Attendance at single trade show to display infringing product sufficient for personal jurisdiciton

In a case of first impression for the Federal Circuit, the court addressed the issue of how to apply Federal Rule 4(k)(2) (the Federal Court's long-arm statute) to a defendant.  The court, in agreement with several other circuits, that a Rule 4(k)(2) analysis is appropriate when (1) the plaintiff's claim arises under federal law, (2) the defendant is not amenable to jurisdiction in any individual state, and (3) the exercise of jurisdiction comports with due process.

Applying this test to the facts of the case, the court reversed the district court's dismissal of the case for lack of personal jurisdiction.  The court held the fact that representatives of the defendant showed the accused products at a trade show in California was sufficient for specific personal jurisdiction.  The court held attendance at the trade show was sufficient for the defendant to purposefully avail itself of the privilege of conducting activities in the United States, and that the infringement claim arose out of these contacts, even though the defendant's representatives took steps to ensure it was clear the allegedly infringing devices were not for sale in the United States.

The court left the most interesting questions for future cases, including whether bringing the allegedly infringing devices to the trade show constitutes an infringing act of importation under § 271, whether the plaintiff or the defendant has the burden to show the defendant is not subject to the jurisdiction of any state under the second step of the Rule 4(k)(2) analysis (and what sufficies as such a showing), and whether a district court must undertake a Rule 4(k)(1) analysis before a 4(k)(2) analysis.

More detail of Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. de Equip. Medico after the jump.

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Insufficient enforcement activity in district by patentee leads to dismissal of DJ action

In a decision Monday, the Federal Circuit affirmed a district court's dismissal of a declaratory judgment action against a British patentee for lack of personal jurisdiction.  The facts of the case are similar to the Avocent case decided a few months ago.  Here, the patentee's only contacts with the district in which the action was brought were the sending of a cease and desist letter and non-exclusively licensing the patent in suit in the jurisdiction.  Under Avocent, this was simply insufficient to support jurisdiction against the foreign declaratory judgment defendant.

As with Avocent, Judge Newman dissented.  She cited many of the same reasons for her dissent as she did in her Avocent dissent and also observed that the trend should be to make declaratory judgments easier to obtain, not more difficult, particularly in light of the Supreme Court's decision in MedImmune.

More detail of Autogenomics, Inc. v. Oxford Gene Tech. Ltd. after the jump.

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Patentee's commercial sales not relevant for personal jurisdiction in DJ action

In a decision addressing personal jurisdiction in declaratory judgment actions, the Federal Circuit affirmed a district court's dismissal of an action against a foreign patent owner.  The plaintiff sought a declaration that two patents owned by a Taiwanese company were invalid and not infringed in the plaintiff's home forum, the Northern District of Alabama.  The patentee sells products covered by the patent in that district and sent a cease and desist letter to the DJ plaintiff there.

The district court dismissed the case for lack of personal jurisdiction.  Citing the Federal Circuit's Red Wing Shoe decision, the district court observed a cease and desist letter alone is insufficient to confer personal jurisdiction.  Further, the district court rejected the contention that the sales in the district subjected the patentee to general jurisdiction.

The Federal Circuit affirmed, stating explicitly that the contact relevant for specific personal jurisdiction in a declaratory judgment case are those relating "to the activities of the defendant patentee in enforcing the patent or patents in suit," making the "relevant inquiry . . . to what extent the defendant patentee has purposefully directed" its enforcement activity "at residents of the forum."  Based on this standard, the patentee's sales of goods covered by the patent are irrelevant to personal jurisdiction in the declaratory judgment context, as such sales are irrelevant to enforcement of the patent.

Here, the Federal Circuit had little trouble affirming the district court, as the only non-cease and desist contacts with the forum alleged to support jurisdiction were the patentee's sales.  While the court was concerned about the potential for foreign patentees to avoid personal jurisdiction in declaratory judgment cases, the court observed the District Court for the District of Columbia is always available under § 293

Judge Newman dissented, and would have held the patentee's sales and other contacts supporting the related state law claims were sufficient to confer personal jurisdiction in this case.  She also criticized the majority's reference to § 293, observing it would be unlikely the state law claims would be permitted to be adjudicated in that forum.

More detail of Avocent Huntsville Corp. v. Aten Int'l Co. after the jump.

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Eleventh Circuit: Website in Tennessee using Floridian's trademark sufficient for jurisdiction

In a decision last week, the Eleventh Circuit reversed a district court's dismissal of a trademark infringement case for lack of personal jurisdiction.  The district court held that the allegedly infringing conduct, operating a website, was insufficient to warrant jurisdiction in the plaintiff's home state of Florida.

Here, the plaintiff was an individual, and the trademark allegedly infringed was the plaintiff's name.  The court applied the Calder effects test, and held it was reasonable for the defendant, in using the plaintiff's name, to expect to be haled into court in the plaintiff's home state.  The court characterized the alleged trademark infringement in this case as intentional, in that the plaintiff was "individually targeted" to "misappropriate his name and reputation for commercial gain."  As a result, the Calder test was met, and personal jurisdiction was proper in Florida.

More detail of Licciardello v. Lovelady following the jump.

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Assertions of infringment at trade show sufficient to confer personal jurisdiction in DJ action

In a recent decision, the Federal Circuit reversed a district court's order dismissing a case for lack of personal jurisdiction.  The plaintiff brought a declaratory judgment action against the defendant patent holder in Washington.  After sending a letter accusing the plaintiff of infringing two patents, the patent holder attempted to get the plaintiff's display removed from a trade show in Seattle and told potential customers the plaintiff had copied their patent.  The district court held that this was insufficient to support jurisdiction, finding the exercise of jurisdiction would "offend traditional notions of fair play and substantial justice."

The Federal Circuit reversed, and held there was a sufficient basis for the district court to exercise specific jurisdiction over the defendants.  As stated by the court:

Of critical importance to the issue of personal jurisdiction, [defendant's] attempts at "extra-judicial patent enforcement" were targeted at [the plaintiff's] business activities in Washington and can fairly be characterized as attempts to limit competition from [plaintiff] at the Seattle convention.
These activities specifically directed at Washington rendered exercise of jurisdiction fair, and the court accordingly reversed the district court's dismissal.

More detail of Campbell Pet Co. v. Miale after the jump.

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Demonstration of product at trade show didn't meet all claim limitations; no personal jurisdiction

In a decision Tuesday, the Federal Circuit affirmed the dismissal of a patent infringement claim for lack of personal jurisdiction.  The alleged infringer showed the allegedly infringing product at a trade show in DC, which led the plaintiff to file suit there. The district court dismissed, holding the defendant had not actually committed an infringing act at the trade show, and thus had not subjected itself to jurisdiction in DC.

The Federal Circuit affirmed.  The defendant's only substantive contact with DC was the trade show.  The court noted the defendant's activities were not a "use" of the patented invention, as the defendant never actually put an infringing device "into service."  Instead, there was no evidence that all elements of any of the plaintiff's patent claims were actually practiced at the trade show.  Accordingly, the court affirmed the dismissal.

More details of Med. Solutions, Inc. v. C Change Surgical LLC after the jump.

 

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Tenth Circuit: Submitting eBay VeRO notice confers jurisdiciton in alleged infringer's home state

In a recent decision, the Tenth Circuit reversed a district court's dismissal of a copyright case for lack of personal jurisdiction.  The case arose out of the efforts by a copyright holder to have an eBay auction for allegedly infringing products removed via eBay's VeRO program.  After the auction was removed, the alleged infringer filed suit, seeking a declaration that its products did not infringe.  The district court had dismissed the matter for lack of personal jurisdiction, rejecting a Calder-type argument that the act of removing the auction was specifically directed to Colorado, where the alleged infringer resided.

The Tenth Circuit reversed the dismissal, finding that at least at the pleadings stage, a prima facie showing of jurisdiction had been made under Calder.  Specifically, the complaint sufficiently alleged that the copyright holder's actions were intentional and expressly aimed at the forum state with knowledge that the brunt of the injury would be felt in the forum state, and that the case arose out of that conduct.

More detail of Dudnikov v. Chalk & Vermillion Fine Arts, Inc. after the jump.

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