Demonstration of product at trade show didn’t meet all claim limitations; no personal jurisdictionSeptember 17, 2008

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.

Medical Solutions owns patents relating to devices that control the temperature of medical and surgical fluids in operating rooms. CCS produces the IntraTemp device, a mobile workspace that controls surgical fluid temperature. CCS is a North Carolina company, with a primary place of business in North Carolina. The company does no business in the District of Columbia. CCS does not market to the District, does not receive revinue from the District, has no assets in the District, nor does it have employees, sales agents, or offices in the District.

CCS, however, attented a trade show hosted by the Association of periOperative Registered Nurses in the District. At this show, CCS had a booth and advertised the IntraTemp device, discussed the product with potential customers, and demonstrated its operation. As a result of this trade show, CCS made two sales of IntraTemp devices to hospitals, one in Maryland and one in Georgia.

Medical Solutions sued CCS for infringement of two patents in the District of Columbia, asserting CCS's activities at the trade show as the basis for jurisdiction. Specifically, before the district court, Medical Solutions asserted CCS had "used" and "offered to sell" the patented product in D.C. The district court was unpersuaded, and dismissed the case for lack of personal jurisdiction. The district court held there had been no offers to sell because CCS's activities did not include price terms, and thus the demonstrations and conversations with potential customers could not be considered "offers." The district court also held the demonstration of the device was not a "use." Medical Solutions appealed.

The Federal Circuit affirmed. On appeal, Medical Solutions dropped its "offer to sell" argument. The court cited several cases where "the mere demonstration or display of an accused product, even in an obviously commercial atmosphere" was not considered a "use" of a patented product. However, the Federal Circuit determined it need not decide whether demonstration qualifies as use, as CCS's activities at the trade show "appear[ed] to fall short of practicing all of the elements of any one claim." Notably, while CCS personnel demonstrated the functions of the device, there was no evidence that it was ever used to actually heat medical items. So, while the determination of whether the use of a patented invention has occurred is case specific, in this case, the district court correctly reviewed the facts, and determined there was no prima facie evidence of "use" of the invention. As a result, the court affirmed the dismissal for lack of personal jurisdiction.

To read the full decision in Med. Solutions, Inc. v. C Change Surgical LLC, click here.