Grober v. Mako Products, Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

DAVID GROBER,
Plaintiff-Appellant,
AND

VOICE INTERNATIONAL, INC.,
Plaintiff-Appellant,
v.
MAKO PRODUCTS, INC., AIR SEA LAND
PRODUCTIONS, INC.,
CINEVIDEOTECH, INC., SPECTRUM EFFECTS,
INC.,
AND BLUE SKY AERIALS, INC.,
Defendants-Cross Appellants,
AND

DOES 1-10, JORDAN KLEIN, SR., JORDAN KLEIN,
JR.,
AND OPPENHEIMER CINE RENTAL, LLC,
Defendants.
__________________________

2010-1519, -1527
__________________________

Appeal from the United States District Court for the
Central District of California in Case No. 04-CV-8604,
Judge Jack Zouhary.
GROBER v. MAKO PRODUCTS 2

_________________________

Decided: July 30, 2012
_________________________

JON E. HOKANSON, Lewis, Brisbos, Bisgaad & Smith
LLP, of Los Angeles, California, argued for all plaintiffs-
appellants. On the brief was DAVID GROBER, of Marina
Del Rey, California. Of counsel was EDWIN P. TARVER
Lauson & Tarver, LLP, of El Segundo, California.

BRIAN W. WARWICK, Varnell & Warwick. P.A., of The
Villages, Florida, argued for defendants-cross appellants.
__________________________

Before RADER, Chief Judge, PROST and MOORE, Circuit
Judges.
RADER, Chief Judge.
The United States District Court for the Central Dis-
trict of California granted summary judgment of non-
infringement to the defendants (Mako Products, Inc.; Air
Sea Land Productions, Inc.; CineVideoTech, Inc.; Spec-
trum Effects, Inc.; Blue Sky Aerials, Inc.; Jordan Klein’s,
Sr.; Jordan Klein’s, Jr.; and Oppenheimer Cine Rental,
LLC) on the patent owned by David Grober and Voice
International, Inc. (“Appellants”). Several defendants
cross-appeal the district court’s denial of attorney’s fees.
For the reasons recited below, this court affirms-in-part,
vacates-in-part, and remands to the district court.
I.
Appellant David Grober invented a platform that sta-
bilizes a camera for filming motion pictures from moving
vehicles. This technology, known in the entertainment
industry as the Perfect Horizon, won Grober an Academy
3 GROBER v. MAKO PRODUCTS

Award in technical achievement. He also received U.S.
Patent No. 6,611,662 (“’662 patent”), entitled “Autono-
mous Self Leveling, Self Correcting Stabilized Platform,”
for this technical advance. The invention “compensate[s]
for motion caused by waves, currents, wind, and other
motion during land, air, and sea operations of a camera.”
’662 patent Abstract.
For the purposes of this appeal, claim 1 is representa-
tive:
1. A stabilized platform comprising:
a payload platform for supporting an article to be
stabilized;
a base;
a stabilizing system connected between the payload
platform and the base, the stabilizing system in-
cluding means for moving the payload platform
with respect to the base about two different axes for
providing the payload platform with stabilization
in two dimensions;
a first sensor package for determining, in two trans-
verse directions, motion of a moving object on
which the stabilized platform is mounted;
a second sensor package comprising sensor means for
sensing a position of the payload platform and for
providing information based on the position of the
payload platform relative to a predetermined po-
sition; and
a control system connected to the means for moving
for stabilizing the platform in response to informa-
tion provided by the first sensor package and the
second sensor package, wherein the second sen-
sor package is fixed to the payload platform,
and the first sensor package is fixed with respect to
the base.
GROBER v. MAKO PRODUCTS 4

’662 patent col. 7 ll. 50-col. 8 ll. 6 (emphasis added).

Fig. 2 illustrates the side view of the platform 100
with its stabilizing technology along two axes. ’662 patent
col. 3 ll. 6-8. On one axis, the stabilized platform 100
compensates for unwanted movement. This compensation
occurs with the assistance of a first drive mechanism 10,
which is mounted on a fixed side plate 8. The drive
mechanism 10 includes a motor and, potentially, a gear
box. The preferred embodiments teach an encoder at-
tached to the motor to give feedback based on the position
of the bottom platform 2. This mechanism provides one of
the two stabilized axes. A protective housing 16 encloses
the drive mechanism 10 (including the motor, gear box,
encoder, and associated wiring). Id. at col. 3 ll. 14-31.
The second stabilizing mechanism involves platform
22 which holds the camera. A second drive mechanism 30
attaches to this mounting platform and stabilizes the
platform along another axis. Figs. 2 and 3 show that the
second drive mechanism 30—fixed to the bottom platform
5 GROBER v. MAKO PRODUCTS

2—mounts orthogonally (i.e., perpendicularly) to the first
drive mechanism 10. In sum, the second drive shaft 24 is
orthogonal to the first drive shaft 4 to permit two-
dimensional stabilization of the camera platform 22. Id.
at col. 3 ll. 31-65. Fig. 2 shows the stabilized platform 100
in an upright orientation with the ability to compensate
for pitch and roll of the vehicle 64. Id. at col. 4 ll. 6-11.

The ’662 patent further teaches a method to achieve a
third axis of stabilization along the azimuth axis. Fig. 3
compensates for azimuth motion by adding a third set of
orthogonally positioned drive components to the stabilized
platform 100. This third drive mechanism stabilizes the
platform with input from sensor packages A and B.
Sensor package A appears on the housing 82, or other
disclosed areas; package B on the camera platform 22. Id.
at col. 5 ll. 26-39; col. 4 ll. 25-27.
GROBER v. MAKO PRODUCTS 6

David Grober and Voice International, Inc. sued
Cross-Appellants in October 2004 alleging that their
manufacture, sale, and lease of a movie stabilization
device known as the MakoHead infringed the ’662 patent.
Cross-Appellants then commenced an inter partes reex-
amination of the ’662 patent before the U.S. Patent and
Trademark Office (“PTO”). The district court stayed the
infringement suit.
In 2006, the trial court lifted the stay and authorized
commencement of discovery. The district court held a
Markman hearing and construed the claim term “payload
platform.” Based on this interpretation, the district court
sua sponte concluded that the MakoHead did not infringe
the ’662 patent. Appellants filed a motion to vacate the
district court’s summary judgment order, which was
denied.
Cross-Appellants sought attorneys fees as sanctions
under Rule 11 and attorney fees under 35 U.S.C. § 285.
The district court declined to award attorneys fees under
either rationale. The district court issued its final judg-
ment of non-infringement and the Appellants timely
appealed to this court, which has jurisdiction under 28
U.S.C. §§ 1292(c)(1) and 1295(a)(1).
The PTO completed the reexamination of the ’662
patent after Appellants’ notice of appeal and confirmed
patentability of independent claims 1 and 38 as well as
several dependent claims.
II.
This court reviews a district court’s claim construction
without deference. Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). In this case,
the district court erred in construing the claim term
“payload platform” to mean “the horizontal plate, piece of
7 GROBER v. MAKO PRODUCTS

surface upon which the device (e.g., a camera) is directly
mounted upon or affixed to.” Grober v. Mako Prods., Inc.,
No. 2:04-CV-04-8604, 2009 WL 1587158, at *12 (C.D. Cal.
June 4, 2009) (“Markman Order”).
Before the Markman hearing, the parties proposed
competing constructions of the term “payload platform.”
The district court found significant differences in those
proposals. Id. at *3. Most notably, Cross-Appellants
limited the disputed term to a “horizontal surface or
plate” upon which the device is mounted or affixed.
Appellants, on the other hand, included the three-
dimensional “supporting structure” of said “horizontal
surface or plate.” Id. The district court relied heavily on
the reexamination history of the ’662 patent where Grober
narrowed the claims “in order to avoid a significant body
of prior art.” Id. at *2. The prior art was U.S. Patent No.
5,922,039 to Welch et al. (“Welch patent”) and U.S. Patent
No. 4,143,312 to Duckworth et al. (“Duckworth patent”).
The trial court explained: “an understanding of . . . [the]
specific structural aspect of the prior art . . . in relation to
the ‘payload platform’ provides meaningful insight into
what part of the ’662 patent is sought to be captured
through use of that term . . . .” Id. at *5. In view of the
Welch and Duckworth patents, the district court found
“the defining characteristic of the ’662 patent . . . was the
fact that the ’662 patent ‘requires the second sensor
package [be] fixed to the payload platform.’” Id. The
district court construed the claim term “payload platform”
to mean “the horizontal plate, piece of surface upon which
the device (e.g., a camera) is directly mounted upon or
affixed to.” Id. at *12.
This court generally gives claim language its “ordi-
nary and customary meaning.” Phillips v. AWH Corp.,
415 F.3d 1303, 1312-1313 (Fed. Cir. 2005) (en banc)
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
GROBER v. MAKO PRODUCTS 8

1576, 1582 (Fed. Cir. 1996)). This customary meaning
encompasses the understanding of an artisan of ordinary
skill in the context of the inventive art. Often this court
discerns that context in the claims themselves and the
specification, and occasionally the prosecution history as
well. Phillips, 415 F.3d at 1313. When a patentee makes
a “clear and unmistakable disavowal of scope during
prosecution,” a claim’s scope may be narrowed under the
doctrine of prosecution disclaimer. See Computer Docking
Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75 (Fed.
Cir. 2008). Statements made during reexamination can
also be considered in accordance with this doctrine.
Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir.
2012). However, while the prosecution history can inform
whether the inventor limited the claim scope in the course
of prosecution, it often produces ambiguities created by
ongoing negotiations between the inventor and the PTO.
Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed.
Cir. 2009). Therefore, the doctrine of prosecution dis-
claimer only applies to unambiguous disavowals. Id.
As noted earlier, the trial court emphasized Grober’s
statements during reexamination of the ’662 patent. In
these statements, Grober distinguished his invention by
explaining that the prior art does not teach “the second
sensor package being fixed to the payload platform.” He
asserted that “Welch never uses the word ‘fixed to’ or
‘mounted on’ to describe his potentiometers [sensors] 27
and 29. They are clearly not ‘fixed to,’ and most definitely
not ‘wholly fixed to’ Platform Structure 18.” Regarding
Duckworth, Grober argued that it “clearly discloses [that
the sensor system] is not fixed to the payload platform [3]
as suggested by requestor and listed as part of the Exam-
iner's rejection.”
These statements during reexamination do not unam-
biguously focus on the characteristics of the “payload
9 GROBER v. MAKO PRODUCTS

platform,” let alone distinguish it from the prior art as
being a two-dimensional surface. Instead they refer to
the placement of the prior art sensors in relation to the
element identified by the examiner as the “payload plat-
form.” These statements do not address the characteris-
tics of the claimed “payload platform” limitation. Thus
these ambiguous statements do not disavow or even
clearly describe the structure of the claimed “payload
platform.” Therefore, this reexamination commentary
cannot fairly limit the characteristics of the claim term.
See Computer Docking, 519 F.3d at 1375 (“Prosecution
disclaimer does not apply . . . if the applicant simply
describes features of the prior art and does not distin-
guish the claimed invention based on those features.”).
The district court’s construction also considered
Grober’s statement:
“[Requestor] proposes that Welch's position sen-
sor(s) 27 and/or 29 are fixed to platform 18, the
equivalent of Grober's payload platform. This is
not supported by Welch's claims, specification or
figures. Welch's second sensor package is two dis-
tinctly separate sensors located in two separate
positions at the gimbal between the framework
parts. The parts are not attached or fixed to the
payload platform.”
Markman Order at *9. According to the district court,
“Grober argues that the structure on the Welch gimbal-
based device that is comparable to his payload platform
was FIG 1 item 18 (the Platform Structure) in the Welch
patent.” Id. The trial court erroneously inferred that
Grober’s reference to the reexamination requestors’
arguments (equating the prior art structures with the
claim elements) in effect adopted those arguments as his
definition of his invention. At no point, however, does
GROBER v. MAKO PRODUCTS 10

Grober adopt those arguments as an accurate description
of his invention. Grober distinguished the arguments but
did not admit that they properly characterized the inven-
tion.
This court has often stated that prosecution history
limits claim meaning when an applicant “clearly and
unmistakably” disclaims claim scope or meaning. See,
e.g., Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324,
1331 (Fed. Cir. 2012); Abbott Labs., 566 F.3d at 1289;
Computer Docking, 519 F.3d 1366, at 1375; Purdue
Pharma LP v. Endo Pharms., Inc., 438 F.3d 1123, 1136
(Fed. Cir. 2006). Grober’s statements were not an unam-
biguous disavowal that clearly and unmistakably dis-
claims claim scope or meaning. In this instance, the
reexamination history did not define or limit, let alone
clearly and unmistakably disclaim, claim scope. In con-
text, Grober’s statements do not limit or narrow the
“payload platform” to a “horizontal surface.” Rather these
statements show that Grober referenced three-
dimensional prior elements when discussing sensor
location in the prior art. In sum, Grober’s statements in
reference to the prior art did not narrow the meaning of
the patent. Thus, the district court’s claim construction
misread the context of the reexamination process and
improperly emphasized a general statement out of context
to limit the disputed claim term.
Placing this invention in its proper context, this court
finds no reason to limit the claim term “payload platform”
to a “horizontal surface.” As recited by claim 1, the “stabi-
lized platform compris[es]: a payload platform for sup-
porting an article to be stabilized.” ’662 patent col. 7 ll.
50-52. The specification refers to the “payload platform”
as a three-dimensional structure with hidden (or
“dashed”) lines in Figs. 2-5 and 13 under the item label 22
(called “camera mounting platform”). See id. at col. 3 ll.
11 GROBER v. MAKO PRODUCTS

31. Fig. 2 illustrates item 22 as a three-dimensional
structure for mounting a device (usually a camera). Fig. 3
also locates a sensor package B on item 22, id. at col. 5 ll.
29-31, and includes an optional riser 40 “to adjust a
height of the camera 42 [shown in Fig. 4] for ease of use,”
id. at col.6 ll.19-23. In sum, the patent consistently
depicts the “payload platform” as more than a “surface.”
See Phillips, 415 F.3d at 1314-15.
Accordingly, the claim language and specification
show that “payload platform” means “a three-dimensional
structure upon which the payload (e.g., a camera) is
directly mounted upon or affixed to.” Because this court
finds that the district court erred in its claim construction
of the term “payload platform,” this court vacates the
district court’s claim construction and remands for further
proceedings.
III.
Based on its claim construction, the district court im-
properly found that the MakoHead did not infringe the
’662 patent. The district court’s claim construction order
states: “Given that such a definition results in a finding
of non-infringement, the Court concludes its analysis on
this point and goes no further in construing the many
other terms offered for consideration by the parties in
their Markman briefs.” Markman Order at *12. In
response to Appellants’ motion for reconsideration, the
district court stated “that the parties agreed, should the
Court adopt defendants’ construction of ‘payload plat-
form,’ there would be no infringement by the accused
device . . . .” Grober v. Mako Prods., Inc., No. 2:04-CV-04-
8604, slip op. at 2 (C.D. Cal. Oct. 21, 2009); see also id. at
2-3 n.1. Further, the district court mentions in footnote 2
that it did not adopt “the literal verbiage” proposed by
GROBER v. MAKO PRODUCTS 12

Cross-Appellants but “the end result is the same.” Id. at
3 n.2.
Additionally, concerning the dispositive nature of the
proposed claim construction, defense counsel’s statements
at the Markman hearing were overly broad, if not mis-
leading. Specifically, regarding the “payload platform”
term, Defense counsel stated:
MR. WARWICK: . . .
On behalf of defendants we believe Your Honor
correct. Not that it will be dispositive exactly of
every claim because as you know most patent
cases focus down on one or two claims that are
really at issue. In this case the plaintiffs allege
we violated all 38 claims. . . . virtually every
claim except for maybe five or six require
the payload platform. You are exactly right the
payload platform is to me unique in this Markman
hearing portion of the case critical and will dis-
pose of many of the issues to come down one way
or the other.
THE COURT: Well, if the accused device does not
infringe on one of the claims then it’s no longer an
infringing device; correct?
MR. WARWICK: Correct, Your Honor, it has to
infringe on all the claims from our view
point.
Grober v. Mako Prods., Inc., No. 2:04-CV-04-8604, p. 8, ll.
9-25 (C.D. Cal. Nov. 3, 2008) (“Markman Hearing Tran-
script”) (emphasis added). This exchange conveys mis-
leading advice to the district court. This court’s precedent
is clear: a patent is infringed if a single claim is infringed.
See, e.g., Intervet America, Inc. v. Kee-Vet Labs., Inc., 887
F.2d 1050, 1055 (Fed. Cir. 1989); see also Z4 Techs., Inc.
13 GROBER v. MAKO PRODUCTS

v. Microsoft Corp., 507 F.3d 1340, 1356 (Fed. Cir. 2007)
(district court’s jury instruction paralleled language of 35
U.S.C § 271(a) by requiring, in-part, that the accused
infringing activity be “covered by at least one claim of a
patent, before the patent expires”).
This court reviews a district court’s decision concern-
ing summary judgment under the law of the regional
circuit. MicroStrategy, Inc. v. Bus. Objects, S.A., 429 F.3d
1344, 1349 (Fed. Cir. 2005). The United States Court of
Appeals for the Ninth Circuit reviews a grant of summary
judgment without deference. Burke v. County of Ala-
meda, 586 F.3d 725, 730 (9th Cir. 2009).
This court has stated that “district courts are widely
acknowledged to possess the power to enter summary
judgment sua sponte, so long as the losing party was on
notice that she had to come forward with all of her evi-
dence.” See, e.g., Int’l Visual Corp. v. Crown Metal Mfg.
Co., 991 F.2d 768, 770 (Fed. Cir. 1993) (quoting Celotex
Corp. v. Catrett, 477 U.S. 317 (1986)). However, the
district court’s power to enter summary judgment does
not allow it to bypass performing a complete patent
infringement analysis. Patent infringement requires a
two-step analysis. First, “the court determines the scope
and meaning of the patent claims asserted,” and then
compares the claims “to the allegedly infringing devices.”
Cybor, 138 F.3d at 1454. In this case, the district court
performed the first step. At that point, however, the
process hit a couple short circuits. In the first place, the
adopted claim construction did not entirely dispose of the
case because several claims did not include the construed
term. More important, the trial court did not place the
accused device alongside each asserted claim for a com-
plete comparison. See Intervet Inc. v. Merial Ltd., 617
F.3d 1282, 1292 (Fed. Cir. 2010) (remand to compare
properly construed claims to accused product claim by
GROBER v. MAKO PRODUCTS 14

claim). This court vacates the district court’s grant of
summary judgment of non-infringement.
Several discovery motions were pending when the dis-
trict court, sua sponte, found non-infringement. These
included motions to compel depositions of Jordan Klein,
Sr. and Jordan Klein, Jr. (collectively, “the Kleins”),
production of documents related to the accused device,
and re-designation of confidentiality designations. While
the district court found aspects of these motions persua-
sive, they were denied or denied-in-part in light of the
non-infringement determination. As this case returns to
the district court, the court will have the opportunity to
afford a proper, and not unduly expansive, scope of dis-
covery.
IV.
The district court properly dismissed the Kleins and
Oppenheimer Cine Rental, LLC. (“Oppenheimer”) for lack
of personal jurisdiction. Jordan Klein, Sr. and Jordan
Klein, Jr. are the only two shareholders of Mako Products,
Inc. (“Mako”), owning a 10 percent and 90 percent share,
respectively. Mako owns the MakoHead stabilizing
platform system, which it rents for use in movie and
television production. Mako is a Florida corporation, with
its only place of business in Florida. The Kleins are both
members of Mako’s board of directors and listed as the
only two “officer/director[s]” in Mako’s corporate records
with the state of Florida. The Kleins demonstrated the
MakoHead at a California trade show on behalf of Mako.
Oppenheimer is a rental company located in Washing-
ton that rents hundreds of products, including the Ma-
koHead, to the movie and television industry.
Oppenheimer advertises the MakoHead twice a year in
ICG, a nation-wide trade publication based in California,
as part of its lease agreement with Mako. As the district
15 GROBER v. MAKO PRODUCTS

court noted, one of Mako’s standard equipment lease
requirements requires that each lessee “actively market
the Mako equipment . . . in its territory” and the “lessee ‘.
. . is an independent contractor and is not an agent or
employee of [Mako].’” Grober v. Mako Prods., Inc., No.
2:04-CV-04-8604, slip op. at 4 (C.D. Cal. Aug. 29, 2008)
(“Jurisdiction Order”) (emphasis added by district court).
The advertisement lists Oppenheimer as the “North
West” contact for the MakoHead and two other “West
Coast” contacts. These same contacts are also listed on
Mako’s website. Oppenheimer has also exhibited other
products beyond the MakoHead at a California trade
show.
This court reviews a determination of personal juris-
diction without deference. Avocent Huntsville Corp. v.
Aten Int'l Co., 552 F.3d 1324, 1328 (Fed. Cir. 2008).
“Moreover, we apply Federal Circuit law because the
jurisdictional issue is ‘intimately involved with the sub-
stance of the patent laws.’” Id. (quoting Akro Corp. v.
Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995)). The facts
underlying a determination of personal jurisdiction re-
ceive review for clear error. Nuance Commc’ns, Inc. v.
Abbyy Software House, 626 F.3d 1222, 1230 (Fed. Cir.
2010).
When, as here, the district court makes its determina-
tion based on the record without an evidentiary hearing,
plaintiffs need only show a prima facie case for personal
jurisdiction. Elecs. For Imaging, Inc. v. Coyle, 340 F.3d
1344, 1349 (Fed. Cir. 2003). When analyzing this showing
after a motion to dismiss, the district court must accept
uncontroverted allegations in plaintiff’s complaint as true
and resolve any factual conflicts in plaintiff’s favor. Id.
A personal jurisdiction determination for an out-of-
state defendant is a two step inquiry: “whether a forum
GROBER v. MAKO PRODUCTS 16

state’s long-arm statute permits service of process and
whether assertion of personal jurisdiction violates due
process.” Autogenomics, Inc. v. Oxford Gene Tech. Ltd.,
566 F.3d 1012, 1017 (Fed. Cir. 2009) (quoting Genetic
Implant Sys., Inc. v. Core-Vent Corp., 123 F.3d 1455, 1458
(Fed. Cir. 1997)). California and federal due process
limitations are “coextensive,” and thus the inquiry col-
lapses into “whether jurisdiction comports with due
process.” Autogenomics, 566 F.3d at 1017 (quoting
Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir.
2001)).
There are two types of personal jurisdiction—general
and specific. In this case, the district court correctly
found that Appellants did not make a prima facie showing
of general jurisdiction. General jurisdiction arises when a
defendant maintains contacts with the forum state that
are sufficiently “continuous and systematic,” even when
the cause of action has no relation to those contacts. LSI
Indus. Inc. v. Hubbell Lighting, Inc., 232 F.3d 1369, 1375
(Fed. Cir. 2000) (citing Helicopteros Nacionales de Colom-
bia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984)).
The district court correctly found that it lacked gen-
eral jurisdiction over Oppenheimer. Oppenheimer has
very limited contacts with California. Oppenheimer has
shipped unspecified items to the defendant Spectrum
Effects, Inc. of California. However, the record gives no
indication of the context and significance of these ship-
ments for Oppenheimer’s business. Appellants failed to
show that these acts amount to continuous and system-
atic contacts with California. See Helicopteros, 466 U.S.
at 418 (holding that ‘‘purchases, even if occurring at
regular intervals’’ were insufficient to establish general
personal jurisdiction over a nonresident corporation).
Additionally, Oppenheimer has exhibited products unre-
lated to the accused device at a California trade show.
17 GROBER v. MAKO PRODUCTS

While this may support the inference that Oppenheimer
meets potential business partners at trade shows, this
showing does not rise above a sporadic and insubstantial
contact with California. See Campbell Pet Co. v. Miale,
542 F.3d 879, 881-884 (Fed. Cir. 2008) (finding no general
jurisdiction from twelve sales yielding about $14,000 in
revenue, conference attendance in forum where products
are demonstrated and orders taken, and a generally
accessible website). Similarly, an isolated advertisement
in a nationally distributed trade publication based in
California and Mako’s website listing Oppenheimer as a
contact do not amount to a continuous and systemic
presence in California. See id.; see also Conqoleum Corp.
v. DLW Aktienqesellschaft, 729 F.2d 1240, 1242-43 (9th
Cir. 1984) (finding that sales and marketing efforts in
California, including solicitation of orders, promotion of
products through mail and showroom display, and atten-
dance at trade shows were not sufficient to give rise to
general jurisdiction).
The district court also correctly found that Appellants
did not make a prima facie showing of specific jurisdic-
tion. “Specific jurisdiction . . . must be based on activities
that arise out of or relate to the cause of action, and can
exist even if the defendant's contacts are not continuous
and systematic.” Autogenomics, 566 F.3d at 1017 (citing
Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194,
1200 (Fed. Cir. 2003)). When analyzing specific personal
jurisdiction over a nonresident defendant, a court consid-
ers whether: “(1) the defendant purposefully directed its
activities at residents of the forum state, (2) the claim
arises out of or relates to the defendant's activities with
the forum state, and (3) assertion of personal jurisdiction
is reasonable and fair.” Elecs. For Imaging, 340 F.3d at
1350. The plaintiff has the burden of proving parts one
and two of the test, and then the burden shifts to the
GROBER v. MAKO PRODUCTS 18

defendant to prove that personal jurisdiction is unreason-
able. Id. As this court previously explained ‘‘[t]he first
two factors correspond with the ‘minimum contacts’ prong
of the International Shoe [v. Washington, 326 U.S. 310
(1945)] analysis, and the third factor corresponds with the
‘fair play and substantial justice’ prong of the analysis.’’
Inamed Corp., 249 F.3d at 1360.
Appellants did not show that Oppenheimer has suffi-
cient contacts with the state of California to warrant
specific jurisdiction. Appellants could not establish that
Oppenheimer has operated or rented the MakoHead in
California. Beyond shipment of an unspecified amount of
products between itself and Spectrum Effects, Inc., Op-
penheimer did not operate at all in California. In fact,
Appellants did not show that out of the hundreds of
available products, the accused MakoHead, was ever
shipped to California.
While Oppenheimer advertised the MakoHead twice
per year in a magazine based in California, this trade
publication was nationally distributed and not limited to
California. Appellants could not show that Oppenheimer
targeted the California market at all. Appellants at best
showed Oppenheimer on a list as a North West contact,
with two other West Coast contacts also on the list.
Again, this attenuated evidence does not show that Cali-
fornia was a target market for Oppenheimer. In sum,
Oppenheimer, on this record, did not purposefully avail
itself of the privileges of conducting activities within
California, “thus invoking the benefits and protections of
its laws.” See McIntyre Mach., Ltd., v. Nicastro, 131 S.Ct.
2780, 2787-88 (2011); see also Cascade Corp. v. Hiab-Foco
AB, 619 F.2d 36, 37-38 (9th Cir. 1980) (finding that an ad
in a national publication available in the forum state did
not establish specific jurisdiction).
19 GROBER v. MAKO PRODUCTS

The district court also properly declined to find per-
sonal jurisdiction over the Klein defendants. The fiduci-
ary shield doctrine buffers corporate officers from
personal jurisdiction when their official duties were their
only contact with a forum state. See Kransco Mfg., Inc. v.
Markwitz, 656 F.2d 1376, 1379 (9th Cir. 1981) (individ-
ual’s attendance at California trade show in corporate
capacity insufficient to establish personal jurisdiction for
out-of-state defendant). In support of this, the district
court cited Nelson v. Adams USA Inc., 529 U.S. 460, 470-
71 (2000), for the premise that “the court should not
lightly disregard the corporate form; a corporation’s veil
may not be pierced merely because it has only one owner.”
Jurisdiction Order at 8.
This court finds no error in the district court’s per-
sonal jurisdiction determinations. Appellants did not
show that the Kleins or Oppenheimer performed any
relevant activities to establish general or specific personal
jurisdiction. This court concludes that the district court
properly declined personal jurisdiction over the Kleins
and Oppenheimer.
V.
The Cross-Appellants filed a motion before the district
court under Federal Rule of Civil Procedure 11 and 35
U.S.C. § 285 seeking attorney fees and litigation costs.
The district court denied Cross-Appellants’ motion under
Rule 11 as procedurally improper because it was filed
after summary judgment. Grober v. Mako Prods., Inc.,
No. 2:04-CV-04-8604, slip op. at 2 (C.D. Cal. July 1, 2010).
In light of this court vacating the grant of summary
judgment, the cross-appeal from the denial of the Rule 11
motion is dismissed as moot. In the event of a proce-
durally proper Rule 11 motion on remand, the district
court may consider it in the first instance. The cross-
GROBER v. MAKO PRODUCTS 20

appeal from the district court’s denial of attorney fees
under 35 U.S.C. § 285 is also dismissed as moot. In view
of this court’s opinion, Cross-Appellants are not a prevail-
ing party to whom an award could be made. See Stickle v.
Heublein, Inc., 716 F.2d 1550, 1564 (Fed. Cir. 1983).
VI.
For the foregoing reasons, this court vacates the dis-
trict court’s claim construction and vacates the grant of
summary judgment for non-infringement. This court
remands for further proceedings. Finally, this court
affirms the district court’s personal jurisdiction determi-
nation.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED