Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico

United States Court of Appeals for the Federal Circuit
2008-1279

SYNTHES (U.S.A.),

Plaintiff-Appellant,

v.

G.M. DOS REIS JR. IND. COM. DE EQUIP. MEDICO
(also known as GMReis),

Defendant-Appellee.

Jeffrey M. Olson, Sidley Austin LLP, of Los Angeles, California, argued for
plaintiff-appellant. With him on the brief were Robert A. Holland, Sean A. Commons,
and Matthew S. Jorgenson.

Matthew C. Lapple, Covington & Burling LLP, of San Diego, California, argued
for defendant-appellee. Of counsel was John M. Benassi, Heller Ehrman LLP, of San
Diego, California.

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

Judge M. James Lorenz
 United States Court of Appeals for the Federal Circuit

2008-1279

SYNTHES (U.S.A.),

Plaintiff-Appellant,

v.

G.M. DOS REIS JR. IND. COM. DE EQUIP. MEDICO
(also known as GMReis),

Defendant-Appellee.

Appeal from the United States District Court for the Southern District of
California in case no. 07-CV-309, Judge M. James Lorenz.

_________________________

DECIDED: April 17, 2009
_________________________

Before SCHALL, FRIEDMAN, and BRYSON, Circuit Judges.

SCHALL, Circuit Judge.

Synthes (U.S.A.) (“Synthes”) appeals the final judgment of the United States

District Court for the Southern District of California dismissing without prejudice its suit

for patent infringement against G.M. dos Reis Jr. Ind. Com de Equip. Medico

(“GMReis”). Synthes (U.S.A.) v. G.M. dos Reis Jr. Ind. Com. de Equip. Medico, No. 07-

CV-309-L(AJB), 2008 WL 789925 (S.D. Cal. Mar. 21, 2008). The court dismissed

Synthes’s suit after it determined that it lacked personal jurisdiction over GMReis. For

the reasons set forth in this opinion, we hold that the district court does have personal
jurisdiction over GMReis. We therefore reverse the court’s judgment and remand the

case to the court for further proceedings.

BACKGROUND

I.

Synthes is a global medical-device company, with its principal place of business

in Pennsylvania. It develops, produces, and markets instruments and implants,

including bone plates, for the surgical fixation, correction, and regeneration of the

human skeleton. Synthes is the assignee of United States Patent No. 7,128,744 (“the

’744 patent”), which is directed to “a bone plating system and method for fracture

fixation of bone.” ’744 patent, Abstract (filed Sept. 22, 2003). GMReis is a Brazilian

corporation, with its headquarters in that country. It designs, manufactures, and

markets orthopedic and neurological medical devices, including bone plates.

From February 14–16, 2007, the Chief Executive Officer of GMReis, Geraldo

Marins dos Reis, Jr., and a GMReis employee, Jose Luis Landa Lecumberri,

represented GMReis at the 2007 American Association of Orthopaedic Surgeons

Annual Meeting (“AAOS Meeting” or “AAOS trade show”) in San Diego, California. At

GMReis’s booth, Mr. dos Reis and Mr. Lecumberri displayed, among other things,

samples of five locking bone plates. 1

At the AAOS trade show, Synthes served Mr. dos Reis and Mr. Lecumberri with

a summons and complaint. The complaint consisted of a single count: “GMReis has

been and still is making, using, offering for sale, and/or importing into the United States

1
Locking bone plates are implantable devices with “locking holes” that
accommodate “locking screws,” which secure bone to plate at a fixed angular
relationship. See, e.g., ’744 patent, Abstract. They are used to immobilize bones or
bone fragments to promote healing of fractures. Id.

2008-1279 2
products, systems, and/or apparatuses that infringe the ’744 Patent, all in violation of 35

U.S.C. § 271.” (Compl. 2, ¶ 12.) Section 271 provides that “whoever without authority

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

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

therefor, infringes the patent.” 35 U.S.C. § 271(a) (2006).

Synthes pleaded that GMReis was subject to personal jurisdiction in the

Southern District of California because it had “imported into the United States and/or

offered to sell locking plates that infringe Synthes’ patent rights [and had] displayed said

locking plates at the 2007 [AAOS] Annual Meeting in San Diego, California for the

purpose of generating interest in infringing products to the commercial detriment of

[Synthes].” (Compl. 1, ¶ 1.) Synthes alleged that, as a result of GMReis’s activities, it

suffered and continued to suffer damages, including “impairment of the value of the ’744

Patent.” (Compl. 3, ¶ 13.) Synthes requested that the district court enter judgment that

GMReis infringed the ’744 patent and that it enjoin GMReis from infringing activity.

(Compl. 3, ¶ 1–2.)

On April 6, 2007, GMReis moved to dismiss Synthes’s complaint for lack of

personal jurisdiction under Fed. R. Civ. P. 12(b)(2). In its memorandum accompanying

the motion to dismiss, GMReis admitted that it attended the 2007 AAOS Meeting as part

of its international sales effort. It contended, however, that it was not subject to general

personal jurisdiction in California because it did not have “continuous and systematic”

contacts with California. It also contended that it was not subject to specific personal

jurisdiction because it had not performed any act that would constitute patent

infringement. Specifically, GMReis asserted that it never made any offer for sale of the

2008-1279 3
accused product in the United States, and that bringing a product into the United States

for display at a trade show does not constitute an infringing act of importation under 35

U.S.C. § 271(a).

In support of its motion to dismiss, GMReis submitted declarations by Mr. dos

Reis and Mr. Lecumberri. According to Mr. dos Reis’s declaration, GMReis is a

Brazilian company without offices, employees, or assets in California or in the United

States. The company sells its products in Brazil, South America, Europe, and Asia.

GMReis has never sold any of its products in California, but has completed one sale of

its products in the United States. That sale was to a veterinary medical supply company

located in Massachusetts. Id. GMReis products are not approved by the Food and

Drug Administration (“FDA”) for use by, or sale to, humans in the United States. Id.

In their declarations, Mr. dos Reis and Mr. Lecumberri admitted attending the

2007 AAOS Meeting to display GMReis’s products, five of which were sample locking

bone plates. They both asserted that GMReis sends representatives to the AAOS

Meeting because many non-U.S. surgeons attend the annual trade show, and GMReis

wants to show its products to those non-U.S. surgeons. On February 12, 2007, Mr.

Lecumberri traveled with the five samples in his luggage on a flight from Brazil, which

landed in the United States in Dallas, Texas, where he went through U.S. Customs.

Subsequently, he boarded a flight from Dallas to San Diego.

Mr. dos Reis and Mr. Lecumberri further declared that, at the 2007 AAOS

Meeting, they did not sell any of the five sample locking bone plates or use them for the

purposes for which they were designed (i.e., in surgery for securing a fractured bone).

Because GMReis did not have, and had not applied for, FDA approval of its locking

2008-1279 4
bone plates, Mr. dos Reis displayed prominent signs and product literature stating that

GMReis products were not approved by the FDA and were not for sale in the United

States. The GMReis product literature did not list any price for the locking bone plates,

and neither Mr. dos Reis nor Mr. Lecumberri discussed prices at the trade show.

Attached to Mr. dos Reis’s declaration were photographs from the 2007 AAOS Meeting,

showing GMReis’s display table, signs, and product literature. Both declarations

indicated that Mr. dos Reis returned to Brazil with the sample locking bone plates in his

luggage on February 19, 2007.

In response to GMReis’s motion to dismiss, Synthes requested depositions of

Mr. dos Reis and Mr. Lecumberri, a Rule 30(b)(6) deposition of GMReis, 2 and the

production of documents relating to GMReis’s contacts, not just with California, but with

the entire United States. GMReis opposed the discovery, and specifically objected to

Synthes’s document requests as overbroad, in that they sought information beyond

GMReis’s contacts with California.

On May 17, 2007, Synthes filed a motion to compel jurisdictional discovery. In its

memorandum accompanying the motion, Synthes argued that in federal question cases

involving a foreign defendant, contacts with the United States as a whole may be

analyzed under the Due Process Clause of the Fifth Amendment pursuant to Fed. R.

Civ. P. 4(k)(2), the so-called federal long-arm statute. Rule 4(k)(2) provides:

2
Rule 30(b)(6) provides for a deposition of an organization named as a
deponent. Fed. R. Civ. P. 30(b)(6). The named organization must designate one or
more officers, directors, or managing agents, or other persons who consent, to testify on
its behalf. Id.

2008-1279 5
 (2) Federal Claim Outside State-Court Jurisdiction.
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). Rule 4(k)(1)(A), on the other hand, provides “[i]n [g]eneral” that

“[s]erving a summons or filing a waiver of service establishes personal jurisdiction over

a defendant . . . who is subject to the jurisdiction of a court of general jurisdiction in the

state where the district court is located.” Fed. R. Civ. P. 4(k)(1)(A).

On August 2, 2007, a magistrate judge granted Synthes’s motion to compel

jurisdictional discovery relating to GMReis’s contacts with the United States for

purposes of Rule 4(k)(2). See Synthes v. G.M. Reis Jr. Ind. Com. de Equip. Medico,

No. 07-CV-0309-L(AJB), 2007 WL 2238900, at *6 (S.D. Cal. Aug. 2, 2007).

From jurisdictional discovery, Synthes learned that GMReis had exhibited its

products at a minimum of seven trade shows in the United States since 2003, including

the 2006 North American Spine Society trade show, the 2003 World Spine II trade

show, and the 2003–2007 AAOS annual meetings. In addition, Mr. dos Reis admitted

that he attended at least two other trade shows in the United States. Synthes also

learned about GMReis’s product acquisition and development in the United States. In

the past, GMReis has purchased in the United States parts and a manufacturing

machine for use in Brazil. In addition, it regularly purchases a product in the United

States for resale in Brazil, and its representatives have met and consulted with two

American companies regarding potential purchase and development of components for

non-accused products.

2008-1279 6
 Synthes also learned through discovery that, following the 2007 AAOS Meeting,

GMReis’s website received two inquiries from U.S. entities, asking whether certain

GMReis products would be available for sale or would be the subject of clinical trials for

FDA approval in the United States in the future. GMReis responded by email that its

products were neither approved by the FDA nor available to the U.S. market, and that it

did not intend to launch its products in the United States in the future.

II.

As noted above, the district court granted Synthes’s motion to dismiss GMReis’s

complaint for lack of personal jurisdiction. Synthes, 2008 WL 789925, at *1. The court

first addressed whether, for purposes of its personal jurisdictional analysis, it should

consider GMReis’s contacts with California or with the United States as a whole

pursuant to Rule 4(k)(2). Id. at *3. Noting that neither the parties nor the court had

found a Federal Circuit case applying Rule 4(k)(2), the court looked to Ninth Circuit case

law. Id. According to Holland America Line Inc. v. Wärtsilä North America, Inc., 485

F.3d 450, 461 (9th Cir. 2007), a court may exercise jurisdiction over a foreign defendant

under Rule 4(k)(2) when three requirements are met: (1) the claim against the

defendant must arise under federal law; (2) the defendant must not be subject to the

personal jurisdiction of any state court of general jurisdiction; and (3) the federal court’s

exercise of personal jurisdiction must comport with due process. Synthes, 2008 WL

789925, at *1. If Rule 4(k)(2) supplies the due process analysis, then the forum is the

United States, and not California. Id. at *4 (quoting Holland Am. Line, 485 F.3d at 462).

The district court found that the first requirement for application of Rule 4(k)(2)

was met because Synthes’s patent claim undisputedly arises under federal law. Id. at

2008-1279 7
*3. As to the second requirement, the court looked to the following statement in Holland

America Line, 485 F.3d at 461: “If . . . the defendant contends that he cannot be sued

in the forum state and refuses to identify any other [state] where suit is possible, then

the federal court is entitled to use Rule 4(k)(2).” Synthes, 2008 WL 789925, at *3.

(quotation marks omitted). Since GMReis argued it was not subject to personal

jurisdiction in any forum in the United States, the court reasoned that the second

requirement was met. Id. To determine if the third requirement was met, the court

performed a due process analysis considering contacts between GMReis and the nation

as a whole pursuant to Rule 4(k)(2). Id. at *4. The court considered the nation as the

forum for its analysis of both general and specific jurisdiction. Id. at *3.

The court first considered whether GMReis’s contacts with the United States

subjected it to general jurisdiction. Id. at *4. Although it was unclear to the court

whether Synthes intended to assert a general jurisdiction argument, it found that

“GMReis’ contacts with the United States [were] no more continuous and systematic

than the contacts found to be insufficient in Helicopteros Nacionales de Colombia, S.A.

v. Hall,” 466 U.S. 408, 416 (1984). The court therefore held that the level of contact

between GMReis and the United States was not sufficiently substantial and “continuous

and systematic” to justify the exercise of general jurisdiction. Synthes, 2008 WL

789925, at *4.

The court next considered whether GMReis’s contacts with the United States

subjected it to specific jurisdiction. Id. In that regard, the court applied our three-

pronged test for specific jurisdiction, which asks whether (1) the defendant purposefully

directed its activities at residents of the forum; (2) the claim arises out of or relates to

2008-1279 8
the defendant’s activities with the forum; and (3) assertion of personal jurisdiction is

reasonable and fair. Id. (quoting Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344, 1350

(Fed. Cir. 2003)).

The court determined that GMReis’s contacts with the United States satisfied the

first prong of the minimum contacts analysis. Id. at *5. The court reasoned that

GMReis purposefully directed its activities toward residents of the United States based

upon (i) its single sale of products to the veterinary medical supply company, (ii) its

several past and current purchases in the United States, and (iii) the pair of

consultations exploring supplier and product development options, which took place in

the United States. Id. The court noted in its recitation of the facts that Synthes did not

contend that any of these contacts in the United States involved the allegedly infringing

locking bone plates. Id. at *1.

The court concluded, however, that GMReis’s contacts with the United States did

not satisfy the second prong of the minimum contacts analysis. Id. at *5. The court

identified GMReis’s activities at the 2007 AAOS Meeting as the only contacts that arose

out of or were related to Synthes’s cause of action—the patent infringement claim. Id.

The court found that those activities were not purposefully directed at U.S. residents

because GMReis’s products lacked FDA approval, and GMReis “expressly discouraged

the forum residents from purchasing its products.” Id. at *4.

Thus, the district court held that Synthes failed “to make a prima facie showing

that GMReis’s minimum contacts with the United States were sufficient to establish

specific personal jurisdiction.” Id. at *5. The court did not reach the reasonableness

prong of the specific jurisdiction test because the quality and quantity of GMReis’s

2008-1279 9
contacts with the United States failed to establish general or specific personal

jurisdiction over GMReis. Id. The court also did not consider whether GMReis’s

activities in the United States were sufficient for patent infringement because

jurisdiction, and “not liability for patent infringement,” was at issue. Id. (quoting Genetic

Implant Sys., Inc. v. Core-Vent Corp., 123 F.3d 1455, 1458 (Fed. Cir. 1997)). Based

upon its decision, the court dismissed Synthes’s suit without prejudice and entered

judgment accordingly.

DISCUSSION

I.

We have jurisdiction over Synthes’s appeal pursuant to 28 U.S.C. § 1295(a)(1).

Whether the district court had personal jurisdiction over GMReis is a question we review

de novo. 3d Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373, 1376 (Fed. Cir. 1998). At

the same time, we review personal jurisdiction issues in a patent infringement case

under Federal Circuit law. Pennington Seed, Inc. v. Produce Exch. No. 299, 457 F.3d

1334, 1338 (Fed. Cir. 2006); see also Beverly Hills Fan Co v. Royal Sovereign Corp., 21

F.3d 1558, 1564 (Fed. Cir. 1994) (applying Federal Circuit law, rather than regional

circuit law, where the personal jurisdiction inquiry is “intimately related to substantive

patent laws”).

Because the district court resolved the personal jurisdictional question based on

the submission of papers, Synthes bore the burden of making a prima facie showing

that the court had personal jurisdiction over GMReis. See Elecs. for Imaging, 340 F.3d

at 1349 (“[W]here the district court’s disposition as to the personal jurisdiction question

is based on affidavits and other written materials in the absence of an evidentiary

2008-1279 10
hearing, a plaintiff need only to make a prima facie showing that defendants are subject

to personal jurisdiction.”). When deciding whether to grant or deny GMReis’s motion to

dismiss, the district court was required “to accept the uncontroverted allegations in

[Synthes’s] complaint as true and resolve any factual conflicts in [Synthes’s] favor.” Id.

Synthes contends that the district court erred in holding that it failed to establish a

prima facie basis for personal jurisdiction over GMReis. Synthes argues that GMReis is

subject to personal jurisdiction because GMReis has engaged in commercial activities

within the United States that violated the importing, using, or offering to sell prohibitions

of 35 U.S.C. § 271(a). Specifically, Synthes contends that GMReis imported infringing

products into the United States when its representatives brought the sample locking

bone plates to the 2007 AAOS Meeting from Brazil, and that GMReis used and offered

to sell infringing products when it displayed and promoted the locking bone plates at the

2007 AAOS Meeting. Synthes further contends that the court erred in its finding that

GMReis’s trade show activity was not directed at U.S. residents.

For its part, GMReis maintains that we should affirm the district court’s dismissal

because the district court correctly concluded that GMReis was not subject to general or

specific personal jurisdiction. GMReis argues that it never imported, used, or offered for

sale allegedly infringing bone plates within the meaning of 35 U.S.C. § 271(a). As a

result, GMReis argues, it cannot fairly be said that it purposefully directed its activities at

residents of the United States. It also argues that the acts of bringing sample locking

bone plates into the United States and displaying them at a trade show, without

identifying a price for them, did not constitute an import, use, or offer to sell. According

to GMReis, its extensive efforts to avoid affecting the U.S. market negated any potential

2008-1279 11
finding of purposeful availment. Finally, GMReis contends that it would be unfair and

unjust, and inconsistent with due process, to subject it to personal jurisdiction.

II.

Rule 4 is the starting point for any personal jurisdictional analysis in federal court.

See generally Fed. R. Civ. P. 4; see also Omni Capital Int’l, Ltd. v. Rudolf Wolff & Co.,

484 U.S. 97, 104 (1987) (“[S]ervice of process in a federal action is covered generally

by Rule 4 of the Federal Rules of Civil Procedure.”). As a preliminary matter, we must

decide whether the district court properly considered GMReis’s contacts with the United

States as a whole under a Rule 4(k)(2) personal jurisdictional analysis. As mentioned

above, personal jurisdictional issues in patent infringement cases are reviewed under

Federal Circuit law, not regional circuit law. See Pennington Seed, 457 F.3d at 1338;

Beverly Hills Fan, 21 F.3d at 1564–65. We therefore supply our own analysis as to

whether Rule 4(k)(2) applies in this case.

As noted by the district court, see Synthes, 2008 WL 789925, at *3, we have not

yet had occasion to analyze the applicability of Rule 4(k)(2). The rule, entitled “Federal

Claim Outside State-Court Jurisdiction,” states, in relevant part: “For a claim that arises

under federal law, serving a summons . . . 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). Similar to other circuits and the district

court in this case, we read Rule 4(k)(2) to allow a court to exercise personal jurisdiction

over a defendant if (1) the plaintiff’s claim arises under federal law, (2) the defendant is

2008-1279 12
not subject to jurisdiction in any state’s courts of general jurisdiction, and (3) the

exercise of jurisdiction comports with due process. 3

Determining whether a plaintiff’s claim arises under federal law generally

presents a relatively straightforward analysis, and in this case it is undisputed that

Synthes’s claim arises under federal law. However, determining the second Rule

4(k)(2) requirement—that the defendant not be subject to personal jurisdiction in any

state’s courts of general jurisdiction (the “negation requirement”)—poses practical

difficulties for a district court. Ordinarily, the plaintiff bears the burden of proof as to

whether the defendant is subject to personal jurisdiction. See 4 Charles Alan Wright &

Arthur R. Miller, Federal Practice and Procedure § 1068.1 (3d ed. 1988). Thus, under

the second Rule 4(k)(2) requirement, the plaintiff’s burden would be to prove that the

defendant is not subject to jurisdiction in any of the fifty states. Proving the lack of

personal jurisdiction in every state could be quite onerous, especially since the

defendant, and not the plaintiff, oftentimes possesses the necessary information to do

so. See United States v. Swiss Am. Bank, Ltd., 191 F.3d 30, 40–41 (1st Cir. 1999).

However, assigning the burden to the defendant forces the defendant to “choose

between conceding its potential amenability to suit in federal court or conceding

amenability to suit in some identified state court.” Id. at 41.

To address these concerns, the First Circuit has tailored a burden shifting

mechanism, where a

3
See e.g., Porina v. Marward Shipping Co., 521 F.3d 122, 127 (2d Cir.
2008); Holland Am. Line, 485 F.3d at 461; Cent. States, S.E. & S.W. Areas Pension
Fund v. Reimer Express World Corp., 230 F.3d 934, 940–41 (7th Cir. 2000); United
States v. Swiss Am. Bank, Ltd., 191 F.3d 30, 38 (1st Cir. 1999).

2008-1279 13
 plaintiff . . . must certify that, based on the information that is readily
available to the plaintiff and his counsel, the defendant is not subject to
suit in the courts of general jurisdiction of any state. If the plaintiff makes
out his prima facie case, the burden shifts to the defendant to produce
evidence which, if credited, would show either that one or more specific
states exist in which it would be subject to suit or that its contacts with the
United States are constitutionally insufficient.

Id. Under the First Circuit approach, the plaintiff must certify that the defendant is not

subject to suit in the courts of general jurisdiction of any state—a requirement that

presents practical difficulties for a plaintiff who prefers to plead in the alternative that the

defendant is subject to suit under a state’s long-arm statute.

The Fourth Circuit has seemingly adopted the First Circuit’s approach. See Base

Metal Trading, Ltd. v. OJSC “Novokuznetsky Aluminum Factory”, 283 F.3d 208, 215

(4th Cir. 2002). The Fourth Circuit, however, only engages in a Rule 4(k)(2) analysis if

the state’s long-arm statute fails to authorize the court’s exercise of personal jurisdiction

over the defendant. See CFA Inst. v. Inst. of Chartered Fin. Analysis of India, 551 F.3d

285, 292 (4th Cir. 2009) (“If the state’s long-arm statute fails to authorize the court’s

exercise of personal jurisdiction, we must then—and only then—decide whether Rule

4(k)(2) is satisfied.”). By analyzing personal jurisdiction under the state’s long-arm

statute first, the Fourth Circuit allows the plaintiff to argue in the alternative that a court

may exercise jurisdiction under a Rule 4(k)(1) or 4(k)(2) analysis. The First, Sixth, and

Eleventh Circuits also appear to conduct a personal jurisdictional analysis under the

state’s long-arm statute before proceeding to a Rule 4(k)(2) analysis. 4

4
See Oldfield v. Pueblo de Bahia Lora, S.A., No. 07-11958, 2009 WL
330935, at *4 n.22 (11th Cir. Feb. 12, 2009) (determining that the defendant lacked
sufficient contacts with Florida to satisfy its long-arm statute before conducting a Rule
4(k)(2) analysis); Fortis Corp. Ins. v. Viken Ship Mgmt., 450 F.3d 214, 218 (6th Cir.
2006) (“Because specific personal jurisdiction exists in this case based on defendants’

2008-1279 14
 The Fifth, Ninth, and D.C. Circuits have adopted a variation of the First Circuit’s

approach, which was first articulated by the Seventh Circuit:

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
appropriate state would amount to a consent to personal jurisdiction there.
. . . If, however, the defendant contends that he cannot be sued in the
forum state and refuses to identify any other state where suit is possible,
then the federal court is entitled to use Rule 4(k)(2). This procedure
makes it unnecessary to traipse through the 50 states, asking whether
each could entertain the suit.

ISI Int’l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548, 552 (7th Cir. 2001) (citations

omitted); see also Holland Am. Line, 485 F.3d at 461; Mwani v. bin Laden, 417 F.3d 1,

11 (D.C. Cir. 2005); Adams v. Unione Mediterranea Di Sicurta, 364 F.3d 646, 651 (5th

Cir. 2004). Under this approach, the court is entitled to use Rule 4(k)(2) unless the

defendant names a state where suit could proceed.

Finally, another approach is to conduct a due process analysis prior to a negation

requirement analysis. Under this approach, if it is concluded that the defendant’s

contacts do not satisfy due process, it is not necessary to determine whether the

requirements for application of Rule 4(k)(2) are met. 5

The third requirement under Rule 4(k)(2)—the due process analysis—

contemplates a defendant’s contacts with the entire United States, as opposed to the

contacts with Ohio, we do not address the requirements for general jurisdiction and the
‘national contacts’ test.”); Swiss Am. Bank, 191 F.3d at 37 (analyzing personal
jurisdiction under relevant state long-arm statute before proceeding to Rule 4(k)(2)
analysis).
5
See, e.g., Porina, 521 F.3d at 127 n.6 (“Given our conclusion on the due
process issue, we do not find it necessary to decide whether the second requirement for
Rule 4(k)(2) jurisdiction is met.”); BP Chems. Ltd. v. Formosa Chem. & Fibre Corp., 229
F.3d 254, 259 (3d Cir. 2000) (deciding that the defendant’s contacts were not sufficient
to warrant the district court’s assertion of personal jurisdiction and never reaching the
other two requirements of Rule 4(k)(2)).

2008-1279 15
state in which the district court sits. See Fed. R. Civ. P. 4(k)(2) advisory committee

notes to 1993 amendment (explaining that the Fifth Amendment, the basis of jurisdiction

under Rule 4(k)(2), “requires that any defendant have affiliating contacts with the United

States sufficient to justify the exercise of personal jurisdiction over that party”). Rule

4(k)(2) was adopted to ensure that federal claims will have a U.S. forum if sufficient

national contacts exist. See id. (“[Rule 4(k)(2)] authorizes the exercise of territorial

jurisdiction over the person of any defendant against whom is made a claim under any

federal law if that person is subject to personal jurisdiction in no state.”). The rule

closes a loophole that existed prior to the 1993 amendments to the Federal Rules, as

explained by the advisory committee notes to Rule 4(k)(2):

Under the former rule, a problem was presented when the defendant was
a non-resident of the United States having contacts with the United States
sufficient to justify the application of United States law and to satisfy
federal standards of forum selection, but having insufficient contact with
any single state to support jurisdiction under state longarm legislation or
meet the requirements of the Fourteenth Amendment limitation on state
court territorial jurisdiction. In such cases, the defendant was shielded
from the enforcement of federal law by the fortuity of a favorable limitation
on the power of state courts, which was incorporated into the federal
practice by the former rule. In this respect, the revision responds to the
suggestion of the Supreme Court made in Omni Capital Int’l v. Rudolf
Wolff & Co., Ltd., 484 U.S. 97, 111 (1987). 6

6
In Omni Capital International, the Supreme Court held that the district
court could not “exercise personal jurisdiction over [the defendants] because they [were]
not amenable to service of summons in the absence of a statute or rule authorizing
such service.” 484 U.S. at 103. The Court noted, but did not address, whether, under
the plaintiff’s theory, “a federal court could exercise personal jurisdiction, consistent with
the Fifth Amendment, based on an aggregation of the defendant’s contacts with the
Nation as a whole, rather than on its contacts with the State in which the federal court
sits.” Id. n.5.

2008-1279 16
Id. Rule 4(k)(2), therefore, serves as a federal long-arm statute, which allows a district

court to exercise personal jurisdiction over a foreign defendant whose contacts with the

United States, but not with the forum state, satisfy due process.

III.

We turn now to this case. As seen, the district court concluded that Rule 4(k)(2)

governed its personal jurisdictional analysis because Synthes’s claim of patent

infringement presents a federal question, and because GMReis asserted that it was not

subject to the jurisdiction of any U.S. forum. For our part, we see no reason to take a

different approach. As to the first Rule 4(k)(2) requirement, we agree with the district

court and the parties that Synthes’s patent infringement claim arises under federal law.

See 28 U.S.C. § 1338 (2006). As to the second Rule 4(k)(2) requirement, neither

Synthes nor GMReis disputes the district court’s acceptance of GMReis’s contention

that it is not subject to personal jurisdiction in any forum in the United States. Under

these circumstances, we will apply a due process analysis under Rule 4(k)(2) and

consider GMReis’s contacts with the nation as a whole. We leave for another day a

determination as to (i) whether the plaintiff or defendant bears the burden of fulfilling the

second requirement of Rule 4(k)(2), (ii) what sort of showing satisfies that burden, and

(iii) whether the district court, in the first instance, must undergo a Rule 4(k)(1) analysis

before engaging in a Rule 4(k)(2) analysis.

“[D]ue process requires only that in order to subject a defendant to a judgment in

personam, [the defendant must] have certain minimum contacts with [the forum] such

that the maintenance of the suit does not offend ‘traditional notions of fair play and

substantial justice.’” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (quoting

2008-1279 17
Milliken v. Meyer, 311 U.S. 457, 463 (1940)). In order for there to be minimum contacts,

“it is essential in each case that there be some act by which the defendant purposefully

avails itself of the privilege of conducting activities within the forum [ ], thus invoking the

benefits and protections of its laws.” Hanson v. Denckla, 357 U.S. 235, 253 (1958).

“This purposeful availment requirement ensures that a defendant will not be haled into a

jurisdiction solely as a result of random, fortuitous, or attenuated contacts . . . .” Burger

King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985) (quotation marks omitted).

Depending on their nature and number, a defendant’s contacts with a forum can

provide a court with general jurisdiction or specific jurisdiction. To be subject to general

jurisdiction, a defendant business entity must maintain “continuous and systematic

general business contacts” with the forum, even when the cause of action has no

relation to those contacts. Helicopteros Nacionales, 466 U.S. at 416. “Neither the

United States Supreme Court nor this court has outlined a specific test to follow when

analyzing whether a defendant’s activities within a [forum] are ‘continuous and

systematic.’” LSI Indus. Inc. v. Hubbell Lighting, Inc., 232 F.3d 1369, 1375 (Fed. Cir.

2000).

We have, however, outlined a three-factor test for specific jurisdiction, which

considers whether (1) the defendant purposefully directed its activities at residents of

the forum, (2) the claim arises out of or relates to the defendant’s activities with the

forum, and (3) assertion of personal jurisdiction is reasonable and fair. Elecs. for

Imaging, 340 F.3d at 1350; see also Burger King, 471 U.S. at 472–73 (citing Keeton v.

Hustler Magazine, Inc., 465 U.S. 770, 774 (1984), and Helicopteros Nacionales, 466

U.S. at 414). Under this test, a court may properly assert specific jurisdiction, even if

2008-1279 18
the contacts are isolated and sporadic, so long as the cause of action arises out of or

relates to those contacts. Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1200

(Fed. Cir. 2003). Indeed, a “substantial connection” with a forum arising out of a “single

act can support jurisdiction.” Burger King, 471 U.S. at 475 n.18 (citing McGee v. Int’l

Life Ins. Co., 355 U.S. 220, 223 (1957)).

Turning to the facts of this case, we think the district court was correct in ruling

that it did not have general jurisdiction over GMReis. Synthes, 2008 WL 789925, at *4.

GMReis’s contacts with the United States include attendance at trade shows, purchases

of parts and a machine, the sale of a product for a veterinary application to one

customer, and a pair of consultations about product development. In our view, these

contacts with the United States do not constitute “continuous and systematic general

business contacts,” which would confer a court with general jurisdiction under

Helicopteros Nacionales, 466 U.S. at 415–16. Indeed, on appeal, Synthes does not

contest the district court’s general jurisdiction ruling.

We think the district court erred, however, in its ruling that it lacked specific

jurisdiction over GMReis. Applying the first factor of our three-factor test for specific

jurisdiction, we conclude that GMReis purposefully directed its activities at parties in the

United States. The following undisputed facts support this conclusion. On behalf of

GMReis, Mr. Lecumberri brought locking bone plates into the United States from Brazil.

As representatives of GMReis, Mr. dos Reis and Mr. Lecumberri displayed those items

at the GMReis booth at the 2007 AAOS Meeting in San Diego, California. In addition, in

their declarations, Mr. dos Reis and Mr. Lecumberri admitted that they attended the

AAOS Meeting because GMReis wanted to display its products to attendees of the

2008-1279 19
trade show. In fact, in its motion to dismiss, GMReis noted that its participation in the

2007 AAOS Meeting was part of its international sales effort. Together, these deliberate

contacts support a finding that GMReis purposefully availed itself of the United States.

As for the second factor, Synthes’s claim of patent infringement arises out of

GMReis’s activities in the United States. Synthes’s complaint alleges that GMReis has

been, and still is, making, using, offering for sale, selling, and/or importing into the

United States products, systems, and/or apparatuses that infringe the ’744 patent, all in

violation of 35 U.S.C. § 271(a). Synthes states in the complaint that GMReis is subject

to personal jurisdiction because GMReis directly and through agents imported into the

United States, and/or offered to sell, locking plates that infringe Synthes’s ’744 patent.

Synthes also states that GMReis displayed the locking plates at the 2007 AAOS

Meeting for the purpose of generating interest in infringing products, to the commercial

detriment of Synthes. Synthes’s claim of patent infringement, therefore, arises directly

out of GMReis’s bringing the locking bone plates into the United States, displaying them

at the 2007 AAOS Meeting in San Diego, and trying to generate interest in GMReis

products among attendees of the trade show.

We respectfully disagree with the district court’s conclusion that GMReis did not

purposefully direct its activities at U.S. residents because “GMReis expressly

discouraged the forum residents from purchasing its products.” Synthes, 2008 WL

789925, at *4. We acknowledge, as the district court did, that “Synthes does not

dispute that GMReis did not have FDA approval for sale or use of its products in the

United States, that its trade show displays and brochures prominently disclosed that

fact[,] or that its intent was to attract interest from potential foreign purchasers and not

2008-1279 20
purchasers from the United States.” Id. However, while these facts do tend to show

that GMReis’s sales efforts were purposefully not directed at U.S. residents, they do not

change the undisputed facts that GMReis purposefully directed its travel with the

sample locking bone plates to the United States and then displayed those products at a

trade show in the United States attended by U.S. residents. GMReis was present in the

United States through two of its employees (including its Chief Executive Officer), both

of whom conducted company business at the trade show.

We see no reason to address, as both parties urge, whether Synthes made a

prima facie showing that GMReis’s activities in the United States constituted patent

infringement under 35 U.S.C. § 271(a). As noted by the district court, personal

jurisdiction, not liability for patent infringement, is at issue here. Id. at *5 (quoting

Genetic Implant, 123 F.3d at 1458). In short, the sole question before us is whether

exercising jurisdiction over GMReis comports with due process. 7 Therefore, we

express no view as to whether Synthes has made a prima facie showing of importation,

offer to sell, or use within the meaning of § 271(a).

Because we find that GMReis’s activities within the United States were sufficient

to establish minimum contacts, we turn to a consideration of whether assertion of

7
In Medical Solutions, Inc. v. C Change Surgical LLC, 541 F.3d 1136,
1139–40 (Fed. Cir. 2008), we were called upon to determine whether the plaintiff had
made a prima facie showing that the defendant had violated 35 U.S.C. § 271(a). We
had to address this question because, in asserting personal jurisdiction over the
defendant, the plaintiff relied on the District of Columbia’s long-arm statute, which
renders personal jurisdiction proper over a non-resident defendant who “caus[es]
tortious injury in the District of Columbia by an act or omission in the District of
Columbia.” The “tortious injury” requirement is not present in this case. The reason is
that our sole inquiry is whether GMReis has sufficient minimum contacts with the United
States so that the exercise of personal jurisdiction under Rule 4(k)(2) comports with due
process.

2008-1279 21
jurisdiction over GMReis is reasonable and fair. To determine whether exercising

personal jurisdiction would comport with “fair play and substantial justice,” we consider

five factors: (1) the burden on the defendant, (2) the forum’s interest in adjudicating the

dispute, (3) the plaintiff’s interest in obtaining convenient and effective relief, (4) the

interstate judicial system’s interest in obtaining the most efficient resolution of

controversies, and (5) the shared interest of the states in furthering fundamental

substantive social policies. Burger King, 471 U.S. at 477 (quoting World-Wide

Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980)). These factors may serve to

“establish the reasonableness of jurisdiction upon a lesser showing of minimum

contacts than otherwise would be required,” but they may also establish a “compelling

case” that would “render jurisdiction unreasonable” despite the presence of minimum

contacts. Id.

We conclude that application of the five factors establishes that exercising

personal jurisdiction in this case is both reasonable and fair. The burden on GMReis is

significant, in that GMReis will be required to traverse the distance between its

headquarters in Brazil and the district court in California, and will be required to submit

itself to a foreign nation’s judicial system. See Asahi Metal Indus. Co. v. Cal. App. Dep’t

Super. Ct., 480 U.S. 102, 114 (1987). We note, however, that “progress in

communications and transportation has made the defense of a lawsuit in a foreign

tribunal less burdensome.” World-Wide Volkswagen, 444 U.S. at 294 (quoting Hanson,

357 U.S. at 251) (quotation marks omitted). In addition, for at least the last five years,

GMReis representatives have traveled to the United States for, among other things,

2008-1279 22
trade shows, which suggests that, as far as GMReis is concerned, travel itself is not

unduly burdensome.

Moreover, we think that any burden on GMReis is sufficiently outweighed by the

interest of the United States in adjudicating the dispute and the interest of Synthes in

obtaining effective and convenient relief, the second and third due process factors. The

United States has a “substantial interest” in enforcing the federal patent laws. See

Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found., 297 F.3d 1343,

1356 (Fed. Cir. 2002). The United States also has an interest in discouraging injuries

that occur within its boundaries, including injuries resulting from patent infringement.

See Beverly Hills Fan, 21 F.3d at 1568. In this case, the extent of the injury resulting

from the alleged patent infringement in the United States is unclear. Synthes claims

that GMReis has imported allegedly infringing locking bone plates into the United States

in violation of 35 U.S.C. § 271(a), and that the value of the ’744 patent is diminished by

GMReis’s use of the United States as a platform for its commercial activities. GMReis

counters, however, that the dispute between Synthes and GMReis amounts to only

$105—the value of the five GMReis locking bone plates displayed at the 2007 AAOS

Meeting. While we express no view as to Synthes’s likelihood of success on the merits,

we are not prepared to say that Synthes has failed to allege an injury for which it has an

interest in obtaining relief. In short, we conclude that Synthes has an interest in

obtaining a judgment of infringement and injunctive relief.

To the extent that the fourth and fifth due process factors apply when the United

States is the forum, we think they favor jurisdiction in this case. Both factors are

concerned with the potential clash of substantive social policies between competing fora

2008-1279 23
and the efficiency of a resolution to the controversy. Burger King, 471 U.S. at 477. As

far as the fourth factor is concerned, here the forum is the United States, so no other

U.S. forum is available to Synthes for its patent infringement claim. Put another way,

there is no U.S. forum with which to compare the efficiency of a resolution or with

respect to which there is a clash of social policies. If we look to the procedural and

substantive interests of other nations, we have no reason to believe that “the Federal

Government’s interest in its foreign relations policies” with Brazil will be hindered by

allowing the district court to exercise personal jurisdiction over GMReis. See Asahi

Metal Indus., 480 U.S. at 115.

As to the fifth due process factor, GMReis argues that the forum, the United

States, has an interest in furthering the social policy favoring the exchange of

technological ideas and business. We agree that the United States has an interest in

not chilling trade show attendance by foreign inventors, entrepreneurs, and customers.

However, we do not view our decision as barring convention center doors to foreign

entities. Interested parties, foreign and domestic, are welcome to attend trade shows in

the United States, set up booths, and discuss their products. If, however, as in this

case, a party brings allegedly infringing products to a trade show, we do not see the

Due Process Clause of the Fifth Amendment standing in the way of a district court’s

exercise of jurisdiction over the party.

In sum, this is not “one of those rare cases in which ‘minimum requirements

inherent in the concept of “fair play and substantial justice” . . . defeat the

reasonableness of jurisdiction even [though] the defendant has purposefully engaged in

forum activities.’” Asahi Metal Indus., 480 U.S. at 116 (Brennan, J., concurring in part

2008-1279 24
and concurring in judgment) (quoting Burger King, 471 U.S. at 477–78)). Accordingly,

we hold that subjecting GMReis to the jurisdiction of the district court is both reasonable

and fair.

CONCLUSION

For the foregoing reasons, we reverse the judgment of the district court

dismissing Synthes’s complaint for lack of personal jurisdiction. The case is remanded

to the district court for further proceedings.

COSTS

Each party shall bear its own costs.

REVERSED and REMANDED.

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