Merial Ltd. v. Cipla Ltd.

United States Court of Appeals
for the Federal Circuit
__________________________

MERIAL LIMITED AND MERIAL SAS,
Plaintiffs-Appellees,
and
BASF AGRO B.V.,
Plaintiff,
v.
CIPLA LIMITED,
Defendant-Appellant,
and
VELCERA, INC. AND FIDOPHARM, INC.,
Defendants-Appellants,
and
ARCHIPELAGO SUPPLIERS, ARROWTARGET
ENTERPRISES LTD.,
GENERIC PETMEDS, INHOUSE DRUGSTORE,
LISA PERKO,
PETCARE PHARMACY, AND PETMEDS R US,
Defendants.
__________________________

2011-1471, -1472
__________________________
BASF AGRO v. CIPLA LIMITED 2

Appeals from the United States District Court for the
Middle District of Georgia in Case No. 07-CV-0125, Judge
Clay D. Land.
____________________________

Decided: May 31, 2012
____________________________

GREGORY A. CASTANIAS, Jones Day, of Washington,
DC, argued for the plaintiffs-appellees. With him on the
brief were DAMON M. LEWIS; and J. PATRICK ELSEVIER, of
San Diego, California. Of counsel on the brief were JUDY
JARECKI-BLACK, Merial Limited, of Duluth, Georgia,
FRANK G. SMITH, III, Alston & Bird, LLP, of Atlanta,
Georgia, and EDWARD DONALD TOLLEY, Cook, Noell,
Tolley, Bates & Michael, LLP, of Athens, Georgia.

NAGENDRA SETTY, Sheppard, Mullin, Richter &
Hampton LLP, of San Francisco, California, argued for
defendant-appellant Cipla Limited. Of counsel were PAUL
WENDELL GARRITY and MARK EDWARD MCGRATH, of New
York, New York.

JONATHAN G. GRAVES, Cooley LLP, of Reston, Vir-
ginia, argued for defendants-appellants FidoPharm, Inc.,
et al. With him on the brief were PHILLIP E. MORTON; and
TRYN T. STIMART, of Washington, DC. Of counsel was
LORI R. MASON, of Palo Alto, California. Of counsel on the
brief were GEORGE C. LOMBARDI, Winston & Strawn LLP,
of Chicago, Illinois; and ELIZABETH P. PAPEZ, of Washing-
ton, DC.
__________________________

Before LOURIE, SCHALL, and REYNA, Circuit Judges.
3 BASF AGRO v. CIPLA LIMITED

Opinion for the court filed by Circuit Judge LOURIE.
Dissenting opinion filed by Circuit Judge SCHALL.
LOURIE, Circuit Judge.
Cipla Ltd. (“Cipla”) joins with Velcera, Inc. and Fido-
Pharm, Inc. (collectively, “Velcera”) in appealing from a
judgment entered by the United States District Court for
the Middle District of Georgia in favor of Merial Ltd. and
Merial SAS (collectively, “Merial”) holding Cipla in con-
tempt for violating an earlier injunction and holding
Velcera in contempt for acting in concert with Cipla to
violate that injunction. Merial Ltd. v. Cipla Ltd., No.
3:07-CV-125 (CDL), 2011 U.S. Dist. LEXIS 65639, 2011
WL 2489753 (M.D. Ga. June 21, 2011) (“Contempt Or-
der”). For reasons set forth below, we affirm the district
court’s judgment.
BACKGROUND
The Patented Pest Control Technology
This appeal concerns patented compositions for pro-
tecting domestic dogs and cats from infestation with
ectoparasites, e.g., fleas and ticks. In particular, the
dispute centers on topically applied or “spot on” veteri-
nary compositions containing pesticidal N-phenylpyrazole
derivatives, such as fipronil, applied directly to the skin of
an animal. BASF’s U.S. Patent 5,232,940 (“the ’940
patent”), now expired, claimed fipronil and fipronil-based
compositions as well as methods of using such composi-
tions for pest control. Merial, as the exclusive licensee of
the ’940 patent, developed commercially successful spot-
on fipronil compositions sold under the brand name
Frontline.
In addition to producing fipronil-only products, Merial
devised dual-acting pest control compositions covered by
U.S. Patent 6,096,329 (“the ’329 patent”). In particular,
BASF AGRO v. CIPLA LIMITED 4

the ’329 patent claims spot-on compositions containing
fipronil combined with a second active ingredient—
specifically, an insect growth regulator (“IGR”). In con-
trast to pesticides, which work through direct toxicity,
IGRs act not by killing individual parasites but rather by
interrupting the life cycle within a parasite population.
The ’329 patent discloses numerous IGRs—such as
methoprene, for example—that mimic natural insect
hormones to prevent immature or juvenile-stage parasites
from reaching reproductive maturity, thereby limiting
and eventually depleting an infestation. In the pesticide-
plus-IGR compositions disclosed in the ’329 patent, the
paired active ingredients complement one another
through their distinct methods of action to achieve im-
proved pest protection relative to either agent adminis-
tered alone. Merial markets compositions combining
fipronil and methoprene as Frontline Plus, the leading
veterinary flea and tick treatment in the United States.
The 2008 Default Judgment
Cipla is a pharmaceutical company incorporated un-
der the laws of India with its principal place of business
in Mumbai, India. In November 2007, Merial filed suit
against Cipla and various internet retailers in the United
States District Court for the Middle District of Georgia
alleging infringement of the ’940 and ’329 patents (“the
2007 complaint”). Merial alleged that Cipla was subject
to personal jurisdiction in the district court by virtue of
Cipla’s alleged contacts with and conduct within the state
of Georgia, and Merial provided Cipla with service of
process in Mumbai by courier and registered mail. Ac-
cording to the 2007 complaint, Cipla and the defendant
online retailers sold throughout the United States spot-on
veterinary pesticide products known as “Cipla Protektor”
and “Cipla Protektor Plus” that constituted infringing
5 BASF AGRO v. CIPLA LIMITED

formulations of fipronil or fipronil and methoprene, re-
spectively.
Neither Cipla nor any of the other defendants re-
sponded to the 2007 complaint or entered an appearance
in the district court. Merial therefore moved to hold the
defendants in default pursuant to Federal Rule of Civil
Procedure 55, and the district court granted that motion
on March 6, 2008. In relevant part, the district court
found that the ’940 and ’329 patents were not invalid,
found that Cipla had infringed each patent, and entered a
permanent injunction barring Cipla from directly or
indirectly infringing the ’940 or ’329 patents in the future:
[Cipla], as well as those persons and entities in
active concert with [Cipla] who have notice of this
order, are herewith permanently enjoined from
committing any act that infringes or causes or in-
duces infringement of any claim of the ’940 or ’329
patents, including but not limited to making, hav-
ing made, using, causing to be used, selling, caus-
ing to be sold, offering for sale, and causing to be
offered for sale in the United States, and import-
ing and causing to be imported into the United
States, any product that infringes any claim of the
’940 or ’329 patents, including but not limited to
the veterinary products denominated CIPLA
PROTEKTOR that contain fipronil and the prod-
ucts denominated CIPLA PROTEKTOR PLUS
that contain fipronil and methoprene.
BASF Agro B.V. v. Cipla Ltd., No. 3:07-CV-125 (CDL)
(M.D. Ga. Mar. 6, 2008), ECF No. 18, slip op. at 2–3
(“Default Order”). On April 14, 2008, Cipla filed in the
court an “informal” communication that referenced the
default proceedings but was “not intended to constitute an
appearance,” in which Cipla denied infringing or having
BASF AGRO v. CIPLA LIMITED 6

“any presence in the United States and in this judicial
district” and requested dismissal of the action. J.A. 1130–
31. The district court denied Cipla’s request for such
“informal equitable assistance” and entered final judg-
ment on April 15, 2008. BASF Agro B.V. v. Cipla Ltd.,
No. 3:07-CV-125 (CDL) (M.D. Ga. Apr. 15, 2008), ECF
Nos. 22, 23.
The PetArmor Plus Venture
Velcera was formed in 2004 to develop veterinary
pharmaceuticals for companion animals such as dogs and
cats, beginning with products for inhalation-based drug
delivery. Led by former Merial executives, Velcera later
began preparations to enter the market for flea and tick
control products. In particular, Velcera intended to
introduce products that would “directly compete” with
Merial’s Frontline series “at a substantially lower price.”
J.A. 2222. Through its relationship with a two-person
British company known as Omnipharm Ltd. (“Omni-
pharm”), Velcera engaged with Cipla to develop, test,
manufacture, and distribute such products, and by April
2011 those efforts culminated in U.S. sales of spot-on pest
control compositions containing fipronil and metho-
prene—sold as PetArmor Plus and Velcera Fipronil Plus
(collectively, “PetArmor Plus”)—that prompted the con-
tempt proceedings at issue in this appeal. See J.A. 2222–
27. We now briefly recount the roles played by each of the
principal entities, and their many subsidiaries, in the
development and production of PetArmor Plus.
In February 2008, Velcera established FidoPharm as
its wholly owned subsidiary, and, on the same day, Fido-
Pharm executed a license and development agreement
with Omnipharm under which Omnipharm would develop
the PetArmor Plus formulations and license those formu-
lations exclusively to FidoPharm for sale in the United
7 BASF AGRO v. CIPLA LIMITED

States. J.A. 2225–26. In addition, the license and devel-
opment agreement between FidoPharm and Omnipharm
identified Cipla as the intended manufacturer of PetAr-
mor Plus. Id. FidoPharm simultaneously entered into a
separate manufacture and supply agreement with QEDe-
tal Ltd. (“QEDetal”)—an Irish entity held entirely by the
director of Omnipharm and established through a collabo-
ration between Omnipharm and Cipla. J.A. 2225; 4859–
60. Under that agreement, QEDetal would supply Fido-
Pharm with finished PetArmor Plus products for importa-
tion and sale within the United States. FidoPharm was
to submit orders and payments to QEDetal, QEDetal
would then direct Cipla to produce and deliver sufficient
product to fulfill FidoPharm’s order, and finally QEDetal
would transfer the finished PetArmor Plus to FidoPharm.
J.A. 2225–26.
Like Velcera, Cipla entered into its own set of parallel
development and supply agreements with Omnipharm
and QEDetal, respectively, in April 2008. Under its
development agreement with Omnipharm, Cipla agreed
to conduct laboratory testing and otherwise assist in the
development and regulatory approval of the PetArmor
Plus formulations. J.A. 2226. In addition, Cipla’s manu-
facture and supply agreement with QEDetal specified
that Cipla would satisfy QEDetal’s requirements for
fulfilling PetArmor Plus orders placed by FidoPharm
pursuant to the FidoPharm/QEDetal manufacture and
supply agreement. Id.
In practice, the parties’ interrelated web of agree-
ments and intermediaries involved in producing and
distributing PetArmor Plus functioned as follows: Velcera
(through FidoPharm) would place an order for PetArmor
Plus with Omnipharm, which would then pass the order
to Cipla. Upon producing the product in India, Cipla
would transfer ownership of the new PetArmor Plus to
BASF AGRO v. CIPLA LIMITED 8

QEDetal LZE, 1 which would in turn ship the product from
India to Dubai and there transfer title to QEDetal. For-
mal ownership of the product would transfer yet again in
Dubai, from QEDetal to FidoPharm, and, finally, Fido-
Pharm would import the PetArmor Plus for sale in the
United States. Monetary consideration for each order
would flow from FidoPharm to Cipla along a reciprocal
path that mirrored the product supply chain.
With their contractual agreements in place, Velcera,
Cipla, and Omnipharm worked to develop PetArmor Plus
and secure regulatory approval in the United States.
Through FidoPharm, Velcera worked with Omnipharm to
design the PetArmor Plus formulation and directed Cipla
to manufacture and test candidate formulations in India.
In addition, Velcera established LoradoChem, Inc. (“Lora-
doChem”) as a wholly-owned subsidiary of Velcera’s
wholly-owned FidoPharm subsidiary to file the regulatory
applications necessary for approval to import and sell
PetArmor Plus in the United States. LoradoChem pre-
pared and submitted to the United States Environmental
Protection Agency (“EPA”) an “Identical/Substantially
Similar Product” pesticide registration application, which
facilitates expedited registration for products that are
substantially similar or identical to a previously regis-
tered pesticide formulation. See 7 U.S.C. § 136a(c)(3)(B).
In communications with the EPA, LoradoChem identified
PetArmor Plus as “identical or substantially similar” to
Merial’s previously registered Frontline Plus products
and submitted experimental data generated by Cipla to
support that assertion. Indeed, those data showed that
PetArmor Plus contains the same concentrations of
fipronil and methoprene as Frontline Plus. As required
1
QEDetal LZE is a corporate entity established in
the United Arab Emirates and owned, like QEDetal, by
the director of Omnipharm. J.A. 2227.
9 BASF AGRO v. CIPLA LIMITED

by the EPA, LoradoChem also submitted Cipla’s EPA
establishment number 87688-IND-01 with its application,
identifying Cipla as the sole manufacturer of PetArmor
Plus. In view of LoradoChem’s submissions, the EPA
approved PetArmor Plus for pesticide registration as
identical/substantially similar to Frontline Plus on Janu-
ary 10, 2011.
Soon thereafter, PetArmor Plus production began.
Upon request, Cipla manufactured each unit of PetArmor
Plus for delivery to QEDetal, transfer to QEDetal LZE
and FidoPharm, and eventual importation into the United
States. Cipla supplied PetArmor Plus in finished, mar-
ket-ready condition, with the pesticide formulation pro-
vided in single-dose pipettes and enclosed in its final
retail packaging. Cipla’s PetArmor Plus packaging in-
cluded Cipla’s EPA establishment number, as required for
all pesticide products sold in the United States, as well as
U.S. telephone numbers promising 24-hour customer
support. An exemplary unit of PetArmor Plus, finished
and ready for sale, is depicted below:
BASF AGRO v. CIPLA LIMITED 10

Br. Appellee at 43. The first shipments of PetArmor Plus
arrived in the United States in March 2011 and were
offered for sale the following month.
The 2011 Contempt Proceedings
Having become aware of Cipla’s role in the impending
commercial launch of PetArmor Plus, Merial filed a
motion for contempt in the United States District Court
for the Middle District of Georgia on March 28, 2011 (the
“contempt proceedings”). J.A. 1135–54. Merial contended
that Cipla’s activities relating to PetArmor Plus violated
that court’s 2008 injunction against infringement of the
’329 patent. 2 In particular, Merial alleged that PetArmor
Plus was no more than a rebranded version of Cipla’s
enjoined Protektor Plus product and that the importation
and sale of PetArmor Plus within the United States
therefore violated the injunction. Velcera moved to inter-
vene in the contempt proceedings as an interested party
on April 8, 2011, and was promptly joined as a defendant
and ordered to show cause why it should not be held in
contempt for acting in concert with Cipla to contravene
the 2008 injunction.
Meanwhile, Velcera had filed a declaratory judgment
complaint against Merial in the United States District
Court for the District of Delaware on February 11, 2011,
alleging noninfringement and invalidity of the ’329 patent
(the “Delaware action”). 3 Merial answered on March 7,
2011, denying Velcera’s allegations and asserting coun-

2
The ’940 patent, covering fipronil-only pest control
compositions, had expired by the time Merial initiated the
contempt proceedings in March 2011.
3
Velcera’s declaratory judgment complaint also in-
cluded claims of noninfringement and invalidity directed
at Merial’s U.S. Patents 6,620,943 and 6,881,848. Those
patents are not at issue in this appeal.
11 BASF AGRO v. CIPLA LIMITED

terclaims that included infringement of the ’329 patent.
Cipla was not a party to the Delaware action.
In the contempt proceedings, Cipla sought to vacate
the 2008 injunction as void, alleging that the district
court had lacked personal jurisdiction over Cipla when it
issued the Default Order in 2008. Cipla and Velcera
argued that even if the injunction rested on sound juris-
dictional footing, their production and sale of PetArmor
Plus did not violate the court’s earlier order. Velcera
further maintained that, as a non-party to the underlying
default judgment, it was not subject to the injunction and,
regardless, that it had not acted in concert with Cipla to
violate the injunction. Finally, Velcera contended that
the contempt proceedings should be stayed pending a
decision on the ’329 patent’s validity in the co-pending
Delaware action.
The district court declined to stay the contempt pro-
ceedings and issued its decision on June 21, 2011. The
court concluded that Cipla had been subject to its jurisdic-
tion when it issued the 2008 injunction pursuant to
Federal Rule of Civil Procedure 4(k)(2) instead of the
Georgia long-arm statute, that PetArmor Plus was not
more than colorably different from Cipla’s previously
enjoined Protektor Plus product, and that Cipla and
Velcera had knowingly acted in concert to violate the
court’s order. Contempt Order, 2011 WL 2489753, at *8–
14. In light of the defendants’ “contumacious” conduct,
the court issued a permanent injunction precluding Cipla
from making, using, selling, or importing into the United
States veterinary products containing fipronil and metho-
prene and prohibiting Velcera from doing the same with
any such products developed, manufactured, or packaged
BASF AGRO v. CIPLA LIMITED 12

with the assistance or participation of Cipla. 4 Id. at *16–
17.
Cipla and Velcera timely appealed from the district
court’s judgment of contempt; we have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review a district court’s exercise of personal juris-
diction over an accused infringer without deference,
applying Federal Circuit law rather than the law of the
regional circuit. Nuance Commc’ns v. Abbyy Software
House, 626 F.3d 1222, 1230 (Fed. Cir. 2010). Findings of
fact that bear on personal jurisdiction are reviewed for
clear error. Id. When reviewing a district court’s deter-
mination as to contempt of an injunction against in-
fringement, we apply an abuse of discretion standard,
Fujifilm Corp. v. Benun, 605 F.3d 1366, 1370 (Fed. Cir.
2010) (per curiam), and the factual findings underlying a
contempt decision are reviewed for clear error, TiVo Inc.
v. EchoStar Corp., 646 F.3d 869, 883 (Fed. Cir. 2011) (en
banc). Whether a non-party to an injunction proceeded
“in active concert” with another party bound by that
injunction, as set forth in Fed. R. Civ. P. 65(d)(2)(C),
presents an issue of fact that we review for clear error.
Additive Controls & Measurement Sys., Inc. v. Flowdata,

4
Soon after the district court entered the Contempt
Order, Velcera’s declaratory judgment claims relating to
the ’329 patent in the Delaware action were dismissed for
lack of subject matter jurisdiction: “Given the current
injunction [in the Georgia contempt proceedings] and the
fact that Velcera does not have a new, non-enjoined
product containing fipronil and methoprene, there is no
actual controversy between the parties.” Velcera Inc. v.
Merial Ltd., No. 11-CV-134 (GMS) (D.Del. Aug. 3, 2011),
ECF No. 38, slip. op. at 4 n.4.
13 BASF AGRO v. CIPLA LIMITED

Inc., 154 F.3d 1345, 1351 (Fed. Cir. 1998) (“Additive
Controls II”).
Between them, Cipla and Velcera (collectively, “Appel-
lants”) present a panoply of arguments disputing various
aspects of the Contempt Order. We will address each in
turn.
I
Appellants first challenge the contempt judgment as
founded on an invalid injunction, alleging that the district
court lacked personal jurisdiction over Cipla when it
issued the default judgment in 2008. Appellants there-
fore argue that the district court erred in denying Cipla’s
motion to vacate the 2008 default judgment and injunc-
tion pursuant to Fed. R. Civ. P. 60(b)(4). In particular,
Appellants contend that Rule 4(k)(2) could not have
conferred jurisdiction over Cipla in the Middle District of
Georgia due to Cipla’s present assertion of consent to
jurisdiction in the Northern District of Illinois and
Merial’s failure to observe effective procedures for service
of process in India. Furthermore, Cipla asserts that the
district court’s reliance on Rule 4(k)(2) was impermissible
because Merial did not plead Rule 4(k)(2) as a basis for
personal jurisdiction in the 2007 complaint.
Merial responds that Rule 4(k)(2) was applicable
when it filed suit in 2007, that Cipla had denied contacts
with Illinois or any other U.S. jurisdiction at that time,
and that Cipla’s belated consent to jurisdiction in Illinois
does not defeat Rule 4(k)(2) because there is no independ-
ent basis for jurisdiction in that forum. Merial argues
further that Cipla’s complaints regarding service of proc-
ess are untimely and therefore waived on appeal. Finally,
Merial argues that it is irrelevant whether or not its
original complaint explicitly mentioned Rule 4(k)(2)
because there is no requirement to plead a specific basis
BASF AGRO v. CIPLA LIMITED 14

for personal jurisdiction and because courts may rely on
that rule even when it has not been cited by the parties.
For the reasons set forth below, we hold that Rule
4(k)(2) supports the district court’s exercise of personal
jurisdiction over Cipla in entering the 2008 default judg-
ment and injunction and that the district court therefore
correctly denied Cipla’s motion to vacate that judgment
on jurisdictional grounds.
A
“Rule 4 is the starting point for any personal jurisdic-
tion analysis in federal court.” Synthes (U.S.A.) v. G.M.
Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d 1285,
1293 (Fed. Cir. 2009) (citing Fed. R. Civ. P. 4 and Omni
Capital Int’l, Ltd. v. Rudolf Wolff & Co., 484 U.S. 97, 104
(1987)). Personal jurisdiction over foreign defendants in
federal court typically depends on the existence of suffi-
cient contacts between the defendant and the forum state,
requiring the plaintiff to establish that the exercise of
personal jurisdiction over the defendant would satisfy the
forum state’s long-arm statute and comport with constitu-
tional principles of due process such that the defendant
would be subject to personal jurisdiction in the courts of
the forum state. See generally 4A Charles Alan Wright, et
al., Federal Practice and Procedure § 1069 (3d ed.).
Rule 4(k)(2) was adopted to provide a forum for fed-
eral claims in situations where a foreign defendant lacks
substantial contacts with any single state but has suffi-
cient contacts with the United States as a whole to satisfy
due process standards and justify the application of
federal law. Synthes, 563 F.3d at 1295–96 (citing advi-
sory committee notes to the 1993 amendment establishing
Rule 4(k)(2)). Rule 4(k)(2) thus approximates a federal
long-arm statute, allowing district courts to exercise
personal jurisdiction even if the defendant’s contacts with
15 BASF AGRO v. CIPLA LIMITED

the forum state would not support jurisdiction under that
state’s long-arm statute, as long as (1) the plaintiff’s claim
arises under federal law, (2) the defendant is not subject
to personal jurisdiction in the courts of any state, and
(3) the exercise of jurisdiction satisfies due process re-
quirements. Id. at 1293–94.
B
As noted, one precondition for applying Rule 4(k)(2) is
that the defendant must not be subject to personal juris-
diction in the courts of any state (sometimes called the
“negation requirement”). Id. at 1293. Although the
burden of establishing personal jurisdiction ordinarily
falls on the plaintiff, in the context of Rule 4(k)(2) that
general proposition would saddle the plaintiff with an
extraordinary challenge in “proving a negative many
times over,” that is, demonstrating that the defendant is
not subject to jurisdiction in each of the fifty states.
Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1413
(Fed. Cir. 2009). We have therefore adopted a burden-
shifting mechanism so that “if the defendant contends
that he cannot be sued in the forum state and refuses to
identify any other where suit is possible, then the federal
court is entitled to use Rule 4(k)(2).” Id. at 1415 (quoting
ISI Int’l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d
548, 551 (7th Cir. 2001)).
During the contempt proceedings, Cipla identified the
Northern District of Illinois as an alternate forum for suit
and claimed that if it had been sued there “in October
2007 or 2008, Cipla would have agreed that there was
personal jurisdiction.” Appellants contend that this
proclamation necessarily divested the district court of
personal jurisdiction and consequently rendered the
default judgment void. In contrast, Merial maintains,
and the district court held, that the proper inquiry when a
BASF AGRO v. CIPLA LIMITED 16

defendant seeks to overturn a default judgment predi-
cated on Rule 4(k)(2) by consenting to an alternate forum
“is to determine whether the defaulted action could have
been brought in that designated forum in the first place
under that forum’s long-arm jurisdiction.” Contempt
Order, 2011 WL 2489753, at *9. Finding that Illinois law
would not have supported personal jurisdiction over Cipla
in 2007 based on Cipla’s contacts with Illinois at that
time, the district court held that Rule 4(k)(2)’s negation
requirement had been satisfied notwithstanding Cipla’s
post-judgment designation of an alternative forum. Id.
We agree with the district court’s analysis and conclusion.
The district court correctly concluded that Cipla’s ex
post consent to suit in the Northern District of Illinois was
not independently sufficient to prevent it from exercising
personal jurisdiction under Rule 4(k)(2). Discussing the
negation requirement in Touchcom, we stated that a
defendant can “avoid the application of [Rule 4(k)(2)] only
when it designates a suitable forum in which the plaintiff
could have brought suit.” 574 F.3d at 1415 (emphasis
added). Contrary to Cipla’s contentions, a defendant
cannot defeat Rule 4(k)(2) by simply naming another
state; the defendant’s burden under the negation re-
quirement entails identifying a forum where the plaintiff
could have brought suit—a forum where jurisdiction
would have been proper at the time of filing, regardless of
consent. Consistent with that obligation, a defendant
does not identify “a more appropriate state” by suggesting
an alternative forum with no basis for personal jurisdic-
tion but for its consent. Id. at 1414 (quoting ISI, 256 F.3d
at 552) (emphasis added). Absent some independent basis
for jurisdiction, neither forum is manifestly more appro-
priate than the other in such situations, and we see little
reason to conclude that the defendant’s preference should
prevail when choosing among districts of equivalent
17 BASF AGRO v. CIPLA LIMITED

jurisdictional competence based on equal contacts—or
lack thereof—with the defendant.
In any event, we need not decide today the general
requirements for a defendant to prevent the application of
Rule 4(k)(2) by consenting to suit in another jurisdiction,
for it suffices in this case to hold that a defendant, like
Cipla, challenging a prior default judgment may not do so
by naming another forum that would not have had an
independent basis for jurisdiction at the time of the
original complaint. As the district court recognized, the
incentives for gamesmanship under a contrary rule would
be particularly acute in such cases because the defaulting
party could use a simple, unilateral statement of consent
not only to achieve transfer into a forum it considers more
convenient (or less convenient for its opponent), but also
to undo an adverse final judgment for the chance to
litigate from a clean slate. See Contempt Order, 2011 WL
2489753, at *9 (“Allowing a defendant to avoid the conse-
quences of a default after the fact simply by professing
that it will now consent to jurisdiction if the default is
lifted creates an opportunity for mischief and manipula-
tion of the courts.”). In sum, the district court applied the
correct standard in evaluating a default judgment prem-
ised on Rule 4(k)(2) by requiring Cipla to identify an
alternative forum where Merial could have brought suit
in 2007.
In addition, we find no clear error in the district
court’s application of the foregoing principles to the facts
of this case. To support its claims that personal jurisdic-
tion would have existed in Illinois, Cipla presented docu-
ments indicating that it had a relationship with an
Illinois corporation dating to 2003, but that evidence
contains only bare statements of expected collaboration
and provides no details regarding the extent of any result-
ing contacts with Illinois by the time Merial filed suit.
BASF AGRO v. CIPLA LIMITED 18

Cipla also submitted evidence suggesting that it made
“over 86 shipments or sales of products” to companies in
Illinois in the past three years. Br. Def.-Appellant Cipla
at 32 (citing J.A. 2684–2808). But that evidence does not
show that any such shipments arrived in Illinois before
Merial filed suit in November 2007, 5 nor does it provide
any information on the revenue or sales generated by the
listed shipments. After conducting a careful analysis of
the Illinois long-arm statute, the district court concluded
that the evidence of alleged contacts provided an insuffi-
cient basis to conclude that Cipla would have been subject
to personal jurisdiction in the Northern District of Illinois
for the claims asserted in the 2007 complaint. In view of
the available evidence, that decision was not in error.
C
As a predicate to establishing personal jurisdiction,
Rule 4(k)(2) also requires service of process or waiver of
service, and Federal Rule of Civil Procedure 4(f) governs
the requirements for serving a party in a foreign country.
Rule 4(f)(1) indicates that a party may be served outside
of the United States by “internationally agreed means . . .
such as those authorized by the Hague Convention on the
Service Abroad of Judicial and Extrajudicial Documents”
(“the Hague Convention”). India became a signatory to
the Hague Convention, effective August 1, 2007. In so
doing, India prohibited service through channels includ-
ing mail and private process servers and instead required
foreign plaintiffs to effect service through the Central
Authority of India. See Tuckerbrook Alt. Invs., LP v.
Banerjee, 754 F. Supp. 2d 177, 181–82 (D. Mass. 2010).

5
In its analysis, the district court nonetheless
treated three of those shipments as having occurred
“during the time frame surrounding the filing of the
Complaint.” Contempt Order, 2011 WL 2489753, at *9.
19 BASF AGRO v. CIPLA LIMITED

Appellants argue that exercising personal jurisdiction
over Cipla pursuant to Rule 4(k)(2) would violate due
process because Merial’s 2007 service in India was legally
deficient. Appellants allege that when it filed the 2007
complaint, Merial served Cipla in Mumbai via “courier
and registered post” in an attempt to comply with Rule
4(f)(2)(A), but Rule 4(f)(2) generally applies only “if there
is no internationally agreed means” of service. Because
Merial bypassed the Central Authority of India, Appel-
lants assert that Merial’s service of process failed to meet
mandatory standards under the Hague Convention and
was therefore insufficient to support personal jurisdiction
under Rule 4(k)(2). Accordingly, Appellants argue that
the district court’s 2008 default order and injunction must
be vacated as void for lack of personal jurisdiction.
As Merial correctly notes, however, Appellants have
raised the issue of insufficient service for the first time on
appeal. As that contention surely could have been, but
was not, presented in Cipla’s Rule 60(b)(4) motion or
raised before the district court during the subsequent
contempt proceedings, we deem that argument waived
and need not consider it here. See SEC v. Internet Solu-
tions for Bus. Inc., 509 F.3d 1161, 1167 (9th Cir. 2007).
D
In general, parties may satisfy federal pleading stan-
dards by alleging personal jurisdiction generally, without
asserting a specific basis for the court’s personal jurisdic-
tion over a defendant. 4 Wright, et al., supra, § 1067.6.
Furthermore, our precedent holds that Rule 4(k)(2) can be
considered even when the plaintiff has affirmatively pled
a different basis for personal jurisdiction. See Touchcom,
574 F.3d at 1410 (“The court did not examine whether
Rule 4(k)(2) permitted the exercise of personal jurisdiction
[because the plaintiff] did not allege that that rule permit-
BASF AGRO v. CIPLA LIMITED 20

ted the exercise of jurisdiction. However . . . we are
entitled to consider it.”); see also ISI, 256 F.3d at 551
(“Although the parties did not alert the district judge to
Rule 4(k)(2) . . . . Federal courts are entitled to apply the
right body of law, whether the parties name it or not.”).
In the 2007 complaint, Merial alleged that the district
court had “personal jurisdiction over CIPLA by virtue of
its actions . . . within this State and judicial district, or its
systematic and continuous contact with this State and
judicial district,” J.A. 837, and that allegation stood
uncontested until the contempt proceedings arose several
years later. In the contempt proceedings, Cipla argued,
and the district court concluded, that the available record
did “not support a finding that Cipla had sufficient con-
tacts with the state of Georgia for it to be subject to
personal jurisdiction under the Georgia long-arm statute
for the present action,” but the court agreed with Merial
that it could evaluate whether its jurisdictional require-
ments had nonetheless been satisfied pursuant to Rule
4(k)(2). Contempt Order, 2011 WL 2489753, at *8 n.9
(citing Touchcom, 574 F.3d at 1415). Cipla argues that it
was entitled to rely on the allegations evident from the
face of Merial’s complaint. Since the 2007 complaint
recited a defective basis for jurisdiction, Cipla argues that
it rightly declined to answer in the interest of forgoing
futile litigation and that Rule 4(k)(2) should be unavail-
able until the default judgment is vacated and Merial’s
complaint is formally amended to provide Cipla with a
full opportunity to respond on the merits. As explained
below, we find those arguments unpersuasive.
As Cipla notes, “[a] defendant is always free to ignore
the judicial proceedings, risk a default judgment, and
then challenge that judgment on jurisdictional grounds.”
Ins. Corp. of Ir., Ltd. v. Compagnie des Bauxites de
Guinee, 456 U.S. 694, 706 (1982). Upon receiving a com-
21 BASF AGRO v. CIPLA LIMITED

plaint, defendants are of course entitled to evaluate the
circumstances and forge their own strategic decisions; the
soundness of those decisions, however, is another matter.
See Restatement (Second) of Judgments, § 65 cmt. b.
(“When the person knew about the action but perceived
that the court lacked . . . jurisdiction, he is given a right to
ignore the proceeding at his own risk but to suffer no
detriment if his assessment proves correct.”) (emphases
added). Cipla essentially urges that, because the 2007
complaint did not refer to Rule 4(k)(2), the possibility of
jurisdiction arising under that rule did not factor into its
decision not to appear, and the district court’s subsequent
invocation of Rule 4(k)(2) as its basis for asserting per-
sonal jurisdiction constituted an unfair change in circum-
stances and therefore compels a return to square one in
this litigation.
But such claims of reliance and unfair surprise ring
hollow where, as here, it is beyond dispute that Cipla had
actual notice of suit and chose to risk a default judgment,
based on its subjective assessment of the complaint 6 and
despite existing precedent indicating that Rule 4(k)(2)
could apply whether or not it was raised by the parties.
See ISI, 256 F.3d at 551. Regardless of the specific juris-
dictional allegations in the 2007 complaint, Cipla should
have apprehended that a Rule 4(k)(2) inquiry might arise,
particularly as a foreign company believing itself to be
outside the reach of the forum state’s long-arm statute.
Furthermore, even though Cipla’s initial belief that the
complaint recited an incorrect basis for jurisdiction was
ultimately vindicated, that issue remained an open ques-
tion at the time, and Cipla had the option of filing a pre-

6
See, e.g., Br. Def.-Appellant Cipla at 20 (“As Cipla
knew when it received the complaint . . . Merial’s allega-
tions of jurisdiction under the Georgia Long Arm statute
were defective factually and as a matter of law . . . .”).
BASF AGRO v. CIPLA LIMITED 22

answer motion under Rule 12(b)(2) to settle all issues of
personal jurisdiction up front. Cipla instead chose to do
nothing, and it must bear the consequences of that deci-
sion.
Cipla attempts to distinguish Touchcom on the basis
that we were not reviewing a default judgment in that
case, so vacatur was not necessary there for the plaintiff
to amend its complaint on remand. Those distinctions are
unavailing. In Touchcom, the plaintiffs pursued a legal
malpractice claim against a Canadian law firm for alleged
errors in prosecuting a U.S. patent, alleging that the
governing state long-arm statute conferred personal
jurisdiction on the district court in view of the defendant’s
contacts with the forum state. 574 F.3d at 1409–10. The
district court dismissed for lack of personal jurisdiction
because the plaintiffs had not pled sufficient facts to
establish personal jurisdiction under state law. Id. at
1409. Although we agreed with the district court’s analy-
sis under state law, we nonetheless reversed and re-
manded on the basis that the district court could exert
personal jurisdiction over the defendants pursuant to
Rule 4(k)(2). Id. at 1411–12, 1418. Citing ISI, we held
that Rule 4(k)(2) applied even though it had never been
raised at any point prior to appeal, much less recited as a
basis for jurisdiction in the plaintiffs’ original complaint.
Id. at 1410–11. Nowhere was our remand decision condi-
tioned on subsequent formal amendments to the com-
plaint—indeed, the issue was not even mentioned—and
we do not read Touchcom as being so limited. Contrary to
Cipla’s contentions, the main distinction we see between
the facts in Touchcom and the present dispute is that here
Merial did raise Rule 4(k)(2) before the district court such
that the parties were able to contest its application prior
to appeal, which, if anything, favors Merial’s position. We
23 BASF AGRO v. CIPLA LIMITED

therefore see no reason to distinguish Touchcom based on
the facts of this case.
The Eleventh Circuit considered the retroactive appli-
cation of Rule 4(k)(2) following a default judgment in
Oldfield v. Pueblo de Bahia Lora, S.A., 558 F.3d 1210
(11th Cir. 2009). In that case, a U.S. plaintiff brought
suit against a foreign corporation to recover for injuries he
suffered at a resort operated by the defendant in Costa
Rica. The plaintiff’s complaint alleged personal jurisdic-
tion under the relevant state long-arm statute, and when
the defendant did not appear, the district court entered a
default judgment. Id. at 1215. The defendant later
moved to set aside the default judgment for want of
personal jurisdiction, and the plaintiff countered by
raising Rule 4(k)(2) for the first time as an alternative
basis for jurisdiction. Id. at 1216. Under circumstances
thus very similar to the appeal before us, and without
requiring amendment of the complaint, the Eleventh
Circuit court performed a full Rule 4(k)(2) analysis. As
Cipla points out, the court in Oldfield ultimately con-
cluded that Rule 4(k)(2) did not support jurisdiction over
the defendant. Id. at 1223–24; see Br. Def.-Appellant
Cipla at 24–25. But that was because the substantive
requirements of Rule 4(k)(2) had not been met, not be-
cause Rule 4(k)(2) had been omitted from the complaint.
See Oldfield, 558 F.3d at 1223–24. As far as the propriety
of considering Rule 4(k)(2) for the first time after a default
judgment, Oldfield thus supports the district court’s
approach in this case.
Finally, we note that Cipla had a full opportunity to
litigate over personal jurisdiction during the contempt
proceedings, and, having lost on that issue, now insists
that the default judgment must nonetheless be vacated
because the basis for jurisdiction alleged in the 2007
complaint differed from the basis ultimately relied upon
BASF AGRO v. CIPLA LIMITED 24

by the district court. But the judgment’s legal viability is
not keyed to the particular grounds for personal jurisdic-
tion set out in the complaint. The important question is
whether the district court ultimately had actual jurisdic-
tion over the parties. Once it received notice of suit in
2007, the choice was Cipla’s whether the jurisdictional
question should be settled then or at some point post-
judgment. With the benefit of hindsight, Cipla would
understandably prefer to turn back the litigation clock to
reconsider that choice, but the district court’s default
judgment was premised on a valid exercise of personal
jurisdiction under Rule 4(k)(2), and we therefore decline
to upset its decision on that basis.
II
Appellants next dispute the district court’s decision to
deny its request for a stay of the contempt proceedings
pending resolution of the parallel Delaware action. The
district court held that the “first-to-file” rule would not
support a stay and, moreover, that the Delaware action
was not in fact the first filed. Contempt Order, 2011 WL
2489753, at *1 n.3. Appellants contend that the district
court should have issued a stay because the Delaware
action was filed before Merial instituted the contempt
proceedings and because the Delaware action raised
pivotal questions of validity and infringement that war-
ranted a full trial and could have rendered the contempt
proceedings moot. Appellants thus ask that we vacate the
district court’s judgment and remand with instructions to
stay further contempt proceedings pending a final deter-
mination on infringement and validity of the ’329 patent
in the Delaware action. This we decline to do.
The “first-to-file” rule is a doctrine of federal comity,
intended to avoid conflicting decisions and promote judi-
cial efficiency, that generally favors pursuing only the
25 BASF AGRO v. CIPLA LIMITED

first-filed action when multiple lawsuits involving the
same claims are filed in different jurisdictions. See gener-
ally Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937–
38 (Fed. Cir. 1993); Church of Scientology of Cal. v. U.S.
Dep’t of the Army, 611 F.2d 738, 749–50 (9th Cir. 1979).
The filing date of an action derives from the filing of the
complaint. Fed. R. Civ. P. 3; Pacesetter Sys., Inc. v. Med-
tronic, Inc., 678 F.2d 93, 96 n.3 (9th Cir. 1982). Under the
first-to-file rule, a district court may choose to stay, trans-
fer, or dismiss a duplicative later-filed action, although
there are exceptions and the rule is not rigidly or me-
chanically applied—“an ample degree of discretion, ap-
propriate for disciplined and experienced judges, must be
left to the lower courts.” Kerotest Mfg. Co. v. C-O-Two
Fire Equip. Co., 342 U.S. 180,183–84 (1952).
As an initial matter, we disagree with Appellants’
contention that the Delaware action antedates the matter
now before us on appeal. Velcera filed its declaratory
judgment complaint in Delaware on February 11, 2011,
approximately six weeks before Merial moved on March
28, 2011, to hold Cipla in contempt. But the date of
Merial’s contempt motion is irrelevant in determining
which action was filed first—what matters is the initia-
tion of suit. Here, the contempt proceedings elaborated a
preexisting case that originated with Merial’s initial
infringement complaint against Cipla, filed in November
2007. The district court thus correctly viewed the con-
tempt proceedings as first filed. Furthermore, even if the
Delaware action could be considered the first suit filed,
the district court was well within its considerable discre-
tion in concluding that principles of comity would not
support a stay because the precise issues at stake differed
between the proceedings, and a key party (Cipla) was
absent from the Delaware action. See Contempt Order,
BASF AGRO v. CIPLA LIMITED 26

2011 WL 2489753, at *1 n.3. We therefore affirm the
denial of Velcera’s motion for stay.
III
Appellants next urge reversal on grounds that the dis-
trict court’s analysis of PetArmor Plus failed to apply the
correct standard for determining contempt based on a
newly accused product. On review, and as described more
fully below, we uphold the district court’s judgment.
We have recently applied a modified analysis to con-
tempt determinations in the context of alleged continuing
infringement in violation of an injunction. Under TiVo,
contempt requires proof that (1) the newly accused prod-
uct is no more than colorably different from the previously
adjudged infringing product, and (2) the newly accused
product actually infringes the asserted patent. 646 F.3d
at 882. The district court found that Merial satisfied both
requirements as to PetArmor Plus in the contempt pro-
ceedings. Contempt Order, 2011 WL 2489753, at *11–12.
Appellants attack both findings as founded on inade-
quate evidence and reliant on unsustainable assumptions
derived from the 2008 default judgment against Cipla. At
the outset, Velcera complains that—as a non-party to the
original default proceedings—it never received a full and
fair opportunity to litigate various issues including
whether the ’329 patent is valid, whether Cipla’s Protek-
tor Plus product infringed the ’329 patent, or whether
Protektor Plus ever even existed. Those arguments are
baseless. Velcera, as an unsolicited intervenor in this
action, joined subject to all prior determinations of fact
and law that preceded its intervention. Knowles v. Bd. of
Pub. Instruction of Leon Cnty., 405 F.2d 1206, 1207 (5th
Cir. 1969). Patent validity and infringement by an origi-
nally accused product are generally not open to challenge
in contempt proceedings, Additive Controls II, 154 F.3d
27 BASF AGRO v. CIPLA LIMITED

at 1350, and for purposes of this litigation, the 2008
default judgment against Cipla established, among other
things, that the ’329 patent was not invalid and was
infringed by Cipla’s Protektor Plus product. In short, the
time for contesting those underlying determinations has
passed, and we will not consider them anew in this ap-
peal.
Appellants next argue that the district court could not
competently evaluate whether colorable differences exist
between PetArmor Plus and Protektor Plus because the
default judgment allegedly offered no guidance on which
specific features of Protektor Plus were focused on to
establish infringement. In support of its position, Appel-
lants rely on our statement in TiVo that “one should focus
on those elements of the adjudged infringing products
that the patentee previously contended, and proved,
satisfy specific limitations of the asserted claims.” 646
F.3d at 882. Again insisting that Merial never “proved”
infringement by Protektor Plus, Appellants argue that the
colorable differences analysis did not rest on affirmatively
adjudged infringing features.
We conclude that the district court applied the correct
standards and committed no clear error in finding no
more than colorable differences between PetArmor Plus
and Protektor Plus. In contempt proceedings following a
contested infringement action, as in TiVo, it will often be
that the underlying infringement litigation focused de-
tailed attention on a few heavily disputed claim limita-
tions and certain corresponding elements of an infringing
product, and the colorable differences analysis in such
cases will benefit from that precision. But when, as here,
infringement has been established through default, the
judgment is no less binding or authoritative simply be-
cause comprehensive and painstaking factual analyses
regarding every claim limitation may have been unneces-
BASF AGRO v. CIPLA LIMITED 28

sary or impractical at the time of the initial decision. As
such, whether or not the default order here included an
exhaustive infringement analysis, it necessarily and
conclusively established that Protektor Plus met each
limitation recited in the asserted claims of the ’329 pat-
ent. For example, claim 1 of the ’329 patent requires a
spot-on pest control composition comprising (1) a syner-
gistic effective amount of fipronil, (2) a synergistic effec-
tive amount of an IGR, and (3) at least one customary
spot-on formulation adjuvant. ’329 patent col.10 ll.11–15.
The evidence showed that Protektor Plus contained 9.7%
fipronil, 11.8% methoprene, and at least one customary
spot-on adjuvant—all of which Cipla admitted by default
in 2008. Contempt Order, 2011 WL 2489753, at *6. By
comparison, the district court found during the contempt
proceedings that PetArmor Plus for cats contains 9.8%
fipronil, 11.8% methoprene, and at least one customary
spot-on adjuvant. Id. at *12. Furthermore, the court
credited Merial’s expert testimony that any two spot-on
adjuvants would function interchangeably and that
replacing one for another in any such pest control compo-
sition would not amount to a colorable difference. Id. The
district court thus had ample basis to conclude that
PetArmor Plus and Protektor Plus are not more than
colorably different.
Appellants also fault the district court’s conclusion
that PetArmor Plus infringes the ’329 patent. Appellants
argue that the district court relied on inadequate evidence
and erroneously compared PetArmor Plus to Merial’s
Frontline Plus rather than the ’329 patent claims them-
selves.
It is undisputed that Merial’s Frontline Plus product
is covered by the ’329 patent’s claims, and, contrary to the
Appellants’ contentions, “[o]ur case law does not contain a
blanket prohibition against comparing the accused prod-
29 BASF AGRO v. CIPLA LIMITED

uct to a commercial embodiment” in an infringement
analysis. Adams Respiratory Therapeutics, Inc. v. Perrigo
Co., 616 F.3d 1283, 1288 (Fed. Cir. 2010). The district
court thus elected to compare the accused product to
Frontline Plus, and we see no error in that decision,
particularly given its context in a summary contempt
proceeding where such an approach would be especially
convenient or expeditious and the benchmark commercial
product represents a recognized embodiment of the patent
at issue. On the merits, the district court considered
undisputed evidence that PetArmor Plus contains pre-
cisely the same concentrations of fipronil and methoprene
as Frontline Plus, and that those concentrations consti-
tute synergistically effective amounts as recited in the
claims. Indeed, Velcera not only represented to the EPA
that PetArmor Plus is essentially identical to Frontline
Plus, but also explicitly traded on the products’ equiva-
lence. See, e.g., J.A. 6745, 6753–54 (PetArmor Plus pack-
aging prominently stating “COMPARE TO FRONTLINE
PLUS – same active ingredients,” and PetArmor Plus
promotional materials emphasizing identity between the
PetArmor Plus and Frontline Plus formulations). Fur-
ther, Merial highlighted trial testimony in which Dennis
Steadman, Velcera’s CEO, “readily admitted at the hear-
ing that if the ’329 Patent is valid, then PetArmor Plus
violates that Patent.” Contempt Order, 2011 WL
2489753, at *12. That testimony was as follows:
THE COURT: Mr. Steadman, let me just make
sure I understand one thing you testified to. I
understand that you made the conscious decision
that PetArmor Plus you did not feel violated the
’329 patent because you believed the ’329 patent
was invalid. Correct?
THE WITNESS: That’s correct.
BASF AGRO v. CIPLA LIMITED 30

THE COURT: If—and I know you don’t agree with
this. But if the ’329 patent were valid, then you
would acknowledge that PetArmor Plus would in-
fringe on that patent, if it were valid.
THE WITNESS: If it were valid, that combina-
tion, I—yeah, I believe would.
....
THE COURT: You’re betting the store on the in-
validity of the ’329 patent.
THE WITNESS: You betcha.
J.A. 4903–06. One would be hard-pressed to conceive of
more compelling testimonial evidence on infringement,
particularly when those statements come from the defen-
dant’s chief executive regarding his own product. In
assessing whether PetArmor Plus infringes the ’329
patent, the district court thus had before it considerable
evidence indicating infringement, and we discern no error
in its affirmative conclusion on the basis of that evidence.
In view of the foregoing, the district court appropriately
considered both prongs of the contempt analysis as re-
quired under TiVo, and its conclusions were not clearly
erroneous.
IV
The Appellants’ next argument raises territoriality
concerns with the district court’s contempt judgment,
emphasizing that Cipla restricted its involvement in the
PetArmor Plus venture to activities in India. After ana-
lyzing Cipla’s role in the development, manufacture, and
distribution of PetArmor Plus, the district court nonethe-
less concluded that Cipla had contemptuously “caused an
infringing product to be sold in the United States, in
direct violation of the Court’s March 6, 2008 order.”
31 BASF AGRO v. CIPLA LIMITED

Contempt Order, 2011 WL 2489753, at *13. According to
Appellants, the district court thereby overextended U.S.
law to penalize Cipla for conduct that occurred entirely
overseas. We find no such extraterritorial infirmity in the
judgment, as described more fully below.
Appellants first advance the blanket proposition that
domestic patent law does not, and was not intended to,
reach past the territorial limits of the United States.
According to Appellants, “decades of precedent” hold that
extraterritorial conduct cannot constitute patent in-
fringement under 35 U.S.C. § 271. Br. Def.-Appellant
Velcera at 26–27 (citing Deepsouth Packing Co. v. Laitram
Corp., 406 U.S. 518 (1972); Brown v. Duchesne, 60 U.S.
183 (1856); Rotec Indus., Inc. v. Mitsubishi Corp., 215
F.3d 1246 (Fed. Cir. 2000)); Br. Def.-Appellant Cipla at
45–48 (same). Merial responds that foreign acts can
violate U.S. patent law if, like Cipla’s, they induce acts of
direct infringement within the United States.
Although we recognize the fundamental territoriality
of U.S. patent law, see Microsoft Corp. v. AT&T Corp., 550
U.S. 437 (2007), Cipla’s alleged foreign conduct is not
necessarily outside the scope of § 271. To be sure, purely
extraterritorial conduct cannot constitute direct infringe-
ment of a U.S. patent, as § 271(a) includes express lan-
guage limiting its scope to domestic acts: “[W]hoever
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.” 35
U.S.C. § 271(a) (2006) (emphases added). Consistent with
this principle, all of the decisions cited by Appellants
concerned claims for direct infringement and therefore
required an infringing act within the United States. See
Deepsouth, 406 U.S. at 527 (“to secure the injunction it
seeks, Laitram must show a § 271(a) direct infringement
BASF AGRO v. CIPLA LIMITED 32

by Deepsouth in the United States”); Brown, 60 U.S. at
193 (“The declaration . . . alleges that the defendant used
[the invention] without his consent.”); Rotec, 215 F.3d at
1251 (“According to Rotec, Defendants violated § 271(a)
when they ‘offered to sell’ the invention . . . .”). While
those decisions thus support the proposition that § 271(a)
direct infringement claims require domestic infringing
acts, § 271(a) is not the only provision of § 271. In par-
ticular, § 271(b), which defines infringement by induce-
ment, contains no such territorial proscription. See 35
U.S.C. § 271(b) (“Whoever actively induces infringement
of a patent shall be liable as an infringer.”). Section
271(b) therefore does not, on its face, foreclose liability for
extraterritorial acts that actively induce an act of direct
infringement that occurs within the United States, and
Appellants cite no authority to that effect. We therefore
decline to read the statute as being so limited.
In short, where a foreign party, with the requisite
knowledge and intent, employs extraterritorial means to
actively induce acts of direct infringement that occur
within the United States, such conduct is not categorically
exempt from redress under § 271(b). Cf. DSU Med. Corp.
v. JMS Co., 471 F.3d 1293, 1305–06 (Fed. Cir. 2006) (en
banc in relevant part) (approving of a jury instruction
that read, in part: “Unlike direct infringement, which
must take place in the United States, induced infringe-
ment does not require any activity by the indirect in-
fringer in this country, so long as the direct infringement
occurs here.”). We therefore reject the Appellants’ over-
broad contention that acts outside of the United States
cannot violate any provision of § 271.
Appellants next argue that, even if foreign activities
can give rise to liability in some circumstances, our deci-
sion in International Rectifier Corp. v. Samsung Electron-
ics Co., 361 F.3d 1355 (Fed. Cir. 2004), prohibits a
33 BASF AGRO v. CIPLA LIMITED

contempt finding in this case. More specifically, Appel-
lants argue that their layered contractual arrangements
and elaborate distribution chain—by which they sought to
insulate themselves from one another through foreign,
allegedly independent intermediaries—mirror those that
on their facts precluded a contempt judgment in Interna-
tional Rectifier.
Appellants’ reliance on International Rectifier is mis-
placed. In International Rectifier, the district court had
enjoined a foreign manufacturer from “making, using,
offering for sale or selling in or importing into the United
States” a patented computer component. 361 F.3d at
1360. The enjoined foreign manufacturer then contracted
with a German company to make, sell, and deliver unfin-
ished versions of the patented component outside of the
United States, after which the German company finished
and packaged the patented components for sale to its
customers around the world, including in the United
States. Id. at 1358. Although the district court held the
manufacturer in contempt for violating the injunction, we
reversed, holding that the manufacturer’s extraterritorial
conduct had not violated the injunction and that there
was no basis for attributing the German company’s inde-
pendent actions to the manufacturer. Id. at 1360–62.
But our decision in International Rectifier turned on the
specific terms of the injunction there at issue, which
“track[ed] section 271(a) of the Patent Act” and therefore
prohibited only direct infringement and could not reach
extraterritorial activities. Id. at 1360. In contrast, Ci-
pla’s current overseas activities are not necessarily out-
side of the broader injunction now before us, which
prohibits not only direct infringement, but also “any act
that . . . causes or induces infringement” of the ’329 pat-
ent. Contempt Order, 2011 WL 2489753, at *12. And,
unlike in International Rectifier, it is therefore unneces-
BASF AGRO v. CIPLA LIMITED 34

sary to establish whether Cipla exerted control over the
allegedly independent actions of Omnipharm and/or
QEDetal, for Cipla’s own extraterritorial conduct can
violate the present injunction as indirectly infringing
pursuant to § 271(b). International Rectifier therefore
does not preclude a finding of contempt in this case.
Finally, Cipla contends that the district court’s con-
tempt order lacks any findings on or meaningful discus-
sion of indirect infringement and argues that the district
court applied an inadequate inducement analysis. Ac-
cording to Cipla, the district court’s conclusion that Cipla
“caused” Velcera’s infringement cannot be sustained as a
basis for contempt because it falls short of sufficient
factual findings and misstates the correct legal standard
on inducement. We disagree.
Regardless of the precise language used to frame the
issue, the substance of the district court’s analysis is
clear—Cipla violated the injunction because, at a mini-
mum, its involvement in the PetArmor Plus venture
induced infringement of the ’329 patent. To support a
finding of inducement under § 271(b), the accused in-
fringer must have knowingly and intentionally induced
another party’s direct infringement. Global-Tech Appli-
ances, Inc. v. SEB, S.A., 563 U.S. __, 131 S.Ct. 2060, 2068
(2011); DSU, 471 F.3d at 1306. Here, the district court
explicitly found that (1) PetArmor Plus infringes the ’329
patent; (2) Velcera sold PetArmor Plus in the United
States; (3) Cipla and Velcera were aware of the ’329
patent and the 2008 injunction; (4) Cipla played funda-
mental roles in manufacturing, packaging, and assisting
in the development of the PetArmor Plus product for
Velcera to sell in the United States; (5) Cipla knew that
PetArmor Plus was to be sold in the United States; and
(6) Cipla knew and intended that such sales would in-
fringe the ’329 patent. Those findings bear directly on the
35 BASF AGRO v. CIPLA LIMITED

question of inducement, and they are not clearly errone-
ous.
Nor can we say that those findings are inadequate to
support a finding of inducement or that the district court
erred in its ultimate conclusion that Cipla “caused an
infringing product to be sold in the United States” in
direct violation of the injunction. Contempt Order, 2011
WL 2489753, at *13. Although Cipla complains that the
district court’s use of the term “caused” signals the appli-
cation of an incorrect standard for inducement, the con-
tempt order simply reflects the language of the injunction
itself, which is central to the contempt analysis and uses
the terms “cause” and “induce” interchangeably to de-
scribe prohibited indirectly infringing conduct. 7 Accord-
ingly, we understand the district court’s conclusion that
“Cipla caused an infringing product to be sold in the
United States, in direct violation of the Court’s March 6,
2008 Order,” id., to mean that Cipla violated the injunc-
tion’s prohibition against any act that induces infringe-
ment of the ’329 patent. We affirm it as such.

7
By its terms, the 2008 injunction proscribed both
direct infringement and inducement, banning Cipla from
“committing any act that infringes or causes or induces
infringement of any claim of the ’940 or ’329 patents.”
Contempt Order, 2011 WL 2489753, at *2 (emphases
added). Regarding the latter, the terms “induces” and
“causes” are introduced in the alternative, while “causing”
predominates throughout the remainder of the injunction
as prohibited directly and indirectly infringing acts are
alternately enumerated, for example, “using, causing to
be used, selling, causing to be sold, offering for sale, and
causing to be offered for sale . . . importing and causing to
be imported.” Id. (emphases added).
BASF AGRO v. CIPLA LIMITED 36

V
Velcera next contends that even if Cipla’s conduct vio-
lated the 2008 injunction, the district court committed
independent error by also finding Velcera—a non-party to
the 2008 default judgment—in contempt for working in
“active concert or participation” with Cipla to violate the
2008 injunction. We disagree.
It is well recognized that courts may not enter injunc-
tions against persons or entities that were not party to
the litigation before them. A soundly issued injunction
can, however, affect such non-parties in at least two
important respects—those who are legally identified with
an enjoined party may be bound as if they themselves
were named in the injunction, and those who act in con-
cert with an enjoined party to assist in violating the
injunction may also be held in contempt. Fed. R. Civ. P.
65(d); Additive Controls & Measurement Sys., Inc. v.
Flowdata, Inc., 96 F.3d 1390, 1394–95 (Fed. Cir. 1996)
(“Additive Controls I”). For the latter “active concert”
form of liability, a non-party to an injunction may not be
held in contempt for its wholly independent conduct; the
law limits contempt liability to non-parties that “act with
an enjoined party to bring about a result forbidden by the
injunction . . . if they are aware of the injunction and
know that their acts violate the injunction.” Additive
Controls II, 154 F.3d at 1353.
Velcera posits that the district court erred by failing
to separately analyze its individual actions under the
aiding and abetting standard, calling repeated attention
to what it calls the “bona fide legal and business relation-
ships” that separated Velcera from Cipla in the develop-
ment, production, and sale of PetArmor Plus. Under a
proper analysis, according to Velcera, its “arms-length”
business relationship and lack of a direct contractual
37 BASF AGRO v. CIPLA LIMITED

relationship with Cipla evince independent activity un-
dertaken for purposes other than assisting Cipla in efforts
to violate the injunction.
In determining that Velcera acted in concert with Ci-
pla, the district court relied in part on Velcera’s admis-
sions that by the time of its infringing acts it was aware of
the ’329 patent, knew PetArmor Plus would infringe the
’329 patent (apart from its subjective belief that the ’329
patent was invalid), and had notice of the 2008 injunction
against Cipla. There is thus little room to dispute that, as
it cooperated with and relied on Cipla in its efforts to
bring PetArmor Plus to market, Velcera was aware of the
existing injunction and understood that acting in concert
with Cipla to market an infringing product (like PetAr-
mor Plus) would violate the injunction. As to whether
Velcera in fact worked in active concert with Cipla with
the common aim of evading the injunction, Velcera at-
tempts to couch its complaints in terms of legal error—
that the district court ignored its independent, arms-
length arrangements with Cipla—but its argument in
reality boils down to disagreement with the factual con-
clusions the district court drew from those relationships.
The district court clearly contemplated the structure of
Velcera’s interactions with Cipla—it heard extensive
testimony from Velcera’s CEO detailing the relationships,
roles, and specific contractual agreements among the
various players in the PetArmor Plus venture, and the
court recounted those arrangements in the contempt
order. The district court thus appreciated and accepted
Velcera’s account regarding the formal legal and business
relationships behind PetArmor Plus; its view simply
diverged from Velcera’s narrative as to the true nature of
those relationships: “Clever lawyers cannot shield the
true substance of the contumacious conduct, no matter
how many different entities attempt to launder Cipla’s
BASF AGRO v. CIPLA LIMITED 38

fingerprints off the product.” Contempt Order, 2011 WL
2489753, at *6.
Our task on appeal is not to determine whether that
factual conclusion was correct, but rather whether it was
clearly erroneous. Additive Controls II, 154 F.3d at 1351
(“We review . . . factual findings in contempt proceedings
for clear error.”). Conclusive documentary evidence on
issues rooted in subjective intent is not always readily
apparent, but here the district court considered the com-
plex, multilayered relationships that linked Velcera and
Cipla in the production of PetArmor Plus. In view of both
parties’ admitted knowledge of the injunction and their
obvious incentives to evade it, the district court inter-
preted those relationships as designed primarily to obfus-
cate illicit and intentional concerted action rather than as
bona fide, constructive business arrangements. Having
reviewed the same record, we do not view that conclusion
as clearly erroneous, and Velcera’s arguments and self-
serving testimonial evidence to the contrary are insuffi-
cient to persuade us otherwise. Accordingly, we affirm
the district court’s decision to hold Velcera in contempt as
a non-party working in active concert with Cipla to violate
the 2008 injunction.
VI
Finally, Appellants argue that even if they violated
the district court’s 2008 injunction by bringing PetArmor
Plus to market in the United States, it was nevertheless
inappropriate to permanently enjoin sales of PetArmor
Plus in the contempt judgment because, inter alia, the
balance of hardships allegedly weighs in their favor and
Merial allegedly failed to establish irreparable injury. See
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 390
(2006).
39 BASF AGRO v. CIPLA LIMITED

On the balance of hardships, Velcera contends that
the district court ignored its small size relative to Merial,
which, if properly considered, would tip the balance of
hardships in its favor. While an injunction would have a
crippling effect on its business, Velcera suggests that
continued infringing sales of PetArmor Plus “would not
seriously threaten Merial’s future.” The district court,
however, expressly considered and ultimately discounted
that argument, 8 as was properly within its discretion. As
we have noted, “[o]ne who elects to build a business on a
product found to infringe cannot be heard to complain if
an injunction against continuing infringement destroys
the business so elected.” Broadcom Corp. v. Qualcomm
Inc., 543 F.3d 683, 704 (Fed. Cir. 2008); see also Polaroid
Corp. v. Eastman Kodak Co., No. 76-1634-Z 1985, U.S.
Dist. LEXIS 15003, at *6, 9 (D. Mass. Oct. 11, 1985) (“To
the extent that Kodak has purchased that success at
Polaroid’s expense, it has taken a ‘calculated risk’ that it
might infringe existing patents. . . . Public policy favors
the innovator, not the copier.”). As to irreparable harm,
the district court concluded that the introduction of Pe-
tArmor Plus as a generic competitor to Frontline Plus
would result in considerable lost market share and price
erosion, thus favoring the entry of a permanent injunc-
tion. That does not amount to clear error, particularly in
view of evidence that Velcera’s marketing strategy was
geared specifically to target Frontline Plus by touting
PetArmor Plus as a cheaper but otherwise equal alterna-
tive. We therefore decline to disturb the district court’s

8
See Contempt Order, 2011 WL 2489753, at *15
(“In this case, the law requires the Court to issue a ruling
with potentially devastating consequences for Velcera. To
fail to follow the law, however, and favor Velcera because
of personal sympathy toward the plight of a fledgling
company, would be exponentially more tragic.”).
BASF AGRO v. CIPLA LIMITED 40

injunction against the further infringing distribution of
PetArmor Plus.
CONCLUSION
In sum, we conclude that (1) the 2008 default judg-
ment against Cipla rested on a valid exercise of personal
jurisdiction; (2) the district court did not abuse its discre-
tion by declining to stay the contempt proceedings in view
of the then-pending Delaware action; (3) the district court
did not clearly err in determining that PetArmor Plus
infringes the ’329 patent and is not more than colorably
different from Cipla’s previously enjoined Protektor Plus
product; (4) Cipla’s extraterritorial role in the develop-
ment, production, and ultimate U.S. sale of PetArmor
Plus violated the district court’s injunction against in-
duced infringement of the ’329 patent; (5) Velcera’s ac-
tions bringing PetArmor Plus to market in concert with
Cipla qualified as contemptuous conduct despite its status
as a non-party to the 2008 default judgment; and (6) the
district court did not abuse its discretion in prohibiting
further sales of PetArmor Plus. We have considered each
of the remaining arguments advanced by the Appellants
and find them to be without merit. Because we find no
reversible error in our review of the contempt proceed-
ings, we affirm the judgment of the district court.
AFFIRMED
 United States Court of Appeals
for the Federal Circuit
__________________________

MERIAL LIMITED AND MERIAL SAS,
Plaintiffs-Appellees,
and
BASF AGRO B.V.,
Plaintiff,
v.
CIPLA LIMITED,
Defendant-Appellant,
and
VELCERA, INC. AND FIDOPHARM, INC.,
Defendants-Appellants,
and
ARCHIPELAGO SUPPLIERS, ARROWTARGET
ENTERPRISES LTD.,
GENERIC PETMEDS, INHOUSE DRUGSTORE,
LISA PERKO,
PETCARE PHARMACY, AND PETMEDS R US,
Defendants.
__________________________

2011-1471, -1472
__________________________

Appeals from the United States District Court for the
Middle District of Georgia in Case No. 07-CV-0125, Judge
Clay D. Land.
BASF AGRO v. CIPLA LIMITED 2

__________________________

SCHALL, Circuit Judge, dissenting.
Because I believe that the United States District
Court for the Middle District of Georgia erred in not
allowing Cipla Limited (“Cipla”) to designate the North-
ern District of Illinois as a substitute forum for suit
against it, I respectfully dissent from the decision of the
majority affirming the district court’s exercise of personal
jurisdiction over Cipla. I would reverse the decision of the
court and would vacate the contempt order and underly-
ing default judgment against Cipla. I also would vacate
the injunction against Cipla, Velcera, Inc. (“Velcera”), and
Fidopharm, Inc. (“Fidopharm”). Finally, I would remand
to the district court with the instruction that it transfer
the case to the United States District Court for the North-
ern District of Illinois.
I.
In the district court, Cipla responded to Merial Lim-
ited’s and Merial SAS’s (collectively, “Merial”) motion for
contempt by moving to vacate the 2008 default judgment
against it. In its motion, Cipla argued that the judgment
was void because, when it was entered, Cipla was not
subject to the personal jurisdiction of the court. In re-
sponse to the motion, Merial alleged, for the first time,
Rule 4(k)(2) as an alternate basis for jurisdiction. In
ruling on Cipla’s motion, although the district court
determined that, in 2008, Cipla had not been subject to
personal jurisdiction under Georgia’s long-arm statute, it
determined that Cipla had been subject to personal juris-
diction under Rule 4(k)(2). Contempt Order, 2011 WL
2489753, at *9.
The district court first noted that, when Cipla was
sued in 2007, it did not designate a substitute forum in
3 BASF AGRO v. CIPLA LIMITED

which the action could be brought, and that it was not
until Cipla filed its reply in response to Merial’s opposi-
tion to its motion to vacate the default judgment that it
designated Illinois as a substitute forum. Id. at *8.
Under these circumstances, the court stated, it was not
enough that Cipla now consented to personal jurisdiction
in Illinois. Rather, it was necessary to determine whether
suit could have been brought in Illinois in 2007:
The Court finds that Cipla’s “after the fact” will-
ingness to consent to jurisdiction in Illinois so that
it may vacate a previously entered default judg-
ment is not sufficient to support a finding that it
could have been sued in another state and thus
avoid Rule 4(k)(2) jurisdiction. Instead the Court
finds that Rule 4(k)(2) requires a determination of
whether an Illinois court could have exercised
personal jurisdiction over Cipla at the time the
Complaint in this action was filed absent consent
to jurisdiction by Cipla.
Id. at *9. See also id. (“The Court finds that the proper
inquiry in a case where a defendant seeks to avoid a
default judgment due to lack of personal jurisdiction by
designating a forum where it is subject to jurisdiction
pursuant to Rule 4(k)(2) is to determine whether the
defaulted action could have been brought in that desig-
nated forum in the first place under that forum’s long-arm
jurisdiction.”). Examining what it understood to be the
state of Cipla’s contacts with Illinois in 2007, the court
concluded that Merial had carried its burden “of demon-
strating that Cipla would not have been subject to per-
sonal jurisdiction in . . . 2007 in Illinois under Illinois
law.” Id. Accordingly, the court found that Cipla “was
not subject to any state’s courts of general jurisdiction
under Rule 4(k)(2).”
BASF AGRO v. CIPLA LIMITED 4

II.
In affirming the decision of the district court, the ma-
jority observes that it “need not decide . . . the general
requirements for a defendant to prevent the application of
Rule 4(k)(2) by consenting to suit in another jurisdic-
tion . . . .” Maj. op. at 15. The majority states that “it
suffices in this case to hold that a defendant, like Cipla,
challenging a prior default judgment may not do so by
naming another forum that would not have had an inde-
pendent basis for jurisdiction at the time of the original
complaint.” Id. Starting from that premise, the majority
agrees with the district court that, Cipla’s consent not-
withstanding, it was necessary to determine whether, in
2007, personal jurisdiction over Cipla existed under the
Illinois long-arm statute, and the majority finds no error
in the district court’s analysis under that statute. Maj.
op. at 16-17. Significantly, the majority rejects Cipla’s
argument that it was entitled to rely on the allegations in
Merial’s 2007 complaint, which did not mention Rule
4(k)(2) as a basis for personal jurisdiction, but, instead,
recited jurisdiction based solely upon Georgia’s long-arm
statute. Complaint at ¶14, Merial Ltd. v. Cipla Ltd., No.
3:07-CV-125 (CDL) (M.D. Ga. Nov. 13, 2007). The major-
ity reasons that
[r]egardless of the specific allegations in the 2007
complaint, Cipla should have apprehended that a
Rule 4(k)(2) inquiry might arise, particularly as a
foreign company believing itself to be outside the
reach of the forum state’s long-arm statute. Fur-
thermore, even though Cipla’s initial belief that
the complaint recited an incorrect basis for juris-
diction was ultimately vindicated, that issue re-
mained an open question at the time, and Cipla
had the option of filing a pre-answer motion under
Rule 12(b)(2) to settle all issues of personal juris-
5 BASF AGRO v. CIPLA LIMITED

diction up front. Cipla instead chose to do noth-
ing, and it must bear the consequences of that de-
cision.
Maj. op. at 20.
III.
I am dissenting because, in my view, the majority af-
firms a decision of the district court which rests upon two
fundamental errors. As I explain below, I believe that the
district court erred in holding that Cipla could not desig-
nate Illinois as a substitute forum because it had failed to
do so in 2007. I also believe that the district court erred
in requiring a determination that the 2007 action could
have been brought in Illinois in the first place under the
Illinois long-arm statute.
A.
Turning to the first point, I begin with the principle,
which the majority recognizes, that “[a] defendant is
always free to ignore the judicial proceedings, risk a
default judgment, and then challenge that judgment on
jurisdictional grounds in a collateral proceeding.” Ins.
Corp of Ireland, Ltd. v. Compagnie des Bauxites de
Guinee, 456 U.S. 694, 706, 102 S. Ct. 2099, 2106, 72 L. Ed.
2d 492, 504 (1982). See Baragona v. Kuwait Gulf Link
Transp. Co., 594 F.3d 852, 854-55 (11th Cir. 2010) (hold-
ing that defendants had not waived personal jurisdiction
defense to default judgment despite allegations of defen-
dants’ “’lawyerly gamesmanship’ in ignoring valid service,
retaining counsel in the United States, [and] monitoring
court proceedings”); Oldfield v. Pueblo De Bahlia Lora,
S.A., 558 F.3d 1210 (11th Cir. 2009) (vacating default
judgment because of lack of personal jurisdiction); Jack-
son v. FIE Corp., 302 F.3d 515, 523 (5th Cir. 2002) (“[A]
party’s right to object to personal jurisdiction is waived
BASF AGRO v. CIPLA LIMITED 6

under Rule 12(h) [of the Federal Rules of Civil Procedure]
if such party fails to assert that objection in his first
pleading or general appearance. But a party’s right to
contest personal jurisdiction is not waived by his failure
to appear at all.”) (footnote omitted); Foster v. Arletty 3
Sarl, 278 F.3d 409, 413 (4th Cir. 2002) (citing Ins. Corp. of
Ireland, Ltd.); Practical Concepts, Inc. v. Republic of
Bolivia, 811 F.2d 1543, 1547 (D.C. Cir. 1987) (“When [a]
person [named as a defendant] kn[o]w[s] about the action
but perceive[s] that the court lack[s] territorial or subject
matter jurisdiction, he is given a right to ignore the
proceeding at his own risk but to suffer no detriment if his
assessment proves correct.”) (quoting Restatement (Sec-
ond) of Judgments § 65, cmt. b (1982)).
In my view, for the following reasons, this principle
applies with particular force in this case: (1) Merial at all
times had the burden of making out a prima facie case of
personal jurisdiction over Cipla. See Touchcom, Inc. v.
Bereskin & Parr, 574 F.3d 1403, 1410 (Fed. Cir. 2009)
(holding that in the absence of an evidentiary hearing,
plaintiff must make a prima facie showing of personal
jurisdiction); Stubbs v. Wyndham Nassau Resort & Crys-
tal Palace Casino, 447 F.3d 1357, 1360 (11th Cir. 2006)
(Plaintiff “has the burden of establishing a prima facie
case of personal jurisdiction.) (citing Meier ex. rel. Meier v.
Sun Int’l Hotels, Ltd., 288 F.3d 1264, 1268-69 (11th Cir.
2002)); RAR, Inc. v. Turner Diesel, Ltd., 107 F.3d 1272,
1276 (7th Cir. 1997) (“The plaintiff, moreover, has the
burden of demonstrating the existence of personal juris-
diction.); (2) jurisdiction over Cipla under Georgia’s long-
arm statute was the sole basis for personal jurisdiction
asserted by Merial in its 2007 complaint; (3) it has been
determined – and Merial has not challenged the determi-
nation – that personal jurisdiction over Cipla did not lie
under Georgia’s long-arm statute, which, again, was the
7 BASF AGRO v. CIPLA LIMITED

sole basis asserted in the 2007 complaint; and (4) it was
not until Merial filed its response to Cipla’s motion to
vacate that Merial invoked Rule 4(k)(2), at which point
Cipla promptly designated Illinois as a substitute forum.
See Oldfield, 558 F.3d at 1218 n.22 (implicitly recognizing
that, even after a default judgment, an alternative forum
may be identified). I thus believe that the district court
erred in penalizing Cipla for not designating Illinois as a
substitute forum prior to the time Rule 4(k)(2) was first
asserted by Merial. Put most simply, I believe that be-
cause Merial had the burden of establishing personal
jurisdiction and because Cipla was entitled to ignore what
it viewed as a defective basis for such jurisdiction stated
in the 2007 complaint, it was error not to allow Cipla to
designate a substitute forum the first time Rule 4(k)(2)
was asserted as the ground for personal jurisdiction over
it.
The district court criticized Cipla – and the majority
joins in that criticism – for not having sought to consent
to jurisdiction in the Northern District of Illinois when it
was sued in 2007. Thus, the district court looked askance
at what it characterized as “Cipla’s ‘after the fact’ willing-
ness to consent to jurisdiction in Illinois so that it may
vacate a previously entered default judgment.” Contempt
Order, 2011 WL 2489753, at *9. For its part, as noted
above, the majority states that “Cipla should have appre-
hended that Rule 4(k)(2) might arise” and that Cipla “had
the option of filing a pre-answer motion under Rule
12(b)(2) to settle all issues of personal jurisdiction.” Maj.
Op. at 20. Finally, the majority points to Touchcom, 574
F.3d at 1415, and states that, in that case, “we held that
Rule 4(k)(2) applied even though it had never been raised
at any point prior to appeal, much less recited as a basis
for jurisdiction in the plaintiffs’ original complaint.” Maj.
op. at 21.
BASF AGRO v. CIPLA LIMITED 8

The difficulty I have with both the district court’s and
the majority’s position is that, I believe, both positions
ignore what was said in Ins. Corp. of Ireland, Ltd.: “A
defendant is always free to ignore the judicial proceed-
ings, risk a default judgment, and then challenge that
judgment on jurisdictional grounds in a collateral pro-
ceeding.” 456 U.S. at 706, 102 S. Ct. at 2106, 72 L. Ed. 2d
at 504. That is precisely what Cipla did here. In other
words, both the district court and the majority are critical
of Cipla for following a course of action which the Su-
preme Court has expressly stated was available to it. In
my view, this is incorrect.
I also do not agree with the majority’s view that “Ci-
pla should have apprehended that Rule 4(k)(2) might
arise,” which, I think, ignores the allegations in the 2007
complaint. In that complaint, Merial alleged that the
defendants had contacts with Georgia sufficient to sup-
port personal jurisdiction under Rule 4(k)(1) by virtue of
their sales to the state of Georgia. 1 These factual allega-
tions precluded the assertion of personal jurisdiction
under Rule 4(k)(2), which requires that “the defendant is
not subject to jurisdiction in any state’s courts of general
jurisdiction.” F.R.C.P. 4(k)(2)(A). I do not believe Cipla
should have been on notice of the application of Rule
4(k)(2) when the allegations in the complaint precluded
the application of Rule 4(k)(2).
At the same time, I am not persuaded by the major-
ity’s reliance on Rule 12(b)(2) and its citation to Touch-
com. It is true that Rule 12(b)(2) states that a party “may
assert” by motion the defense of lack of personal jurisdic-

1
Notably, in 2007, Merial elected not to plead the
application of Rule 4(k)(2) in the alternative, as specifi-
cally contemplated by this Court in Touchcom. 574 F.3d
at 1415.
9 BASF AGRO v. CIPLA LIMITED

tion. The critical words are “may assert,” however. The
rule is not mandatory. As discussed, Cipla had the op-
tion, which it pursued, of ignoring the 2007 suit in Geor-
gia and later challenging any default judgment in a
collateral proceeding. As far as Touchcom is concerned, I
have no quarrel with the majority’s reading of the case
insofar as it indicates that Rule 4(k)(2) may apply
whether or not it is raised by the parties. But that is not
the issue here. I see no error in the district court having
allowed Merial to assert Rule 4(k)(2) for the first time in
the contempt proceeding. The error I see was not allow-
ing Cipla, in the face of that assertion, to designate a
substitute forum.
B.
As noted above, the district court stated that “Rule
4(k)(2) requires a determination of whether an Illinois
court could have exercised personal jurisdiction over Cipla
at the time the Complaint in this action was filed absent
consent to jurisdiction by Cipla.” Contempt Order, 2011
WL 2489753, at *9. The majority agrees with the district
court; it states:
Contrary to Cipla’s contentions, a defendant can-
not defeat Rule 4(k)(2) by simply naming another
state; the defendant’s burden under the negation
requirement entails identifying a forum where the
plaintiff could have brought suit – a forum where
jurisdiction would have been proper at the time of
filing, regardless of consent. Consistent with that
obligation, a defendant does not identify “a more
appropriate state” by suggesting an alternative
form with no basis for personal jurisdiction but its
consent.
Maj. op. at 15. Thus, both the district court and the major-
ity take the position that, Cipla’s consent to jurisdiction in
BASF AGRO v. CIPLA LIMITED 10

Illinois notwithstanding, it was necessary to determine
that suit could have been brought in Illinois in the first
place under its long-arm statute. I do not believe that the
law supports this requirement.
In Touchcom, we stated that “a court is entitled to use
Rule 4(k)(2) to determine whether it possesses personal
jurisdiction over the defendant unless the defendant
names a state in which the suit can proceed.” 574 F.3d at
1414. We then proceeded to adopt the approach set forth
by the Seventh Circuit in ISI International, Inc. v. Borden
Ladner Gervais LLP, 256 F.3d 548, 551-52 (7th Cir. 2001).
There, the court stated:
A defendant who wants to preclude the use of
Rule 4(k)(2) has only to name some other state in
which the suit could proceed. Naming a more ap-
propriate state would amount to a consent to per-
sonal jurisdiction there (personal jurisdiction
unlike federal subject-matter jurisdiction is waiv-
able). If, however, the defendant contends that he
cannot be sued in the forum state and refuses to
identify any other where suit is possible, then the
federal court is entitled to use Rule 4(k)(2).
256 F.3d at 552 (citations omitted). See Touchcom, 574
F.3d at 1415 (“We conclude that the approach articulated
by the Seventh Circuit is . . . in tune with the purposes
behind the enactment of Rule 4(k)(2).”). See also Bradford
Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1272 (Fed.
Cir. 2010) (citing Touchcom and stating that the Federal
Circuit has “adopted the Seventh Circuit’s approach that
allows a district court to use Rule 4(k)(2) whenever a
foreign defendant contends that he cannot be sued in the
forum state and refuses to identify any other state where
suit is possible.” (emphasis added).
11 BASF AGRO v. CIPLA LIMITED

The reason I disagree with the district court and the
majority is that I am unable to identify any support for
imposing the requirement that, before a party in Cipla’s
situation may consent to personal jurisdiction in a substi-
tute forum, it must be demonstrated that suit could have
been brought in that forum in the first place absent the
party’s consent. That such support is lacking is not, I
think, surprising. In Ins. Corp. of Ireland, Ltd., the
Supreme Court discussed the difference between subject-
matter jurisdiction and personal jurisdiction. After noting
that subject-matter jurisdiction is an Article III require-
ment and “functions as a restriction on federal power and
contributes to the characterization of the sovereign[,]” the
Court stated that “no action of the parties can confer
subject-matter jurisdiction upon a federal court. Thus,
the consent of the parties is irrelevant.” 456 U.S. at 702,
102 S. Ct. at 2104, 72 L. Ed. 2d at 500-01. On the other
hand, the Court stated, “[t]he requirement that a court
have personal jurisdiction flows not from [Article III] but
from the Due Process Clause. The personal jurisdiction
requirement recognizes and protects an individual liberty
interest. It represents a restriction on judicial power not
as a matter of sovereignty, but as a matter of individual
liberty.” Id., 102 S. Ct. at 2104, 72 L. Ed. 2d at 501 (foot-
note omitted). The Court concluded that “[b]ecause the
requirement of personal jurisdiction represents first of all
an individual right, it can, like other such rights, be
waived.” Id. at 703, 102 S. Ct. at 2105, 72 L. Ed. 2d at
502. Notably, after making this statement, the Court
cited to McDonald v. Mabee, 243 U.S. 90, 37 S. Ct. 343, 61
L. Ed. 608 (1917), where, it stated, “the Court indicated
that regardless of the power of the State to serve process,
an individual may submit to the jurisdiction of the court
by appearance.” Id., 102 S. Ct. at 2105, 72 L. Ed. 2d at
502. Significantly, in ISI International, whose approach
we have adopted, the court relied on this aspect of per-
BASF AGRO v. CIPLA LIMITED 12

sonal jurisdiction when it stated that “[a] defendant who
wants to preclude use of Rule 4(k)(2) has only to name
some other state in which suit could proceed. Naming a
more appropriate state would amount to a consent to
personal jurisdiction there (personal jurisdiction unlike
federal subject matter jurisdiction is waivable).” 256 F.3d
at 552. See, e.g., Bradford, 603 F.3d at 1271-2 (stating
that jurisdiction may lie over defendant simply by its
acknowledgment in the briefing on appeal that it is sub-
ject to jurisdiction in Michigan); Knowlton v. Allied Van
Lines, Inc., 900 F.2d 1196, 1200 (8th Cir. 1990) (stating
“consent is a valid basis of personal jurisdiction, and
resort to minimum-contacts or due process analysis to
justify the jurisdiction is unnecessary.” (citing Ins. Corp.
of Ireland, Ltd., 456 U.S. at 703, 102 S. Ct. at 2105, 72 L.
Ed. 2d at 502.); SEC v. Blazon Corp., 609 F.2d 960, 965
(9th Cir. 1979) (“A defendant cannot waive his right to
assert a lack of subject matter jurisdiction, but he can
confer jurisdiction over his person upon a court otherwise
lacking that jurisdiction by expressly consenting to it.”).
In my view, because the rule that allows a party to defeat
Rule 4(k)(2) jurisdiction by designating a substitute forum
is founded upon the proposition that personal jurisdiction
is waivable, it is not necessary to independently establish
that suit could lie in the substitute forum absent the
designation. I thus believe that the district court erred in
imposing such a requirement in this case and that the
majority, in turn, errs in endorsing what the district court
did.
I believe the Seventh Circuit’s opinion in ISI Interna-
tional is instructive. There, neither party had raised the
issue of Rule 4(k)(2) before the district court. ISI, Int’l,
256 F.3d at 551. The Seventh Circuit stated:
ISI International did not rely on Rule 4(k)(2), but
S&A's appellate lawyer was ready for the ques-
13 BASF AGRO v. CIPLA LIMITED

tions asked during the oral argument. When the
court inquired whether S&A would be subject to
personal jurisdiction in any other state (Califor-
nia, for example), counsel was noncommittal.
More discovery would be needed, counsel sug-
gested. But S&A does not need discovery to learn
its own acts. Nor is it apparent how more facts
could contribute to resolution of the question.
S&A had it within its power to knock out Rule
4(k)(2) by agreeing that it is subject to personal
jurisdiction in some other state. It proved unwill-
ing to do so. We therefore conclude that under
Rule 4(k)(2) jurisdiction is proper in the United
States District Court for the Northern District of
Illinois.
Id. at 552. Thus, consent to jurisdiction by defendant’s
counsel would have been sufficient to defeat Rule 4(k)(2)
jurisdiction. 2 The Seventh Circuit rejected the need for
further factual inquiry as the consent of defendant’s
counsel was all that was required.
It appears that the majority arrives at its holding
based upon the appearance of the words “could proceed”
and “appropriate” in ISI International, see 256 F.3d at
552, and the words “could have brought suit” and “suit-
able” in Touchcom, see 574 F.3d at 1415. Reading the

2
The quoted passage also, I believe, contradicts the
assertion of the district court in this case that consent
must occur at the time the complaint is filed. In ISI
International, the question of consent necessarily arose at
a time after the complaint was filed as neither party
raised the issue of Rule 4(k)(2) before the district court.
Thus, the Seventh Circuit implicitly acknowledges that
defendants could defeat Rule 4(k)(2) by consenting to
jurisdiction elsewhere at some time after the complaint
was filed.
BASF AGRO v. CIPLA LIMITED 14

relevant part of its opinion, see Maj. op. at 14-15, I under-
stand the majority to be taking the position that these
words support the requirement that, in this case, there be
a showing that suit could have been brought in Illinois in
the first place. I am unable to agree. I do not believe that
these words, standing alone, are enough to support en-
grafting this added requirement onto the Rule 4(k)(2)
procedure, especially where that procedure is founded
upon the principle that personal jurisdiction is a matter
that is waivable. In addition, I am unable to reconcile
this added requirement with the Seventh Circuit’s state-
ment that the consent of defendant’s counsel at oral
argument would have been sufficient to “knock out Rule
4(k)(2).” ISI, Int’l, 256 F.3d at 552.
The majority also expresses the concern that allowing
a party in Cipla’s situation to designate another forum
would allow the party to undo an adverse final judgment
and obtain “the chance to litigate from a clean slate.”
Maj. op. at 15-16. The majority’s desire to see litigation
brought to a conclusion is understandable. However, this
concern is present in every case where a default judgment
is challenged for lack of personal jurisdiction. I do not
believe this legitimate concern can trump the requirement
that a court have personal jurisdiction over a defendant
and the consequences that result when a judgment is
entered against that defendant in the absence of such
jurisdiction.
Moreover, allowing Cipla to designate an alternative
forum would aid in bringing this litigation to a conclusion.
If this case were transferred to the Northern District of
Illinois, Cipla would have two options, either respond to
the allegations and fully litigate the dispute or suffer the
consequences of a default judgment. Importantly, Cipla
would no longer be able to challenge a default judgment
15 BASF AGRO v. CIPLA LIMITED

for lack of personal jurisdiction, and Merial would have
the opportunity to fully press its case.
IV.
For the foregoing reasons, I believe that the district
court erred in not allowing Cipla to designate the North-
ern District of Illinois as a substitute forum for suit
against it. I therefore would reverse the decision of the
court and would hold that the court lacked personal
jurisdiction over Cipla under Rule 4(k)(2). Consequently,
I (1) would vacate the contempt order and underlying
default judgment against Cipla; (2) would vacate the
injunction against Cipla, Velcera, and Fidopharm; and (3)
would remand with the instruction that the court transfer
the case to the Northern District of Illinois. Accordingly, I
respectfully dissent.