Litecubes, LLC v. Northern Light Products, Inc.

United States Court of Appeals for the Federal Circuit

2006-1646

LITECUBES, LLC,
and CARL R. VANDERSCHUIT,

Plaintiffs-Appellees,

v.

NORTHERN LIGHT PRODUCTS, INC.
(doing business as GlowProducts.com),

Defendant-Appellant.

Rudolph A. Telscher, Jr., Harness, Dickey & Pierce, P.L.C., of St. Louis, Missouri,
argued for plaintiffs-appellees. With him on the brief were Matthew L. Cutler and Kara R.
Yancey.

F. Ross Boundy, Davis Wright Tremaine LLP, of Seattle, Washington, argued for
defendant-appellant. With him on the brief was Robert J. Carlson, Christensen O’Connor
Johnson Kindness PLLC, of Seattle, Washington. Of counsel on the brief was Kevin P.
Anderson, Wiley Rein LLP, of Washington, DC. Of counsel was Julian D. Forman, Davis
Wright Tremaine LLP, of Seatte, Washington.

Appealed from: United States District Court for the Eastern District of Missouri

Judge E. Richard Webber
United States Court of Appeals for the Federal Circuit

2006-1646

LITECUBES, LLC, and CARL R. VANDERSCHUIT,

Plaintiffs-Appellees,

v.

NORTHERN LIGHT PRODUCTS, INC.
(doing business as GlowProducts.com),

Defendant-Appellant.

Appeal from the United States District Court for the Eastern District of Missouri in case
no. 4:04-CV-00485, Judge E. Richard Webber.

___________________________

DECIDED: April 28, 2008
___________________________

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and GAJARSA,
Circuit Judge.

GAJARSA, Circuit Judge.

This patent and copyright case requires that we clarify the often-confused

boundary between elements of a federal claim, which must be established before relief

can be granted, and the requirements for establishing subject matter jurisdiction.

Plaintiffs-Appellees Litecubes, LLC and Carl R. Vandershuit (collectively “Litecubes”),

brought an action in the U.S. District Court for the Eastern District of Missouri alleging

patent and copyright infringement by Defendant-Appellant Northern Lights Products,

Inc., doing business as GlowProducts.com (“GlowProducts”). The district court entered
a judgment against GlowProducts after a jury verdict of copyright and patent

infringement. Subsequently, GlowProducts filed a motion to dismiss the case for lack of

subject matter jurisdiction on the grounds that it did not sell the allegedly infringing

products within the United States, nor import the products into the United States. The

district court denied the motion on the grounds that GlowProducts did import the goods

into the United States.

GlowProducts appeals the denial of its motion to dismiss for lack of subject

matter jurisdiction. We affirm the district court’s denial of the motion to dismiss, but do

so on different grounds. The district court erred in treating the issue of whether the

goods had been imported into the United States as an issue impacting its subject matter

jurisdiction. A plaintiff must prove that allegedly infringing activity took place in the

United States to prevail on claims of patent or copyright infringement, but as with any

other element of the claims, failure to do so does not divest the federal courts of subject

matter jurisdiction over the action.

We also affirm the district court’s denial of GlowProducts’ motion for a judgment

as a matter of law. Substantial evidence supports the jury’s finding of infringement.

We have jurisdiction to hear the appeal pursuant to 28 U.S.C. 1295(a)(1).

I.
A.

Vanderschuit is the owner and founder of Litecubes, and the inventor and owner

of U.S. Patent No. 6,416,198 (the “’198 patent”). The ’198 patent discloses an

illuminatable novelty item that can be placed in beverages, i.e., a lighted artificial “ice

cube.” Litecubes is the licensee of the ’198 patent and the owner of a registered

copyright on the Litecube (the “Litecube Copyright”).

2006-1646 2
 Litecubes asserted three independent claims from the ’198 patent, claims 1, 16,

and 31. Claim 1 claims:

An illuminatable beverage accessory device comprising:

a. at least one light source;

b. at least one power source switchably connected to said light source;

c. a cartridge having a light-source chamber to contain said light source, a
power-source chamber below said light-source chamber, and two wire
lead channels on the cartridge underside and in communication with said
light-source chamber;

d. a lid under said cartridge, said lid having a lid chamber mating with said
power-source chamber to thereby contain said power-source therein and
further having a power-switching means for powering said at least one
light source into and from an on-light mode into and from an off-light
mode;

e. a housing covering said cartridge and said lid such that a cavity is
defined therein and a water-tight integrity is maintained within said
housing; and

f. a filler within said cavity, said filler adapted to retain heat when said
device is heated.

’198 patent cols. 7-8 (emphasis added). Claim 16 is identical to claim 1 except that

subpart (f) requires “a filler within said cavity, said filler adapted to retain cold when said

device is cooled.” Id. cols. 8-9. Claim 31 differs from claims 1 and 16 in that (a) it does

not require a filler adapted to retain heat or cold, and (b) it requires that the power

source “reciprocally translate . . . from an open light-on mode to a closed light-off

mode.” Id. cols. 9-10.

At a Markman hearing, the district court construed the claim 1 term “a filler within

said cavity, said filler adapted to retain heat when said device is heated” to mean “filler

within said cavity, said filler made suitable to or fit for the specific use of retaining heat

2006-1646 3
when said device is heated.” Litecubes v. N. Light Prods., Inc., No. 4:04cv00485 (E.D.

Mo. March 7, 2005) (“Markman Order”) (emphasis added). Similarly, the district

construed the relevant term in claim 16 to mean “filler within said cavity, said filler made

suitable to or fit for the specific use of retaining cold when said device is cooled.” Id.

(emphasis added). Neither party challenges these constructions on appeal.

B.

GlowProducts is a Canadian corporation operating from its offices in Victoria,

British Columbia, which acquires novelty items from Chinese manufacturers and then

sells the items primarily in North America. GlowProducts does not have offices,

facilities, or assets in the United States. Evidence at trial, however, established that

GlowProducts sold the accused products directly to customers located in the United

States and that GlowProducts would ship the products, f.o.b., 1 from its Canadian offices

to its customers in the United States.

Two types of products sold by GlowProducts are at issue, the EXA cubes and the

ICM cubes (which include the “8 Mode Multi Cube” and the “3 Setting Flashing Lighted

Ice Cube”). Both products are artificial ice cubes containing an L.E.D. and battery. The

EXA cubes are nearly identical to the Litecube product (“the Litecube”) and include a

power source that can “reciprocally translate . . . from an open light-on mode to a closed

light-off mode,” ’198 patent cols. 9-10. GlowProducts does not allege any error on the

merits in the jury’s finding that the “EXA” cube infringed claim 31; nor does it contest the

merits of the jury’s finding that the EXA cube infringes the Litecube Copyright.

1
“F.o.b” or “free on board” is “a method of shipment whereby goods are
delivered at a designated location, usually a transportation depot, at which legal title and
thus the risk of loss passes from seller to buyer.” MEMC Elec. Materials, Inc. v.
Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1374 n.3 (Fed. Cir. 2005).
2006-1646 4
 The ICM cubes are a different shape than the Litecube and, thus, were not

alleged to have infringed the Litecube Copyright. Nor do they have a reciprocally

translating power source as required by claim 31. Accordingly, at issue at trial was

whether they infringe claims 1 and 16 of the ’198 patent. In dispute was only whether

the ICM cubes meet the limitation that the cube contain a filler adapted to retain heat or

cold when the device is heated or cooled. GlowProducts concedes that the ICM cubes

meet all of the remaining limitations of claims 1 and 16.

C.

Litecubes filed this action in April 2004. A five-day jury trial was held in October

2005. Midway through trial, GlowProducts raised for the first time the issue of subject

matter jurisdiction, arguing that the trial court did not have jurisdiction over the claims

because there was no evidence that at the time the lawsuit was brought GlowProducts

had made any sales in the United States or imported products into the United States.

Trial Tr. vol. III 169. GlowProducts’ theory was that because its sales to United States’

customers were shipped f.o.b., the sales took place in Canada and that it was the

customer who imported the goods into the United States.

After the trial had concluded and the jury entered a verdict of willful infringement,

GlowProducts filed a motion to dismiss for lack of subject matter jurisdiction on these

grounds. Neither Litecubes nor the district court challenged GlowProducts

characterization of the issue as jurisdictional. Instead Litecubes opposed the motion on

the grounds that there was ample evidence that GlowProducts had sold, offered to sell,

or imported the allegedly infringing products to the United States. Id. The district court

agreed. The court denied GlowProducts’ motion, finding evidence of infringement

2006-1646 5
“sufficient to establish subject matter jurisdiction in this Court” because GlowProducts

“clearly imported the accused products into the United States.” Litecubes v. N. Light

Prods., Inc., No. 4:04cv00485, at *3 (E.D. Mo. Aug. 25, 2006) (Memorandum and

Order). The district court did not reach the issue of whether there were sales or offers to

sell in the United States. 2 The district court also dismissed GlowProducts’ motions for

judgment as a matter of law (“JMOL”), concluding that substantial evidence supported

the jury verdict. Id. at *12

After the district court issued a final judgment, GlowProducts appealed. In their

initial briefing to this court, both parties assumed, without any analysis, that the issue of

whether there was allegedly infringing activity in the United States was jurisdictional.

However, because we have an independent obligation to properly determine our own

jurisdiction, the panel requested that the parties be prepared to discuss at oral

argument:

Whether failing to establish that an alleged infringer “makes, uses, offers
to sell, or sells any patented invention, within the United States or imports
into the United States any patented invention” is sufficient to divest the
federal courts of subject matter jurisdiction over a patent infringement
action, or instead whether the location of the allegedly infringing activity is
a factual element of the claim which must be proven to show patent
infringement but which does not affect the subject matter jurisdiction of the
federal courts.

2
Litecubes had not initially pled infringement based on importation, relying
instead only on the sale and offer to sell prongs of § 271. However the court allowed
Litecubes leave to amend their complaint to include importation (and held that this
amendment would relate back to the initial filing) because the issue was raised at trial.
2006-1646 6
Letter to Parties (Nov. 29, 2007). 3 At oral argument, Litecubes argued for the first time

that the issue was not one of subject matter jurisdiction, but should properly be

considered an element of the claim. GlowProducts did not provide any authority to the

contrary, suggesting only that it was “not an easy question.” 4

II.

Subject matter jurisdiction is a question of law that we review de novo.

Pennington Seed, Inc. v. Produce Exch. No. 299, 457 F.3d 1334, 1338 (Fed. Cir. 2006);

see also Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 95 (1998) (“Every federal

appellate court has a special obligation to ‘satisfy itself not only of its own jurisdiction,

but also that of the lower courts in a cause under review,’ . . . .” (quoting Mitchell v.

Maurer, 293 U.S. 237, 244 (1934))). Pursuant to 28 U.S.C. § 1338(a), “[t]he district

courts shall have original jurisdiction of any civil action arising under any Act of

Congress relating to patents, plant variety protection, copyrights and trademarks.”

Under what is known as the “well-pleaded complaint rule,” subject matter jurisdiction

exists if a “well-pleaded complaint establishes either that federal patent law creates the

cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a

substantial question of federal patent law, in that patent law is a necessary element of

one of the well-pleaded claims.” AT&T Co. v. Integrated Network Corp., 972 F.2d 1321,

3
The parties were also asked to address whether the extraterritorial scope
of the Copyright Act was an issue of subject matter jurisdiction and whether that issue
should be decided under the Eighth Circuit’s or this Circuit’s law.
4
Both parties suggested that if the issue was not jurisdictional, this court
could still consider whether there was sufficient evidence that the allegedly infringing
acts took place within the United States by reviewing the district court’s denial of
Litecubes’ motion for JMOL on this issue, despite Litecubes’ failure to appeal the denial
of JMOL on this ground.
2006-1646 7
1323-24 (Fed. Cir. 1992) (quoting Christianson v. Colt Indus. Operating Corp., 486 U.S.

800, 808 (1988)).

Litecubes alleged in its complaint that GlowProducts violated 35 U.S.C. § 271(a),

which provides that “[e]xcept as otherwise provided . . . whoever without authority

makes, uses, offers to sell, or sells any patented invention, within the United States or

imports into the United States any patented invention during the term of the patent

therefore, infringes the patent.” It is beyond dispute that this statute creates a federal

cause of action for patent infringement over which the district courts have subject matter

jurisdiction under § 1338(a). 5 And Litecubes, as GlowProducts concedes, properly pled

every element of a § 271(a) claim, alleging in Count I of its complaint that GlowProducts

has infringed the ’198 patent by “offering for sale and/or selling in the United States and

in this judicial district illuminatable beverage accessories” that “infringe one or more

claims of the ’198 patent.” Compl. ¶ 26.

Nevertheless, GlowProducts argues that even though Litecubes’ well-pleaded

complaint establishes that federal patent law creates the cause of action, there is no

subject matter jurisdiction over this suit because Litecubes has failed to prove that

GlowProducts sold or offered to sell products in the United States or imported products

into the United States.

Subject matter jurisdiction does not fail simply because the plaintiff might be

unable to ultimately succeed on the merits. See Steel Co., 523 U.S. at 89 (“[J]urisdiction

. . . is not defeated . . . by the possibility that the averments might fail to state a cause of

5
The district court also has jurisdiction over § 271(a) causes of action under
28 U.S.C. § 1331, the general federal question jurisdictional statute, to which the same
well-pleaded complaint rule applies, Franchise Tax Bd. v. Constr. Laborers Vacation
Trust, 463 U.S. 1, 27-28 (1983).
2006-1646 8
action on which petitioners could actually recover.” (quoting Bell v. Hood, 327 U.S. 678,

682 (1946))). To the contrary, “[i]t is firmly established . . . that the absence of a valid

(as opposed to arguable) cause of action does not implicate subject-matter jurisdiction,

i.e., the courts’ statutory or constitutional power to adjudicate the case.” Id. (emphasis in

original). Thus, a failure to prove the allegations alleged in a complaint requires a

decision on the merits, not a dismissal for lack of subject matter jurisdiction. See, e.g.,

Binderup v. Pathe Exch., Inc., 263 U.S. 291, 305 (1923). Indeed even if, unlike here, the

complaint fails to allege a cause of action upon which relief can be granted, this “failure

to state a proper cause of action calls for a judgment on the merits and not for a

dismissal for want of jurisdiction.” 6 Bell, 327 U.S. at 682.

As the Supreme Court long ago held:

A complaint setting forth a substantial claim under a federal statute
presents a case within the jurisdiction of the court as a federal court; and
this jurisdiction cannot be made to stand or fall upon the way the court
may chance to decide an issue as to the legal sufficiency of the facts
alleged any more than upon the way it may decide as to the legal
sufficiency of the facts proven. Its decision either way upon either question
is predicated upon the existence of jurisdiction, not upon the absence of it.

Binderup, 263 U.S. at 305; see also Christianson, 486 U.S. at 807-08 (noting the

longstanding rule that “in order to demonstrate that a case is one ‘arising under’ federal

patent law ‘the plaintiff must set up some right, title or interest under the patent laws, or

at least make it appear that some right or privilege will be defeated by one construction,

6
There is a limited and narrow exception to Bell’s general rule if the federal
claim pled is “immaterial and made solely for the purpose of obtaining jurisdiction” or
“wholly insubstantial and frivolous.” Steel Co., 523 U.S. at 89. Dismissal for lack of
subject matter jurisdiction on the grounds that the federal claim asserted is not
colorable, however, is “proper only when the claim is ‘so insubstantial, implausible,
foreclosed by prior decisions of this Court, or otherwise completely devoid of merit as
not to involve a federal controversy.’” Id. (quoting Oneida Indian Nation of N.Y. v.
County of Oneida, 414 U.S. 661, 666 (1974)). This is clearly not our case.
2006-1646 9
or sustained by the opposite construction of these laws.’” (quoting Pratt v. Paris Gas

Light & Coke Co., 168 U.S. 255, 259 (1897))); Montana-Dakota Utils. Co. v. N.W. Pub.

Serv. Co., 341 U.S. 246, 249 (1951) (“Petitioner asserted a cause of action under the

Power Act. To determine whether that claim is well founded, the District Court must take

jurisdiction, whether its ultimate resolution is to be in the affirmative or the negative. If

the complaint raises a federal question, the mere claim confers power to decide that it

has no merit, as well as to decide that it has.”).

Accordingly, there can be no question that Litecubes’ allegations, which state a

claim under the patent laws, are sufficient to create general federal question jurisdiction.

Moreover, while Congress can restrict the federal question jurisdiction granted in § 1331

or § 1338, for example by mandating that a certain threshold fact be established in

order for the federal court to have jurisdiction over a particular cause of action, 7 the

Supreme Court has recently reiterated in a unanimous opinion that it is critical to

distinguish between a statutory limitation that is truly jurisdictional and one that is simply

an element of the claim that must be established on the merits. Arbaugh v. Y & H Corp.,

546 U.S. 500 (2006). As the Supreme Court explained, there are important

7
“[C]ertain statutes confer subject-matter jurisdiction only for actions
brought by specific plaintiffs, e.g., 28 U.S.C. § 1345 (United States and its agencies and
officers); 49 U.S.C. § 24301(l)(2) (Amtrak), or for claims against particular defendants,
e.g., 7 U.S.C. § 2707(e)(3) (persons subject to orders of the Egg Board); 28 U.S.C. §
1348 (national banking associations), or for actions in which the amount in controversy
exceeds, e.g., 16 U.S.C. § 814, or falls below, e.g., 22 U.S.C. § 6713(a)(1)(B), 28
U.S.C. § 1346(a)(2), a stated amount.” Arbaugh, 546 U.S. at 516. And at times
Congress has enacted a separate provision limiting the scope of the § 1331 in narrow
circumstances. See, e.g., Weinberger v. Salfi, 422 U.S. 749, 756-61 (holding that 42
U.S.C. § 405(h) bars 28 U.S.C. § 1331 jurisdiction over suits to recover Social Security
benefits).
2006-1646 10
consequences of labeling a requirement as a “determinant of subject-matter jurisdiction,

rather than an element of [the plaintiff’s] claim for relief”:

First, “subject-matter jurisdiction, because it involves the court’s power to
hear a case, can never be forfeited or waived.” Moreover, courts, including
this Court, have an independent obligation to determine whether subject-
matter jurisdiction exists, even in the absence of a challenge from any
party. . . .

Second, in some instances, if subject-matter jurisdiction turns on
contested facts, the trial judge may be authorized to review the evidence
and resolve the dispute on her own. If satisfaction of an essential element
of a claim for relief is at issue, however, the jury is the proper trier of
contested facts.

Third, when a federal court concludes that it lacks subject-matter
jurisdiction, the court must dismiss the complaint in its entirety. . . . In
contrast, when a court grants a motion to dismiss for failure to state a
federal claim, the court generally retains discretion to exercise
supplemental jurisdiction, pursuant to 28 U.S.C. § 1367, over pendent
state-law claims.

Id. at 514 (internal citations omitted).

The Court cautioned that courts have at times erroneously called a limitation

jurisdictional that was actually simply an element of the claim:

On the subject-matter jurisdiction/ingredient-of-claim-for-relief dichotomy,
this Court and others have been less than meticulous. “Subject matter
jurisdiction in federal-question cases is sometimes erroneously conflated
with a plaintiff’s need and ability to prove the defendant bound by the
federal law asserted as the predicate for relief—a merits-related
determination.”

Id. at 511 (quoting 2 J. Moore et al., Moore’s Federal Practice § 12.30[1], at 12-36.1 (3d

ed. 2005)); see also Steel Co., 523 U.S. at 90 (“‘Jurisdiction . . . is a word of many, too

many, meanings’”); Montana-Dakota Utils. Co., 341 U.S. at 249 (holding that the Court

of Appeals erred in reversing a judgment of the district court on the grounds that there

was no subject matter jurisdiction, noting that “[a]s frequently happens where jurisdiction

2006-1646 11
depends on subject matter, the question whether jurisdiction exists has been confused

with the question whether the complaint states a cause of action”). To prevent such

mischaracterizations, the Arbaugh Court issued a “readily administrable bright line rule”:

“If the Legislature clearly states that a threshold limitation on a statute’s scope shall

count as jurisdictional, then courts and litigants will be duly instructed . . . . But when

Congress does not rank a statutory limitation on coverage as jurisdictional, courts

should treat the restriction as non-jurisdictional in character.” Id. at 516.

Here, Congress has not clearly stated in 35 U.S.C. § 271 or in any other statute

that § 271’s requirement that the infringing act happen within the United States is a

threshold jurisdictional requirement as opposed to an element of the claim. To the

contrary, the statute, which creates liability for patent infringement on “whoever without

authority makes, uses, offers to sell, or sells any patented invention, within the United

States or imports into the United States any patented invention during the term of the

patent therefore” in no way distinguishes the territorial limitation from any of the other

elements necessary to show infringement. Id.

In most situations our analysis would end there—Arbaugh’s bright line rule

mandates that the requirement that the allegedly infringing act occur in the United

States be treated as non-jurisdictional. However, at least pre-Arbaugh, there has been a

particular tendency among courts and litigants to label limitations on the extraterritorial

reach of a statute as “jurisdictional.” 8 We therefore must consider whether there is

8
See, e.g., McBee v. Delica, 417 F.3d 107 (1st Cir. 2005) (Lanham Act);
United Phosphorus, Ltd. v. Angus Chem. Co., 322 F.3d 942 (7th Cir. 2003) (en banc)
(Foreign Trade Antitrust Improvement Act); Mannington Mills, Inc. v. Congoleum Corp.,
595 F.2d 1287 (3d Cir. 1979) (Sherman Antitrust Act); Des Brisay v. Goldfield Corp.,
549 F.2d 133 (9th Cir. 1977) (Securities Act).
2006-1646 12
something unique about a limitation that determines the extraterritorial scope of a

statute that converts what would otherwise be a factual element of the claim into a

restriction on the subject matter jurisdiction of the federal courts. We conclude that

there is not.

There is no absolute rule prohibiting the extraterritorial reach of federal statutes.

Rather, it is well-established that “Congress has the authority to enforce its laws beyond

the territorial boundaries of the United States.” E.E.O.C. v. Arabian Am. Oil Co., 499

U.S. 244, 248 (1991). Whether Congress did extend any particular statute to reach

extraterritorial activity is simply a question of statutory interpretation. 9 If Congress has

extended a cause of action to reach extraterritorial activity, there is no independent bar

to the federal courts adjudicating such extraterritorial disputes, providing a court has

personal jurisdiction over the defendants. 10 Thus, in these respects, a limitation on the

extraterritorial scope of a statute is no different than any other element of a claim which

must be established before relief can be granted under a particular statute.

Congressional authority to regulate extraterritorial behavior does implicate a type

of “jurisdiction”—the “jurisdiction to prescribe” recognized under international law. The

“jurisdiction to prescribe” is a state’s authority to “make its law applicable to the

activities, relations, or status of persons,” including its “authority to subject foreign

9
While there is a presumption that Congress does not intend a statute to
apply to extraterritorial activity, it is only a presumption and can be rebutted if Congress
has clearly expressed an affirmative intention to the contrary. Id.
10
The personal jurisdiction requirement—which prevents federal courts from
exercising authority over defendants without sufficient contacts with the United States,
see Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945)—is an important limitation on the
jurisdiction of the federal courts over purely extraterritorial activity that is independent of
the extraterritorial reach of a federal statute or the court’s subject matter jurisdiction.
Here, there is no dispute that the district court had personal jurisdiction over
GlowProducts.
2006-1646 13
interests or activities to its laws.” Restatement (Third) of the Foreign Relations Law of

the United States § 401 & comment a (1987) (“Restatement”); see also Hartford Fire

Ins. Co. v. California, 509 U.S. 764, 813 (1993) (Scalia, J., dissenting). 11 But as the

influential Restatement recognizes, this type of “jurisdiction” is distinct from a court’s

“jurisdiction to adjudicate” or from the domestic law concept of the “subject matter

jurisdiction” of federal courts. Restatement § 401 comments a & c, § 421 comments a

& j. 12

Emphasizing this distinction, the Supreme Court held in Lauritzen v. Larsen, 345

U.S. 571 (1953), that the extraterritorial scope of a statute was an element of the claim,

not a requirement of subject mater jurisdiction. In Lauritzen, the Court considered

whether the Jones Act, which on its face created a cause of action for “any seaman who

shall suffer personal injury in the course of his employment,” 46 U.S.C. § 688 (1952),

applied to a dispute between two Danish citizens that took place on a Danish ship in

11
It is well-established that international law does not provide an
independent limitation on Congress’ legislative authority. See, e.g., Lauritzen v. Larsen,
345 U.S. 571, 578 (1953). But it is the international law concept of territorial limitations
on the jurisdiction to prescribe that underlays the longstanding presumption that
Congress does not intend its statute to have extraterritorial effect. See, e.g., F.
Hoffmann-La Roche Ltd. v. Empagran S.A., 542 U.S. 155, 163 (2004) (“[T]his Court
ordinarily construes ambiguous statutes to avoid unreasonable interference with the
sovereign authority of other nations.”); The Charming Betsy, 6 (Cranch) U.S. 64, 118
(1804) (Marshall, C.J.). Thus, as discussed above, the question is generally whether
Congress has exercised its prescriptive jurisdiction to reach extraterritorial behavior, not
whether it has such jurisdiction. Of course, more generally, Congress does have
domestic limitations on its jurisdiction to prescribe, or what is also called its legislative
jurisdiction—it can only exercise those powers given to it in Article I of the U.S.
Constitution. Here this power is provided by Article I Section 8’s grant of power “to
promote the Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
12
The Restatement notes that some courts have used the term “subject
matter jurisdiction” to refer to what it calls jurisdiction to prescribe. Recognizing the
confusion this engenders, the Restatement avoids the use of the term “subject matter
jurisdiction.” Restatement § 401 comment c.
2006-1646 14
international waters. Relying on the long-standing presumption that, if possible, statutes

should be construed consistent with international law, the Court held as a matter of

statutory construction that the Jones Act did not reach such extraterritorial activities.

Lauritzen, 345 U.S. at 577-93. Nevertheless, the Court dismissed the defendant’s

contention that the district court was without jurisdiction over the claim. Noting that the

defendant had not objected to personal jurisdiction, the Court explained, “[a]s frequently

happens, a contention that there is some barrier to granting plaintiff’s claim is cast in

terms of an exception to jurisdiction of subject matter. A cause of action under our law

was asserted here, and the court had power to determine whether it was or was not well

founded in law and in fact.” Id. at 575 (citing Montana-Dakota Utils. Co., 341 U.S. at

249); see also Hartford Fire Ins. Co., 509 U.S. at 812-13 (Scalia, J., dissenting) (“It is

important to distinguish two distinct questions raised by this petition: whether the District

Court had jurisdiction, and whether the Sherman Act reaches the extraterritorial conduct

alleged here. . . . Respondents asserted nonfrivolous claims under the Sherman Act,

and 28 U.S.C. § 1331 vests district courts with subject-matter jurisdiction over cases

‘arising under’ federal statutes. . . . The second question—the extraterritorial reach of

the Sherman Act—has nothing to do with the jurisdiction of the courts. It is a question of

substantive law turning on whether, in enacting the Sherman Act, Congress asserted

regulatory power over the challenged conduct.”).

Notably, while some courts have, notwithstanding Lauritzen, at times referred to

the extraterritorial scope of a particular statute as a jurisdictional requirement, in

Arbaugh, the Supreme Court pointed to one of its own decisions, E.E.O.C. v. Arabian

American Oil Co., 499 U.S. 244 (1991), in which it had characterized the extraterritorial

2006-1646 15
effect of Title VII as jurisdictional, as an example of a “drive-by jurisdictional ruling[]” in

which it had been “less than meticulous” in distinguishing between subject matter

jurisdiction and an ingredient of a claim for relief. Arbaugh, 546 U.S. at 511. The Court

explained that such cases “should be accorded ‘no precedential effect’ on the question

of whether the federal court had the authority to adjudicate the claim in suit.” Id.

Arbaugh’s treatment of Arabian American Oil, coupled with the Court’s holding in

Lauritzen, strongly suggests that limitations on the extraterritorial reach of statutes are

subject to Arbaugh’s general rule—they should be considered elements of the claim

unless Congress has clearly labeled the limitation jurisdictional. Id. at 516. 13

Consistent with this understanding, while our court has never addressed the

issue explicitly, we have been able to find no instance in which this court has treated the

question of whether allegedly infringing activity took place within the United States as a

question of subject matter jurisdiction. Rather, either the question has arisen in the

context of whether there was personal jurisdiction, see, e.g., Beverly Hills Fan Co. v.

13
The Supreme Court’s holding in Arbaugh, as well as the application of
Arbaugh’s rule to the extraterritorial scope of a statute, was anticipated in significant
respects by the dissent in the Seventh Circuit’s en banc decision in United Phosphorous
v. Angus Chemical Co., 322 F.3d 942, 953 (7th Cir. 2003) (en banc) (Wood, J.,
dissenting). Judge Wood, writing for herself and three other members of the court
concluded the Foreign Trade Antitrust Improvements Act (“FTAIA”), which states that
the Sherman Act “shall not apply” to conduct involving foreign trade or commerce
unless that conduct has a “direct, substantial and reasonably foreseeable effect” on
U.S. commerce, should be construed as an element of an antitrust claim, not an issue
of subject matter jurisdiction. Persuasively, Judge Wood explained that “the fact that the
FTAIA does not contain a clear congressional statement that it is intended to restrict the
subject matter jurisdiction of the federal courts (or for that matter even a brief mention of
the term ‘jurisdiction’) should be enough to resolve the question before us.” Id. at 955;
see also id. at 954, 953-65 (faulting the majority for failing to properly distinguish
between the subject matter jurisdiction of the courts and Congress’s prescriptive
jurisdiction and arguing that “the ‘subject matter jurisdiction’ characterization is
inconsistent with the Supreme Court’s decision in Steel Co.”)
2006-1646 16
Royal Sovereign Corp., 21 F.3d 1558, 1569-72 (Fed. Cir. 1994), which is not contested

here, or the issue has been treated as an element of the claim that is a question of fact

for the jury to decide, see, e.g., Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246,

1258 (Fed. Cir. 2000) (affirming the district court’s grant of summary judgment on the

grounds that there had been no offer to sell in the United States because the plaintiff

“offers no evidence upon which a reasonable jury could find in its favor” on the issue);

MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1377

(Fed. Cir. 2005) (affirming a grant of summary judgment of no direct infringement under

35 U.S.C. § 271(a) because “MEMC has presented no evidence demonstrating that [the

alleged infringer] sold the accused wafers . . . in the United States”).

We therefore conclude that Arbaugh’s rule governs the instant inquiry, and we

find, consistent with this court’s prior implicit treatment, that Congress has not clearly

stated that any of the limitations in § 271 are jurisdictional. Accordingly, we hold that

whether the allegedly infringing act happened in the United States is an element of the

claim for patent infringement, not a prerequisite for subject matter jurisdiction. 14 Given

this holding, we affirm the district court’s denial of GlowProducts’ motion to dismiss the

patent claims for lack of subject matter jurisdiction, but do so on different grounds.

There was no need for the district court to consider whether GlowProducts had imported

products into the United States in order to determine whether it had jurisdiction over the

case. Litecubes, by alleging a violation of § 271, has properly invoked federal question

14
Foreign litigants nevertheless have substantial protection if the activity
complained of took place wholly outside of the United States. In many such cases, the
court may not have personal jurisdiction over the defendant. Moreover, such cases will
often be able to be quickly disposed of in a Rule 12(b)(6) motion to dismiss for failure to
state a claim or in a motion for summary judgment.
2006-1646 17
jurisdiction under § 1331 and § 1338. This jurisdiction does not depend on whether

Litecubes is able to succeed on the merits in proving all of the elements of patent

infringement that it alleged in the complaint.

III.

GlowProducts also argues that the district court had no subject matter jurisdiction

over Litecubes’ copyright claims as the U.S. copyright laws have no extraterritorial

reach. This Circuit “applies copyright law as interpreted by the regional circuits,” here

the Eighth Circuit. Pods, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1368 (Fed. Cir. 2007)

(quoting Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1368 (Fed. Cir.

2006)). However “[o]n matters relating to this court’s jurisdiction, we apply Federal

Circuit law, not that of the regional circuit from which the case arose.” Nystrom v. TREX

Co., 339 F.3d 1347, 1350-51 (Fed. Cir. 2003). The question raised here, whether the

lack of extraterritorial reach of the Copyright Act limits the subject matter jurisdiction of

the federal courts, implicates the substance of the Copyright Act but is ultimately a

question of our jurisdiction. Accordingly, we believe that we have an independent

obligation to determine for ourselves whether jurisdiction is proper, and we apply

Federal Circuit law. 15

Under the U.S. Copyright Act, the owner of copyright has the exclusive right to

“distribute copies . . . of the copyrighted work to the public by sale or other transfer of

ownership, or by rental, lease, or lending.” 17 U.S.C. § 106. In addition, the Act

provides that “[i]mportation into the United States, without the authority of the owner of

15
Even if we were to apply Eighth Circuit law, we would reach the same
result. Neither this court nor the Eighth Circuit has decided the issue presented. Thus
our analysis of how the Eighth Circuit likely would decide the issue would be based on
the same analysis of Supreme Court and other circuit precedent as here.
2006-1646 18
copyright under this title, of copies . . . of a work that have been acquired outside the

United States is an infringement of the exclusive right to distribute copies . . . under

section 106 [17 U.S.C. § 106].” Id. § 602. By its terms § 106 does not require that the

distribution of the goods occur within the United States. It has long been established,

however, that the Copyright Act does not “reach acts of infringement that take place

entirely abroad.” Subafilms Ltd. v. MGM-Pathe Commn’ns Co., 24 F.3d 1088, 1098 (9th

Cir. 1994) (en banc); see also, e.g., The Robert Stigwood Group Ltd. v. O’Reilly, 530

F.2d 1096, 1101 (2d Cir. 1976) (“Copyright laws do not have extraterritorial operation.”).

Both parties stated at oral argument that the Patent Act and the Copyright Act

should be interpreted consistently, and thus that if the Patent Act’s requirement that the

infringing act take place in the United States is not a jurisdictional requirement, the

exclusion from the Copyright Act of acts taking place entirely abroad should also not be

jurisdictional. We agree.

The principles and case law discussed above, which led us to conclude that the

Patent Act’s territorial requirement is an element of the claim that must be established to

prove infringement, but not a requirement for subject matter jurisdiction, apply equally to

the Copyright Act’s limitation on the extraterritorial reach of the statute. As discussed,

whether the territorial limitation is explicit in the statute, as in the Patent Act, or implied

based on the presumption that Congress does not intend its acts to have extraterritorial

effect, as in the Copyright Act, the limit on the extraterritorial reach of a statute is a

question of statutory interpretation—what did Congress intend the scope of its exercise

of prescriptive jurisdiction to be—not an independent limitation on the federal court’s

authority. And Arbaugh’s bright-line rule applies. That is, whether an accused action is

2006-1646 19
within the extraterritorial limitation should be treated as an element of the claim, not a

predicate for subject matter jurisdiction, unless Congress has clearly provided that the

limitation is jurisdictional. See Arbaugh, 546 U.S. at 516 (“[W]hen Congress does not

rank a statutory limitation on coverage as jurisdictional, courts should treat the

restriction as non-jurisdictional in character.”); Lauritzen, 345 U.S. 571 (holding that the

Jones Act, which on its face had no territorial limitations, did not reach purely

extraterritorial activities, but that this requirement was not a limitation of the jurisdiction

of the federal courts); see also supra Part II.

As in the patent context, in its brief to this court and at the district court,

GlowProducts assumed without any analysis that the lack of extraterritorial effect of the

copyright laws is a question of subject matter jurisdiction rather than a question of

whether a claim upon which relief can be granted has been established. But the cases

it relies on provide minimal support for such a position.

GlowProducts’ reliance on Subafilms, which it cites as its primary authority, is

misplaced. While GlowProducts is correct that Subafilms is a leading case on the

extraterritorial reach of the Copyright Act, Subafilms did not hold that the extraterritorial

limitation limited the subject matter jurisdiction of the federal courts. Rather, Subafilms

held that “the mere authorization of acts of infringement that are not cognizable under

the United States copyright laws because they occur entirely outside of the United

States does not state a claim for infringement under the Copyright Act.” 24 F.3d at 1099

(emphasis added). Moreover, Subafilms reaffirmed that “the existence of subject matter

jurisdiction under 28 U.S.C. § 1338(a) is distinct as a general matter from the question

of whether a valid cause of action is stated.” Subafilms, 24 F.3d at 1091 n.5. The court

2006-1646 20
further recognized, without deciding, that Peter Starr Production Co. v. Twin Continental

Films, 783 F.2d 1440 (9th Cir. 1986), which it overruled in part, may have erred in

“framing the subject matter jurisdiction inquiry as coextensive with the question of

whether the allegations in the complaint stated a good cause of action.” Subafilms, 24

F.3d at 1091 n.5; see also L.A. News Serv. v. Reuters Tel. Int’l, Ltd., 340 F.3d 926, 931

& n.9 (9th Cir. 2003) (“Subafilms reaffirmed that the copyright laws have no application

beyond the U.S. border . . . . Subafilms also suggested that federal question jurisdiction

under the copyright laws may not be coextensive with legislative jurisdiction under those

laws, i.e., the reach Congress has chosen to give to American intellectual property

statutes.”). Similarly, none of the Second Circuit cases on which GlowProducts relies

hold that the extraterritorial reach of the Copyright Act is a question of subject matter

jurisdiction. See, e.g., The Robert Stigwood Group, 530 F.2d at 1101 (holding that

performances of the copyrighted work performed in Canada were properly excluded

from the calculation of damages); cf. Bassett v. Mashantucket Pequot Tribe, 204 F.3d

343, 349 (2d Cir. 2000) (holding that the federal courts have subject matter jurisdiction if

a suit arises under the Copyright Act, which occurs when “(1) [T]he complaint is for a

remedy expressly granted by the Act, e.g., a suit for infringement or for the statutory

royalties for record reproduction; or, (2) [T]he complaint . . . asserts a claim requiring

construction of the Act . . . .” (internal quotation marks omitted)).

A least one circuit has treated the extraterritorial effect of the copyright laws as a

question of subject matter jurisdiction. See Palmer v. Braun, 376 F.3d 1254, 1258 (11th

Cir. 2004) (“[I]t is only where an infringing act occurs in the United States that the

infringement is actionable under the federal Copyright Act, giving federal courts

2006-1646 21
jurisdiction over the action.”). In Palmer, however, the Eleventh Circuit did not have the

benefit of Arbaugh’s recent clarification of the boundary between subject matter

jurisdiction and elements of the claim nor its suggestion that this confusion between

subject matter jurisdiction and elements of a claim has extended to the issue of the

extraterritorial scope of a statute. Arbaugh, 546 U.S. at 511. Moreover, Palmer simply

assumed the issue was a jurisdictional one, without any analysis of whether the

question was more properly considered a question on the merits. We decline to follow

the Eleventh Circuit’s approach.

There is no indication that Congress intended the extraterritorial limitations on the

scope of the Copyright Act to limit the subject matter jurisdiction of the federal courts.

Accordingly, we hold that the issue is properly treated as an element of the claim which

must be proven before relief can be granted, not a question of subject matter

jurisdiction, and we affirm the district court’s denial of GlowProduct’s motion for

dismissal for lack of subject matter jurisdiction over the copyright claims.

IV.

In addition to filing the post-trial motion to dismiss, GlowProducts filed motions for

judgment as a matter of law, arguing that substantial evidence did not support the jury

verdicts of infringement for either the copyright or patent claims. In part, these motions

were based on the same argument as the motion to dismiss—that Litecubes had failed

to establish that any of the allegedly infringing acts took place within United States

borders. Unlike the motion to dismiss, these JMOL motions were a procedurally correct

mechanism to challenge the jury findings of infringement based on the location of the

allegedly infringing activity. GlowProducts, however, has not appealed this aspect of its

2006-1646 22
JMOL motions. Accordingly, we ordinarily would consider the issue waived and decline

to reach the issue. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,

1319 (Fed. Cir. 2006) (“[A]rguments not raised in the opening brief are waived.”).

However, the circumstances here are rather unusual, and both parties at oral argument

appeared to agree that if we concluded that the extraterritorial issue was not

jurisdictional, we should consider the issue under the JMOL standard. Given this, and

that the parties have fully briefed the issue, albeit under the incorrect rubric of subject

matter jurisdiction, we exercise our discretion, see id. at 1320 n.9 (noting that the court

maintains discretion to consider arguments not properly raised in the briefs), to consider

whether the district court erred in denying Litecubes’ JMOL motions on the ground that

the evidence was insufficient to establish a sale or offer for sale of the allegedly

infringing products within the United States or importation of the products to the United

States.

When reviewing a district court’s denial of a JMOL motion, “we reapply the

district court’s JMOL standard anew.” Juicy Whip v. Orange Bang, 292 F.3d 728, 736

(Fed. Cir. 2002); Chicago Title Ins. Co. v. Resolution Trust Corp., 53 F.3d 899, 904 (8th

Cir. 1995) (“We review the grant or denial of a motion for judgment as a matter of law de

novo, using the same standard employed by the district court.”). “Therefore, for [a party]

to prevail on appeal it must prove that the jury’s factual findings were not supported by

substantial evidence or that the facts were not sufficient to support the conclusions

necessarily drawn by the jury on the way to its verdict.” Mycogen Plant Sci., Inc. v.

Monsanto Co., 243 F.3d 1316, 1331 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso

Mfg. Mich., Inc., 192 F.3d 1353, 1357 (Fed. Cir. 1999)); Jackson v. Prudential Ins. Co.,

2006-1646 23
736 F.2d 450, 453 (8th Cir. 1984) (“[JMOL] motions should not be granted if reasonable

persons could differ as to the conclusions to be drawn from the evidence. . . . The trial

court has not erred if there is substantial evidence -- more than a mere scintilla of

evidence -- to support a verdict in favor of the party opposing such a motion.” (internal

citations omitted)).

Although the district court based its ruling on a finding that GlowProducts

imported its goods into the United States, we believe that the preferable initial inquiry,

given the facts of this case and our prior established law, is whether there was a sale

within the United States. It is uncontested that GlowProducts sold and shipped the

allegedly infringing products directly to customers located in the United States.

GlowProducts bases its argument that these were not sales in the United States on the

grounds that the products were shipped f.o.b., and thus title over the goods were

transferred while the goods were still in Canada. Our case law, however, is inconsistent

with such a theory, and we conclude that there is substantial evidence of a sale within

the United States for the purposes of § 271.

In North American Philips Corp. v. American Vending Sales, Inc., 35 F.3d 1576

(Fed. Cir. 1994), a personal jurisdiction case, this court rejected the notion that simply

because goods were shipped f.o.b., the location of the “sale” for the purposes of § 271

must be the location from which the goods were shipped. Id. at 1579 (holding that the

“tort” of patent infringement is defined by § 271 and occurs “where the allegedly

infringing sales are made”). To the contrary, we determined that the sale also occurred

at the location of the buyer. Id. The court recognized that

unlike the ‘making’ and the ‘using’ of an infringing article, which as purely
physical occurrences are relatively straightforward to place, the ‘selling’ of

2006-1646 24
 an infringing article has both a physical and a conceptual dimension to it.
That is to say, it is possible to define the situs of the tort of infringement-
by-sale either in real terms as including the location of the seller and the
buyer and perhaps the points along the shipment route in between, or in
formal terms as the single point at which some legally operative act took
place, such as the place where the sales transaction would be deemed to
have occurred as a matter of commercial law.

Id. North American Philips rejected the formalistic approach and concluded that

regardless of whether the goods were shipped f.o.b., “to sell an infringing article to a

buyer in Illinois is to commit a tort there (though not necessarily only there.).” Id.

(explaining that “to hold otherwise would exalt form over substance in an area where the

Supreme Court has generally cautioned against such an approach” (citing Burger King

Corp. v. Rudzewic, 471 U.S. 462 (1985))). Moreover, the court explained that “even if

we were to conclude that a ‘mechanical’ test might be appropriate here for some

reason, appellee has failed to explain why the criterion should be the place where legal

title passes rather than the more familiar places of contracting and performance.

Appellees have pointed to no policy that would be furthered by according controlling

significance to the passage of legal title here.” Id.; see also McGoldrick v. Berwind-

White Coal Mining Co., 309 U.S. 33, 64 (1940) (“[T]he place where the title passes has

not been regarded as the test of the interstate character of a sale. We have frequently

decided that where a commodity is mined or manufactured in one State and in

pursuance of contracts of sale is delivered for transportation to purchasers in another

State, the mere fact that the sale is f.o.b. cars in the seller's State and the purchaser

pays the freight does not make the sale other than interstate.”); cf. Rotec Indus., Inc. v.

Mitsubishi Corp., 215 F.3d 1246, 1258 (Fed. Cir. 2000) (looking to federal law to

2006-1646 25
interpret “offer to sale” under § 271 and concluding that it “is to be interpreted according

to its ordinary meaning in contract law, as revealed by traditional sources of authority”).

While North American Philips dealt with the issue of where a “sale” took place

under § 271 in the context of personal jurisdiction, we see no basis for construing the

location of a “sale” differently when the issue is whether the plaintiff has established that

the sale took place within the United States for the purposes of infringement. Indeed,

this court has already relied on North American Philips’s interpretation of § 271 when

determining whether summary judgment of non-infringement was appropriate on the

grounds that there was no sale in the United States. See MEMC Elec. Materials, Inc. v.

Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1377 (Fed. Cir. 2005) (“North

American Philips . . . noted that in some cases the criterion for determining the location

of a “sale” under section 271(a) is not necessarily where legal title passes; the ‘more

familiar places of contracting and performance’ may take precedence over the passage

of legal title. Thus simply because an article is delivered ‘free on board’ outside of the

forum, a sale is not necessarily precluded from occurring in the forum.”); see also

Rotec, 215 F.3d at 1254. In MEMC, as here, the issue was whether the defendant’s

actions could be construed by a reasonable jury to constitute a sale or offer to sell in the

United States. It was undisputed that the defendant SUMCO manufactured the accused

chip wafers in Japan and then sold the product to a Japanese company, Samsung

Japan; Samsung Japan then sold the products to Samsung Austin, in the United States.

Relying on North American Philips, the court found it “significant[]” that “there was no

evidence that ‘contracting and performance’ took place in the United States.” MEMC,

420 F.3d at 1377. The court explained that there was no evidence demonstrating a sale

2006-1646 26
directly from SUMCO to Samsung Austin, and that “all of the essential activities” of the

sale between SUMCO and Samsung Japan took place in Japan. Id. Accordingly, the

court found no error in the district court’s grant of summary judgment of non-

infringement. Id. In contrast, here it is undisputed that GlowProducts sold the products

directly to customers in the United States. Since the American customers were in the

United States when they contracted for the accused cubes, and the products were

delivered directly to the United States, under North American Philips and MEMC there is

substantial evidence to support the jury’s conclusion that GlowProducts sold the

accused cubes within the United States.

Since we find substantial evidence of a sale within the United States, we need

not determine whether there was also an offer to sell within the United States or

importation into the United States.

We also conclude that substantial evidence supported the jury verdict of

copyright infringement. Although we apply Eighth Circuit law to the question of whether

GlowProducts’ activities are within the scope of the Copyright Act, the Eighth Circuit has

not spoken on the extraterritorial scope of the Act. We therefore “need to predict how

the[Eighth Circuit] would have decided the issue.” Panduit Corp. v. All States Plastic

Mfg. Co., 744 F.2d 1564, 1575 (Fed. Cir. 1984).

Section 106(3) of the Copyright Act makes it an act of infringement to “distribute”

copies of the copyrighted work “to the public by sale.” 17 U.S.C. § 106(3); Nat’l Car

Rental Sys., Inc. v. Computer Assocs. Int’l, Inc., 991 F.2d 426, 429 (8th Cir. 1993); 2-8

Nimmer on Copyright § 8.11 (2007) (“The copyright owner . . . has the exclusive right

publicly to sell, give away, rent or lend any material embodiment of his work.”). Neither

2006-1646 27
party has argued that courts should interpret identical, generalized terms such as “sale”

or “importation” differently between the Copyright Act and the Patent Act. To the

contrary, both parties rely on their arguments regarding the Patent Act to support their

arguments for the applicability of the Copyright Act. See Appellants’ Br. 25

(“GlowProducts does not ‘import’ under the Copyright Act for the same reasons it does

not ‘import’ under the Patent Act.”); Appellee’s Br. 45 (“For the same reasons that

jurisdiction exists under the Patent Act, jurisdiction similarly exists under the Copyright

Act.”). We agree that the term “sale” should be interpreted consistently in copyright and

patent law, and accordingly, conclude that the Eighth Circuit would find substantial

evidence of sales in the United States sufficient to uphold the jury’s finding of liability

under the Copyright Act. 16

Moreover, the Copyright Act does not explicitly require that sales be “in the

United States,” and courts have generally held that the Copyright Act only does not

reach activities that “that take place entirely abroad.” Subafilms, 24 F.3d at 1098

(emphasis added); see 4-17 Nimmer on Copyright § 17.02 (“[A] distinction should be

drawn between purely extraterritorial conduct, which is itself nonactionable, and conduct

that crosses borders, so that at least a part of the offense takes place within the United

States. . . . It may be concluded . . . that U.S. courts may entertain such multiterritorial

infringement claims.”). Thus for example, in Palmer, the Eleventh Circuit found that the

Copyright Act applied when the alleged infringer, analogously to the instant case, sold

copyrighted work from France to customers in the United States, and then shipped

these works to the U.S. buyers. Palmer, 376 F.3d at 1258; see also GB Mktg. USA Inc.

16
If there are arguments for interpreting the location of the “sale” for
Copyright Act purposes differently than for the Patent Act, these have been waived.
2006-1646 28
v. Gerolsteiner Brunner GmbH & Co., 782 F. Supp. 763, 772-73 (W.D.N.Y. 1991), cited

by Palmer, 376 F.3d at 1258 (holding that a bottle water distributor could maintain an

action under the Copyright Act against a foreign bottler who applied labels to the bottles

in Germany, when the labels were specifically designed for marketing in the United

States and were sold to a company which imported the bottles to the United States).

Substantial evidence supports the jury’s conclusion that, by selling to customers in the

United States, GlowProducts’ distribution of the accused products has taken place, at

least in part, in the United States.

We therefore affirm the denial of JMOL for the copyright claim.

V.

GlowProducts also argues that even assuming that the allegedly infringing

activity was within the United States, the district court erred in refusing to issue a

judgment as a matter of law on the question of patent infringement by the ICM cubes.

GlowProducts argues that JMOL was appropriate because the ICM cubes do not

meet the limitation of claim 1 that requires the cubes to contain a “filler adapted to retain

heat when said device is heated” or the limitation of claim 16 that the cubes contain a

“filler adapted to retain cold when said device is cooled.” The parties do not contest the

propriety of the district court’s claim construction. Therefore, the only issue is whether

substantial evidence supports the jury’s factual finding that GlowProducts’ cubes met

the contested claim limitations, which as construed require that the filler be “made

suitable to or fit for the specific use of retaining heat when said device is heated” or

“made suitable to or fit for the specific use of retaining cold when said device is cooled.”

2006-1646 29
Markman Order, at *5. We conclude there was substantial evidence to sustain the jury’s

finding.

A.

At trial, Dr. Kevin Trankler, a chemist with expertise in thermodynamics, testified

as an expert witness on Litecube’s behalf. Trankler concluded that after running various

tests on the ICM cube to “determine. . . whether the filler material had the ability to

retain cold over a period of time,” J.A. at 927, it was his opinion that the filler in the cube

“is adapted to retain heat or cold.” J.A. at 937. He also testified that he was aware that

“adapted” was defined by the court as requiring the filer be “suitable for or fit to the

specific purpose of.” J.A. at 928. Trankler’s experiment demonstrated that after the ICM

cube was placed in the freezer, the filler cooled to -6.1 C (below the freezing

temperature of water), and that when the frozen cube was placed in room temperature

water, the filler took approximately thirty minutes to return to room temperature. Trankler

concluded based on these and similar results that the filler was adapted to retain heat or

cold. He explained that insulators such as ceramics, wood, or Styrofoam would not be

adapted to retain heat or cold because “they would warm up a lot faster” and “may not

cool down to the same temperature either” as the ICM filler. J.A. at 931-32. 17

In addition, Litecubes introduced excerpts from GlowProducts’ website describing

the accused cubes as being adapted to keep drinks warm or cool. For example, the

website stated, “[t]he 8 Mode Multi-Cube is a great lighted ice cube for livening up your

17
In their brief GlowProducts suggests that “Trankler admitted that
comparable tests results for a sandwich ‘would likely look the same.’” Appellants’ Br. 30.
This leaves out part of Trankler’s testimony. When asked on cross examination what the
curve (i.e., plot of temperature v. time) would look like for a sandwich, Trankler testified
that he “suspect[ed] that the curve would look the same; it would still be a curve, but
that the slope would be farther to the left.” J.A. at 940.
2006-1646 30
drinks. Not only will it amuse your guests, but it will keep their drink warm or cool with its

internal gel” and explained that “[t]his light up ice cube also comes with internal gel that

can be heated or frozen to keep your drink warm or cool.” J.A. at 6262-64.

Vanderschuit, Litecubes’ founder, also testified that artificial ice cubes, including

Litecube’s own product, would never be able to match, nor were they intended to match,

the cooling properties of an actual ice cube, but instead would simply slightly lower the

temperature of a room temperature drink for twenty to thirty minutes or help maintain

the temperature of a cooled drink for slightly longer. 18

To rebut Trankler’s testimony, GlowProducts called as its expert witness Dr. Ann

Mescher. She admitted there was nothing technically wrong with Trankler’s tests but

suggested that “he simply didn’t answer the question.” J.A. at 995. According to

Mescher, the appropriate question was whether the fillers “make a practical difference,”

i.e., in her words, whether they were “particularly suited for the specific purpose of

keeping a hot drink hotter than it would be if it weren’t there.” J.A. at 992, 995. To

answer this question, Dr. Mescher ran two tests and concluded that the filler had “no

practical effect.” In the first test, she placed a GlowProducts cube and a Litecube that

had been refrigerated overnight in a glass of water that was also refrigerated overnight

and compared the water temperature in these glasses to a control refrigerated glass of

water without a cube. She found that neither the Litecube nor the GlowProducts cube

had “a measurable impact on the rate at which the liquids heat.” The validity of this test

was called into question during cross examination by her admission that water was the

18
Supporting this contention was the fact that Litecube’s own commercial
embodiment of the patent performed identically to the GlowProducts’ cubes in tests
done by GlowProducts’ expert.
2006-1646 31
substance most well-adapted to retain heat or cold at the relevant temperatures, and

that if one used a cube that had water as the filler, it would also not show any

measurable difference from the control. In her second experiment, she froze

GlowProducts and Litecubes cubes in the freezer overnight to cool them to -28 C and

then placed each in a room temperature glass of water. She found that that the cubes

lowered the temperature of the water by about one degree and that it took about sixty

minutes for the water to return to its initial temperature. She characterized these results

as showing that the cubes had “no measurable impact.” J.A. at 1022-23.

B.

As construed, the contested claim limitation required the jury to find that

GlowProducts’ cubes contained “filler made suitable to or fit for the specific use of

retaining heat when said device is heated” or “filler made suitable to or fit for the specific

use of retaining cold when said device is cooled.” Markman Order, at *5.

No one disputed the scientific accuracy of Dr. Trakler’s experiments that showed

that the filler material used by GlowProducts was able to cool down to the temperature

of the freezer and retain its cold temperature above room temperature for about thirty

minutes, nor Dr. Mescher’s experiment which showed that the allegedly infringing

products when frozen were able to keep a glass of water below room temperature for

about an hour. Whether a person skilled in the art would consider this level of cold

retention sufficient to make the filler material “suitable to” the specific use of retaining

cold or heat, is a question of fact for the jury. Faced with conflicting expert testimony,

the jury was entitled to credit Dr. Trankler’s testimony that the level of cold retention

shown by the filler established that the material was adapted to the purpose of retaining

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cold. See Comark Commc’ns. v. Harris Corp., 156 F.3d 1182, 1192 (Fed. Cir. 1998) (“It

is not the province of an appellate court to second guess the jury’s credibility

determinations or to reevaluate the weight to be given the evidence”); Brooktree Corp.

v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1569 (Fed. Cir. 1992) (“Issues of

credibility of witnesses are for the jury, and are not amenable to appellate review.”); cf.

Anderson v. Bessemer City, 470 U.S. 564, 575 (1985) (“When [in a bench trial] a trial

judge’s finding is based on his decision to credit the testimony of one of two or more

witnesses, each of whom has told a coherent and facially plausible story that is not

contradicted by extrinsic evidence, that finding, if not internally inconsistent, can virtually

never be clear error.”). 19 The jury could also have taken into consideration the testimony

of Litecubes’ founder as well as GlowProducts’ own advertising as to what level of heat

retention made the filler suitable to the specific use of retaining heat or cold in the

context of the invention. This evidence also supported the finding that the filler used in

the GlowProducts’ cubes was suitable to the specific use of retaining heat or cold.

Accordingly, we hold that the district court did not err in denying the JMOL motion on

these grounds.

VI.

We conclude that there is no basis to overturn the jury verdict of copyright

and patent infringement. While we do not adopt the district court’s reasoning, the district

court reached the correct result in denying GlowProduct’s motion to dismiss for lack of

19
The jury need not have credited Mescher’s argument that for the filler to
be “suitable to or fit for the specific use of retaining cold” it must have a “practical effect”
on the temperature of the water the cube was in. No such result was required by the
district court’s claim construction. But even if this was a requirement, the jury could have
found that the tests, including Mescher’s own, established a sufficient practical effect to
meet the claim limitations.
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subject matter jurisdiction. The issues of the extraterritorial reach of the Patent and

Copyright Acts raised in the motion are not properly considered jurisdictional. We further

conclude that substantial evidence supports the jury’s verdict of infringement. The

judgment of the district court is, therefore, affirmed.

AFFIRMED

COSTS

No costs.

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