563 F.3d 1285 (Fed. Cir. 2009), 2008-1279, Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. de Equip. Medico

Docket Nº:2008-1279.
Citation:563 F.3d 1285, 90 U.S.P.Q.2d 1609
Party Name:SYNTHES (U.S.A.), Plaintiff-Appellant, v. G.M. DOS REIS JR. IND. COM. DE EQUIP. MEDICO (also known as GMReis), Defendant-Appellee.
Case Date:April 17, 2009
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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563 F.3d 1285 (Fed. Cir. 2009)

90 U.S.P.Q.2d 1609

SYNTHES (U.S.A.), Plaintiff-Appellant,


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

No. 2008-1279.

United States Court of Appeals, Federal Circuit.

April 17, 2009

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[Copyrighted Material Omitted]

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

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

Before SCHALL, FRIEDMAN, and BRYSON, Circuit Judges.

SCHALL, Circuit Judge.

Synthes (U.S.A.) (" Synthes" ) appeals the final judgment of the United States District Court for the Southern District of California dismissing without prejudice its suit for patent infringement against G.M. dos Reis Jr. Ind. Com de Equip. Medico (" GMReis" ). Synthes (U.S.A.) v. G.M. dos Reis Jr. Ind. Com. de Equip. Medico, No. 07-CV-309-L(AJB), 2008 WL 789925 (S.D.Cal. Mar. 21, 2008). The court dismissed Synthes's suit after it determined that it lacked personal jurisdiction over

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GMReis. For the reasons set forth in this opinion, we hold that the district court does have personal jurisdiction over GMReis. We therefore reverse the court's judgment and remand the case to the court for further proceedings.



Synthes is a global medical-device company, with its principal place of business in Pennsylvania. It develops, produces, and markets instruments and implants, including bone plates, for the surgical fixation, correction, and regeneration of the human skeleton. Synthes is the assignee of United States Patent No. 7,128,744 (" the '744 patent" ), which is directed to " a bone plating system and method for fracture fixation of bone." '744 patent, Abstract (filed Sept. 22, 2003). GMReis is a Brazilian corporation, with its headquarters in that country. It designs, manufactures, and markets orthopedic and neurological medical devices, including bone plates.

From February 14-16, 2007, the Chief Executive Officer of GMReis, Geraldo Marins dos Reis, Jr., and a GMReis employee, Jose Luis Landa Lecumberri, represented GMReis at the 2007 American Association of Orthopaedic Surgeons Annual Meeting (" AAOS Meeting" or " AAOS trade show" ) in San Diego, California. At GMReis's booth, Mr. dos Reis and Mr. Lecumberri displayed, among other things, samples of five locking bone plates.1

At the AAOS trade show, Synthes served Mr. dos Reis and Mr. Lecumberri with a summons and complaint. The complaint consisted of a single count: " GMReis has been and still is making, using, offering for sale, and/or importing into the United States products, systems, and/or apparatuses that infringe the '744 Patent, all in violation of 35 U.S.C. § 271." (Compl.2, ¶ 12.) Section 271 provides that " whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." 35 U.S.C. § 271(a) (2006).

Synthes pleaded that GMReis was subject to personal jurisdiction in the Southern District of California because it had " imported into the United States and/or offered to sell locking plates that infringe Synthes' patent rights [and had] displayed said locking plates at the 2007 [AAOS] Annual Meeting in San Diego, California for the purpose of generating interest in infringing products to the commercial detriment of [Synthes]." (Compl.1, ¶ 1.) Synthes alleged that, as a result of GMReis's activities, it suffered and continued to suffer damages, including " impairment of the value of the '744 Patent." (Compl.3, ¶ 13.) Synthes requested that the district court enter judgment that GMReis infringed the '744 patent and that it enjoin GMReis from infringing activity. (Compl.3, ¶ 1-2.)

On April 6, 2007, GMReis moved to dismiss Synthes's complaint for lack of personal jurisdiction under Fed.R.Civ.P. 12(b)(2). In its memorandum accompanying the motion to dismiss, GMReis admitted

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that it attended the 2007 AAOS Meeting as part of its international sales effort. It contended, however, that it was not subject to general personal jurisdiction in California because it did not have " continuous and systematic" contacts with California. It also contended that it was not subject to specific personal jurisdiction because it had not performed any act that would constitute patent infringement. Specifically, GMReis asserted that it never made any offer for sale of the accused product in the United States, and that bringing a product into the United States for display at a trade show does not constitute an infringing act of importation under 35 U.S.C. § 271(a).

In support of its motion to dismiss, GMReis submitted declarations by Mr. dos Reis and Mr. Lecumberri. According to Mr. dos Reis's declaration, GMReis is a Brazilian company without offices, employees, or assets in California or in the United States. The company sells its products in Brazil, South America, Europe, and Asia. GMReis has never sold any of its products in California, but has completed one sale of its products in the United States. That sale was to a veterinary medical supply company located in Massachusetts. Id. GMReis products are not approved by the Food and Drug Administration (" FDA" ) for use by, or sale to, humans in the United States. Id.

In their declarations, Mr. dos Reis and Mr. Lecumberri admitted attending the 2007 AAOS Meeting to display GMReis's products, five of which were sample locking bone plates. They both asserted that GMReis sends representatives to the AAOS Meeting because many non-U.S. surgeons attend the annual trade show, and GMReis wants to show its products to those non-U.S. surgeons. On February 12, 2007, Mr. Lecumberri traveled with the five samples in his luggage on a flight from Brazil, which landed in the United States in Dallas, Texas, where he went through U.S. Customs. Subsequently, he boarded a flight from Dallas to San Diego.

Mr. dos Reis and Mr. Lecumberri further declared that, at the 2007 AAOS Meeting, they did not sell any of the five sample locking bone plates or use them for the purposes for which they were designed (i.e., in surgery for securing a fractured bone). Because GMReis did not have, and had not applied for, FDA approval of its locking bone plates, Mr. dos Reis displayed prominent signs and product literature stating that GMReis products were not approved by the FDA and were not for sale in the United States. The GMReis product literature did not list any price for the locking bone plates, and neither Mr. dos Reis nor Mr. Lecumberri discussed prices at the trade show. Attached to Mr. dos Reis's declaration were photographs from the 2007 AAOS Meeting, showing GMReis's display table, signs, and product literature. Both declarations indicated that Mr. dos Reis returned to Brazil with the sample locking bone plates in his luggage on February 19, 2007.

In response to GMReis's motion to dismiss, Synthes requested depositions of Mr. dos Reis and Mr. Lecumberri, a Rule 30(b)(6) deposition of GMReis, 2 and the production of documents relating to GMReis's contacts, not just with California, but with the entire United States. GMReis opposed the discovery, and specifically

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objected to Synthes's document requests as overbroad, in that they sought information beyond GMReis's contacts with California.

On May 17, 2007, Synthes filed a motion to compel jurisdictional discovery. In its memorandum accompanying the motion, Synthes argued that in federal question cases involving a foreign defendant, contacts with the United States as a whole may be analyzed under the Due Process Clause of the Fifth Amendment pursuant to Fed.R.Civ.P. 4(k)(2), the so-called federal long-arm statute. Rule 4(k)(2) provides:

(2) Federal Claim Outside State-Court Jurisdiction.

For a claim that arises under federal law, serving a summons or filing a waiver of service establishes personal jurisdiction over a defendant if:

(A) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction; and

(B) exercising jurisdiction is consistent with the United States Constitution and laws.

Fed.R.Civ.P. 4(k)(2). Rule 4(k)(1)(A), on the other hand, provides " [i]n [g]eneral" that " [s]erving a summons or filing a waiver of service establishes personal jurisdiction over a defendant ... who is subject to the jurisdiction of a court of general jurisdiction in the state where the district court is located." Fed.R.Civ.P. 4(k)(1)(A).

On August 2, 2007, a magistrate judge granted Synthes's motion to compel jurisdictional discovery relating to GMReis's contacts with the United States for purposes of Rule 4(k)(2). See Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico, No. 07-CV-0309-L(AJB), 2007 WL 2238900, at *6 (S.D.Cal. Aug. 2, 2007).

From jurisdictional discovery, Synthes learned that GMReis had exhibited its products at a minimum of seven trade shows in the United States since 2003, including the 2006 North American Spine Society trade show, the 2003 World Spine II trade show, and the 2003-2007 AAOS annual meetings. In addition, Mr. dos Reis admitted that he attended at least two other trade shows in the United States. Synthes also learned about GMReis's product acquisition and development in the United States. In the past, GMReis has purchased in the United States parts and a manufacturing machine for use in Brazil. In addition, it regularly purchases a product in the United States for resale in Brazil...

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