Celgard, LLC v. Sk Innovation Co., Ltd.
792 F.3d 1373
| Fed. Cir. | 2015Background
- Celgard, a North Carolina battery-separator patent holder (U.S. Patent No. 6,432,586), sued SK Innovation Co., Ltd. (SKI), a Korea-based separator manufacturer, for patent infringement in the Western District of North Carolina.
- Celgard alleged SKI’s separators (used in EVs and consumer electronics) were sold or offered for sale into North Carolina, relying on (a) advertisements by two North Carolina Kia dealers tied to a Kia/SKI-related joint venture for the 2015 Kia Soul EV, and (b) a stream-of-commerce theory based on SKI sales to OEMs whose products are sold nationwide including North Carolina.
- SKI submitted declarations that it sells only to customers outside the United States, has no sales channels in North Carolina, and lacks control over downstream distributors; SKI consented to jurisdiction in New York but not North Carolina.
- The district court granted jurisdictional discovery; after discovery, the magistrate judge and district court found little or no contacts between SKI and North Carolina and dismissed for lack of personal jurisdiction.
- On appeal, the Federal Circuit reviewed de novo, applied the prima facie standard for jurisdictional facts, and considered: (1) purposeful-direction (including imputation via agency/alter ego) and (2) stream-of-commerce theories of specific personal jurisdiction.
- The court affirmed dismissal, holding Celgard failed to show SKI purposefully directed activities to North Carolina (no evidence of control/agency or alter-ego with the dealers/KMA/KMC) and failed to show SKI’s products actually entered or were foreseeable in North Carolina under stream-of-commerce.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether SKI purposefully directed activities to NC via Kia dealers/marketing for the 2015 Soul EV | Dealer ads and SKI’s joint-venture involvement with Kia show purposeful direction and offers for sale in NC | Dealers acted independently; SKI had no control or agency relationship with dealers; no evidence linking SKI to the ads | No jurisdiction: Celgard failed to show SKI directed activities to NC or that dealers’ unilateral acts can be imputed to SKI |
| Whether third-party conduct (dealers/KMA/KMC) can be imputed to SKI under agency or alter-ego theories | Impute dealers’ contacts through KMA/KMC joint venture and distribution chain to establish jurisdiction | No evidence SKI controlled dealers, or that dealers were alter egos; no profit-flow or common-control evidence | No jurisdiction: Celgard failed to establish requisite control or alter-ego relationships to impute contacts |
| Whether SKI is subject to personal jurisdiction under a stream-of-commerce theory | SKI placed separators into CE/OEM distribution channels that reach NC; test evidence is consistent with SKI separators in devices bought in NC | Celgard produced no direct evidence any accused SKI product was in NC; tests are inconclusive and SKI is not sole supplier | No jurisdiction: Celgard failed under either the foreseeability standard or the “something more” standard—no proof SKI’s products actually entered or were foreseeable in NC |
Key Cases Cited
- Int’l Shoe Co. v. Washington, 326 U.S. 310 (due process minimum contacts framework)
- Hanson v. Denckla, 357 U.S. 235 (unilateral acts of third parties do not establish defendant contacts)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (foreseeability and reasonable anticipation of suit)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (purposeful availment and foreseeability)
- Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 102 (stream-of-commerce formulations)
- McIntyre Machinery, Ltd. v. Nicastro, 131 S. Ct. 2780 (plurality on stream-of-commerce and purposeful availment)
- Daimler AG v. Bauman, 134 S. Ct. 746 (agency/distributor contacts can establish jurisdiction when directed by defendant)
- Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344 (Fed. Cir. standards for personal jurisdiction review)
- Grober v. Mako Prods., Inc., 686 F.3d 1335 (Fed. Cir. review standards for patent jurisdictional issues)
- Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222 (alter-ego imputation of contacts)
- Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (no agency where defendant lacks control)
- Pieczenik v. Dyax Corp., 265 F.3d 1329 (when preponderance standard applies after discovery)
- Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found., 297 F.3d 1343 (prima facie burden and resolving factual disputes in plaintiff's favor)