United States Court of Appeals 

for the Federal Circuit 

__________________________ 

DAVID GROBER, 

Plaintiff-Appellant, 

AND

VOICE INTERNATIONAL, INC., 

Plaintiff-Appellant, 

v. 

MAKO PRODUCTS, INC., AIR SEA LAND 

PRODUCTIONS, INC., 

CINEVIDEOTECH, INC., SPECTRUM EFFECTS, 

INC., 

AND BLUE SKY AERIALS, INC., 

Defendants-Cross Appellants, 

AND

DOES 1-10, JORDAN KLEIN, SR., JORDAN KLEIN, 

JR., 

AND OPPENHEIMER CINE RENTAL, LLC, 

Defendants. 

__________________________ 

2010-1519, -1527 

__________________________ 

Appeal from the United States District Court for the 

Central District of California in Case No. 04-CV-8604, 

Judge Jack Zouhary. 
GROBER v. MAKO PRODUCTS 2

_________________________ 

Decided: July 30, 2012 

_________________________ 

JON E. HOKANSON, Lewis, Brisbos, Bisgaad & Smith 

LLP, of Los Angeles, California, argued for all plaintiffsappellants. On the brief was DAVID GROBER, of Marina 

Del Rey, California. Of counsel was EDWIN P. TARVER 

Lauson & Tarver, LLP, of El Segundo, California. 

BRIAN W. WARWICK, Varnell & Warwick. P.A., of The 

Villages, Florida, argued for defendants-cross appellants. 

__________________________ 

Before RADER, Chief Judge, PROST and MOORE, Circuit 

Judges. 

RADER, Chief Judge. 

The United States District Court for the Central District of California granted summary judgment of noninfringement to the defendants (Mako Products, Inc.; Air 

Sea Land Productions, Inc.; CineVideoTech, Inc.; Spectrum Effects, Inc.; Blue Sky Aerials, Inc.; Jordan Klein’s, 

Sr.; Jordan Klein’s, Jr.; and Oppenheimer Cine Rental, 

LLC) on the patent owned by David Grober and Voice 

International, Inc. (“Appellants”). Several defendants 

cross-appeal the district court’s denial of attorney’s fees. 

For the reasons recited below, this court affirms-in-part, 

vacates-in-part, and remands to the district court. 

I.

Appellant David Grober invented a platform that stabilizes a camera for filming motion pictures from moving 

vehicles. This technology, known in the entertainment 

industry as the Perfect Horizon, won Grober an Academy 
3 GROBER v. MAKO PRODUCTS

Award in technical achievement. He also received U.S. 

Patent No. 6,611,662 (“’662 patent”), entitled “Autonomous Self Leveling, Self Correcting Stabilized Platform,” 

for this technical advance. The invention “compensate[s] 

for motion caused by waves, currents, wind, and other 

motion during land, air, and sea operations of a camera.” 

’662 patent Abstract. 

For the purposes of this appeal, claim 1 is representative: 

1. A stabilized platform comprising: 

a payload platform for supporting an article to be 

stabilized; 

a base; 

a stabilizing system connected between the payload 

platform and the base, the stabilizing system including means for moving the payload platform 

with respect to the base about two different axes for 

providing the payload platform with stabilization 

in two dimensions; 

a first sensor package for determining, in two transverse directions, motion of a moving object on 

which the stabilized platform is mounted; 

a second sensor package comprising sensor means for 

sensing a position of the payload platform and for 

providing information based on the position of the 

payload platform relative to a predetermined position; and 

a control system connected to the means for moving 

for stabilizing the platform in response to information provided by the first sensor package and the 

second sensor package, wherein the second sensor package is fixed to the payload platform, 

and the first sensor package is fixed with respect to 

the base. 
GROBER v. MAKO PRODUCTS 4

’662 patent col. 7 ll. 50-col. 8 ll. 6 (emphasis added). 

Fig. 2 illustrates the side view of the platform 100 

with its stabilizing technology along two axes. ’662 patent 

col. 3 ll. 6-8. On one axis, the stabilized platform 100 

compensates for unwanted movement. This compensation 

occurs with the assistance of a first drive mechanism 10, 

which is mounted on a fixed side plate 8. The drive 

mechanism 10 includes a motor and, potentially, a gear 

box. The preferred embodiments teach an encoder attached to the motor to give feedback based on the position 

of the bottom platform 2. This mechanism provides one of 

the two stabilized axes. A protective housing 16 encloses 

the drive mechanism 10 (including the motor, gear box, 

encoder, and associated wiring). Id. at col. 3 ll. 14-31. 

The second stabilizing mechanism involves platform 

22 which holds the camera. A second drive mechanism 30 

attaches to this mounting platform and stabilizes the 

platform along another axis. Figs. 2 and 3 show that the 

second drive mechanism 30—fixed to the bottom platform 
5 GROBER v. MAKO PRODUCTS

2—mounts orthogonally (i.e., perpendicularly) to the first 

drive mechanism 10. In sum, the second drive shaft 24 is 

orthogonal to the first drive shaft 4 to permit twodimensional stabilization of the camera platform 22. Id.

at col. 3 ll. 31-65. Fig. 2 shows the stabilized platform 100 

in an upright orientation with the ability to compensate 

for pitch and roll of the vehicle 64. Id. at col. 4 ll. 6-11. 

The ’662 patent further teaches a method to achieve a 

third axis of stabilization along the azimuth axis. Fig. 3 

compensates for azimuth motion by adding a third set of 

orthogonally positioned drive components to the stabilized 

platform 100. This third drive mechanism stabilizes the 

platform with input from sensor packages A and B. 

Sensor package A appears on the housing 82, or other 

disclosed areas; package B on the camera platform 22. Id.

at col. 5 ll. 26-39; col. 4 ll. 25-27. 
GROBER v. MAKO PRODUCTS 6

David Grober and Voice International, Inc. sued 

Cross-Appellants in October 2004 alleging that their 

manufacture, sale, and lease of a movie stabilization 

device known as the MakoHead infringed the ’662 patent. 

Cross-Appellants then commenced an inter partes reexamination of the ’662 patent before the U.S. Patent and 

Trademark Office (“PTO”). The district court stayed the 

infringement suit. 

In 2006, the trial court lifted the stay and authorized 

commencement of discovery. The district court held a 

Markman hearing and construed the claim term “payload 

platform.” Based on this interpretation, the district court 

sua sponte concluded that the MakoHead did not infringe 

the ’662 patent. Appellants filed a motion to vacate the 

district court’s summary judgment order, which was 

denied. 

Cross-Appellants sought attorneys fees as sanctions 

under Rule 11 and attorney fees under 35 U.S.C. § 285. 

The district court declined to award attorneys fees under 

either rationale. The district court issued its final judgment of non-infringement and the Appellants timely 

appealed to this court, which has jurisdiction under 28 

U.S.C. §§ 1292(c)(1) and 1295(a)(1). 

The PTO completed the reexamination of the ’662 

patent after Appellants’ notice of appeal and confirmed 

patentability of independent claims 1 and 38 as well as 

several dependent claims. 

II.

This court reviews a district court’s claim construction 

without deference. Cybor Corp. v. FAS Techs., Inc., 138 

F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). In this case, 

the district court erred in construing the claim term 

“payload platform” to mean “the horizontal plate, piece of 
7 GROBER v. MAKO PRODUCTS

surface upon which the device (e.g., a camera) is directly 

mounted upon or affixed to.” Grober v. Mako Prods., Inc., 

No. 2:04-CV-04-8604, 2009 WL 1587158, at *12 (C.D. Cal. 

June 4, 2009) (“Markman Order”). 

Before the Markman hearing, the parties proposed 

competing constructions of the term “payload platform.” 

The district court found significant differences in those 

proposals. Id. at *3. Most notably, Cross-Appellants 

limited the disputed term to a “horizontal surface or 

plate” upon which the device is mounted or affixed. 

Appellants, on the other hand, included the threedimensional “supporting structure” of said “horizontal 

surface or plate.” Id. The district court relied heavily on 

the reexamination history of the ’662 patent where Grober 

narrowed the claims “in order to avoid a significant body 

of prior art.” Id. at *2. The prior art was U.S. Patent No. 

5,922,039 to Welch et al. (“Welch patent”) and U.S. Patent 

No. 4,143,312 to Duckworth et al. (“Duckworth patent”). 

The trial court explained: “an understanding of . . . [the] 

specific structural aspect of the prior art . . . in relation to 

the ‘payload platform’ provides meaningful insight into 

what part of the ’662 patent is sought to be captured 

through use of that term . . . .” Id. at *5. In view of the 

Welch and Duckworth patents, the district court found 

“the defining characteristic of the ’662 patent . . . was the 

fact that the ’662 patent ‘requires the second sensor 

package [be] fixed to the payload platform.’” Id. The 

district court construed the claim term “payload platform” 

to mean “the horizontal plate, piece of surface upon which 

the device (e.g., a camera) is directly mounted upon or 

affixed to.” Id. at *12. 

This court generally gives claim language its “ordinary and customary meaning.” Phillips v. AWH Corp., 

415 F.3d 1303, 1312-1313 (Fed. Cir. 2005) (en banc) 

(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 
GROBER v. MAKO PRODUCTS 8

1576, 1582 (Fed. Cir. 1996)). This customary meaning 

encompasses the understanding of an artisan of ordinary 

skill in the context of the inventive art. Often this court 

discerns that context in the claims themselves and the 

specification, and occasionally the prosecution history as 

well. Phillips, 415 F.3d at 1313. When a patentee makes 

a “clear and unmistakable disavowal of scope during 

prosecution,” a claim’s scope may be narrowed under the 

doctrine of prosecution disclaimer. See Computer Docking 

Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75 (Fed. 

Cir. 2008). Statements made during reexamination can 

also be considered in accordance with this doctrine. 

Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 

2012). However, while the prosecution history can inform 

whether the inventor limited the claim scope in the course 

of prosecution, it often produces ambiguities created by 

ongoing negotiations between the inventor and the PTO. 

Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. 

Cir. 2009). Therefore, the doctrine of prosecution disclaimer only applies to unambiguous disavowals. Id. 

As noted earlier, the trial court emphasized Grober’s 

statements during reexamination of the ’662 patent. In 

these statements, Grober distinguished his invention by 

explaining that the prior art does not teach “the second 

sensor package being fixed to the payload platform.” He 

asserted that “Welch never uses the word ‘fixed to’ or 

‘mounted on’ to describe his potentiometers [sensors] 27 

and 29. They are clearly not ‘fixed to,’ and most definitely 

not ‘wholly fixed to’ Platform Structure 18.” Regarding 

Duckworth, Grober argued that it “clearly discloses [that 

the sensor system] is not fixed to the payload platform [3] 

as suggested by requestor and listed as part of the Examiner's rejection.” 

These statements during reexamination do not unambiguously focus on the characteristics of the “payload 
9 GROBER v. MAKO PRODUCTS

platform,” let alone distinguish it from the prior art as 

being a two-dimensional surface. Instead they refer to 

the placement of the prior art sensors in relation to the 

element identified by the examiner as the “payload platform.” These statements do not address the characteristics of the claimed “payload platform” limitation. Thus 

these ambiguous statements do not disavow or even 

clearly describe the structure of the claimed “payload 

platform.” Therefore, this reexamination commentary 

cannot fairly limit the characteristics of the claim term. 

See Computer Docking, 519 F.3d at 1375 (“Prosecution 

disclaimer does not apply . . . if the applicant simply 

describes features of the prior art and does not distinguish the claimed invention based on those features.”). 

The district court’s construction also considered 

Grober’s statement: 

“[Requestor] proposes that Welch's position sensor(s) 27 and/or 29 are fixed to platform 18, the 

equivalent of Grober's payload platform. This is 

not supported by Welch's claims, specification or 

figures. Welch's second sensor package is two distinctly separate sensors located in two separate 

positions at the gimbal between the framework 

parts. The parts are not attached or fixed to the 

payload platform.” 

Markman Order at *9. According to the district court, 

“Grober argues that the structure on the Welch gimbalbased device that is comparable to his payload platform 

was FIG 1 item 18 (the Platform Structure) in the Welch 

patent.” Id. The trial court erroneously inferred that 

Grober’s reference to the reexamination requestors’ 

arguments (equating the prior art structures with the 

claim elements) in effect adopted those arguments as his 

definition of his invention. At no point, however, does 
GROBER v. MAKO PRODUCTS 10

Grober adopt those arguments as an accurate description 

of his invention. Grober distinguished the arguments but 

did not admit that they properly characterized the invention. 

This court has often stated that prosecution history 

limits claim meaning when an applicant “clearly and 

unmistakably” disclaims claim scope or meaning. See, 

e.g., Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 

1331 (Fed. Cir. 2012); Abbott Labs., 566 F.3d at 1289; 

Computer Docking, 519 F.3d 1366, at 1375; Purdue 

Pharma LP v. Endo Pharms., Inc., 438 F.3d 1123, 1136 

(Fed. Cir. 2006). Grober’s statements were not an unambiguous disavowal that clearly and unmistakably disclaims claim scope or meaning. In this instance, the 

reexamination history did not define or limit, let alone 

clearly and unmistakably disclaim, claim scope. In context, Grober’s statements do not limit or narrow the 

“payload platform” to a “horizontal surface.” Rather these 

statements show that Grober referenced threedimensional prior elements when discussing sensor 

location in the prior art. In sum, Grober’s statements in 

reference to the prior art did not narrow the meaning of 

the patent. Thus, the district court’s claim construction 

misread the context of the reexamination process and 

improperly emphasized a general statement out of context 

to limit the disputed claim term. 

Placing this invention in its proper context, this court 

finds no reason to limit the claim term “payload platform” 

to a “horizontal surface.” As recited by claim 1, the “stabilized platform compris[es]: a payload platform for supporting an article to be stabilized.” ’662 patent col. 7 ll. 

50-52. The specification refers to the “payload platform” 

as a three-dimensional structure with hidden (or 

“dashed”) lines in Figs. 2-5 and 13 under the item label 22 

(called “camera mounting platform”). See id. at col. 3 ll. 
11 GROBER v. MAKO PRODUCTS

31. Fig. 2 illustrates item 22 as a three-dimensional 

structure for mounting a device (usually a camera). Fig. 3 

also locates a sensor package B on item 22, id. at col. 5 ll. 

29-31, and includes an optional riser 40 “to adjust a 

height of the camera 42 [shown in Fig. 4] for ease of use,” 

id. at col.6 ll.19-23. In sum, the patent consistently 

depicts the “payload platform” as more than a “surface.” 

See Phillips, 415 F.3d at 1314-15. 

Accordingly, the claim language and specification 

show that “payload platform” means “a three-dimensional 

structure upon which the payload (e.g., a camera) is 

directly mounted upon or affixed to.” Because this court 

finds that the district court erred in its claim construction 

of the term “payload platform,” this court vacates the 

district court’s claim construction and remands for further 

proceedings. 

III. 

Based on its claim construction, the district court improperly found that the MakoHead did not infringe the 

’662 patent. The district court’s claim construction order 

states: “Given that such a definition results in a finding 

of non-infringement, the Court concludes its analysis on 

this point and goes no further in construing the many 

other terms offered for consideration by the parties in 

their Markman briefs.” Markman Order at *12. In 

response to Appellants’ motion for reconsideration, the 

district court stated “that the parties agreed, should the 

Court adopt defendants’ construction of ‘payload platform,’ there would be no infringement by the accused 

device . . . .” Grober v. Mako Prods., Inc., No. 2:04-CV-04-

8604, slip op. at 2 (C.D. Cal. Oct. 21, 2009); see also id. at 

2-3 n.1. Further, the district court mentions in footnote 2 

that it did not adopt “the literal verbiage” proposed by 
GROBER v. MAKO PRODUCTS 12

Cross-Appellants but “the end result is the same.” Id. at 

3 n.2.

Additionally, concerning the dispositive nature of the 

proposed claim construction, defense counsel’s statements 

at the Markman hearing were overly broad, if not misleading. Specifically, regarding the “payload platform” 

term, Defense counsel stated: 

MR. WARWICK: . . . 

On behalf of defendants we believe Your Honor 

correct. Not that it will be dispositive exactly of 

every claim because as you know most patent 

cases focus down on one or two claims that are 

really at issue. In this case the plaintiffs allege 

we violated all 38 claims. . . . virtually every 

claim except for maybe five or six require 

the payload platform. You are exactly right the 

payload platform is to me unique in this Markman

hearing portion of the case critical and will dispose of many of the issues to come down one way 

or the other. 

THE COURT: Well, if the accused device does not 

infringe on one of the claims then it’s no longer an 

infringing device; correct? 

MR. WARWICK: Correct, Your Honor, it has to 

infringe on all the claims from our view 

point.

Grober v. Mako Prods., Inc., No. 2:04-CV-04-8604, p. 8, ll. 

9-25 (C.D. Cal. Nov. 3, 2008) (“Markman Hearing Transcript”) (emphasis added). This exchange conveys misleading advice to the district court. This court’s precedent 

is clear: a patent is infringed if a single claim is infringed. 

See, e.g., Intervet America, Inc. v. Kee-Vet Labs., Inc., 887 

F.2d 1050, 1055 (Fed. Cir. 1989); see also Z4 Techs., Inc. 
13 GROBER v. MAKO PRODUCTS

v. Microsoft Corp., 507 F.3d 1340, 1356 (Fed. Cir. 2007) 

(district court’s jury instruction paralleled language of 35 

U.S.C § 271(a) by requiring, in-part, that the accused 

infringing activity be “covered by at least one claim of a 

patent, before the patent expires”). 

This court reviews a district court’s decision concerning summary judgment under the law of the regional 

circuit. MicroStrategy, Inc. v. Bus. Objects, S.A., 429 F.3d 

1344, 1349 (Fed. Cir. 2005). The United States Court of 

Appeals for the Ninth Circuit reviews a grant of summary 

judgment without deference. Burke v. County of Alameda, 586 F.3d 725, 730 (9th Cir. 2009). 

This court has stated that “district courts are widely 

acknowledged to possess the power to enter summary 

judgment sua sponte, so long as the losing party was on 

notice that she had to come forward with all of her evidence.” See, e.g., Int’l Visual Corp. v. Crown Metal Mfg. 

Co., 991 F.2d 768, 770 (Fed. Cir. 1993) (quoting Celotex 

Corp. v. Catrett, 477 U.S. 317 (1986)). However, the 

district court’s power to enter summary judgment does 

not allow it to bypass performing a complete patent 

infringement analysis. Patent infringement requires a 

two-step analysis. First, “the court determines the scope 

and meaning of the patent claims asserted,” and then 

compares the claims “to the allegedly infringing devices.” 

Cybor, 138 F.3d at 1454. In this case, the district court 

performed the first step. At that point, however, the 

process hit a couple short circuits. In the first place, the 

adopted claim construction did not entirely dispose of the 

case because several claims did not include the construed 

term. More important, the trial court did not place the 

accused device alongside each asserted claim for a complete comparison. See Intervet Inc. v. Merial Ltd., 617 

F.3d 1282, 1292 (Fed. Cir. 2010) (remand to compare 

properly construed claims to accused product claim by 
GROBER v. MAKO PRODUCTS 14

claim). This court vacates the district court’s grant of 

summary judgment of non-infringement. 

Several discovery motions were pending when the district court, sua sponte, found non-infringement. These 

included motions to compel depositions of Jordan Klein, 

Sr. and Jordan Klein, Jr. (collectively, “the Kleins”), 

production of documents related to the accused device, 

and re-designation of confidentiality designations. While 

the district court found aspects of these motions persuasive, they were denied or denied-in-part in light of the 

non-infringement determination. As this case returns to 

the district court, the court will have the opportunity to 

afford a proper, and not unduly expansive, scope of discovery. 

IV. 

The district court properly dismissed the Kleins and 

Oppenheimer Cine Rental, LLC. (“Oppenheimer”) for lack 

of personal jurisdiction. Jordan Klein, Sr. and Jordan 

Klein, Jr. are the only two shareholders of Mako Products, 

Inc. (“Mako”), owning a 10 percent and 90 percent share, 

respectively. Mako owns the MakoHead stabilizing 

platform system, which it rents for use in movie and 

television production. Mako is a Florida corporation, with 

its only place of business in Florida. The Kleins are both 

members of Mako’s board of directors and listed as the 

only two “officer/director[s]” in Mako’s corporate records 

with the state of Florida. The Kleins demonstrated the 

MakoHead at a California trade show on behalf of Mako. 

Oppenheimer is a rental company located in Washington that rents hundreds of products, including the MakoHead, to the movie and television industry. 

Oppenheimer advertises the MakoHead twice a year in 

ICG, a nation-wide trade publication based in California, 

as part of its lease agreement with Mako. As the district 
15 GROBER v. MAKO PRODUCTS

court noted, one of Mako’s standard equipment lease 

requirements requires that each lessee “actively market 

the Mako equipment . . . in its territory” and the “lessee ‘. 

. . is an independent contractor and is not an agent or 

employee of [Mako].’” Grober v. Mako Prods., Inc., No. 

2:04-CV-04-8604, slip op. at 4 (C.D. Cal. Aug. 29, 2008) 

(“Jurisdiction Order”) (emphasis added by district court). 

The advertisement lists Oppenheimer as the “North 

West” contact for the MakoHead and two other “West 

Coast” contacts. These same contacts are also listed on 

Mako’s website. Oppenheimer has also exhibited other 

products beyond the MakoHead at a California trade 

show. 

This court reviews a determination of personal jurisdiction without deference. Avocent Huntsville Corp. v. 

Aten Int'l Co., 552 F.3d 1324, 1328 (Fed. Cir. 2008). 

“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)). The facts 

underlying a determination of personal jurisdiction receive review for clear error. Nuance Commc’ns, Inc. v. 

Abbyy Software House, 626 F.3d 1222, 1230 (Fed. Cir. 

2010). 

When, as here, the district court makes its determination based on the record without an evidentiary hearing, 

plaintiffs need only show a prima facie case for personal 

jurisdiction. Elecs. For Imaging, Inc. v. Coyle, 340 F.3d 

1344, 1349 (Fed. Cir. 2003). When analyzing this showing 

after a motion to dismiss, the district court must accept 

uncontroverted allegations in plaintiff’s complaint as true 

and resolve any factual conflicts in plaintiff’s favor. Id.

A personal jurisdiction determination for an out-ofstate defendant is a two step inquiry: “whether a forum 
GROBER v. MAKO PRODUCTS 16

state’s long-arm statute permits service of process and 

whether assertion of personal jurisdiction violates due 

process.” Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 

566 F.3d 1012, 1017 (Fed. Cir. 2009) (quoting Genetic 

Implant Sys., Inc. v. Core-Vent Corp., 123 F.3d 1455, 1458 

(Fed. Cir. 1997)). California and federal due process 

limitations are “coextensive,” and thus the inquiry collapses into “whether jurisdiction comports with due 

process.” Autogenomics, 566 F.3d at 1017 (quoting 

Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 

2001)). 

There are two types of personal jurisdiction—general 

and specific. In this case, the district court correctly 

found that Appellants did not make a prima facie showing 

of general jurisdiction. General jurisdiction arises when a 

defendant maintains contacts with the forum state that 

are sufficiently “continuous and systematic,” even when 

the cause of action has no relation to those contacts. LSI 

Indus. Inc. v. Hubbell Lighting, Inc., 232 F.3d 1369, 1375 

(Fed. Cir. 2000) (citing Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16 (1984)). 

The district court correctly found that it lacked general jurisdiction over Oppenheimer. Oppenheimer has 

very limited contacts with California. Oppenheimer has 

shipped unspecified items to the defendant Spectrum 

Effects, Inc. of California. However, the record gives no 

indication of the context and significance of these shipments for Oppenheimer’s business. Appellants failed to 

show that these acts amount to continuous and systematic contacts with California. See Helicopteros, 466 U.S. 

at 418 (holding that ‘‘purchases, even if occurring at 

regular intervals’’ were insufficient to establish general 

personal jurisdiction over a nonresident corporation). 

Additionally, Oppenheimer has exhibited products unrelated to the accused device at a California trade show. 
17 GROBER v. MAKO PRODUCTS

While this may support the inference that Oppenheimer 

meets potential business partners at trade shows, this 

showing does not rise above a sporadic and insubstantial 

contact with California. See Campbell Pet Co. v. Miale, 

542 F.3d 879, 881-884 (Fed. Cir. 2008) (finding no general 

jurisdiction from twelve sales yielding about $14,000 in 

revenue, conference attendance in forum where products 

are demonstrated and orders taken, and a generally 

accessible website). Similarly, an isolated advertisement 

in a nationally distributed trade publication based in 

California and Mako’s website listing Oppenheimer as a 

contact do not amount to a continuous and systemic 

presence in California. See id.; see also Conqoleum Corp. 

v. DLW Aktienqesellschaft, 729 F.2d 1240, 1242-43 (9th 

Cir. 1984) (finding that sales and marketing efforts in 

California, including solicitation of orders, promotion of 

products through mail and showroom display, and attendance at trade shows were not sufficient to give rise to 

general jurisdiction). 

The district court also correctly found that Appellants 

did not make a prima facie showing of specific jurisdiction. “Specific jurisdiction . . . must be based on activities 

that arise out of or relate to the cause of action, and can 

exist even if the defendant's contacts are not continuous 

and systematic.” Autogenomics, 566 F.3d at 1017 (citing 

Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 

1200 (Fed. Cir. 2003)). When analyzing specific personal 

jurisdiction over a nonresident defendant, a court considers whether: “(1) the defendant purposefully directed its 

activities at residents of the forum state, (2) the claim 

arises out of or relates to the defendant's activities with 

the forum state, and (3) assertion of personal jurisdiction 

is reasonable and fair.” Elecs. For Imaging, 340 F.3d at 

1350. The plaintiff has the burden of proving parts one 

and two of the test, and then the burden shifts to the 
GROBER v. MAKO PRODUCTS 18

defendant to prove that personal jurisdiction is unreasonable. Id. As this court previously explained ‘‘[t]he first 

two factors correspond with the ‘minimum contacts’ prong 

of the International Shoe [v. Washington, 326 U.S. 310 

(1945)] analysis, and the third factor corresponds with the 

‘fair play and substantial justice’ prong of the analysis.’’ 

Inamed Corp., 249 F.3d at 1360. 

Appellants did not show that Oppenheimer has sufficient contacts with the state of California to warrant 

specific jurisdiction. Appellants could not establish that 

Oppenheimer has operated or rented the MakoHead in 

California. Beyond shipment of an unspecified amount of 

products between itself and Spectrum Effects, Inc., Oppenheimer did not operate at all in California. In fact, 

Appellants did not show that out of the hundreds of 

available products, the accused MakoHead, was ever 

shipped to California.

While Oppenheimer advertised the MakoHead twice 

per year in a magazine based in California, this trade 

publication was nationally distributed and not limited to 

California. Appellants could not show that Oppenheimer 

targeted the California market at all. Appellants at best 

showed Oppenheimer on a list as a North West contact, 

with two other West Coast contacts also on the list. 

Again, this attenuated evidence does not show that California was a target market for Oppenheimer. In sum, 

Oppenheimer, on this record, did not purposefully avail 

itself of the privileges of conducting activities within 

California, “thus invoking the benefits and protections of 

its laws.” See McIntyre Mach., Ltd., v. Nicastro, 131 S.Ct. 

2780, 2787-88 (2011); see also Cascade Corp. v. Hiab-Foco 

AB, 619 F.2d 36, 37-38 (9th Cir. 1980) (finding that an ad 

in a national publication available in the forum state did 

not establish specific jurisdiction).
19 GROBER v. MAKO PRODUCTS

The district court also properly declined to find personal jurisdiction over the Klein defendants. The fiduciary shield doctrine buffers corporate officers from 

personal jurisdiction when their official duties were their 

only contact with a forum state. See Kransco Mfg., Inc. v. 

Markwitz, 656 F.2d 1376, 1379 (9th Cir. 1981) (individual’s attendance at California trade show in corporate 

capacity insufficient to establish personal jurisdiction for 

out-of-state defendant). In support of this, the district 

court cited Nelson v. Adams USA Inc., 529 U.S. 460, 470-

71 (2000), for the premise that “the court should not 

lightly disregard the corporate form; a corporation’s veil 

may not be pierced merely because it has only one owner.” 

Jurisdiction Order at 8. 

This court finds no error in the district court’s personal jurisdiction determinations. Appellants did not 

show that the Kleins or Oppenheimer performed any 

relevant activities to establish general or specific personal 

jurisdiction. This court concludes that the district court 

properly declined personal jurisdiction over the Kleins 

and Oppenheimer. 

V. 

The Cross-Appellants filed a motion before the district 

court under Federal Rule of Civil Procedure 11 and 35 

U.S.C. § 285 seeking attorney fees and litigation costs. 

The district court denied Cross-Appellants’ motion under 

Rule 11 as procedurally improper because it was filed 

after summary judgment. Grober v. Mako Prods., Inc., 

No. 2:04-CV-04-8604, slip op. at 2 (C.D. Cal. July 1, 2010). 

In light of this court vacating the grant of summary 

judgment, the cross-appeal from the denial of the Rule 11 

motion is dismissed as moot. In the event of a procedurally proper Rule 11 motion on remand, the district 

court may consider it in the first instance. The cross-
GROBER v. MAKO PRODUCTS 20

appeal from the district court’s denial of attorney fees 

under 35 U.S.C. § 285 is also dismissed as moot. In view 

of this court’s opinion, Cross-Appellants are not a prevailing party to whom an award could be made. See Stickle v. 

Heublein, Inc., 716 F.2d 1550, 1564 (Fed. Cir. 1983). 

VI. 

For the foregoing reasons, this court vacates the district court’s claim construction and vacates the grant of 

summary judgment for non-infringement. This court 

remands for further proceedings. Finally, this court 

affirms the district court’s personal jurisdiction determination. 

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED