Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262 (2010)
`94 U.S.P.Q.2d 1917
`
`KeyCite Yellow Flag - Negative Treatment
`Distinguished by Asetek Holdings, Inc. v. CoolIT Systems Inc.,
`N.D.Cal., December 3, 2013
`
`
`
`603 F.3d 1262
`United States Court of Appeals,
`Federal Circuit.
`
`BRADFORD COMPANY, Plaintiff–Appellant,
`v.
`CONTEYOR NORTH AMERICA, INC., Defendant,
`and
`Conteyor Multibag Systems
`N.V., Defendant–Appellee.
`
`No. 2009–1472.
`|
`April 29, 2010.
`|
`Rehearing Denied June 10, 2010.
`
`Synopsis
`Background: Owner of patents claiming collapsible shipping
`containers with
`integrally supported dunnage brought
`infringement action against competitor and its Belgian parent
`company. The United States District Court for the Southern
`District of Ohio, Sandra S. Beckwith, Senior District Judge,
`628 F.Supp.2d 756, granted competitor summary judgment
`on infringement claims, granted summary judgment that
`claims of one patent were not entitled to earlier filing date,
`2008 WL 974043, and dismissed Belgian parent company
`for lack of personal jurisdiction, 560 F.Supp.2d 612. Patent
`owner appealed.
`
`Holdings: The Court of Appeals, Lourie, Circuit Judge, held
`that:
`
`[1] owner was estopped from arguing for earlier priority date;
`
`[2] term “coupled to” in patents was to be construed broadly
`so as to allow indirect attachment to container frame; and
`
`[3] district court imposed improper burden on plaintiff to
`establish personal jurisdiction over Belgian parent.
`
`Affirmed in part, reversed in part, and remanded.
`
`Attorneys and Law Firms
`
`*1263 Gregory F. Ahrens, Wood, Herron & Evans, LLP, of
`Cincinnati, OH, 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, MI, argued for defendant-appellee. With him on the
`brief were Michael E. Hilton and Allen E. Pittoors.
`
`Before LOURIE, CLEVENGER, and RADER Circuit
`Judges.
`
`Opinion
`
`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 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 *1264 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.
`
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`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262 (2010)
`94 U.S.P.Q.2d 1917
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`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
`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 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
`*1265 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 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
`
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`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262 (2010)
`94 U.S.P.Q.2d 1917
`
`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:
`
`*1266 FIG. 1
`
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`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262 (2010)
`94 U.S.P.Q.2d 1917
`
`FIG. 1A
`
`judgment of
`summary
`for
`their motion
`to
`Prior
`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, at *9, in its subsequent ruling on the
`ConTeyor defendants' invalidity motion, the court had held
`that the asserted claims were not anticipated by *1267 prior
`
`art containers in which the dunnage is coupled to support
`bars or support rails, Bradford Co. v. Afco Mfg., No. 05–449,
`2007 WL 4739175, 2007 U.S. Dist. LEXIS 31975 (S.D.Ohio
`May 7, 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
`
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`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262 (2010)
`94 U.S.P.Q.2d 1917
`
`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 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:
`
`FIG. 4
`
`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 *1268
`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 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.
`
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`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262 (2010)
`94 U.S.P.Q.2d 1917
`
`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.
`
` [2]
`[1]
` 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 ′ *1269 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 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., 598
`F.3d 1336, 1350–51 (Fed.Cir.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”).
`
`[3]
` However, we also agree with the district court that
`Bradford is estopped from arguing for an earlier priority date
`
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`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262 (2010)
`94 U.S.P.Q.2d 1917
`
`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 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 *1270 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.
`
`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.
`
` [6]
` [5]
`[4]
` 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).
`
`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
`WL 4739175, 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 *1271 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
`
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`94 U.S.P.Q.2d 1917
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`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 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, 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 *1272 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 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.
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`8
`
`8
`
`

`
`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262 (2010)
`94 U.S.P.Q.2d 1917
`
`[7]
` 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 possessed personal jurisdiction
`over the defendant even though the defendant was not subject
`to Virginia's courts of general jurisdiction. Id.
`
`[8]
` 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 *1273 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
`REMANDED
`
`IN PART, REVERSED
`
`IN PART, and
`
`COSTS
`
`Costs to Bradford.
`
`All Citations
`
`603 F.3d 1262, 94 U.S.P.Q.2d 1917
`
`Footnotes
`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 ”).
`See Bradford Co. v. Afco Mfg., No. 05–449, 2008 WL 974043 (S.D.Ohio Apr. 8, 2008) (“Priority Opinion ”).
`See Bradford Co. v. Afco Mfg., 560 F.Sup