Bradford Co. v. Conteyor North America, Inc.

United States Court of Appeals for the Federal Circuit
2009-1472

BRADFORD COMPANY,

Plaintiff-Appellant,

v.

CONTEYOR NORTH AMERICA, INC.,

Defendant,

and

CONTEYOR MULTIBAG SYSTEMS N.V.,

Defendant-Appellee.

Gregory F. Ahrens, Wood, Herron & Evans, LLP, of Cincinnati, Ohio, argued for
plaintiff-appellant. With him on the brief were Bruce Tittel and John P. Davis.

Robert J. Lenihan, II, Harness, Dickey & Pierce, PLC, of Troy, Michigan, argued for
defendant-appellee. With him on the brief were Michael E. Hilton and Allen E. Pittoors.

Appealed from: United States District Court for the Southern District of Ohio

Senior Judge Sandra S. Beckwith
 United States Court of Appeals for the Federal Circuit

2009-1472

BRADFORD COMPANY,

Plaintiff-Appellant,

v.

CONTEYOR NORTH AMERICA, INC.,

Defendant,
and

CONTEYOR MULTIBAG SYSTEMS N.V.,

Defendant-Appellee.

Appeal from the United States District Court for the Southern District of
Ohio in Case No. 05-CV-00449,Senior Judge Sandra S. Beckwith.
____________________________

DECIDED: April 29, 2010
____________________________

Before LOURIE, CLEVENGER, and RADER Circuit Judges.

LOURIE, Circuit Judge.

Bradford Company (“Bradford”) appeals from the judgment of the United States

District Court for the Southern District of Ohio granting summary judgment to ConTeyor

North America, Inc. (“ConTeyor NA”) of noninfringement of certain claims of U.S.

Patents 6,230,916 (“the ’916 patent”) and 6,540,096 (”the ’096 patent”). 1 Bradford also

appeals from the court’s grant of summary judgment that the ’096 patent claims were

1
See Bradford Co. v. Afco Mfg., 628 F. Supp. 2d 756 (S.D. Ohio 2007)
(“Noninfringement Opinion”); Bradford Co. v. Afco Mfg., No. 05-449, 2006 WL 3500009
(S.D. Ohio Dec. 5, 2006) (“Claim Construction Opinion”).
not entitled to an earlier filing date, 2 and the court’s dismissal of the foreign defendant,

ConTeyor Multibag Systems N.V. (“ConTeyor NV”), for lack of personal jurisdiction. 3

For the reasons discussed below, we affirm in part, reverse in part, and remand.

BACKGROUND

Bradford owns the ’916 patent, the ’096 patent, and U.S. Patent 5,725,119 (“the

’119 patent”). The ’916 patent was issued from a divisional application of Bradford’s

original application that issued as the ’119 patent. The ’096 patent is a continuation-in-

part of the ’916 patent. The patents relate to shipping containers used to ship

automobile door panels and related parts. The containers include “dunnage,” which is a

collection of pouches that hold parts, and are designed such that both the container and

the collapsible dunnage structure can be easily re-erected and reused for multiple

shipments. The containers are easily returned to shippers in a collapsed condition.

According to Bradford the ability to reuse containers lowers freight, handling, and

storage costs. Bradford sells the patented containers commercially under the name

AdaptaPak.

Bradford’s inventors, Donald Bazany and Judson Bradford, filed the application

that became the ’096 patent on May 31, 2000. On February 26, 2001, the examiner

rejected all of the claims as being anticipated by Bradford’s own ’119 patent under 35

U.S.C. § 102(b). Bradford responded by amending the “related applications” section to

incorporate by reference the ’119 patent, and claiming the benefit of the ’119 patent’s

2
See Bradford Co. v. Afco Mfg., No. 05-449, 2008 WL 974043 (S.D. Ohio
Apr. 8, 2008) (“Priority Opinion”).
3
See Bradford Co. v. Afco Mfg., 560 F. Supp. 2d 612 (S.D. Ohio 2008)
(“Personal Jurisdiction Opinion”).

2009-1472 2
filing date. 4 The examiner, however, rejected the claims once again, this time under the

doctrine of obviousness-type double patenting. The examiner asserted that the ’096

patent claims were obvious in light of Bradford’s own ’119 patent in combination with

U.S. Patent 4,798,304 (“the Rader patent”). The examiner suggested that the rejection

could be overcome by filing a terminal disclaimer for the ’096 patent. Bradford

responded by arguing that the references cited by the examiner did not render the ’096

patent claims obvious, specifically that they did not teach a container with an opening

on the side to allow access to the dunnage structure. Following Bradford’s response,

the examiner once again rejected the claims as being obvious in light of Bradford’s own

’119 patent in combination with U.S. Patent 4,798,304 (“Kupersmit”). In 2002, after

arguing the examiner’s rejections multiple times, Bradford eventually filed a terminal

disclaimer, giving up a portion of the ’096 patent term.

In 2005, Bradford sued ConTeyor NV of Belgium and its United States

subsidiary, ConTeyor NA, in the United States District Court for the Southern District of

Ohio, alleging infringement of all three of its patents. ConTeyor NV has had various

business dealings with companies in the United States, including Bradford. The

ConTeyor companies together sell shipping containers that also include collapsible

dunnage.

All of the asserted claims of the three Bradford patents require that the dunnage

be “coupled to” the frame or the side structure of the container. Claim 1 of the ’916

patent reads as follows:

A reusable and returnable rack container for supporting a product thereon

4
The ’119 patent application was filed on February 28, 1996 and issued on
March 10, 1998.

2009-1472 3
 during shipment and subsequently being returned generally empty of
product for reuse comprising:

a frame having a top member, a bottom member and a plurality of legs
extending therebetween, the legs configured for being movable between
an erected position for spacing the top member above the bottom member
to support a product placed on the rack and a collapsed position for
collapsing and reducing the size of the rack container for return;

the legs being hinged along their respective lengths for being folded into
the collapsed position;

a dunnage structure supported by the frame for receiving a product placed
on the rack for shipment when the legs are in an erected position;

the dunnage structure operable for relaxing when the legs are in a
collapsed position such that the dunnage structure is generally positioned
on the reduced size rack structure for return;

the dunnage structure movably coupled to the frame and operable for
being moved with respect to said erected frame to vary the position of the
dunnage structure and the received product within the container;

whereby the rack provides reusable dunnage which is usable with the
container when it is shipped and subsequently remains with the container
when it is returned for being reused when the container is again shipped.

’916 patent col.17 ll.37–63 (emphasis added). Additionally, the ’096 patent claims an

opening on the side of the container to allow access to the dunnage. Claim 1 of the

’096 patent reads as follows:

A reusable and returnable container for holding product therein during
shipment and then being returned for reuse, the container comprising:

a body having at least two opposing and moveable side structures, the
side structures configured for being selectively moved into an erected
position for shipment and moved into a collapsed position for reducing the
size of the container for return;

a dunnage structure spanning between the side structures, the dunnage
structure being operably coupled to the side structures for automatically
moving, with the side structures, to an erected position for receiving
product when the side structures are erected and moving to a collapsed
position in the body when the side structures are collapsed so that the

2009-1472 4
 dunnage remains with the container when returned;

the dunnage structure having an open end facing at least one side
structure of the body, the at least one side structure defining an open area
which is in alignment with the dunnage structure open end for accessing
the dunnage structure and transferring product into and out of the
dunnage structure from a side of the container;

whereby a person may more efficiently and safely remove product from
the container and the container and dunnage is readily reused.

’096 patent col.13 ll.26–50 (emphasis added).

In December 2006, the district court construed claims of all three patents at

issue. See Claim Construction Opinion, 2006 WL 3500009. In its claim construction,

the court found the claim term “coupled to” to mean “linked together, connected or

joined.” Id. at *9. The court gave the term “coupled to,” and related terms, the same

meaning across all asserted claims of the three patents. For example, where the claims

of the ’096 patent used the phrase “operably coupled to the side structures,” the court

construed that term “operably coupled” as having the same meaning as the term

“coupled to,” which it had previously construed. Id. at *27.

In December 2007, the district court granted summary judgment of

noninfringement of the ’916 and ’096 patents. Noninfringement Opinion, 628 F. Supp.

2d at 764. The ’916 patent depicts an embodiment of the dunnage structure coupled to

the frame of the container at Figure 1, and in further detail in Figure 1A, both

reproduced below:

2009-1472 5
 Prior to their motion for summary judgment of noninfringement, the ConTeyor

defendants had moved the district court to grant summary judgment of invalidity for all

three Bradford patents. Although in its claim construction order the district court had

construed the term “coupled to” uniformly across the three patents to broadly mean

“linked together, connected or joined,” Claim Construction Opinion, 2006 WL 3500009,

2009-1472 6
at *9, in its subsequent ruling on the ConTeyor defendants’ invalidity motion, the court

had held that the asserted claims were not anticipated by prior art containers in which

the dunnage is coupled to support bars or support rails, Bradford Co. v. Afco Mfg., No.

05-449, 2007 U.S. Dist. LEXIS 31975 (S.D. Ohio May 1, 2007) (“Invalidity Opinion”). In

granting ConTeyor summary judgment of noninfringement, the court relied upon that

earlier decision on invalidity for the meaning of the term “coupled to.” Noninfringement

Opinion, 628 F. Supp. 2d at 764. In effect, the court ruled that the term “coupled to”

was restricted to a direct coupling. Notably, neither party had previously proposed that

construction to the court. Each of the asserted claims requires that the dunnage

structure be “coupled to” either the “frame,” the “open frame,” or the “side structure” of

the container. Id. at 762. Finding that the dunnage structure of the accused ConTeyor

product was linked or connected to bars or rails and not directly to a “frame,” “open

frame,” or “side structure,” the court concluded that the accused product did not infringe

claims 1, 4, and 5 of the ’916 patent or claims 1, 4, 10, 11, and 19 of the ’096 patent. Id.

The dispute and the court’s ruling were solely on the issue of literal infringement. Id. at

758 n.1.

Following its noninfringement decision, in April 2008, the district court ruled on

the priority date of the ’096 patent. See Priority Opinion, 2008 WL 974043. Bradford

had argued that the filing date of the ’119 patent, February 28, 1996, was also the

effective filing date of the ’096 patent. The parties disputed whether there was sufficient

disclosure in the ’119 patent of the claimed container’s side-loading ability. Each of the

claims of the ’096 patent includes a limitation requiring an open end on the side of the

container that allows access to the dunnage structure. Bradford had argued to the

2009-1472 7
district court that the ’119 patent depicts an embodiment of the side-loading container at

Figures 4 and 5, one of which is reproduced below:

While the district court agreed that the container depicted in the ’119 patent could

be loaded from the side, it found this disclosure insufficient to teach a side-loading

container so as to satisfy section 112, first paragraph. Id. at *8 (citing 35 U.S.C. § 112).

Moreover, the court noted, in prosecuting the ’096 patent, Bradford had specifically told

the examiner that the ’119 patent did not teach the side-loading container claimed in the

’096 patent. Id. at *9. Relying mostly on Bradford’s prosecution history comments, the

court concluded that the ’096 patent was not entitled to the filing date of the ’119 patent.

The court therefore granted ConTeyor NA’s motion, which effectively restricted

Bradford’s infringement claim to a later filing date for the ’096 patent. Id. at *10.

Finally, in May 2008, the district court found that it could not exercise personal

jurisdiction over the foreign defendant ConTeyor NV. Personal Jurisdiction Opinion,

560 F. Supp. 2d at 612. The court also rejected Bradford’s argument that jurisdiction

2009-1472 8
over ConTeyor NV existed under either prong of Rule 4(k). Id. at 635. The court found

that ConTeyor NV’s connections to Ohio and Michigan were insufficient to allow the

court to exercise jurisdiction over the defendant consistent with due process. Id. The

court therefore granted ConTeyor NV’s motion to dismiss. Id.

Bradford now appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

A. Priority Date for the ’096 Patent

In denying Bradford an earlier priority date for the ’096 patent, Bradford argues,

the district court improperly relied on a single prosecution remark made by Bradford’s

attorney to the effect that the ’119 patent did not disclose side-loading containers.

Bradford contends that that, however, was an incorrect statement that should not have

been made to the examiner. Regardless, Bradford argues, the argument was never

accepted by the examiner and was thereafter abandoned by the attorney prosecuting

the ’096 patent. Moreover, Bradford points to the examiner’s initial section 102 rejection

as evidence of the examiner’s belief that the ’119 patent disclosed every limitation of the

’096 patent claims including the side-loading feature. Bradford also contends that the

inventor as well as ConTeyor NA’s own expert have testified that there is sufficient

disclosure of that claim limitation in the ’119 patent. Hence, Bradford argues, it was

improper for the court to overlook all of that evidence in favor of a single prosecution

remark.

ConTeyor NA and ConTeyor NV do not respond to Bradford’s arguments on this

issue. In fact, ConTeyor NA has not entered an appearance in this appeal at all.

ConTeyor NV has limited its response to the issue of personal jurisdiction.

2009-1472 9
 We review a grant of summary judgment de novo, drawing all reasonable factual

inferences in favor of the non-moving party. See Invitrogen Corp. v. Biocrest Mfg. L.P.,

424 F.3d 1374, 1378 (Fed. Cir. 2005). We apply our own law with respect to issues of

substantive patent law and certain procedural issues pertaining to patent law, but apply

the law of the regional circuits on non-patent issues. Id. Determination of a priority date

is purely a question of law if the facts underlying that determination are undisputed.

See E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C., 525 F.3d

1353, 1359 (Fed. Cir. 2008). However, determination whether a priority document

contains sufficient disclosure to comply with the written description aspect of

35 U.S.C. § 112, first paragraph, is a question of fact. Waldemar Link v. Osteonics

Corp., 32 F.3d 556, 558 (Fed. Cir. 1994).

Although we will affirm the district court’s decision, we do agree with Bradford, at

least to the extent that a genuine issue of fact exists as to whether the ’119 patent

contains a sufficient disclosure of a side-loading container. Although the court noted

that most of the drawings of the ’119 patent depict containers that can be loaded only

from the top, it also acknowledged that “[t]here is no question that, as shown in Figures

4 and 5 [of the ’119 patent], the container can be loaded from the side.” Priority

Opinion, 2008 WL 974043, at *9 (emphasis added). The court concluded, however, that

even though it would have been obvious to side load the containers shown in the

specification, that did not mean that a side-loading container was sufficiently disclosed.

See id. (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).

In Lockwood, we made clear that in order to gain the benefit of the filing date of

an earlier application under 35 U.S.C. § 120, each application in the chain leading back

2009-1472 10
to the earlier application must comply with the written description requirement of

35 U.S.C. § 112. Lockwood, 107 F.3d at 1571. That, we explained, requires that the

earlier application describe the later claimed invention, and do so in sufficient detail that

one skilled in the art can clearly conclude that the inventor was “in possession” of the

claimed invention as of the filing date sought. Id. at 1572 (citing Vas-Cath Inc. v.

Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)); see also Ariad Pharms., Inc. v. Eli

Lilly & Co., No. 2008-1248, 2010 WL 1007369, at *12 (Fed. Cir. Mar. 22, 2010) (en

banc) (explaining that possession requires that the specification “describe an invention

understandable to [a] skilled artisan and show that the inventor actually invented the

invention claimed”). Here, the district court agreed that the two figures in the earlier

’119 patent application show dunnage that can be accessed from the side, and we

believe that that might have sufficed as a sufficient description of the claimed side-

loading limitation had the applicant not indicated otherwise during prosecution. See

Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1322 (Fed. Cir.

2002) (citing Vas-Cath, 935 F.2d at 1566) (“Drawings constitute an adequate

description if they describe what is claimed and convey to those of skill in the art that

the patentee actually invented what is claimed.”); see also Eiselstein v. Frank, 52 F.3d

1035, 1038 (Fed. Cir. 1995) (explaining that “the prior application need not describe the

claimed subject matter in exactly the same terms as used in the claims”).

However, we also agree with the district court that Bradford is estopped from

arguing for an earlier priority date for the ’096 patent by the prosecution history of that

patent. In one of his earlier rejections, the examiner rejected the claims as obvious in

light of the ’119 patent combined with the Rader patent. The examiner specifically

2009-1472 11
stated that the Rader patent taught a “side wall having [an] opening.” In response,

Bradford told the patent examiner that the ’119 patent did not teach the very feature that

makes the invention of the ’096 patent side loading. Specifically, Bradford argued that

the ’119 patent “clearly does not teach a dunnage structure having an open end which

is in alignment with an open area of a side structure to allow access of the dunnage

structure for transferring product into and out of the dunnage structure from a side of the

container.” Bradford further argued that when combined with the side opening taught by

the Rader patent, the ’119 patent would still not render the ’096 patent claims obvious.

Bradford’s arguments were apparently successful. In the next office action, the

examiner relied on a different prior art reference, Kupersmit, in rejecting the claims as

obvious.

The applicants’ statement to the examiner is a compelling disclaimer of scope

such that the ’096 patent is not entitled to an earlier priority date. See Microsoft Corp. v.

Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (“We take the patentee at its

word and will not construe the scope of . . . [a] patent’s claims more broadly than the

patentee itself clearly envisioned.”). That is because arguments made to persuade an

examiner to allow an application trump an ambiguous disclosure that otherwise might

have sufficed to obtain an earlier priority date. See Standard Oil Co. v. Am. Cyanamid

Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (holding that any argument made to convince

the examiner of the patentability of the claimed invention “limits the interpretation of

claims so as to exclude any interpretation that may have been disclaimed or disavowed

during prosecution in order to obtain claim allowance”). We therefore affirm the court’s

decision limiting the priority date of the ’096 patent to its own filing date.

2009-1472 12
 B. Noninfringement of the ’096 and ’916 Patents

Bradford argues that the district court erred in its construction of the term

“coupled to” and related terms by requiring that the dunnage structure of the claimed

containers be attached directly to the frame or side structures of the containers.

Bradford points out that both the ’916 patent and ’096 patent, by incorporation of the

’119 patent, clearly disclose dunnage attached to a rail, which is attached to a side

structure, and that nothing in the specification requires dunnage to be directly attached

to the container frame. On the contrary, Bradford argues, given that dependent claim

10 of the ’096 patent recites dunnage indirectly fixed to the frame through a rail, the

doctrine of claim differentiation mandates a reading of the term “coupled to” as not

limited to directly attached. ConTeyor NA and ConTeyor NV do not respond to

Bradford’s arguments on this issue.

We agree with Bradford that the district court erroneously construed the term

“coupled to,” and we hold that the term should be construed broadly so as to allow an

indirect attachment. We review claim construction de novo on appeal. Cybor Corp. v.

FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We begin a claim

construction analysis by considering the language of the claims themselves. See

Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). However,

“claims must be read in view of the specification, of which they are a part.” Id. at 1315

(quotation marks omitted). “[A] court should also consider the patent’s prosecution

history, if it is in evidence. . . . Like the specification, the prosecution history provides

evidence of how the [Patent Office] and the inventor understood the patent.” Id. at 1317

(citations and quotation marks omitted).

2009-1472 13
 Although it properly gave the term “coupled to” a broad construction in its earlier

order, the district court appears to have unnecessarily narrowed it in ruling on

defendants’ invalidity contentions. Invalidity Opinion, 2007 U.S. Dist. LEXIS 31975, at

*25 (holding that a prior art reference that showed that the dunnage structure coupled to

support bars was different from the ’916 patent claims, which required dunnage coupled

to the frame of the container). Thereafter, the court determined that its invalidity

decision mandated that the term “coupled to” be restricted to a direct attachment to the

frame or side structure of the container. Noninfringement Opinion, 628 F. Supp. 2d at

762–64 (basing its noninfringement finding on the fact that in its invalidity decision, the

court had held that the “patents-in-suit do not encompass containers in which the

dunnage is coupled to support bars or support rails”). Given that the accused device

uses bars or rails to hold the dunnage structure, the court concluded that, under its

claim construction, there was no infringement of any of the asserted claims. Id. at 764.

We agree with Bradford that the doctrine of claim differentiation supports a

reading that allows an indirect coupling of the dunnage to the frame of the container.

Dependent claim 10 of the ’096 patent recites a dunnage structure that is coupled to

rails which in turn are coupled to the side structures. In light of a dependent claim that

clearly states an indirect attachment of the dunnage structure, the scope of independent

claim 1 is presumed to be broader to allow for other types of indirect attachments. See

Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (“The

doctrine of claim differentiation create[s] a presumption that each claim in a patent has a

different scope.”). While the doctrine of claim differentiation, contrary to arguments

regularly made in this court, is not a conclusive basis for construing claims, we find

2009-1472 14
nothing in the ’096 patent specification or the prosecution history that would allow us to

overcome its effect here. On the contrary, the ’096 patent specification clearly discloses

dunnage coupled to the side structure through a rail. ’096 patent fig.3; id. at col.9 ll.24–

31; see also ’119 patent figs.1 & 1A. Similarly, the use of words such as “operably” and

“movably” in the claims suggests that the dunnage structure is not fused to the frame,

but rather attached flexibly allowing for intermediate parts between the frame and the

dunnage structure such that the dunnage is operable or movable. In light of such clear

disclosure in the patent, the term “coupled to” is entitled to a broader scope than the

district court allowed. We therefore reverse the court’s revised claim construction of the

term “coupled to.” Because the court based its noninfringement finding solely on its

revised construction of that term, we remand the question of infringement to the district

court for a determination using its original and correct claim construction.

C. Personal Jurisdiction over ConTeyor NV

Bradford argues that the district court erred in concluding that no personal

jurisdiction existed over ConTeyor NV under Rule 4(k)(2). 5 Bradford notes that this

court, like other regional circuits, has allowed district courts to exercise jurisdiction over

a defendant who has sufficient contacts with the United States and who refuses to

identify a state where the suit can be brought. See generally Touchcom, Inc. v.

Bereskin & Parr, 574 F.3d 1403 (Fed. Cir. 2009). Bradford points out that ConTeyor NV

never conceded personal jurisdiction over it in any state. Therefore, Bradford argues,

5
Bradford does not appeal the district court’s finding that no jurisdiction
existed over ConTeyor NV in Ohio under Rule 4(k)(1), but has indicated it would not
oppose a de novo finding of jurisdiction under that section of the rule. See Bradford’s
Principal Br. at 53 n.9. We do not choose to make a de novo finding on an issue
Bradford has not argued.

2009-1472 15
ConTeyor NV should be held to its prior refusal to name a forum, thereby allowing this

action to proceed in the Ohio court under Rule 4(k)(2). Bradford contends that the

exercise of jurisdiction over ConTeyor NV in Ohio comports with due process in light of

all of ConTeyor NV’s contacts with the United States.

ConTeyor NV responds that this court had not decided Touchcom at the time the

district court ruled on ConTeyor’s motion to dismiss. Therefore, ConTeyor NV argues, it

did not have an obligation to identify a forum where it may be subject to personal

jurisdiction. Now it concedes that an alternate forum to bring suit against it exists in

Michigan. Moreover, even in light of Touchcom, ConTeyor NV argues, jurisdiction over

it anywhere else in the United States fails to comport with due process.

We agree with Bradford that personal jurisdiction over ConTeyor NV may exist

either in Ohio or in Michigan under Rule 4(k) based on ConTeyor NV’s

acknowledgement in its briefing on appeal that it is subject to personal jurisdiction in

Michigan. Rule 4(k)(2) provides that:

For a claim that arises under federal law, serving a summons or filing a waiver of
service establishes personal jurisdiction over a defendant if:
(A) the defendant is not subject to jurisdiction in any state’s courts of general
jurisdiction; and
(B) exercising jurisdiction is consistent with the United States Constitution and
laws.

Fed. R. Civ. P. 4(k)(2). Thus, for a court to exercise personal jurisdiction over a

defendant under that rule, the plaintiff’s claim must arise under federal law, the

defendant must not be subject to jurisdiction in any state’s courts of general jurisdiction,

and exercise of jurisdiction must comport with due process. Synthes (U.S.A.) v. G.M.

Dos Reis Jr. Ind. Com. de Equip. Medico, 563 F.3d 1285, 1293–94 (Fed. Cir. 2009).

We conclude that the district court erred in declining to find jurisdiction over

2009-1472 16
ConTeyor NV under Rule 4(k)(2) because it found that Bradford had not demonstrated

that ConTeyor NV had sufficient contacts with Ohio or Michigan, and that doing so

would not comport with the due process requirements of the Constitution and federal

law. Personal Jurisdiction Opinion, 560 F. Supp. 2d at 635. Having analyzed in detail

ConTeyor NV’s contacts with the state of Ohio and concluding that ConTeyor NV did

not have “continuous and systematic” contacts with that state to allow personal

jurisdiction over it, the court summarily found that that was also the case with

ConTeyor’s alleged Michigan contacts. Id. Thus, the court concluded that Bradford had

failed to demonstrate personal jurisdiction in Ohio over ConTeyor NV under Rule

4(k)(2). Id.

Following the district court’s decision, we addressed in another case when a

district court may exercise jurisdiction over a foreign defendant under Rule 4(k)(2).

Touchcom, 574 F.3d 1403. In Touchcom, we declined to adopt a requirement that in

order to establish jurisdiction, a plaintiff must prove that a defendant was not subject to

jurisdiction in any of the fifty states. Id. at 1415. Instead, we 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. Id. Applying the rule in that case, we concluded

that a Canadian law firm that had prosecuted a patent application at the United States

Patent and Trademark Office had sufficient minimum contacts with the United States to

satisfy due process and allow for personal jurisdiction under Rule 4(k)(2). Id. at 1418.

Given that the defendant in that case had not conceded jurisdiction in another state, we

concluded that the plaintiff had made a prima facie showing that a Virginia court

2009-1472 17
possessed personal jurisdiction over the defendant even though the defendant was not

subject to Virginia’s courts of general jurisdiction. Id.

The district court in this case similarly failed to analyze ConTeyor NV’s contacts

with the United States as a whole and imposed an improper burden on the plaintiff.

Personal Jurisdiction Opinion, 560 F. Supp. 2d at 635 (“Plaintiff has not shown that the

exercise of jurisdiction under Rule 4(k)(2) is proper.”). Because the court made the

same legal error that we subsequently found in Touchcom, we vacate the court’s

decision and remand the case to the district court to determine whether it is entitled to

use Rule 4(k)(2) to assert jurisdiction over ConTeyor NV, whether ConTeyor NV has

sufficient contacts with the United States as a whole and, if so, whether the case

against ConTeyor NV should proceed in Ohio or Michigan.

CONCLUSION

We have considered the parties’ remaining arguments and do not find them

persuasive. Accordingly, the judgment of the district court is

AFFIRMED IN PART, REVERSED IN PART, and REMANDED

COSTS

Costs to Bradford.

2009-1472 18