Touchcom, Inc. v. Bereskin & Parr

order; decision, despite that is to the fact that in that ruling date the case of date, forty days say, appellant alleged within the that he had never from taken, be and not appeal that the must copy been mailed a of the decision because sending notice the order to the time of an error the Board. It should also of of against whom it is made. party the any noted that the delay existence of The terms of the rule must be allowed mailing imposes the decision no unfair bur- ordinary meaning import, and their parties den because there is a they plainly limit the commencement of lengthy period appeal and because the period forty days, within which power Board has the to extend time still taken, appeal can be from the date further in situations where there is “excus- from, excluding the appealed the order neglect.” able See C.F.R. time to be day of the date. To allow the 1.304(a)(3)(h). § There is no claim here event, any other act or computed from appellant adequate that the did not have proceeding, of the would in the course prepare appeal. time to his certainly not be within the terms of the view, In my because the date of decision rule, but, contrary, on the would be 30, 2008, May in this case was we do not plainly violative of those terms. pursuant review (emphases Id. modified and citations omit- untimely appeal 1, notice of August filed ted). view, my the court in Burton such, 2008. As I would ap- dismiss this correctly decided that the date of decision peal. opinion signed, was the date the was not opinion such the date the was mailed. As case; apply

the same rule should to this computed allow the time to be from

“[t]o plainly other act or event ... would be violative of the of the Id. [terms rule].” TOUCHCOM, INC. Touchcom This view is also reflected the decision Technologies, Inc., Plaintiffs- predecessors, of one of this court’s Appellants, Appeals. Court of Customs and Patent v. The Court referred to the “date relevant appealed of the decision from” in In re PARR BERESKIN & and H. Samuel Reese, 462, Frost, Defendants-Appellees. 53 C.C.P.A. (1966), as the date that the decision itself No. 2008-1229. dated, stating: “The decision on the petition Appeals, United States Court of September was dated [period prior which started the Federal pro- Circuit. running.”

vision] Aug. 2009. Brown, Additionally, in Barbacid v. Rehearing Sept. Denied 2009. (Fed.Cir.2007), Fed.Appx. court held in a non-precedential decision filing appeal “the time for to this

Court is two months from the date

decision of the Board. The time is not receipt

measured from the date of

Board’s decision but from the date of the rejected

decision court itself.” This

mailing date in favor of the date

Opinion by for the court filed Circuit Judge Dissenting opinion LOURIE. filed Judge Circuit PROST. LOURIE, Judge. Circuit Touchcom, Inc. and Touchcom Technolo- “Touchcom”) gies, (collectively Inc. appeal judgment from the final of the United States District for the Eastern Dis- Court Virginia dismissing trict of Touchcom’s malpractice against suit the law firm of (“B P”) attorney Bereskin & Parr & Touchcom, H. Samuel Frost. Inc. v. Parr, 07-CV-114, slip op. Bereskin & No. (E.D.Va. at 1 Feb. The district court dismissed Touchcom’s suit for lack of Because the court in determining erred that it did not have B & P and Frost, we reverse.

BACKGROUND Hollidge, principals Peter one of the Touchcom, Inc., aspects invented of a pump system designed to allow a system user to control the via a central 1987, processing unit. he B retained & P, a property Canadian intellectual law firm, Frost, specifically H. a Samuel office, Mississauga in B & P’s partner prosecute necessary patent file and Benson, Kasowitz, Korpus, Sheron Tor- Hollidge sought patent pro- applications. Friedman, LLP, York, NY, res & of New Canada, tection for his invention him argued plaintiffs-appellants. for With States, European United and various coun- on the brief was Michael S. Shuster. B P an tries. & and Frost entered into agreement Hollidge regarding oral Ashley, Thompson Luke Knight G. & patent prosecution. L.L.P., Dallas, TX, argued for defen- prepared patent appli- Frost a Canadian him dants-appellees. With on the brief Hollidge’s cation on invention that was Martin, Heinlen; were John H. J. Michael 6, filed on August 1987.1 The Canadian Strand, Shook, E. Hardy and Peter & ultimately which issued as application, Ca- L.L.P., Washington, Bacon DC. 1,301,929, nadian Patent contained the GAJARSA, LOURIE, Before complete Hollidge’s source code for inven- (filed PROST, 1,301,929 Judges. Circuit tion.2 Can. Patent No. Wilkes, attorney, 1. A second Robert assisted this case. Wilkes is not a defendant in this action. prosecuting patents Frost in the relevant 1987, Hollidge assigned

2. On December his 1987) (issued entity declarations special, That and small May Aug. code, by Hollidge from and Touchcom. It is signed its omission particularly source Frost, in the application other mem- subsequent patent alleged a not States, of Touch- is at the heart P, United physically Virginia ber of B & entered P against B & and present action com’s prosecute patent. the Touchcom On (collectively, “appellees”). (filed Frost 5,027,282 25, 1991, Patent June 28, 1988), claiming the interactive Dec. on Touch- patent protection To obtain pump system, issued to Touchcom. Canada, outside of Frost com’s invention Cooperation under the Patent opted to file years obtaining after its U.S. Several (“PCT”). a uni- Treaty provides The PCT patent in- patent, Touchcom filed two filing single patent for procedure fied in the U.S. District fringement actions Under application multiple countries. for the Eastern District of Texas. Court applicant first files a process, the PCT actions, In one of the district court those participating in one patent application patent held that Touchcom’s was invalid Bureau of the country. The International Touchcom, Inc. v. indefiniteness. Property Organization Intellectual World Dresser, Inc., F.Supp.2d (‘WIPO”), request, cop- then transmits (E.D.Tex.2005). court much premised national application ies of the to domestic finding of its of indefiniteness on the ab- patentee. patent offices selected portions sence of of the source code from “national filings Those are referred to as patent. Touchcom’s Id. phase entries.” August On Touchcom filed 5, 1988, Frost filed a PCT August On against appellees in the malpractice action Kingdom cover- application in the United the District of Colum- Superior Court for ap- That ing Touchcom’s invention. PCT subsequently the Appellees bia. removed plication, application, unlike the Canadian case to the District Court for the U.S. complete computer did not contain the 3, 2006, District of Columbia. On October invention; portion source code for the a voluntarily Touchcom dismissed the D.C. unintentionally the source code was omit- and, day, following action on the re-filed 29, 1989, ted. On December WIPO trans- Arlington the case in the circuit court of phase applica- mitted and filed a national County, Virginia. tion in the United States Patent and (“USPTO”), 30, 2007, January appellees removed Trademark Office which is lo- On Alexandria, Virginia. County cated in The U.S. action to the Arlington the ap- application was identical to the British the Eastern District of District Court for plication; por- it also lacked the omitted thereafter, Virginia. Shortly appellees computer tion of source code. the complaint moved to dismiss the for lack of personal jurisdiction pursuant to Federal perfect application, In order to the U.S. 12(b)(2). Rule of Procedure Touch- Civil Frost transmitted various documents to com moved to remand the case to state letter, USPTO, including a transmittal jurisdic- court for lack of matter fees, applicable a cover letter that outlined stayed tion. The district court then inventorship a executed and declaration pending our decision in Air proceedings Additionally, by Hollidge. Frost submit- (not Technologies, Measurement Inc. v. Akin preliminary ted a amendment related Feld, code), petition Gump a make Strauss Hauer & to the source point of refer- corn’s from this forward. invention to Touchcom. For ease ence, we will refer to the invention as Touch- (Fed.Cir.2007). Virginia by an act or omission outside of That decision was 15, 2007, Furthermore, and the dis- Touchcom Virginia. on October claims entered stay one month later. trict court lifted its appellees possess required “mini- Virginia mum contacts” with such that ex- district court February On jurisdiction personal appel- ercise of over motions, including pending on all ruled not be lees would inconsistent notions under Fed. motion to dismiss appellees’ justice. play of fair and substantial 12(b)(2) juris- personal for lack of R.Civ.P. Touchcom, v. & Inc. Bereskin diction. response, appellees urge In us to affirm Parr, 07-CV-114, slip op. at 31 No. finding the district court’s that it lacked (E.D.Va. preliminary As a Feb. specific jurisdiction appellees. Appel- over matter, court, our relying on decisions Virginia’s long-arm lees claim that statute Immunocept, and in Air Measurement jurisdiction does not confer over Frost or LLP, Fulbright LLC v. & Jaworski alleged malpractice B & P because the (Fed.Cir.2007), pos- found that it F.3d does not arise out of business transacted in jurisdiction subject matter sessed Virginia or from the transmission docu- Touchcom, 07- Touchcom’s claim. No. Appellees ments to the USPTO. further CV-114, Thus, op. at the court slip 8-18. Virginia long-arm argue statute B & P and Frost’s motion to re- denied does not establish because the mand the case to state court. Id. at 17-18. alleged malpractice was not tortious act granted The court then Touchcom’s if Virginia. Virgi- committed Even 12(b)(2) the case for motion dismissed nia long-arm statute conferred lack of Id. at 18-30. claim it does so, doing analysis the court focused its not, appellees argue finding personal particular requirements Vir- jurisdiction in this case would violate due and concluded that ginia long-arm statute process. plead Touchcom had failed to facts suffi- question presented in this case is satisfy requirements. cient to those Id. at viz., impression, one of first whether the (“[T]he possess specific Court does not filing application act of pat- for U.S. within the over Defendants subject statute.”). ent the USPTO is sufficient to Virginia’s long-arm meaning of filing attorney jurisdiction to personal timely appealed Touchcom the district that malpractice upon in a claim is based jurisdiction judgment. court’s We have in filing brought that and is federal court. 1295(a)(1). § under 28 U.S.C. below, For the reasons discussed we con- clude that it is. DISCUSSION that court argues Touchcom the district A Review Standard of personal erred when it found that it lacked We review whether the district jurisdiction appellees. over Touchcom jurisdiction personal appel court had over that, contrary to contends the court’s find- Sys., a novo 3D lees under de standard. with the ing, appellees’ contacts Common- Labs., Inc., Inc. v. Aarotech 160 F.3d satisfy of were sufficient to Virginia wealth (Fed.Cir.1998). “While we defer to Virginia long-arm statute and establish a interpretation long-arm of state’s jurisdiction In specific appellees. over court, given by highest that state’s statute claim, alleges Touchcom support of whether or not the statute is particularly Virgi- in appellees transacted business limit of federal due nia, intended to reach the supply things services or contracted jurisdic- injury process, analyzing personal in when Virginia, and caused tortious jurisdiction a defendant establishes over compliance of with feder- purposes for tion law, jurisdiction rather a subject “who of process, al Federal Circuit is due law, applies.” Id. regional general jurisdiction than circuit in the state court of omitted). (citations court located.” Fed. where the district 4(k)(l)(A). Pursuant to Rule R.Civ.P. court decided the district Because 4(k)(l)(A), addressing per a court federal jurisdiction pretrial personal appellees’ ap jurisdiction sonal over defendant conducting hearing, motion without inquiry by analyzing proaches such only a prima must make Touchcom facie governing principles long-arm statute person court had showing that the district id.; also CFA of the forum state. See see in order to jurisdiction al over Analysts v. Fin. Inst. Inst. Chartered Imaging, appeal. succeed on Elecs. Cir.2009) (4th India, 285, 292 551 F.3d (Fed.Cir. 1344, 1349 Coyle, Inc. v. 340 F.3d (“[A] assessing juris such a federal court Touchcom evaluating whether ap applies dictional issue borrows and burden, accept the uncon has met its we long-arm governing statute and plicable in Touchcom’s com allegations troverted state.”). Rule principles from the forum any plaint as true and resolve factual con 4(k)(2), hand, ju on the other establishes flicts Touchcom’s favor. Id. process risdiction over a defendant when may personal jurisdic Courts exercise requirements has been served and three on either of two bas tion over defendants “(1) plaintiffs are met: claim arises jurisdiction. general specific es: (2) law, under federal the defendant is not (U.S.A.) Synthes v. Dos Reis Jr. Ind. G.M. jurisdiction state’s courts Medico, Equip. Com. de (3) jurisdiction, and the exercise general (Fed.Cir.2009). General jurisdiction comports process.” with due “requires that the defendant have ‘continu Synthes, 563 at 1294. F.3d systematic’ ous and contacts with the fo personal jurisdiction rum state confers court, deciding The district of action has no even when cause 4(k)(l)(A) permit found that Rule did not relationship with contacts.” Silent those appellees. the exercise of over Drive, Indus., Inc., Strong Inc. v. 326 F.3d The court did not examine whether Rule (Fed.Cir.2003) (quoting Heli 4(k)(2) permitted exercise Colombia, v. copteros Nacionales de S.A. court’s appellees. Hall, 408, 414-16, 466 U.S. 4(k)(2) ignoring reason for (1984)). 80 L.Ed.2d 404 Because Touch- allege sound: Touchcom did not that that appeal com does not the district court’s permitted rule the exercise of jurisdic general conclusion it lacked However, appeal, argue on Touchcom does tion, specific we limit our will discussion 4(k)(2), the relevance of Rule and we are jurisdiction. Appellant’s it. Br. entitled consider See at 32 n. 6. Specific B. Jurisdiction that Touchcom has Appellees argue Analysis personal jurisdiction of any argument upon based that rule waived 4 begins federal court with Rule raising argument because it is for the of Federal Rules Civil Procedure. However, appeal. first time on Touchcom Synthes, (citing 563 F.3d at 1293 Fed. correctly points out that it did not have the 4; Int’l, Capital R.Civ.P. Ltd. v. Omni 4(k)(2) to opportunity argue Rule Co., & 484 U.S. 108 Rudolf Wolff (1987)). on 404, district court because the court ruled 98 L.Ed.2d 415 Rule S.Ct. 4(k)(l)(A) jurisdiction, process states that service of matter and thus

1411 law, Kitchens, Inc., 800, 533, federal 218 Va. 238 S.E.2d the case arose under whether (1977). Thus, personal Virginia’s time that it ruled on the same satisfaction of at 802 Indeed, the district court requirements process for service of is sat- did not argued that its claims Touchcom process when due is satisfied. Stat- isfied Rule federal Because under law. arise differently, statutory and constitu- ed 4(k)(2) that arise under requires a claim inquiries question into the tional coalesce law, posi- in a Touchcom was not federal by the process whether due is satisfied 4(k)(2) present argue Rule until tion to jurisdiction personal court’s exercise of Touch- therefore will consider appeal. We Healthcare appellees. over Diamond of 4(k)(2) was no argument. There corn’s Ohio, Mary Inc. v. Health Humility of Int’l, Borden Lad- See ISI Inc. v. waiver. (4th Cir.2000). Partners, 448, 229 F.3d LLP, 548, 551-52 ner 256 F.3d Gervais Supreme Court the test The articulated 4(k)(2) (7th Cir.2001) (ruling even on determining the exercise of for whether argued it was not at the district though comports process in jurisdiction with due level). appellate court Washington, Co. International Shoe v. below, agree the reasons we For stated 154, (1945). 310, 66 U.S. S.Ct. 90 L.Ed. that under findings the district court’s with interpreted We have International Shoe 4(k)(l)(A) analysis, the court traditional as progeny creating and its a three- jurisdiction appellees. personal lacked over pronged approach determining wheth 4(k)(2) However, find that under a Rule we of permitted er the exercise is ap- analysis, exercise Fifth Synthes, under Amendment. analyze each permitted. is will pellees We First, 1297. 563 F.3d at the defendant rule in turn. must have “minimum with the contacts” Id.; Shoe, forum state. 326 U.S. at Int’l 1(h)(1)(A) 1. Rule finding 154. In 66 S.Ct. the context of jurisdic inquiry personal An into jurisdiction, the “minimum con specific steps. Implant two tion involves Genetic requires showing that the prong tacts” Corp., v. 123 F.3d Sys., Inc. Core-Vent “purposefully defendant has directed his (Fed.Cir.1997) (citing Burger activities at residents the forum.” Rudzewicz, v. King Corp. U.S. Synthes, (citing Elecs. for 471-76, 85 L.Ed.2d 528 F.3d at The second Imaging, 340 (1985)). must first whether the We decide out requires “the claim arises prong long-arm permits ser forum state’s statute activities of or relates defendant’s process appellees. Id. must vice We prong the forum.” Id. third then determine whether the assertion showing test process the due is a jurisdiction in accordance with “assertion of is reasonable and long-arm would violate the statute fair.” Id. guarantee pro of due Constitution’s cess. Id. The “constitutional of a due touchstone” process inquiry determining whether two-step personal

In this ‘mini- “purposefully defendant established jurisdiction inquiry single into a coalesces Burg- mum in the contacts’ forum state.” Virginia inquiry. long-arm statute 474, 471 U.S. at 105 2174 King, er S.Ct. interpreted Supreme by has been Shoe, 316, 66 Int’l 326 U.S. at (quoting to Virginia generally of authorize Court 154). Thus, “it in each is essential S.Ct. jurisdiction the full ex the exercise to by that there be some act which case permitted tent the U.S. Constitution. Fancy purposefully itself of the Plywood Corp. Danville v. Plain & defendant avails 1412 conducting

privilege Virginia’s general jurisdiction, activities within the courts forum[], invoking thus the benefits and subject jurisdic- and are therefore not to protections of its laws.” v. Hanson Virginia tion federal court in under a Denckla, 2 S.Ct. 4(k)(l)(A) analysis.3 Rule (1958). L.Ed.2d 1283 Contacts with the RuleJp(k)(2) “random”, “fortuitous,” forum that are 2. or “attenuated,” or that result from “uni 4(k)(2), entitled “Federal Claim lateral activity party of another or third Jurisdiction,” states, Outside State-Court person” per are not sufficient to establish claim part: relevant “For a that arises jurisdiction. Burger sonal King, 471 U.S. law, under serving federal a summons ... 475, 105 2174. S.Ct. personal jurisdiction establishes over de- case, appellees’ In this contacts with Vir- (A) fendant if: subject the defendant is not ginia are filing limited to the of a patent jurisdiction in any state’s gen- courts of application at the subsequent USPTO and (B) jurisdiction; eral exercising juris- filings communications and made in con- diction is consistent with the United States nection with that application. Appellees Constitution and laws.” Fed.R.Civ.P. Virginia never traveled to in connection 4(k)(2). Thus, for court to per- exercise with patent and thus have not contrib- jurisdiction sonal over a defendant under Virginia’s uted to or benefited from restau- rule, plaintiffs claim must arise rants, hotels, airports, or other commercial law, under federal the defendant must not establishments in its prosecution of the subject jurisdiction in any state’s patent. Appellees have not directed general jurisdiction, courts of and exercise of their activities at issue in this case jurisdiction comport must pro- with due Virginia, towards residents of nor have Synthes, cess. 1293-94. they engaged negotiations business any Virginia residents. Appellees’ con- a. Claim Arises Under Federal Law long-distance tacts are limited to communi- This case was removed to the Unit cations with a federal agency that happens ed States District Court for the Eastern Virginia to be located in primarily because District of Virginia. Appellees argued of the proximity state’s to our nation’s the case raised a question. federal capital. appellees While made such con- Touchcom, 07-CV-114, No. slip op. at 6 tacts purposefully, and thus those contacts (arguing subject jurisdiction matter under id., are fortuitous, neither random nor see §§ Thus, U.S.C. for the the contacts do not purposeful indicate a district possessed court to have subject availment “privilege conducting claim, matter over Touchcom’s business Virginia. within” Finally, they necessarily the claims must have arisen engaged in no conduct in Virginia under federal law. § See 28 U.S.C. that concerns the Virginia, interests of (conferring original jurisdiction to federal citizens, businesses, such protecting as its district courts over “all civil or actions aris property. purposes lawsuit, For of this Constitution, ing laws, under the possess do not therefore trea the con- stitutional “minimum ties of the (emphasis contacts” with United States” Virgi- add Hanson, nia, ed)); § 357 U.S. at (stating 28 U.S.C. that U.S. subject are not district courts possess ju- matter suit, malpractice 3. This patent foreign where the patentee provided over a pro- plaintiff, owner is the is not a case to which ceedings affecting patent. § applies, 35 U.S.C. where

1413 necessarily showing analysis an of requires “arisfe] civil that over actions risdiction relating Thus, to Congress validity. following Act of Immuno- any patent under added)). (emphasis Christianson, patents” agree we with the cept and court that the sub- possessed district court that it the court agree with district We jurisdiction ject matter over Touchcom’s subject jurisdiction matter possessed agree claims. Because we with the district a § 28 1338. As under U.S.C. this case that arise under court Touchcom’s claims decision, that Touchcom’s consequence of law, Rule requirement federal the first of necessarily arise federal law under claims 4(k)(2) has been met. 4(k)(2). Rule The Su- for of purposes jurisdic- § held preme has that Court any “in which a well-

tion to case extends Subject b. Not to Jurisdiction either that pleaded complaint establishes Any State law the cause of patent federal creates 4(k)(2), requirement of Rule second relief plaintiffs right that the to action or subject the defendant that is not of a sub- necessarily depends resolution jurisdiction any general of of state’s courts law, in of question patent stantial federal jurisdiction, poses practical for difficulties necessary law is a element of patent that courts. See at Synthes, district 563 F.3d well-pleaded complaints.” the one of (“[Djetermining the second Rule Operating v. Colt Indus. Christianson 4(k)(2) requirement the defendant —that Corp., 486 U.S. subject to jurisdiction not be (1988). Immunocept, In 100 L.Ed.2d 811 jurisdiction any general state’s courts of malpractice we that a claim necessari- held (the ‘negation requirement’) poses prac- ly patent a substantial of — question involved court.”). for tical difficulties .a district the claim the court required law because requirement That is because the either scope patent to the claims determine proving a burden on of places plaintiff the at noted issue. 504 F.3d 1284-85. We viz., over, many that de- negative times that in- Immunocept “state claims is not fendant to of comparison patent applications volve states, fifty requires or proof invalidity” are within potential defendant concede amenabili- its of federal district courts under (citations (by denying in federal its ty § Id. to suit court U.S.C. 1338. at 1285 court) omitted). amenability to suit in any state submitting particular to in a as in this case con Immunocept, Just state, uninviting choice. See United involve malpractice cerns state claims that Ltd., Bank, Am. 191 F.3d States v. Swiss of in analysis patent proof claims and (1st Cir.1999). response, 40-41 required will to validity. Touchcom developed various circuit courts have dif- that, had omitted a show not whether determining ferent methods portion applica its of the source code from 4(k)(2) is met. requirement tion, resulting would not patent (describ- Synthes, 563 F.3d at 1294-95 See held invalid. Stewart v. have been See approaches among various used ing the Cir.1985) (4th Hall, 1267, 1269-70 circuits). previously We have not different Virginia mal (stating requires law approach had occasion address our practice plaintiffs, prove “but for” causa that Rule (holding this issue. Id. Morano, tion); White v. 249 Va. 4(k)(2) (1995) jurisdiction, yet leaving permitted that “but (stating S.E.2d day the of which conducting a for another determination proven by for” causation is trial”). proof regarding such a “trial within a In this bears burden party 1414 requirement of that rule and A preclude second defendant who wants to party required prove). 4(k)(2)

what that to only use of Rule has to name in some other state which the suit could 4(k)(2) loophole closed a that exist- proceed. a Naming appropriate more prior ed to the 1993 amendments of the per- state would amount to a to consent Federal Rules of Procedure.4 Before Civil 4(k)(2), adoption If, however, of Rule a non-resident sonal there.... who not “minimum defendant did the defendant contends that he cannot any contacts” with individual state suffi- sued the forum state and refuses support jurisdiction, cient to exercise identify any to other state where suit is but did have sufficient contacts with the possible, then the federal court is enti- whole, escape United States as a could 4(k)(2). procedure tled to use Rule This 4(k)(2) fifty in all states. Rule unnecessary makes it to traipse through adopted was to ensure that federal claims states, 50 asking whether each could will have a U.S. forum if sufficient national entertain the suit. Synthes, contacts exist. See at 563 F.3d Int’l, (citations 4(k)(2) ISI 256 F.3d at 552 omit- (citing advisory 1295 Fed.R.Civ.P. amendment). ted). committee notes to 1993 dealing requirement with the second The First ap- Circuit has a different 4(k)(2), Fifth, Seventh, Ninth, of Rule proach. Under that approach, circuit’s a Eleventh, and adopted DC Circuits have plaintiff certify must that defendant is not approach that places the burden on the subject state, to any defendant. See v. Pueblo De Ba Oldfield point which the burden shifts to the defen- Lora, S.A., 1210, hia 22 558 F.3d 1219 n. dant to plaintiffs refute the certification. (11th Cir.2009); Holland Am. Line Inc. v. Bank, Swiss Am. at 41. F.3d The Am., Inc., 450, Wartsila N. 485 F.3d First approach “presents prac- Circuit’s (9th Cir.2007); Laden, Mwani v. bin tical plaintiff difficulties for a who prefers (D.C.Cir.2005); F.3d Adams v. Unione plead to in the alternative that the defen- Sicurta,

Med iterranea DI 364 F.3d dant is long- suit under a state’s (5th Cir.2004); Int’l, ISI 256 F.3d arm Synthes, statute.” 563 F.3d at 1294. approach, 552. Under that a court is seemingly Fourth Circuit has followed 4(k)(2) entitled use Rule to determine the First approach. Circuit’s See Base whether it possesses personal jurisdiction Trading, Metal v. OJSC “Novokuz- Ltd. over the defendant unless the defendant netsky Aluminum Factory,” names state which the suit can pro (4th Cir.2002) by (citing ceed. As articulated the Seventh Cir the First Cir- Bank, cuit: cuit’s Swiss Am. decision decid- cases, advisory 4. The committee notes to the 1993 In such the defendant was shielded amendment state: from the by enforcement of federal law rule, problem pre- Under the former fortuity of a favorable limitation on the sented when the courts, defendant was a non-resi- power incorpo- of state which was dent having of the United States contacts practice rated into the federal the former justify with the United States sufficient respect, responds rule. In this the revision application of United States law and to suggestion Supreme Court selection, satisfy federal standards of forum Capital made in Omni Int’l v. Rudolf Wolff having but insufficient contact with sin- Co., Ltd.., & 484 U.S. gle support jurisdiction state to under state (1987). 98 L.Ed.2d 415 longarm legislation require- or meet 4(k)(2) advisory Fed.R.Civ.P. committee notes ments of the Fourteenth Amendment limita- to 1993 amendment. tion on state court territorial approach that the ar requirement of We conclude the second ing whether met). in by the Circuit is more 4(k)(2) ticulated Seventh Rule the enact purposes tune with the behind cases, that, in federal We conclude 4(k)(2). agree with the ment of Rule We 4(k)(2) are achieved Rule best purposes of “[cjonstitutional that the Seventh Circuit oppor is afforded when the defendant analysis required for each of the 50 states” of the rule tunity application avoid the to approach the First Circuit’s is unde under in a suitable forum only designates it when “eminently and avoidable allo sirable brought could have suit. plaintiff which Int’l, sensibly.” ISI cating burdens advisory committee was concerned Thus, agree at 552. we with the F.3d jurisdiction in escaping with defendants if conclusion that “the Seventh Circuit’s mini having still federal courts while contends that he cannot be sued defendant If with the United States. mum contacts identify in the forum state and refuses to the First Circuit’s re adopt we were to any possible, other where suit is then the that plaintiff prove that a must quirement court is entitled to use Rule federal subject jurisdiction to a was not defendant 4(k)(2).” Id.5 states, fifty we be any in would Turning now to the facts of this escape juris some defendants to allowing found, the district court and we have in burden diction due to the excessive confirmed, appellees subject that are not showing. in a It is making volved such jurisdiction. Virginia’s general to courts of Further prove negative. to a difficult Bl, supra. Appellees sec. have not See more, plain not allow approach that would they named another state in which would jurisdiction in the alternative plead tiffs to subject jurisdiction. appel All of the to 4(k)(l)(A) 4(k)(2). Rule under Rule and that lees’ contacts with the United States certify to that a de Requiring plaintiff a alleged by have been occurred Touchcom any in subject fendant is not to Virginia. at the USPTO in There is no argument by plain state forecloses any record evidence of contacts subject juris tiff that the defendant is in relating occurring to Touchcom’s claims in the court diction the state which Thus, find that any other state. we Trading, Metal resides. See Base 4(k)(2) purposes of Rule Touchcom has (noting F.3d at 215 that the First Circuit’s showing appellees that prima made a facie requirement permit does not certification are not litigants adopt “inconsistent alternate general courts of state’s case”). An approach a positions arguments appears above, alternative forecloses procedural As noted due to the to conflict with the Federal Rules of Civil of this Touchcom is re posture appeal, 8(d)(2) (“A only Procedure. See Fed.R.Civ.P. quired prima to make case facie party may prevail. set out 2 or more statements of order alternatively hypo Imaging, a claim or 340 F.3d at 1349. We defense Elecs. for single recognize de the case was decid thetically, either in a court or because 4(k)(2) ones.”). summary judgment ed on and separate fense or 292; 37; Inst., Corp. argued CFA 551 F.3d at Fortis 5. Because Touchcom both rule 4(k)(l)(A) 4(k)(2), we Mgmt., and Rule and because Ship v. Viken 450 F.3d Ins. rules, we need Cir.2006); have dealt with both of those (6th Synthes see also 4(k)(2) analysis can not decide whether Rule (leaving day question for another 4(k)(l)(A) only a Rule be conducted after 4(k)(l)(A) analysis precede must whether First, Fourth, analysis, required by and as 4(k)(2) analysis). Bank, Am. 191 F.3d at Sixth Circuits. Swiss court, argued appellees seeking obtaining was not before the district resulted in so, may appellees’ there be evidence of con- patent. doing a U.S. were Virginia tacts with states other than required registered patent agents, to be If, part did not form of the record. USPTO, per- submit documents to the remand, the district court determines that fect their patent application client’s before appellees subject personal jurisdic- are that It agency. stands to reason that one state, in if appellees desig- tion another sought who has and obtained a property forum, nate such the district court is agency purpose- interest from a U.S. has welcome to the case it transfer as sees fit. fully availed laws itself of the of the United However, made, if a showing such is not States. Touchcom has met its burden under Rule Appellees argue that because the U.S. 4(k)(2) demonstrating appellees of that are patent application at issue this case subject jurisdiction not originated application, as a PCT their of general state’s courts contacts with the United States are not personal ju- sufficient to them to c. Due Process However, risdiction in federal court. process analysis Just as in the due procedural patent route which the was 4(k)(l)(A), under Rule in deciding whether Appellees obtained is irrelevant. ulti- process due permits per the exercise of mately patent obtained a U.S. for their 4(k)(2), sonal under Rule we by availing client only themselves “(1) must consider whether defendant has agency authorized to patents, issue such purposefully directed its activities at resi is, surprisingly, which not located (2) forum, dents of the the claim arises out Appellees required United States. were of or relates to the defendant’s activities to submit documents to the USPTO (3) forum, with the per and assertion of perfect patent application U.S. sonal is reasonable and fair.” appellees thus have had minimum con- However, Synthes, 563 F.3d at 1297. with tacts the United States. That appel- 4(k)(2) process analysis due under Rule physically lees never country entered the analysis differs somewhat from the under in doing so is not determinative of mini- 4(k)(l), Rule analyzed previously. which we mum contacts. Burger King, See 4(k)(2) “contemplates a defendant’s 476, (finding U.S. 105 S.Ct. 2174 contacts with States, the entire United as appropriate where defen- opposed to the state in which the district state). physically dant had not entered the Thus, court sits.” Id. at 1295. while the purposefully Defendant directed its activi- 4(k)(2) specific jurisdiction test of under Therefore, ties the United ap- States. 4(k)(l), involves the steps same as under pellees’ employ pro- decision to the PCT we must consider appellees “contacts with cess, directly rather than filing a non- the nation as a whole.” Id. at 1296. patent PCT U.S. application, does not al- Applying the first factor of our ter our analysis. minimum contacts three-factor test to this we conclude As for the second factor of our appellees purposefully directed their process analysis, due we conclude that parties activities at in the United States malpractice Touchcom’s claims of undoubt and thus had “minimum contacts” suffi edly satisfy appellees’ cient to arise out of activities with process. Appellees due agency entered an agreement Appellees into a contractual the United States. patent protection argue obtain U.S. for Touch- that Touchcom’s claims are based com. agreement contemplated That upon an error filing committed of a Cal., U.S. Ct. application, not the U.S. application, PCT (1987). However, we arise out of contacts 94 L.Ed.2d do not and therefore disagree. “progress in commu recognized States. We the United filing arise from their transportation claims nications and has made the Touchcom’s application. U.S. allegedly foreign deficient in a tribunal defense of a lawsuit PCT filed the erroneous appellees Had burdensome.” Volks less World-Wide national not to file a but chosen application Woodson, wagen v. States, Touch- entry in the United

phase (1980) (quotation 62 L.Ed.2d 490 S.Ct. Thus, a claim. not have such corn would omitted). That true in especially marks arise out of activities contacts appellees’ being are re this case which that form the States within the United only from near Toronto to quired to travel in this case. litigation basis for the Alexandria, a Virginia, approxi distance of mately Deprenyl 500 miles. See Animal third now turn to the We Health, Inc. v. Univ. Toronto Innova of that a analysis. finding in After prong our (Fed. Found, tions 297 F.3d form the basis for activities defendant’s Cir.2002) a (finding the burden on Canadi to establish litigation and are sufficient the in an defendant to suit Kansas was contacts, analyze must minimum a court minimal”). Also, “relatively Synthes in we exercising jurisdiction over a de whether a Brazilian defendant requiring held that on those contacts would be fendant based Brazil to travel to the United States from See, e.g., Synthes, and fair. reasonable in against patent in order to defend a determining In whether at 1299. unduly “not fringement suit was burden “fair jurisdiction comports with exercising 563 F.3d at 1299. The Synthes, some.” justice,” we consider play and substantial that much present case involves travel “(1) factors: the burden on the defen five less burdensome than a Brazil-United (2) dant, adjudicat in the forum’s interest journey. Flights from Toronto to States (3) interest dispute, plaintiffs the the ing Washington D.C. area are routine and relief, and effective obtaining in convenient Furthermore, in frequent. appellees this (4) system’s interest judicial interstate famil attorneys case are who are least efficient resolution of obtaining in the most registered law to be (5) enough iar with U.S. controversies, the shared interest and agents eligible and patent as nonresident furthering in fundamental of the states practice Appellees, before the USPTO. (citing Burger Id. policies.” substantive patent agents, may well registered as U.S. King, 471 U.S. In with the USPTO. may jurisdiction un have other business These factors “render relatively mini short travel time presence light despite reasonable” familiarity King, appellees’ seeming 471 U.S. at Burger required mum contacts. 477, 105 legal system, 2174. we conclude S.Ct. with the U.S. appellees defending in that the burden analysis in our The first factor minimal. in the States is this case United justice is the bur play fair and substantial Next, analyze interest in we the forum’s having in the defendant placed upon den dispute. Although this dis- adjudicating the unique bur in the forum. “The litigate citizens, the pute is between Canadian one who must defend placed upon dens regulating in has an interest United States system should foreign legal in a oneself occurring at the USPTO re- malpractice assessing in significant weight of the nationalities involved. gardless long arm stretching reasonableness of legitimate has a interest United States also national bor personal jurisdiction over adjudicatory forum for providing in v. Super. Co. Asahi Metal Indus. ders.” action, occurring govern malpractice before its law does malpractice claims of agencies. federal This factor thus does either forum would have to apply foreign juris- exercising personal not indicate that prong law. In such a would not appellees diction over would be constitu- party. favor either tional violation. factor, fifth Regarding the the United prong

As for the third of the fairness a cognizable policy States has interest in inquiry plaintiffs interest obtain- regulating practice foreign attorneys —the ing relief in the chosen forum—Touch- appear before the USPTO. Of obtaining in a corn’s interest relief U.S. course, regulat- Canada has an interest in court is minimal. Both also Ca- ing contracts entered into citi- between its equally provide nadian courts could Thus, zens. this factor also does not favor relief that Touchcom seeks. This factor is party. either Such conclusion does not therefore neutral. suggest process that due would be offend- factors, The fourth and fifth to the ex ap- ed the exercise of over they apply, tent do not convince us that pellees. light appellees’ minimal bur- exercising jurisdiction litigating den in this case the United would fair play violate notions of and sub States and the United States’ interest justice. stantial “Both factors are con efficiency in adjudicating dispute, this potential cerned with the clash of substan accordingly juris- we find that exercise of policies tive social competing between fora in comports pro- diction this case with due efficiency and the of a resolution to the cess. controversy.” Synthes, 563 F.3d at 1300 summary, In appellees’ contacts with the (citing Burger King, 471 appellees “pur- United States indicate that factor, S.Ct. As for the fourth the posefully privi- themselves of the avail[ed]” United appear States does not to be lege conducting business the United adjudi less efficient a forum in which to States. Those contacts form the basis for dispute. cate this Aspects patent of U.S. present the action. We therefore conclude law will be required prove causation in appellees’ contacts with the United regardless adjudi this case whether it is States are sufficient to meet the “minimum cated the United States or Canada. contacts” standard articulated in Interna- parties appear While both to believe that Furthermore, tional Shoe. per- exercise of govern Canadian law will the substantive sonal over in this action, malpractice entirely it is not clear case not would offend traditional notions of to us that that is It appears the case. play justice. fair and substantial rules, Virginia’s under choice of law the present in Virginia action was filed and no wrongful law the forum where the act appears other state superior to have a occurred governs tort claims. Jones v. claim to We therefore find Assocs., Inc., R.S. Jones & 246 Va. that Touchcom prima has shown a (1993). S. E.2d In facie spite appellees’ personal jurisdiction case of in the U.S. arguments to contrary, alleged the District for Court the Eastern District of wrongful presumably act Virgi occurred in 4(k)(2). Virginia pursuant to Rule nia where appellees’ patent application filed; thus, it appear Virgi would C. Statute Limitations nia law would govern malpractice ac jurisdictional tion. As an alternative to their such a the United States would adju argument, appellees argue be the most efficient forum for that Touch- dicating this if dispute. Even Canadian corn’s claims should be dismissed under 12(b)(6) reasonable, they are because defendant is we consider five Fed.R.Civ.P. three-year by Virginia’s (1) statute barred defendant, factors: the burden on the the district court did limitations. Because (2) adjudicating the forum’s interest in issue, remand the case not decide that we (3) dispute, plaintiffs interest ob court to rule on that issue for the (4) relief, taining convenient and effective first instance. judicial system’s the interstate interest in obtaining the most efficient resolution of CONCLUSION controversies, (5) the shared interest possessed Because the district court in furthering states fundamental appellees, we re- personal substantive social policies. Synthes dismissal. We remand verse court’s (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. de proceedings case for consistent Medico, (Fed. Equip. opinion. Cir.2009) (citing Burger King Corp. v. AND REMANDED REVERSED Rudzewicz, 462, 477, 471 U.S. (1985)). 2174, 85 L.Ed.2d 528 We must Dissenting opinion filed Circuit Supreme also be mindful of the Court’s Judge PROST. “[gjreat admonition that care and reserve PROST, Judge, dissenting. Circuit extending should be exercised when our majority’s I discussion of agree with the personal jurisdiction notions of into the 4(k)(l)(A) and its treatment of the Rule Asahi, international field.” 480 U.S. at juris- requirements two first 115, 107 (quoting S.Ct. 1026 United States 4(k)(2). I proper diction to be under Bank, City v. First Nat’l 379 U.S. mini- agree Appellees also that the (1965) (Har 528, 85 S.Ct. 13 L.Ed.2d 365 mum contacts with the United States as a J., lan, dissenting)). cause of action whole and that Touchcom’s However, in arises out of those contacts. factor, respect to the first the ma With view, my presents this case one of the jority concludes that the burden the in which minimum con- “rare situations” Appellees in this is “minimal” case because present exercising personal tacts are but transportation modern and communication jurisdiction would nevertheless violate due Toronto, technologies make travel between process plaintiffs because “the interest Alexandria, Virginia Ontario and less bur adjudicating and the interest in state’s past. than it densome has been See dispute in the forum are so attenuated that Majority Op. (citing at 1417-18 World- they clearly outweighed by are the burden Woodson, Volkswagen Corp. Wide v. 444 litigation to subjecting the defendant 559, 100 S.Ct. 62 L.Ed.2d Beverly within the forum.” Hills Fan Co. (1980), Synthes, 490 563 F.3d 1558, Royal Sovereign Corp., 21 F.3d v. Additionally, majority suggests (Fed.Cir.1994). I respect- 1568 therefore Appellees, who are residents of Cana fully dissent. da, familiarity have some with the United notes, majority a court cannot As system legal States virtue of their sta doing exercise if so “would of patent agents eligible tus as who are to fair play fend traditional notions of practice before the States Patent United justice.” Asahi Metal Indus. substantial (“USPTO”). and Trademark Office I re Cal., 113, v. Super. 102, Co. Ct. 480 U.S. spectfully disagree subjecting Ap (1987) 1026, (quo 94 L.Ed.2d 92 omitted). pellees to suit the United States is a In determining tation marks whether the assertion of over a “minimal” burden.

Traveling approximately Admittedly, 500 miles the task of quantifying the burden on a Appellees’ particular par from the office near Toronto to defendant in a ticular case and manageable formulating linguistic Alexandria is no doubt as a description of that burden Nevertheless, is not amenable logistical goes matter. “[i]t See, Asahi, precision. e.g., 480 U.S. at saying without distance ‘[additional 114, 107 (litigating S.Ct. 1026 California time; home] means additional travel [from Japanese was “severe” burden for defen proba- additional travel time increases the dant); Synthes, 563 F.3d at 1299 (litigating bility for meal and lodging expenses; and “significant” California was a burden for overnight stays additional travel time with defendant); Brazilian Deprenyl Animal increases the time which fact [the] wit- Health, Inc. v. Univ. Toronto Innova away regular nesses must from their ” Found., (Fed. tions 297 F.3d employment.’ Corp., In re TS Tech USA Cir.2002) (defendant’s status as a Canadian (Fed.Cir.2008) (quot- 551 F.3d corporation insignificant,” was “not but the AG, ing In re Volkswagen 371 F.3d burden of subjecting litigation it to in Kan (5th Cir.2004)) (second and third alter- minimal”); was “relatively sas Johnston v. ations in original). Sys. Multidata Int’l Corp., 523 F.3d Additionally, Appel- the burden on the (5th Cir.2008) (litigating in Texas was merely lees is not the travel time. For a “severe” burden for Canadian defen example, I do not think we would assume dant); Benton v. Corp., Cameco that it is less burdensome for a resident of 1070, (10th Cir.2004) (litigating in Buffalo, litigate New York to in Toronto Colorado a “significant” burden for a rather than City New York though even corporation). However, Canadian it is suf Toronto is over Regard- 250 miles closer. ficient to resolve this case recognize travel, less the ease of unique “[t]he fairly that it will be burdensome for the placed burdens upon one who must defend Appellees Canadian foreign lawyers hire foreign system oneself in a legal should to defend them in a trial foreign before significant weight in assessing the jurors in a foreign court gov that will be reasonableness of stretching long arm by foreign procedural and, erned rules po over national bor- tentially, other more foreign substantive ders.” 480 U.S. at Asahi See, laws. e.g., Majority atOp. (sug 1418 1026. gesting Virginia choice-of-law rules might applied). I This is so disagree also with because even majority’s the as- if these burdens are not viewed as sertion that over Appellees’ the eligibility to whelming, they outweigh nevertheless the practice gives before the USPTO them a competing in having interests the case de special familiarity with United States law. cided in the United States. rules, Under the applicable an applicant registration for before the USPTO need respect With to the in second factor the not general demonstrate understand- analysis, I consider the United States’ in- ing country’s of our legal system. See 37 in adjudicating terest dispute this to be 11.7(a). 11.6(c), Moreover, §§ C.F.R. the minimal. importantly, Most neither majority identifies no basis for its conclu- Appellees Touchcom nor the are citizens or sion that knowledge the and skills neces- residents of the United States. See Asahi sary prosecute to patents before a gov- (“Because at 480 U.S. 107 S.Ct. 1026 agency ernment provide would tend to plaintiff resident, the not a is California familiarity malpractice litigation be- legitimate California’s in interests the dis- fore a in jury diminished.”). a trial court. pute considerably majority the notes that the fourth Moreover, patent agents, foreign as judicial permitted represent sys- to fifth factors —the interstate Appellees are not the citizens before USPTO. in obtaining States tem’s interest the most effi- United 11.6(c). Thus, § the United 37 C.F.R. cient resolution of controversies and the in protecting claim interest can no States in furthering shared interest of the states representa- negligent citizens from its own policies— fundamental substantive social before the USPTO. tion potential “are concerned with the clash of policies compet- substantive social between matter, majority is general As a the efficiency the of a ing fora and resolution has an that “the United States correct controversy.” Majority Op. occur- to the at regulating malpractice interest the na- regardless Synthes, at the In ring (quoting USPTO F.3d at 21. Majority Op. view, involved.” tionalities majority’s the these factors did not However, analysis must be process the due party. favor either case-by-case basis. See conducted on factor, respect to the With fourth Co., Benguet Mining Perkins v. Consol. majority concludes that the United States 437, 445, 72 96 L.Ed. 342 U.S. S.Ct. equally and Canada would be efficient fora (1952). alleged mal- In this likely the suit implicate because would Appellees’ act of practice consists least some of the laws of each I nation. submitting patent application to the generally agree, to the observation that could not result the issu- USPTO adjudication leaving malprac- patent of a valid because it lacked the ance foreign parties tice claims between necessary satisfy the defi- source code they fora which both reside would § 112. requirement niteness of 35 U.S.C. spread judicial the demand on resources view, my States’ interest United evenly globe more across the rather than type negligence by discouraging centralizing it in the United States. adequately protected omission is Finally, I believe that the interest of the authority reject claims that USPTO’s in furthering fora fundamental substantive type suffer from this of defect. See Manu- policies against social counsels our exer- § Examining al of Patent Procedure cise of It is true that (8th rev.). ed., July Additionally, policy reg- States has a interest in United discipline regulations provide USPTO ulating foreign patent agents appear who attorneys represent who do not their However, before the USPTO. as dis- competently. clients See 37 C.F.R. 10.20, 10.77, above, regret- §§ it 11.19. While cussed exercise an invalid only marginally table USPTO issued in this case would further Touchcom, opening our courts to patent that interest. The United States’ interest this lawsuit will contribute little to the against must be balanced Canada’s inter- existing ability encourage United States’ dispute, in this which I submit is est more patent attorneys agents and to submit First, significant. majority recog- as the proper applications to the USPTO. nizes, in regulating Canada has an interest into contracts entered between Canadian factor,

Turning agree to the third I Second, magnitude avail- citizens. and majority that Touchcom’s interest ability damages professional mal- obtaining relief in a United States court is practice quality price— will affect the minimal because a Canadian forum is and, accordingly, accessibility profes- Accordingly, I do not believe available. —of Balancing competing sional services. supports factor the exercise of can controversial personal jurisdiction policy in this case. considerations forum Accordingly, and is best left to the in which the I respectfully unreasonable. sought provided. are dissent. services sum, my it is view that weighing Supreme

the factors identified juris- that exercising

Court demonstrates Appellees

diction this case

Case Details

Case Name: Touchcom, Inc. v. Bereskin & Parr

Court Name: Court of Appeals for the Federal Circuit

Date Published: Aug 3, 2009

Citation: 574 F.3d 1403

Docket Number: 2008-1229

Court Abbreviation: Fed. Cir.