protecting its citizens from in- jury by protecting intellectual property which they choose to license **31 to foreign companies cannot outweigh the interests of the foreign sovereign in setting the stan- dards for the protection of intellectual property within its own borders. Cf. O'Connor, 605 A.2d at 775.

n4 As we have previously pointed out, Great Britain, where BP is domiciled, is the principal si- tus of the injury alleged by BP. However, as we point out below, conventional choice of law doc- trine ordinarily does not give great weight to the place of injury in cases, like the case at bar, arising out of claims of misappropriation of trade values. In any event, no party has suggested that British law governs any of the issues presented in this case.

The New Jersey Superior Court's decision in O'Connor is instructive. There, a New Jersey resident was injured in Virginia. The injuries were allegedly caused by both the New Jersey plaintiff's and the Virginia defen- dant's negligence. The issue was whether the court should apply Virginia's strict rule of common-law contributory negligence or New Jersey's comparative **32 negli- gence rule, which afforded more protection to the injured plaintiff. The court held that:

New Jersey's concern for its injured citi- zens is also legitimate, but it cannot exempt them from other states' law setting standards for local conditions and conduct. If New Jersey's comparative negligence doctrine fol- lowed the plaintiff into. . . Virginia, it would follow her into every other state as well, and would supplant local liability rules wherever she went. That would be an impermissible intrusion into the affairs of other states.

Id.; cf. Restatement (Third) of the Foreign Relations Law of the United States §§ 402, 403 (1987) (discussing bases of and limitations on the jurisdiction to prescribe law with respect to a person or activity having connections with other states). Similarly, in this case, neither New Jersey nor Great Britain's concern for their injured citi- zens can outweigh Taiwan's interest in setting standards for the protection of intellectual property in Taiwan. Similarly, Taiwan has the greater interest in having its law applied to determine whether FCFC, a Taiwanese company, acted tortiously in acquiring information in Taiwan from CPDC, another **33 Taiwanese company, and, in particular, as to the circumstances under which a Taiwanese company's actions have created a duty of con- fidentiality in its employees. Again the law in this area reflects a delicate balance of competing interests that has the capacity to profoundly affect the Taiwanese economy, and any interest that New Jersey would have in protecting trade secret holders who export their intellectual property to Taiwan is greatly outweighed by Taiwan's interest in setting the standards that govern the conduct of its own cit- izens regarding intellectual property that is present within

its borders.

The conclusion that Taiwan's interest in both of these issues is greater than New Jersey's finds further support in the Restatement (Second) of Conflict of Laws, to which New Jersey courts have often looked for guidance. See, e.g., Veazey v. Doremus, 103 N.J. 244, 251, 510 A.2d

1187;

229 F.3d 254, *267; 2000 U.S. App. LEXIS 24789, **33;

56 U.S.P.Q.2D (BNA) 1321

Page 14

*267 Rose v. Port of New York Authority, 61 N.J. 129,

293 A.2d 371 at 376-77; O'Connor, 605 A.2d at 774. The Restatement suggests that HN13 the following factors should be taken into account in determining which state has the most significant relationship with a particular issue in tort law:

(a) the place where the injury occurred,

(b) **34 the place where the conduct caus- ing the injury occurred,

(d) the place where the relationship, if any, between the parties is centered.

Restatement (Second) of Conflicts § 145 (1971).

" HN14 The place where the conduct occurred is given particular weight in the case of torts involving . .. unfair competition." Id. § 145, cmt. (e), at 420. Moreover, while the general rule is that in determining whether an interest is entitled to legal protection, "the applicable law will usually be the local law of the state where the injury occurred," id. § 158 (emphasis added), the Restatement qualifies this rule, stating:

"situations do arise, however, where the place of injury will not play an important role in the selection of the state of applicable law. .

. . This will . . . be so when . . . there may be little reason in logic or persuasiveness to say that one state rather than another is the place of injury, or when, such as in the case of multistate defamation, injury has occurred in two or more states.

Id. The Restatement further states that " HN15 the place

**35 of injury is less significant in the case of . . . such unfair competition as consists of false advertising and the misappropriation of trade values." Id. § 145 cmt f. The Restatement's explanation for the unimportance of the place of injury in cases of misappropriation of trade values is directly applicable here:

The injury suffered through false advertising is the loss of customers or of trade. Such cus- tomers or trade will frequently be lost in two or more states. The effect of the loss, which is pecuniary in its nature, will normally be felt most severely at the plaintiff's headquar- ters or principal place of business. But this place may have only a slight relationship to the defendant's activities and to the plaintiff's loss of customers or trade. The situation is es- sentially the same when misappropriation of the plaintiff's trade values is involved, except that the plaintiff may have suffered no pecu- niary loss but the defendant rather may have obtained an unfair profit.

Id. Equally applicable here is the conclusion that in such cases, "the place of injury does not play so important a role for choice-of--law purposes . . . as in the case of other kinds of torts and **36 that instead, the principal lo- cation of the defendant's conduct is the contact that will usually be given the greatest weight in determining the state whose local law determines the rights and liabilities that arise." Id.

The vast majority of the conduct that is relevant to these two issues occurred in Taiwan. n5 BP licenced the trade secrets to CPDC in Taiwan. To the extent that BP and CPDC took measures to safeguard those se- crets in CPDC's hands, those measures were taken in Taiwan. FCFC acquired whatever information it acquired in Taiwan, designed its plant in Taiwan, prepared the bid packages with the specifications for the equipment in Taiwan, and delivered those packages to Taiwanese agents of U.S. companies in Taiwan.

n5 Although BP has alleged misconduct occur- ring in New Jersey, namely JOC's fabrication of equipment using misappropriated technical speci- fications, this conduct has no relevance to either of the issues regarding which JOC asserts that Taiwanese law applies.

Moreover, while neither BP **37 nor JOC is Taiwanese, which by itself weighs against the applica- tion of Taiwanese law, both have established significant relationships with Taiwan, BP by licensing its technology

229 F.3d 254, *268; 2000 U.S. App. LEXIS 24789, **37;

56 U.S.P.Q.2D (BNA) 1321

Page 15

*268 to a Taiwanese company and JOC by maintaining agents in Taiwan for the purpose of soliciting Taiwanese business. These relationships are centered in Taiwan, and these relationships gave rise to the events that are at issue here.

We hold that Taiwan has the greater interest in hav- ing its law govern the issues of whether BP had a pro- tectable interest in the information licensed to CPDC and whether FCFC acted unlawfully in acquiring it. Therefore, to the extent that there is a conflict of law on these issues, Taiwanese law should govern.

As we have previously noted, there is evidence in the current record that, if believed, would support a conclu- sion that Taiwanese and New Jersey law do not differ in any respect material here. The District Court had no oc- casion to resolve the conflict presented in the affidavits before it because it erroneously concluded that New Jersey law governed all issues. While we conclude that we are authorized to resolve that conflict, see Fed. R. Civ. Proc.

44.1 (the content of foreign **38 law is an "issue of law"); Franzen v. Equitable Life Assurance Soc'y, 130

N.J.L. 457, 33 A.2d 599, 602 (N.J. 1943) (same), we be- lieve the District Court is in the best position to determine what at this point is essentially a credibility issue -- i.e., which expert to believe. The District Court will thus be required to determine hereafter whether Taiwanese law differs from that of New Jersey. It may address this issue in the context of a renewed application for a preliminary injunction and/or in the context of a merits determination. In either context, it will have discretion to supplement the existing record with testimony or otherwise and/or to conduct its own independent investigation regarding Taiwanese law. See Fed. R. Civ. Proc. 44.1; N.J. R. Evid.

201(a); Franzen, 130 N.J.L. 457, 33 A.2d 599, 602.

III.

We will reverse the District Court's order of May 14,

1999, and direct that it: (a) dismiss FCFC for want of personal jurisdiction, and (b) conduct further proceed- ings with respect to BP's claim against JOC in a manner consistent with this opinion. n6

n6 Because we are setting aside the injunction entered by the District Court and remanding for fur- ther proceedings, we need not address the question, posed by BP's cross-appeal, whether the District Court erred in limiting the duration of the injunc- tion to thirty months.

**39

CONCURBY: ALITO

CONCUR:

ALITO, Circuit Judge, concurring in the judgment: Except with respect to the comments below, writing separately in this case would not serve a useful purpose. I do not join part IIIB of the opinion of the Court. Both FCFC and JOC merely mentioned the choice-of--law is- sue in passing in their briefs. See FCFC Br. At 41, 50 n.7; JOC Br. At 17. " ' A passing reference to an issue .

. . will not suffice to bring that issue before this Court.' "

Laborers' Int'l Union of N. Am. v. Foster Wheeler Corp.,

26 F.3d 375, 398 (3d Cir. 1994) (citation omitted) (el- lipsis in original). I would hold that no choice-of--law issue is properly before the Court in this appeal. Without full briefing from the parties, I am unwilling to join the Court's novel application of New Jersey choice-of--law principles.

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