David L. Hildebrand appeals the judgments of the United States District Court for the Southern District of Ohio dismissing his case for want of prosecution, Hildebrand v. Steck Mfg. Co., No. C3-99-512 (S.D.Ohio Sept. 18, 2000) (order dismissing for want of prosecution), and granting default judgment to Steck Manufacturing Company, entering declaratory judgments of noninfringement, invalidity, and tortious interference with contract, Steck Mfg. Co. v. Hildebrand, No. C3-98-196 (S.D.Ohio Jan. 4, 2001) (order granting default judgment). Because the trial court erred in concluding that it had personal jurisdiction over Hildebrand, we reverse the judgments and remand the case.
Background
Hildebrand, a Colorado resident, invented socket wrenches, “Screw Offs,” for removing damaged car tire lug-nuts. In the fall of 1995, he filed for a United States patent and confidentially contacted two Ohio manufacturers, Mac Tools (“MAC”) and Mateo Tools (“MATCO”), to explore possible licensing agreements. None resulted. In late 1995, he discovered that MAC, MATCO, and two other Ohio corporations, Cornwell Quality Tools Company and Steck Manufacturing Company (“Steck”), were selling devices he claims were identical to his invention. The record shows that he mailed two cease and desist letters to MATCO and Steck, dated February 11, 1996, and February 15, 1996, respectively, and an alleged third to MAC. A sample set of tools, not for sale, accompanied the February 11 letter. The letters warned the recipients against potential infringement of his pending patent, warned of litigation, and suggested possible licensing agreements. He followed up his letters with isolated phone calls to MAC, MATCO, and Steck between February and April of 1996, and an additional letter to Steck dated December 9,1997.
Hildebrand’s patent issued on April 14, 1998, and he promptly notified the other parties. Consequently, MAC cancelled a $25,000 order for Steck’s product until such time as the viability of Hildebrand’s patent could be determined. In May of 1998, Steck filed an action in the Southern District of Ohio seeking a declaration of noninfringement, invalidity, and tortious interference with contract. Nine days later, Hildebrand filed a patent infringement suit against Steck in the District of Colorado. The Colorado court granted Steck’s motion to dismiss and transfer the case to Ohio. Hildebrand ceased participating in both actions. Determining that personal jurisdiction over Hildebrand was proper, the
Discussion
We apply Federal Circuit law to determine whether the district court properly exercised personal jurisdiction over out-of-state defendants in patent infringement cases. Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc.,
A district court may properly exercise personal jurisdiction over a non-consenting party outside the forum state if a two-step inquiry is satisfied. First, the party must be amenable to service of process under the appropriate state long-arm statute. Fed. R. Civ. Pro. 4(e), 4(k)(l)(A); Int’l Shoe Co. v. Washington,
1. The Ohio long-arm statute does not grant Ohio courts jurisdiction to the limits of the due process clause of the fourteenth amendment. Goldstein v. Christiansen,
The statute provides, in relevant part:
(A) A court may exercise personal jurisdiction over a person who acts directly or by an agent, as to a cause of action arising from the person’s: (1) Transacting any business in this state; ... (3) Causing tortious injury by an act or omission in this state; (4) Causing tor-tious injury in this state by an act or omission outside this state if he regularly does or solicits business, or engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed or services rendered in this state.
Ohio Rev.Code Ann. § 2307.382 (West 2001). Hildebrand was not transacting any business in the forum per section (A)(1). The mere solicitation of business by a foreign person does not constitute transacting business in the state. U.S. Sprint Communications Co. v. Mr. K’s Foods, Inc.,
Hildebrand did not cause tortious injury by an act in the state per section (A)(3). To satisfy (A)(3), both the tortious act and the injury must occur in Ohio. See Weller v. Cromwell Oil Co.,
Nor did Hildebrand cause tortious injury in the state by an act outside the state per section (A)(4). Ohio requires that business actually be transacted instate for the exercise of long-arm jurisdiction under section (A)(4). Hoover Co. v. Robeson Indus.,
Moreover, the causal link between Hildebrand’s warning letters and MAC’s cancellation of its contract with Steck for the purposes of (A)(3) and (A)(4) is tenuous at best. Hildebrand’s contact was neither tortious, nor caused the cancelled contract. He properly notified MAC that he held a patent, and that MAC’s purchase of Steck’s products would likely infringe his patent. MAC then fulfilled its legal duty to avoid infringement and cancelled its order with Steck until such time as the status of Hildebrand’s patent could be determined. See Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389,
2. Federal Circuit law applies to our federal due process inquiry. Beverly Hills Fan Co.,
In Akro, we found that jurisdiction over the out-of-state defendant patentee, Luker,
Red Wing held that exercising jurisdiction over a declaratory judgment defendant patentee based on three warning letters mailed into the forum state, even if coupled with licensing offers, was not constitutionally sound.
In the present case, Hildebrand’s contacts with the forum do not amount to significantly more than those present in Red Wing. All of his documented contacts were for the purpose of warning against infringement or negotiating license agreements, and he lacked a binding obligation in the forum. See also Inamed Corp. v. Kuzmak,
The Ohio district court thought that this case is more like Akro than Red Wing. The court recognized that Hildebrand’s cease and desist letters coupled with offers to negotiate licensing agreements were insufficient under Akro to create jurisdiction. But it relied on the additional facts that he mailed a sample set of tools to MATCO in 1996 as part of an offer to do business, and that his cease and desist letter to MAC precipitated a cancelled order, to assert jurisdiction. We do not agree that these were significant additional contacts.
The inclusion of the sample with the February 11 letter to MATCO was part of the offer to negotiate a licensing agreement. The set of tools was a prototype, not for sale, intended only to generate MATCO’s interest in purchasing the design. The device was not injected into the forum for any purpose other than to negotiate a license. It does not constitute a separate contact, and therefore falls squarely within the boundary of Red Wing. Likewise, the cancellation of MAC’S order may not be attributed to Hildebrand as a separate contact with the forum. The alleged warning letter to MAC was the contact with the forum. The information contained in the letter, that Hildebrand held a valid patent, invoked MAC’s affirmative duty to avoid infringement. Prudence precipitated the cancellation. The accumulation of Hildebrand’s contacts with Ohio do not create a constitutionally adequate basis for personal jurisdiction.
Accordingly, the judgments of the United States District Court for the Southern District of Ohio are reversed and the case is remanded for further proceedings consistent with this opinion.
REVERSED AND REMANDED.
Notes
. Akro Corp. v. Luker stated that the " 'transacting any business' portion of the Ohio long-arm statute extends to the greatest reach of due process.”