United States Court of Appeals 

for the Federal Circuit ______________________ 

M-I DRILLING FLUIDS UK LTD., M-I LLC,

Plaintiffs-Appellants

v.

DYNAMIC AIR LTDA.,

Defendant-Appellee

______________________ 

2016-1772

______________________ 

Appeal from the United States District Court for the 

District of Minnesota in No. 0:13-cv-02385-ADM-HB, 

Judge Ann D. Montgomery.

______________________ 

Decided: May 14, 2018

______________________ 

SEAN DANIEL JORDAN, Jackson Walker LLP, Austin, 

TX, argued for plaintiffs-appellants. Also represented by 

PETER CARL HANSEN; CRYSTAL J. PARKER, Houston, TX; 

SCOTT J. PIVNICK, Alston & Bird LLP, Washington, DC.

J. DEREK VANDENBURGH, Carlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A., Minneapolis, MN, 

argued for defendant-appellee. Also represented by ALAN 

GARY CARLSON, NATHAN D. LOUWAGIE, TODD S. WERNER. 

______________________ 

Before REYNA, HUGHES, and STOLL, Circuit Judges.
2 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

Opinion for the court filed by Circuit Judge HUGHES. 

Concurring opinion filed by Circuit Judge REYNA. 

HUGHES, Circuit Judge. 

M-I Drilling Fluids U.K. Ltd. and M-I LLC sued Dynamic Air Ltda. in the U.S. District Court for the District 

of Minnesota, alleging infringement of five U.S. patents. 

The district court dismissed the case for lack of personal 

jurisdiction. Because Rule 4(k)(2) of the Federal Rules of 

Civil Procedure supports the exercise of specific personal 

jurisdiction over Dynamic Air Ltda., we reverse and 

remand for further proceedings. 

I 

M-I Drilling is a private limited company organized 

under the laws of the United Kingdom and has its principal place of business in the United Kingdom. M-I LLC 

(together with M-I Drilling, M-I) is a U.S. company incorporated in Delaware with its principal place of business in 

Texas. M-I supplies systems and equipment used in 

handling drilling waste created, for instance, around oil 

rigs in offshore oil exploration platforms.

Relevant here, M-I Drilling owns five U.S. patents—

U.S. Patent Nos. 6,702,539 B2, 6,709,217 B1, 7,033,124 

B2, 7,186,062 B2, and 7,544,018 B2 (the asserted patents). M-I LLC is an exclusive licensee of the asserted 

patents. The patents are generally directed to methods, 

systems, and apparatuses used in the collection, conveyance, transportation, and storage of drilling waste created 

around undersea oil wells. The patents are claimed to 

cover, among other things, pneumatic conveyance systems

installed around oil drilling rigs and used to transfer drill 

cuttings from the oil rigs to receiving ships. 

Dynamic Air Ltda. (DAL) is a corporation organized 

under the laws of Brazil and has its principal place of 

business in Brazil. DAL is a subsidiary of Dynamic Air 
M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 3

Inc. (DAI), a Minnesota corporation with its principal 

place of business in Minnesota.

Between October 2011 and January 2012, the Brazilian state-owned oil company Petróleo Brasileiro S.A.

(Petrobras) requested proposals for the installation of 

pneumatic conveyance systems on ships to assist in the 

removal of waste created by drilling undersea oil wells. 

M-I Swaco do Brasil – Comércio Serviços e Mineração

Ltda., M-I Drilling’s “sister company and customer” in 

Brazil, and DAL both submitted their proposals. J.A. 13. 

DAL won the bid and thereafter designed, manufactured, 

and operated at least three pneumatic conveyance systems. In February 2013, DAL installed a conveyance 

system that pneumatically conveyed drill cuttings from 

“P-59,” an offshore oil drilling rig, onto the HOS Resolution, a U.S.-flagged ship. In August 2013, DAL installed a 

similar conveyance system on board the HOS Pinnacle, 

another U.S.-flagged ship, to remove drill cuttings from 

“P-III,” another offshore oil drilling rig.

M-I then sued DAL in the U.S. District Court for the 

District of Minnesota, alleging that DAL infringed the 

asserted patents by making, selling, and operating pneumatic conveyance systems such as those on the HOS 

Pinnacle and the HOS Resolution. DAL moved to dismiss 

for lack of personal jurisdiction under Rule 12(b)(2), 

arguing that the district court could not exercise specific 

personal jurisdiction over it under Rule 4(k)(2) consistent 

with due process. The district court granted that motion 

and dismissed the case after finding that, although the 

alleged infringing activities took place on U.S.-flagged 

ships that are themselves U.S. territory, the contract

between Petrobras and DAL did not identify the ships on 

which DAL would be required to make installations. 

As such, in the district court’s view, DAL did not purposefully avail itself of the privilege of conducting activities 

within the United States because its contacts with the 

HOS Pinnacle and the HOS Resolution were exclusively 
4 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

due to the unilateral activity of Petrobras. J.A. 19–20. 

The court also concluded that the exercise of specific 

personal jurisdiction over DAL would neither be reasonable nor fair. J.A. 22–25. 

M-I appeals. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1). 

II

Personal jurisdictional issues in patent infringement 

cases are reviewed de novo and under our precedent. 

Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. 

Medico, 563 F.3d 1285, 1293 (Fed. Cir. 2009). 

Where, as here, a “district court’s disposition as to the 

personal jurisdictional question is based on affidavits and 

other written materials in the absence of an evidentiary 

hearing, a plaintiff need only to make a prima facie

showing that defendants are subject to personal jurisdiction.” Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344, 

1349 (Fed. Cir. 2003). Moreover, “[i]n the procedural 

posture of a motion to dismiss, a district court must 

accept the uncontroverted allegations in the plaintiff’s 

complaint as true and resolve any factual conflicts in the 

affidavits in the plaintiff’s favor.” Id.; see Graphic Controls Corp. v. Utah Med. Prods., Inc., 149 F.3d 1382, 1383 

n.1 (Fed. Cir. 1998) (noting that the district court’s task in 

evaluating whether the plaintiff has made a prima facie 

showing of personal jurisdiction over the defendant requires construing the pleadings and affidavits in the light 

most favorable to the plaintiff).

Rule 4(k)(2) allows “a court to exercise personal jurisdiction over a defendant if (1) the plaintiff’s claim arises 

under federal law, (2) the defendant is not subject to 

jurisdiction in any state’s courts of general jurisdiction, 

and (3) the exercise of jurisdiction comports with due 

process.” Synthes, 563 F.3d at 1293–94. “The third 

requirement under Rule 4(k)(2)—the due process analy-
M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 5

sis—contemplates a defendant’s contacts with the entire 

United States, as opposed to the state in which the district court sits.” Id. at 1295. “Rule 4(k)(2), therefore, 

serves as a federal long-arm statute, which allows a 

district court to exercise personal jurisdiction over a 

foreign defendant whose contacts with the United States, 

but not with the forum state, satisfy due process.” Id. at 

1296. 

Here, the parties only dispute the third requirement—whether exercise of personal jurisdiction over DAL

comports with due process. “[D]ue process requires only 

that in order to subject a defendant to a judgment in 

personam, [the defendant must] have certain minimum 

contacts with [the forum] such that the maintenance of 

the suit does not offend ‘traditional notions of fair play 

and substantial justice.’” Int’l Shoe Co. v. Washington, 

326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311 

U.S. 457, 463 (1940)). “Depending on their nature and 

number, a defendant’s contacts with a forum can provide 

a court with general jurisdiction or specific jurisdiction.” 

Synthes, 563 F.3d at 1297. M-I asserts only specific 

personal jurisdiction. Relevant to that determination, we

apply a three-part test considering whether: (1) the defendant purposefully directed its activities at residents of 

the forum; (2) the claim arises out of or relates to the 

defendant’s activities with the forum; and (3) assertion of 

personal jurisdiction is reasonable and fair. Id. The 

plaintiff bears the burden as to the first two requirements, and if proven, the burden then shifts to the defendant to “present a compelling case that the presence of 

some other considerations would render jurisdiction 

unreasonable.” Burger King Corp. v. Rudzewicz, 471 U.S. 

462, 477 (1985); Grober v. Mako Prods., Inc., 686 F.3d 

1335, 1346 (Fed. Cir. 2012). 

The district court found here that DAL’s contacts with 

the HOS Pinnacle and the HOS Resolution were “due to 

the unilateral activity of [Petrobras] and random insofar 
6 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

as [they were] completely dependent on Petrobras’s direction.”1 J.A. 19. Because Petrobras “had exclusive control 

over where the accused systems were installed,” id., the 

district court concluded that DAL had not “‘purposefully 

availed itself of the privilege of conducting activities’ 

within the United States,” J.A. 19–20. To bolster its 

analysis, the court relied on Bellisio Foods, Inc. v. Prodo 

Pak Corp., a breach of contract action in which the district

court concluded that the defendants had not purposefully 

directed their activities to Minnesota because the plaintiff 

asked for contract performance in Minnesota after negotiations over the contract formation had concluded. No. 07-

CV-4520(PJS/JJG), 2008 WL 4867352, at *6–9 (D. Minn. 

 

1 The district court decided in a related action between M-I and DAI (DAL’s parent entity) that U.S. territory extends to the HOS Pinnacle and the HOS 

Resolution. DAL did not dispute that issue in its Rule 

12(b)(2) motion. J.A. 18 n.14; see also J.A. 421. “It is the 

general rule . . . that a federal appellate court does not 

consider an issue not passed upon below.” Singleton v. 

Wulff, 428 U.S. 106, 120 (1976). Our precedent generally 

counsels against entertaining arguments not presented to 

the district court. Sage Prod., Inc. v. Devon Indus., Inc., 

126 F.3d 1420, 1426 (Fed. Cir. 1997) (“In short, this court 

does not ‘review’ that which was not presented to the 

district court.”); see also Harris Corp. v. Ericsson Inc., 417 

F.3d 1241, 1251 (Fed. Cir. 2005) (“An appellate court 

retains case-by-case discretion over whether to apply 

waiver.”). Because M-I alleged that U.S.-flagged ships 

themselves are U.S. territory for the purposes of patent 

law; DAL affirmatively assumed so in its motion to dismiss for lack of personal jurisdiction; the district court 

accepted that assumption in deciding the motion; and 

DAL’s brief here does not provide any reason why it failed 

to argue this issue below, we deem the issue waived.
M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 7

Nov. 4, 2008). M-I argues that the court’s analysis is 

inconsistent with our relevant precedent. We agree.

Our subject matter jurisdiction over this appeal is 

grounded in the commercial tort of patent infringement, 

not a contract dispute between the parties. In patent 

infringement disputes, our precedent makes clear that 

“the jurisdictional inquiry is relatively easily discerned 

from the nature and extent of the commercialization of 

the accused products or services by the defendant in the 

forum.” Avocent Huntsville Corp. v. Aten Int’l Co., 552 

F.3d 1324, 1332 (Fed. Cir. 2008) (emphasis added). 

We have held, for instance, that a Brazilian defendant 

purposefully directed its allegedly infringing activities to

the United States where its representative brought the 

accused products into the United States from Brazil to 

display the items at a trade show. Synthes, 563 F.3d at

1297–98; accord Nuance Commc’ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1234 (Fed. Cir. 2010) (“Abbyy 

Production has purposefully imported the accused products into California, made those products available for 

sale through an established distribution chain, and the 

cause of action for patent infringement is alleged to arise 

out of these activities. No more is required for specific 

jurisdiction.”); Beverly Hills Fan Co. v. Royal Sovereign 

Corp., 21 F.3d 1558, 1565 (Fed. Cir. 1994) (“The allegations are that defendants purposefully shipped the accused fan into Virginia through an established 

distribution channel. The cause of action for patent 

infringement is alleged to arise out of these activities. No 

more is usually required to establish specific jurisdiction.”). Indeed, “even a single contact with a forum state 

may suffice for personal jurisdiction if it is directly and 

substantially related to the plaintiff’s claim” of patent 

infringement. Red Wing Shoe Co. v. HockersonHalberstadt, Inc., 148 F.3d 1355, 1359 (Fed. Cir. 1998). 

Here, it is undisputed that DAL installed pneumatic 

conveyance systems on the HOS Pinnacle and the HOS 
8 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

Resolution. DAL then deliberately continued to engage in 

the allegedly infringing activities aboard the ships even 

after M-I had cautioned DAL that its systems infringed 

the asserted patents. J.A. 1344 ¶ 33; see also J.A. 392 

¶¶ 25–26, 35, 38; J.A. 1341 ¶¶ 23–24. Nothing more is 

required to show that DAL purposefully directed its 

activities at the United States.

The district court erroneously focused on the contract 

between Petrobras and DAL. Even if the contract directed where the accused systems were installed and 

operated, DAL controlled the specifics of its own continued performance under the contract. There is no evidence, for instance, that Petrobras contractually required 

DAL to use allegedly infringing components when the 

latter fabricated the pneumatic conveyance systems on 

the U.S.-flagged ships. Moreover, DAL, not Petrobras, 

kept the systems operating on the HOS Resolution

through September 2015, and on the HOS Pinnacle

through August 2015. J.A. 1341 ¶¶ 23–24. Such deliberate presence of DAL and its systems in the United States 

enhance its affiliation with the forum and “reinforce the 

reasonable foreseeability of suit there.” Burger King, 471 

U.S. at 476. Far from being “random, fortuitous, or 

attenuated,” id. at 480, the totality of DAL’s contacts 

aboard the ships compels the conclusion that DAL purposefully directed its activities at the United States.

Although the district court did not address the issue, 

it is undisputed that M-I’s claims for patent infringement 

arise from or relate to DAL’s accused infringing activities

in the United States. Accordingly, M-I has met its burden 

to make a prima facie showing that DAL is subject to 

specific personal jurisdiction in a U.S. court.

Because DAL’s activities were purposefully directed 

at the United States and the claim of patent infringement 

arises out of those contacts, the burden now shifts to DAL

to present a “compelling case that the presence of some 
M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 9

other considerations would render jurisdiction unreasonable.” Id. at 477. In determining whether the exercise of

specific personal jurisdiction over a defendant would be 

reasonable and fair, we consider five due process factors:

(1) the burden on the defendant; (2) the forum’s interest 

in adjudicating the dispute; (3) the plaintiff’s interest in 

obtaining convenient and effective relief; (4) the interstate 

judicial system’s interest in obtaining the most efficient 

resolution of controversies; and (5) the shared interest of 

the states in furthering fundamental substantive social 

policies. Id. Given that M-I LLC, one of the allegedly 

injured parties and the exclusive licensee of the asserted 

patents, is a U.S. domiciliary, it has a paramount interest 

in obtaining convenient and effective relief in a U.S. court. 

Indeed, Synthes, a close factual analog to the instant case, 

compels that conclusion. 

Synthes involved a patent infringement suit filed by a 

U.S. plaintiff against a Brazilian company (GMReis). 563 

F.3d at 1297. GMReis had no office, subsidiary, or licensee in the United States. We applied Rule 4(k)(2), and 

held that the entire United States was an available 

forum. Id. at 1300. We acknowledged that the burden on 

GMReis was “significant,” given that it would have been

“required to traverse the distance between its headquarters in Brazil and the district court in California,” and 

would have been “required to submit itself to a foreign 

nation’s judicial system.” Id. at 1299. We observed, 

however, that “progress in communications and transportation has made the defense of a lawsuit in a foreign 

tribunal less burdensome.” Id. (quoting World-Wide 

Volkswagen Corp. v. Woodson, 444 U.S. 286, 294 (1980)). 

Balancing the factors, we held that any burden on 

GMReis was “sufficiently outweighed by the interest of the 

United States in adjudicating the dispute and the interest 

of Synthes [the patent owner] in obtaining effective and 

convenient relief, the second and third due process factors. The United States has a ‘substantial interest’ in 
10 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

enforcing the federal patent laws.” Id. (emphasis added). 

So too here. Because M-I LLC is a U.S. plaintiff trying to 

enforce its U.S. patents for alleged infringing activity in a 

U.S. territory,2 in light of Synthes, the first three factors 

strongly favor exercising specific personal jurisdiction 

over DAL. See N. Am. Philips Corp. v. Am. Vending 

Sales, Inc., 35 F.3d 1576, 1580 (Fed. Cir. 1994) (noting 

that the forum “clearly has an interest in prohibiting the 

importation of infringing articles into its territory”); 

Beverly Hills Fan, 21 F.3d at 1568 (holding that the 

forum’s interest in discouraging injuries within its territory extends to patent infringement actions). 

The fourth and the fifth due process factors “are concerned with the potential clash of substantive social 

policies between competing fora and the efficiency of a 

resolution to the controversy.” Synthes, 563 F.3d at 1300. 

But the forum here is the entire United States, so no 

competing U.S. forum is available to M-I for its infringement claims. As such, no other U.S. forum exists with

respect to which there is a clash of social policies or with 

which to compare the efficiency of a resolution. And to 

the extent we give any weight to the procedural and 

substantive interests of other nations in the context of 

Rule 4(k)(2), “we have no reason to believe that ‘the 

Federal Government’s interest in its foreign relations 

policies’ with Brazil will be hindered by allowing the 

district court to exercise personal jurisdiction” over DAL. 

Id. (quoting Asahi Metal Indus. Co. v. Super. Ct. of Cal., 

480 U.S. 102, 115 (1987)). 

 

2 As noted in footnote 1, DAL waived its argument 

that the alleged infringing activity occurred outside the 

United States. 
M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 11

On balance, this is not one of those “rare cases” in 

which fair play and substantial justice defeat the reasonableness of a U.S. court exercising personal jurisdiction 

over a defendant. Id.; cf. Tech. Patents, LLC v. Deutsche 

Telekom AG, 573 F. Supp. 2d 903 (D. Md. 2008) (finding 

that due process limits the court from exercising personal 

jurisdiction over 131 foreign defendants because haling 

those telecom defendants into the court for the action of 

its subscribers would have a “chilling effect” given the farreaching nature of the messaging technology that would 

ensnare nearly every telecom company in the world), 

aff’d, 700 F.3d 482 (Fed. Cir. 2012), cert. denied, 134 S. 

Ct. 67 (2013). Accordingly, DAL has not met its burden to 

present a compelling case that the assertion of personal 

jurisdiction over it is unreasonable or unfair under the 

five due process factors. 

III

For the foregoing reasons, we conclude that exercising

specific personal jurisdiction over DAL under Rule 4(k)(2) 

comports with due process. We thus reverse the district 

court’s dismissal for lack of personal jurisdiction and 

remand for further proceedings. 

REVERSED AND REMANDED

Costs to appellants. 
United States Court of Appeals 

for the Federal Circuit ______________________ 

M-I DRILLING FLUIDS UK LTD., M-I LLC,

Plaintiffs-Appellants

v.

DYNAMIC AIR LTDA.,

Defendant-Appellee

______________________ 

2016-1772

______________________ 

Appeal from the United States District Court for the 

District of Minnesota in No. 0:13-cv-02385-ADM-HB, 

Judge Ann D. Montgomery.

______________________ 

REYNA, Circuit Judge, concurring. 

I join the majority and agree that Rule 4(k)(2) supports finding that the district court can exercise specific 

personal jurisdiction over Dynamic Air Ltda. (“DAL”) in 

this case. Fed. R. Civ. P. 4(k)(2). I also agree that DAL 

has waived the issue of whether U.S. patent laws extend 

to U.S.-flagged ships on the high seas, but find that the 

broader issue of territoriality still weighs heavily in this 

case. I write to provide additional reasoning why the 

exercise of personal jurisdiction here does not offend 

traditional notions of fair play and substantial justice. 

See Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476

(1985). 
2 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

“The unique burdens placed upon one who must defend oneself in a foreign legal system should have significant weight in assessing the reasonableness of stretching 

the long arm of personal jurisdiction over national borders.” Asahi Metal Ind. Co., v. Superior Court of Cal., 

Solano Cty., 480 U.S. 102, 114 (1987) (emphasis added). 

This emphasis on “national borders” is central to Rule 

4(k)(2)(B) considerations. For example, prong three of the 

Rule 4(k)(2)(B) inquiry (i.e., the requirement that assertion of personal jurisdiction must comport with due process) requires the court to consider five factors: (1) the

burden on the defendant; (2) the forum’s interest in 

adjudicating the dispute; (3) the plaintiff’s interest in 

obtaining convenient and effective relief; (4) the interstate 

judicial system’s interest in obtaining the most efficient 

resolution of controversies; and (5) the shared interest of 

the states in furthering fundamental substantive social 

policies. Burger King, 471 U.S. at 477. Each of these 

factors raises the issue of the relationship between territoriality and U.S. patent law. The majority opinion also 

emphasizes the interest of the United States in enforcing 

its patent laws within its territories, an assertion that, in 

particular, implicates the territoriality issue. See Maj. 

Op. at 9–10.

U.S. PATENT LAW ON THE HIGH SEAS

The crux of DAL’s position that U.S. patent laws do 

not extend to U.S.-flagged ships in international waters

rests on the notion that “the law of the flag doctrine ‘is a 

figure of speech, a metaphor,’” and therefore a merchant 

ship is not part of the territory of the country whose flag 

she flies.1 Appellee’s Br. 52 (quoting Cunard S.S. Co. v. 

 

1 The alleged infringement in this case occurred in 

the exclusive economic zone (“EEZ”) of Brazil. The EEZ is 

“‘an area beyond and adjacent to the territorial sea’ which 

‘shall not extend beyond 200 nautical miles from the 
 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 3

Mellon, 262 U.S. 100, 123 (1923)). DAL thus seeks a 

categorical rule that because general statutes do not 

normally apply extraterritorially, U.S. patent laws can 

never apply to U.S.-flagged ships in international waters. 

I disagree with DAL’s all-or-nothing argument. 

There is no dispute that a ship’s flag does not transform a ship into terra firma of the country whose flag she 

flies. That this “floating island” metaphor was once used 

does not displace the law of the flag’s well-settled role in 

determining what nation’s law applies to disputes aboard

a ship. See William Tetley, Q.C., The Law of the Flag, 

“Flag Shopping,” and Choice of Law, 17 Tul. Mar. L.J. 

139, 140–47 (1993). Accordingly, the Supreme Court has 

recognized that the “well-established rule of international 

law that the law of the flag state ordinarily governs the 

internal affairs of a ship.” McCulloch v. Sociedad 

Nacional de Marineros de Honduras, 372 U.S. 10, 21 

(1963); see Hellenic Lines Ltd. v. Rhoditis, 398 U.S. 306, 

312 (1970) (recognizing the “well-settled principle that the 

law of the country whose flag a ship flies governs shipboard transactions, absent some ‘clear expression’ from 

Congress to the contrary”). This sentiment is echoed by 

 

baselines from which the breadth of the territorial sea is 

measured.’” Elizabeth I. Winston, Patent Boundaries, 87 

Temp. L. Rev. 501, 508 (2015) (quoting the United Nations Convention on the Law of the Sea, Dec. 10, 1982, 

1833 U.N.T.S. 397, 418–19 (arts. 55, 57)). The United 

States has adopted the same definition of the exclusive 

economic zone in 1983 by Presidential Proclamation. Id.

(citing Proclamation No. 5030, 48 Fed. Reg. 10,605 (Mar. 

10, 1983)). In the EEZ, a nation has minimal sovereign 

rights. For example, the United States “possesses sovereign rights in economic exploitation of natural resources 

and jurisdiction over marine scientific research.” Patent 

Boundaries, 87 Temp. L. Rev. at 508. 
4 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

the Restatement (Third) of Foreign Relations Law 

§ 502(2) (Am. Law Inst. 1987), which provides that “[t]he 

flag state may exercise jurisdiction to prescribe, to adjudicate, and to enforce, with respect to the ship or any conduct that takes place on the ship.” The law of the flag

also holds a long-standing role in determining the jurisdiction of disputes on the high seas. See Patent Boundaries, 87 Temp. L. Rev. at 522 (“The law of the flag does 

protect United States-flagged ships, which have long 

represented an extension of the sovereignty of the United 

States to the high seas.”); see also Cunard, 262 U.S. at 

123 (stating that the law of the flag is “chiefly applicable 

to ships on the high seas, where there is no territorial 

sovereign . . .”); United States v. Sanford Ltd., 880 F. 

Supp. 2d 9, 16 (D.D.C. 2012) (recognizing that the law of 

the flag serves “as a tiebreaker of sorts for areas of the 

world (e.g., the high seas) where there is no territorial 

sovereign”). 

In the seminal maritime case Lauritzen v. Larsen, the 

Supreme Court identified the law of the flag as one of 

seven factors for a court to consider in choosing which law 

governs aboard a ship, stating: 

This Court has said that the law of the flag supersedes the territorial principle, even for purposes of 

criminal jurisdiction of personnel of a merchant 

ship, because it “is deemed to be a part of the territory of that sovereignty (whose flag it flies), and 

not to lose that character when in navigable waters within the territorial limits of another sovereignty.” On this principle, we concede a territorial 

government involved only concurrent jurisdiction 

of offenses aboard our ships. Some authorities reject, as a rather mischievous fiction, the doctrine 

that a ship is constructively a floating part of the 

flagstate, but apply the law of the flag on the 

pragmatic basis that there must be some law on 

shipboard, and it cannot change at every change 
 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 5

of waters, and no experience shows a better rule 

than that of the state that owns her. 

345 U.S. 571, 585 (1953) (citation omitted). The dispute 

in Lauritzen involved a suit for a Danish seaman’s negligent injuries against a Danish owner of a Danish vessel 

anchored in Cuban waters off Havana, Cuba. Id. at 573. 

Despite the fact that the injuries occurred in Cuban 

waters, the Court found Danish law applied chiefly based 

on the law of the flag, stating the doctrine has “such 

weight,” that “it must prevail unless some heavy counterweight appears.” Id. at 586. In addition to the law of the 

flag, the Lauritzen Court identified six other factors for a 

court to consider in determining what law applies aboard 

a ship: (1) place of the wrongful act; (2) allegiance or 

domicile of the injured; (3) allegiance of the ship owner; 

(4) place of contract; (5) inaccessibility of foreign forum; 

and (6) the law of the forum. Id. at 583–91. Lauritzen 

calls for a case-by-case, not a categorical, approach, to the 

question at hand—here, whether the specific U.S.-

registered and flagged ships at issue, the HOS Pinnacle

and HOS Resolution, are U.S. territory for purposes of the 

Patent Act. 

International and maritime law also provide support 

for using the law of the flag as a dispositive factor in

deciding whether a ship constitutes “territory” for purposes of jurisdiction. While the United States is not a party 

to the United Nations Convention on the Law of the Sea, 

the document is nevertheless informative. Article 92 

provides that “[s]hips shall sail under the flag of one State 

only and save, in exceptional cases expressly provided for 

in international treaties or in this Convention, shall be 

subject to its exclusive jurisdiction on the high seas.” Dec. 

10, 1982, 1833 U.N.T.S. 397, 433 (emphasis added). In 

that same current, U.S. vessel registration requirements

to obtain that flag amplify the law of the flag’s importance 

in determining a merchant ship’s nationality. See Lauritzen, 345 U.S. at 584 (“Each state under international 
6 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

law may determine for itself the conditions on which it 

will grant its nationality to a merchant ship, thereby 

accepting responsibility for it and acquiring authority 

over it. Nationality is evidenced to the world by the ship’s 

papers and its flag.”). The United States has the most 

stringent registration requirements in the world. See H. 

Edwin Anderson, III, The Nationality of Ships and Flags 

of Convenience: Economics, Politics, and Alternatives, 21 

Tul. Mar. L.J. 139, 151–52 (1996). For example, on a 

U.S.-flagged ship, only an American citizen may serve as 

captain, chief engineer, radio officer, deck watch officer 

and engineering officer. Id. In addition, only twenty-five 

percent of the unlicensed crew may be foreign. Id. To 

that effect, U.S. Coast Guard regulations provide that a 

Certificate of Documentation for a ship “serves as evidence of a vessel[’s] nationality.” 46 C.F.R. § 67.1. And a 

Certificate of Documentation for a vessel may only be 

issued to vessels “which are wholly owned by United 

States citizens.” Id. § 67.30. Thus, a ship’s flag and

corresponding registration requirements are critical when 

assessing what nation’s law applies to conduct, or a 

dispute, on a ship. 

Turning to the Patent Act itself, 35 U.S.C. § 154(a) defines a patent owner’s right to “exclude others from making, using, offering for sale, or selling the invention 

throughout the United States, or importing the invention 

into the United States . . . .” Section 100(c) defines the 

“United States” to mean “the United States of America, 

its territories and possessions.” Prior to the enactment of 

the 1952 Act, the only authority speaking on whether U.S. 

patent laws apply to U.S-flagged ships on the high seas

was Gardiner v. Howe, an 1865 case from then-existing 

Circuit Court of the District of Massachusetts. 9 F. Cas. 

1157 (C.C.D. Mass. 1865). In Gardiner, the asserted

patent claimed an improvement in the sails of vessels. Id. 

at 1157. The accused infringer allegedly used the improvement on the sails of his U.S.-flagged vessel while on
 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 7

the high seas and argued at trial that he could not be held

liable for infringement because U.S. patent laws did not 

apply on the high seas. Id. The court disagreed, stating 

that the U.S. patent laws “extend[] to the decks of American vessels on the high seas, as much as it does to all the 

territory of the country, and for many purposes is even 

more exclusive.” Id. at 1158. The court reasoned that any 

contrary ruling would render valueless “patents for improvements in the tackle and machinery of vessels, or in 

their construction . . . .” Id. Our predecessor court recognized the vitality of Gardiner in Marconi Wireless Telegraph Co. of America v. United States, when it held that 

U.S. patent laws extend to infringing acts at the American Legation at Peking in China. 99 Ct. Cl. 1, 67–68 

(1942). 

Nothing in the legislative history of the 1952 Patent

Act evidences congressional intent to narrow the territorial scope of the patent laws from that articulated in 

Gardiner. See S. Rep. 101-266 (1990), as reprinted in 

1990 U.S.C.C.A.N. 4058, 4060 (noting that the language 

of § 100(c) was “intended to be descriptive rather than 

limiting”). Rather, the sole justification given for including § 100(c) was “to avoid the use of long expressions in 

various parts of the revised title.” S. Rep. 82-1979 (1952), 

as reprinted in 1952 U.S.C.C.A.N. 2394, 2409. To that 

point, when Congress considered the 1952 Act, Senator 

Pat McCarran explained that the legislation was not 

intended to change existing law in any way, but to “codif[y] the present patent laws.” 98 Cong. Rec. 9323 (daily 

ed. July 4, 1952). Absent evidence that Congress intended the 1952 Act to alter the territorial reach of the U.S. 

patent laws, Gardiner remains persuasive. Midlantic 

Nat. Bank v. N.J. Dep’t of Environ. Prot., 474 U.S. 494, 

501 (1986) (“The normal rule of statutory construction is 

that if Congress intends for legislation to change the 

interpretation of a judicially created concept, it makes 
8 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

that intent specific.”); Shaw v. Railroad Co., 101 U.S. 557, 

565 (1879) (similar). 

In 1990, Congress applied the logic expressed by the 

Gardiner court in drafting legislation to extend U.S. 

patent law to U.S. spaceships. 1990 U.S.C.C.A.N. 4058, 

4060–62. Specifically, in passing the Inventions in Outer 

Space Act, Congress recognized that absent language 

extending U.S. patent laws to U.S. spaceships, patent 

owners would be “unable to enjoin or collect damages for 

infringing activities in outer space,” which “may chill 

prospects for commercial investment in outer space research and manufacturing.” Id. at 4062. Section 105 of 

Title 35 thus provides that “[a]ny invention made, used or 

sold in outer space on a space object or component thereof 

under the jurisdiction or control of the United States shall 

be considered to be made, used or sold within the United 

States for the purposes of this title . . . .” Congress’s logic 

in extending U.S. patent laws to U.S.-spaceships in outer 

space lends strong support for finding U.S. patent laws 

extend to U.S.-flagged ship on the high seas. 

DAL may view that any holding on this issue is compelled by the traditional understanding that U.S. patent 

laws do not apply to foreign activities. See Microsoft

Corp. v. AT&T Corp., 550 U.S. 437, 454–55 (2007). But 

DAL would be missing an important waypoint in that,

given that the nationality of a U.S. flagship is “American,” 

it would be incorrect to say that the activities upon her 

deck are foreign. Even so, the Supreme Court has warned

against adopting categorical holdings based on general 

guiding principles. In Spector v. Norwegian Cruise Line 

Ltd., the U.S. Court of Appeals for the Fifth Circuit categorically held that Title III of the Americans with Disabilities Act of 1990 (“ADA”) does not apply to foreign vessels 

in U.S. ports based on the principle that a general statute 

does not apply to the internal operations of a foreign 

vessels in U.S. waters absent clear congressional intent. 

545 U.S. 119, 127 (2005) (plurality opinion). Even though 
 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 9

Title III does not contain any provision expressly permitting its application to foreign-flag vessels, the Supreme 

Court reversed. Id. at 127–28. It reasoned that, if applied in a sweeping manner to the whole of Title III, the 

principle that general statutes do not apply to the internal affairs of foreign ships in domestic waters “is unlikely 

to reflect congressional intent” because such an all-ornothing approach could nullify other applications of the 

statute. Id. at 132, 139. Instead, the Court explained 

that it is necessary to consider each disputed provisions

separately to assess whether there is the potential for 

interference with the internal affairs of the foreignflagged ship. Id. 132–33. 

Here, DAL seeks to convert the principle that patent 

laws do not apply to foreign activities into the categorical

rule that U.S.-patent laws can never extend to U.S.-

flagged ships in international water. DAL’s argument

fails to consider the possibility for extraterritorial applications or for applications involving the internal affairs of a 

U.S.-flagged ship. Case law shows that these possibilities 

are not so remote. For example, in Brown v. Duchesne, 

the Court held that U.S. patent laws did not apply to a 

French-flagged ship in the port of Boston. 60 U.S. (19 

How.) 183, 198–99 (1856). The patented technology 

claimed an improvement in the construction of the gaff of 

sailing vessels, a gaff being an integral part of the ship. 

Id. at 188, 193. Because the gaff was part of the ship’s 

construction and was attached to the ship in France, the

Court held that U.S. patent laws would not apply to any 

potential infringement occurring in U.S. ports. Id. at 

198–99. The holding in Duchesne suggests that whether 

an infringement dispute involves the internal affairs of a 

ship may depend on the patented technology itself. DAL’s 

proposed categorical rule fails to account for such possibilities, possibilities that are as infinite as the sea.

Lastly, it is worth recognizing the Supreme Court’s

increasing interest in international activity that bears on 
10 M-I DRILLING FLUIDS UK LTD. v. DYNAMIC AIR LTDA. 

U.S. patent laws, indicating that we should cautiously 

consider cases presenting extraterritoriality questions. In 

Impression Products Inc. v. Lexmark International, Inc., 

the Court held that a patent owner’s exclusive rights in 

its invention or improvement can be exhausted through 

its international sales and recognized that U.S. patent 

laws do not traditionally apply abroad. 137 S. Ct. 1523, 

1536 (2017). The Court concluded that a patent owner 

cannot assert infringement liability against a party 

importing its foreign-sold patented inventions into the 

United States. Id. The Court recently heard argument in

WesternGeco LLC v. ION Geophysical Corp., No. 16-1011 

(S. Ct.), which presents the question of whether a patent 

owner, after proving a domestic act of infringement, can 

obtain damages for lost profits for failure to win service 

contracts to be performed on the high seas. While the 

location of damages is at issue in WesternGeco, and location of liability is at issue in the instant case, both grapple 

with the question of how to ensure that a U.S. patent 

owner can recover from the harm of infringement for 

patented technology that involves activity in international 

waters. 

What is particularly troubling in this case is that if 

U.S. law does not apply to infringing activity on a U.S.-

flagged ship in international water, then it is possible no

law applies. DAL seeks to promote the exploitation of this

loophole by instructing potential infringers to take to the 

high seas, modern day privateers armed with letters of 

marque from the U.S. government. That view is distinctly harmful where, as here, the patented invention operates exclusively on the high seas. With continuing 

advances in deep sea technology and the increasing 

accessibility of international waters, and the far reaches 

of outer space, we should consider the scope and protections of U.S. patent law without resorting to categorical 

rules.