566 F.3d 1012 (Fed. Cir. 2009), 2008-1217, Autogenomics, Inc. v. Oxford Gene Technology Ltd.

Docket Nº:2008-1217.
Citation:566 F.3d 1012, 91 U.S.P.Q.2d 1006
Opinion Judge:MOORE, Circuit Judge.
Party Name:AUTOGENOMICS, INC., Plaintiff-Appellant, v. OXFORD GENE TECHNOLOGY LIMITED, Defendant-Appellee.
Attorney:Robert D. Fish, Fish & Associates, PC, of Irvine, CA, for plaintiff-appellant. With him on the brief was Josh L. Emory. Bryan S. Hales, Kirkland & Ellis LLP, of Chicago, IL, for defendant-appellee. With him on the brief was Christopher R. Liro.
Judge Panel:Before NEWMAN and MOORE, Circuit Judges, and GETTLEMAN, District Judge.[*]
Case Date:May 18, 2009
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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566 F.3d 1012 (Fed. Cir. 2009)

91 U.S.P.Q.2d 1006

AUTOGENOMICS, INC., Plaintiff-Appellant,



No. 2008-1217.

United States Court of Appeals, Federal Circuit.

May 18, 2009

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[Copyrighted Material Omitted]

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Robert D. Fish, Fish & Associates, PC, of Irvine, CA, for plaintiff-appellant. With him on the brief was Josh L. Emory.

Bryan S. Hales, Kirkland & Ellis LLP, of Chicago, IL, for defendant-appellee. With him on the brief was Christopher R. Liro.

Before NEWMAN and MOORE, Circuit Judges, and GETTLEMAN, District Judge.[*]

Dissenting opinion filed by Circuit Judge NEWMAN.


MOORE, Circuit Judge.

Plaintiff-Appellant Autogenomics, Inc. (Autogenomics) sued Defendant-Appellee Oxford Gene Technology Limited (Oxford) in the United States District Court for the Central District of California for a declaratory judgment of invalidity and non-infringement of claims 9 and 10 of U.S. Patent No. 6,054,270 (the '270 patent). The district court granted Oxford's motion to dismiss for lack of personal jurisdiction. Autogenomics, Inc. v. Oxford Gene Tech., Ltd., No. SACV 07-846-MRP (C.D.Cal. Jan. 17, 2008). Autogenomics appeals this ruling, as well as the district court's denial of jurisdictional discovery. Because the district court possessed neither general nor specific personal jurisdiction over Oxford, and because the court did not abuse its discretion by denying jurisdictional discovery, we affirm.


A. Jurisdictional Facts

Oxford is a British biotechnology company organized under the laws of England and Wales. Oxford owns the '270 patent, which relates to oligonucleotide microarrays for analysis of polynucleotides. Oxford is not registered to do business in California, nor does it have any facilities, assets, employees, or agents there. Autogenomics is a biotechnology company organized under the laws of California, with its main office in Carlsbad, California. Autogenomics uses microarray technology in its business. Autogenomics alleges in support of the district court's personal jurisdiction that Oxford has several contacts with California. The jurisdictional facts alleged by Autogenomics are supplemented, where noted, by uncontradicted evidence presented by Oxford.

1. Licensing Negotiations Between Autogenomics and Oxford: In early 2006, Oxford contacted Autogenomics regarding the '270 patent, which Oxford contends is infringed by Autogenomics's manufacture and sale of microarray products. In a February 28, 2006 e-mail, Autogenomics

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expressed interest in taking a license, but provided Oxford with eleven references that it alleged " raise serious issues with regard to novelty and obviousness" of the '270 patent. Oxford responded by e-mail on March 23, 2006, with arguments that the '270 patent was valid over the references, and stated that " we are at a point whereby the commercial negotiations should begin to work to achieve a license for the Autogenomics product." In July 2007, two Oxford representatives flew to California to meet with representatives of Autogenomics. The parties failed to agree on license terms.

2. Licenses: Oxford entered into non-exclusive licenses with " about ten" California companies with respect to its microarray technology. Although no license terms are in evidence, Autogenomics alleges that one license-not of the '270 patent in particular-to Incyte Pharmaceutics Inc. (Incyte), a California company, is an exclusive license. Oxford claims that it has an " open licensing policy for its patented microarray technology, including the technology covered by the '270 patent," and specifically admits that it granted a non-exclusive license of the '270 patent to Affymetrix Inc., a California company.

3. The Agilent Agreement: According to an Oxford press release and an article from a publically available website, Oxford and Agilent Technologies (Agilent)-a company with offices in California-completed a collaborative agreement in 2007. Autogenomics characterizes this agreement as a joint venture. There is no evidence that this agreement involves a license or has any relationship to the '270 patent. It involves " a collaborative agreement giving [Oxford] access to Agilent's microarray platform, confirming [Oxford] as an Agilent Certified Service Provider, and appointing Agilent as an OEM supplier for [Oxford] designed microarrays." The deal will purportedly allow the two companies to " jointly develop a Centre of (Microarray) Excellence." Oxford executives characterize the relationship as a " close collaboration." The purpose of the deal is to allow Oxford " to become the largest microarray service provider in Europe." An uncontested Oxford declaration states:

[Oxford] has a supply agreement with Agilent that allows [Oxford] to purchase arrays from Agilent for [Oxford]'s use or resale without geographical restriction. There is no joint venture between Agilent and [Oxford]. The agreement between Agilent and [Oxford] is not a distribution agreement whereby Agilent supplies products on [Oxford]'s behalf for or into the California market, or indeed to any other market.

4. Conferences: Oxford attended three scientific conferences-trade shows in Autogenomics's terminology-in California in 2003, 2005, and 2007. The three conferences dealt with " nanotechnology," " bio-nanotechnology," and " modeling and simulation of microsystems," respectively. At the 2003 conference, Oxford is listed among dozens of " presenting companies." At the 2005 conference, Oxford is listed among dozens of companies under the heading " Past Participant Highlights." At the 2007 conference, Oxford was scheduled to deliver a 20-minute presentation on " [a] method for the highly parallel analysis of gene expression of single cells." In a 2007 company newsletter, Oxford reported that it would attend a fourth conference in California where its booth description characterized Oxford as focusing on " [m]icroarray services and application products" and stated that Oxford " adopts a broad licensing policy for its microarray patents."

5. Sales: In April 2006, Oxford sold 20 microarrays to a California company for $7,600. According to Oxford, the sale constituted

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about 1% of its revenue that year. There is no evidence of what relationship, if any, there might be between the sale and the '270 patent. Autogenomics also alleges, without evidentiary support, that Oxford " very likely offered, and possibly contracted to perform" services for numerous California companies, reasoning that Oxford's likely clients are biotechnology companies largely based in California. Oxford provided an uncontested declaration that although " some of the companies" named by Autogenomics " either have a license agreement with [Oxford] or may seek a license agreement from [Oxford] in the future, the companies ... are not customers of [Oxford], and are not likely to be."

6. Publication: Oxford published an " application note" on Nature.com, the globally-accessible website of Nature, a United Kingdom scientific publication. The application note describes an Oxford microarray product. Autogenomics characterizes the application note as an advertisement to California companies, noting that the University of California is one of the top ten institutional visitors to Nature.com.

B. Procedural Background

On July 23, 2007, Autogenomics filed a declaratory judgment action against Oxford in the United States District Court for the Central District of California. Autogenomics asked the court to find that claims 9 and 10 of the ' 270 patent are invalid or unenforceable, and that Autogenomics did not infringe the same claims. On November 27, 2007, Oxford filed a motion to dismiss, arguing that the district court lacked either general or specific personal jurisdiction over it.

On January 17, 2008, the district court ruled that it lacked general jurisdiction because Oxford's contacts with California were insufficient to be the equivalent of having a physical presence within the state. Autogenomics, No. SACV 07-846-MRP at 8-11. The court further ruled that it lacked specific jurisdiction because the declaratory judgment action did not arise from or relate to most of the contacts alleged by Autogenomics, and those contacts that did relate to the declaratory judgment action nonetheless did not contribute to jurisdiction under our holding in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed.Cir.1998). Autogenomics, No. SACV 07-846-MRP at 11-16. Finally, the court denied Autogenomics the opportunity to conduct jurisdictional discovery because Autogenomics failed to make a formal motion and failed to show that discovery would demonstrate facts sufficient to constitute a basis for jurisdiction. Id. at 17 n. 3. Autogenomics appeals the district court's ruling that it lacked personal jurisdiction over Oxford, as well as the district court's denial of jurisdictional discovery.



Personal jurisdiction is a question of law that we review de novo. Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d 1324, 1328 (Fed.Cir.2008) (citing Genetic Implant Sys., Inc. v. Core-Vent Corp., 123 F.3d 1455, 1457 (Fed.Cir.1997)). " Moreover, we apply Federal Circuit law because the jurisdictional issue is ‘ intimately involved with the substance of the patent laws.’ " Id. (quoting Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed.Cir.1995)); see also Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1565 (Fed.Cir.1994) (" Under [jurisdictional] circumstances such as these, we have held we owe no special deference to regional circuit law." ).

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" In this case, ‘ because the parties have not conducted discovery, [Autogenomics] needed only to make a prima facie showing that [Oxford] was subject to personal jurisdiction. As such, the pleadings and affidavits are to be construed...

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