United States Court of Appeals for the Federal Circuit 

2007-1163 

MEDICAL SOLUTIONS, INC., 

Plaintiff-Appellant, 

v. 

C CHANGE SURGICAL LLC, 

Defendant-Appellee. 

John P. Moran, Holland & Knight LLP, of Washington, DC, argued for plaintiffappellant. With him on the brief were James H. Laughlin, Jr. and Rafael E. Alfonzo, III. 

Tonya R. Deem, Kilpatrick Stockton LLP, of Winston-Salem, North Carolina, 

argued for defendant-appellee. With her on the brief were J. Steven Gardner and Jon R. 

Pierce. 

Appealed from: United States District Court for the District of Columbia 

 Judge Paul L. Friedman 
United States Court of Appeals for the Federal Circuit 2007-1163 

MEDICAL SOLUTIONS, INC., 

Plaintiff-Appellant, 

v. 

C CHANGE SURGICAL LLC, 

Defendant-Appellee. 

Appeal from the United States District Court for the District of Columbia in case no. 06-

CV-01261, Judge Paul Friedman. 

__________________________ 

 DECIDED: September 9, 2008 

__________________________ 

Before BRYSON, PROST, Circuit Judges, and ZAGEL,* District Judge. 

ZAGEL, District Judge. 

Medical Solutions, Inc. (“MSI”) appeals from a final judgment of the United States 

District Court for the District of Columbia dismissing MSI’s patent suit for lack of 

personal jurisdiction over C Change Surgical LLC (“CCS”). Medical Solutions, Inc. v. C 

Change Surgical LLC, 468 F. Supp. 2d 130 (D.D.C. Dec. 29, 2006). Because CCS’s 

demonstration of the allegedly infringing device at a trade show did not constitute a 

“use” under the patent laws, and because the district court did not abuse its discretion in 

denying MSI further jurisdictional discovery, we affirm. 

 *

 Honorable James B. Zagel, District Judge, United States District Court for 

the Northern District of Illinois, sitting by designation. 
I. BACKGROUND 

MSI is a Virginia corporation that develops, manufactures, and distributes 

medical technology for controlled heating and temperature maintenance of medical 

fluids and related equipment. MSI has obtained several patents to protect its 

technology related to devices that control the temperature of medical and surgical fluids 

in the operating room. CCS is a North Carolina Limited Liability Company with its only 

place of business in Winston Salem, North Carolina. CCS develops and 

commercializes technologies that improve operating room efficiency and patient safety. 

To date, the only technology that has been developed by CCS is IntraTemp, a mobile 

workspace that controls the temperature of surgical fluids. According to MSI, IntraTemp 

infringes two of MSI’s patents, of which CCS had notice. 

CCS moved to dismiss MSI’s complaint pursuant to Federal Rule of Civil 

Procedure 12(b)(2) for lack of personal jurisdiction. MSI asserted that personal 

jurisdiction existed in the District of Columbia because CCS promoted, showed, and 

used the allegedly infringing IntraTemp product at an industry trade show hosted by the 

Association of periOperative Registered Nurses (“AORN”), which was held in 

Washington, D.C. between March 19 and March 23, 2006. CCS was one of 

approximately 600 exhibitors at the AORN trade show. CCS had its own booth, which 

displayed a “large and visible” sign advertising the allegedly infringing product. CCS 

representatives working at the booth discussed the IntraTemp product with potential 

customers and showed how parts of the device functioned. Brochures describing 

IntraTemp were available. MSI alleged, without dispute, that CCS later placed the 

2007-1163 2
IntraTemp product in two hospitals – one in Maryland, and the other in Georgia - as a 

direct result of its marketing at the trade show. 

CCS responded that it is not registered to do business in the District of Columbia, 

nor does it have sales agents, employees, offices, manufacturing facilities, bank 

accounts, or telephone listings there. It owns or controls nothing of value in the District 

nor does it manufacture, use or sell any products in the District. CCS neither directs 

marketing efforts at the District nor generates any revenue from there. CCS’s website is 

accessible from the District of Columbia; however the website includes no interactive 

features and is not specifically targeted to residents of the District. CCS explained that 

the hospital in Georgia contacted CCS through its website two months after the trade 

show, and the hospital in Maryland learned about the IntraTemp product via secondhand information from a trade show attendee. The units placed in the Georgia hospital 

were for clinical evaluation, and CCS did not charge the hospital for the use of those 

units. CCS insisted that all negotiations leading up to the placement of the IntraTemp 

units in the hospitals in Georgia and Maryland took place outside the District of 

Columbia. CCS maintained that it made no sales, negotiated no sales, took no orders, 

and provided no price information to attendees of the trade show in Washington, D.C.

MSI argued that personal jurisdiction over CCS was proper under the District of 

Columbia’s long-arm statute because CCS both “used” and “offered to sell” the 

allegedly infringing product at the trade show, each course of conduct constituting the 

tort of patent infringement. See 35 U.S.C. ' 271(a); D.C. Code ' 13-423(a)(3) (2008).

The district court rejected the argument that CCS “used” MSI’s patented 

invention when CCS displayed and demonstrated its IntraTemp product at the trade 

2007-1163 3
show. Medical Solutions, 468 F. Supp. 2d at 133-34. The district court similarly 

rejected MSI’s argument that CCS “offered to sell” the allegedly infringing IntraTemp 

product at the trade show. Id. at 134-35. Applying traditional contract principles, the 

district court reasoned that in order to constitute an “offer to sell,” such an offer must 

include price terms. Id. Because the price for CCS’s IntraTemp product was not made 

available to attendees of the AORN trade show, there could not have been an offer to 

sell the allegedly infringing product for purposes of 35 U.S.C. ' 271(a).1

 Id. at 135. 

Lastly, the district court denied MSI’s request for jurisdictional discovery because 

MSI failed to show that additional discovery would be beneficial to its establishment of 

personal jurisdiction. Id. at 135-36. 

This appeal followed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 

II. DISCUSSION 

 Whether or not a district court has personal jurisdiction over a party is a question 

of law that this court reviews de novo. HollyAnne Corp. v. TFT, Inc., 199 F.3d 1304, 

1307 (Fed. Cir. 1999). A district court has personal jurisdiction over the defendant in a 

patent infringement case if two things are true. First, jurisdiction must exist under the 

forum state’s long-arm statute. Trintec Indus., Inc. v. Pedre Promotional Prods., Inc., 

395 F.3d 1275, 1279 (Fed. Cir. 2005). Second, the assertion of personal jurisdiction 

must be consistent with the limitations of the due process clause. Id. The law of the 

forum (here the District of Columbia) governs the first inquiry; Federal law controls the 

second. 3d Sys., Inc. v. Aarotech Labs, Inc., 160 F.3d 1373, 1377 (Fed. Cir. 1998). 

 1

 Because the district court found that MSI failed to make a prima facie 

showing of personal jurisdiction under the District of Columbia’s long-arm statute, it did 

not consider whether exercising personal jurisdiction over CCS would comport with the 

requirements of due process.

2007-1163 4
 Under the District of Columbia’s long-arm statute, personal jurisdiction is proper 

over a non-resident defendant for “causing tortious injury in the District of Columbia by 

an act or omission in the District of Columbia.” D.C. Code ' 13-423(a)(3). The U.S. 

Patent Act states that the tort of patent infringement occurs when a party “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.” 35 U.S.C. ' 271(a). 

Absent discovery on the issue of personal jurisdiction, MSI was required “only to 

make a prima facie showing” of jurisdiction to defeat CCS’s motion to dismiss. Trintec, 

395 F.3d at 1282. 

In the district court, MSI argued that CCS’s activities constituted both an “offer to 

sell” and a “use” under ' 271(a). On appeal, MSI abandons its “offer to sell” argument 

and advances only its “use” argument. Specifically, MSI contends that the district court 

failed to consider the totality of the circumstances when it determined that CCS’s 

activities at the trade show did not amount to a “use” under the U.S. Patent Act. 

Appellant’s Br. at 8. 

MSI relies on Trintec for the proposition that the district court should have applied 

the totality of the circumstances test to determine whether CCS’s activities at the trade 

show constituted a “use” under ' 271(a). Appellant’s Br. at 17-18. This reliance is 

misplaced. First, the issue in Trintec was whether there might have been an “offer to 

sell” in the District of Columbia as opposed to a “use”; indeed, the evidence in the 

record on which Trintec relied to establish personal jurisdiction involved attempts to sell 

2007-1163 5
products in the District of Columbia and actual sales there.2

 Trintec, 395 F.3d at 1281. 

Second, we remanded in Trintec because the record relating to the defendant’s 

business transactions in the District of Columbia was incomplete and because we could 

not tell from the district court’s brief order the grounds or factual basis upon which that 

court concluded that the long-arm statute did not authorize jurisdiction. Id. at 1280, 

1282. In sum, Trintec was a case about the “offer to sell” prong of ' 271(a), which 

required us to remand to the district court because the record included very little 

information about defendant’s sales activity in the forum. Citing Trintec to argue for a 

more expansive inquiry into the facts here under the “use” prong is unavailing. 

Several courts addressing whether a defendant has “used” a patented invention 

have held that “the mere demonstration or display of an accused product, even in an 

obviously commercial atmosphere” is not an act of infringement for purposes of 

' 271(a). Fluid Mgmt. Ltd. P’ship v. H.E.R.O. Indus., Ltd., No. 95-5604, 1997 WL 

112839, at *4 (N.D. Ill. Mar. 11, 1997) (quoting Intermedics, Inc. v. Ventritex, Inc., 775 F. 

Supp. 1269, 1286 (N.D. Cal. 1991) (concluding that absent concurrent sales-oriented 

activity which results in, or at least substantially advances, an actual sale, the 

demonstration of an accused product at a scientific trade show does not constitute an 

infringing “use”)); see also Brennan v. Mr. Hanger, Inc., 479 F. Supp. 1215, 1231 

 2

 The only mention of a trade show in Trintec was Trintec’s statement that 

the defendant in that case advertised on its website that it exhibited products at national 

and regional shows across the country, including two in the District of Columbia. Brief 

of Plaintiff-Appellant at 5, Trintec Indus., Inc. v. Pedre Promotional Prods., Inc., 395 

F.3d 1275 (Fed. Cir. 2005) (No. 04-1293). However, no information about those shows 

was provided, and Trintec did not argue that the defendant’s activities at those shows 

constituted a “use” under ' 271(a). Trintec mentioned the defendant’s trade show 

exhibitions as evidence of the defendant’s purposeful establishment of minimum 

contacts with the District of Columbia, not as evidence of “use” in the District of 

Columbia. Id. at 17-18. 

2007-1163 6
(S.D.N.Y. 1979) (noting that the mere display of the infringing hanger bars would not 

constitute an infringing “use”).3

The inquiry as to what constitutes a “use” of a patented item is highly casespecific, Van Well Nursery, Inc. v. Mony Life Ins. Co., 362 F. Supp. 2d 1223, 1229 (E.D. 

Wash. 2005). We find that the district court correctly considered and interpreted all of 

the facts with regard to CCS’s “use” of the allegedly infringing IntraTemp product at the 

trade show. In Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 699 F. Supp. 

1576, 1580-81 (N.D. Ga. 1988), the court found that the plaintiff established a prima 

facie case for the exercise of personal jurisdiction where the defendant demonstrated 

the allegedly infringing knife-cutting machines at a trade show, but the defendant in that 

case also purposefully engaged in other activities related to the litigation in that forum. 

Here, MSI asserts nothing other than CCS’s activities, which appear to fall short of 

practicing all of the elements of any one claim, at the trade show as evidence to confer 

personal jurisdiction over CCS. 

The ordinary meaning of “use” is “to put into action or service.” NTP, Inc. v. 

Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005) (quoting Webster’s 

Third New International Dictionary 2523 (1993)). MSI’s patented technology pertains to 

systems for warming and controlling the temperature of medical and surgical items. At 

the trade show, CCS displayed a prototype of its product, staffed its booth with 

representatives, and made available brochures about the product. But none of these 

 3

 A demonstration of an accused device plus the simultaneous solicitation of 

purchase orders has been held to amount to a sufficient degree of “selling” activity. See

U.S. Envtl. Prods., Inc. v. Infilco Degremont, Inc., 611 F. Supp. 371 (N.D. Ill. 1985). 

However, that holding is inapposite here since MSI hangs its hat on the “uses” rather 

than the “sells” prong of ' 271(a). 

2007-1163 7
activities was putting the IntraTemp device into service. MSI claims that “[t]he infringing 

InterTemp [sic] warmer was not just passively shown or displayed; CCS staffed its 

booth with several sales representatives, who actively demonstrated the IntraTemp’s 

actual functions in use.” The portion of the joint appendix cited in support of this claim, 

however, does not indicate whether the IntraTemp device was used to heat medical 

items at the trade show. The closest evidence that MSI points to on appeal in support 

of its claim that CCS “actively demonstrated” IntraTemp at the trade show appears to be 

the declaration of Mr. Cordell stating that the CCS representative showed at least one 

attendee how to take the basin off the device when the basin still had fluid in it. Even if 

we accept as true that a CCS representative took a basin off an accused device during 

a trade show, that alone would not establish that the accused device was put into 

service so as to constitute an infringing use. Much more would be needed to qualify as 

an infringing use, including that the device was used to heat medical items at the show. 

In this case we need not (and do not) decide whether the demonstration of a product at 

a trade show could ever be sufficient to establish an infringing use.4

 We simply 

conclude that the facts as alleged in this case do not establish a prima facie case. For 

these reasons, we agree with the district court’s conclusion that CCS’s display and 

 4

 That said, we do recognize other courts have held that demonstrations of 

a device are not proper evidence of “use” because using a device means using it to 

perform its actual function or service, not using it as a demonstrative display. See

Union Asbestos & Rubber Co. v. Evans Prods. Co., 328 F.2d 949, 951 (7th Cir. 1964); 

Advanced Semiconductor Materials Am., Inc. v. Applied Materials, Inc., No. 93-20853, 

1995 WL 419747, at *6 (N.D. Cal. July 10, 1995) (holding that a demonstration “hardly 

qualifies as using the patented process for its intended purposes”). 

 

2007-1163 8
demonstration of IntraTemp at the trade show did not constitute a “use” of the allegedly 

infringing product.5

Finally, the district court did not abuse its discretion when it denied MSI the 

opportunity to conduct jurisdictional discovery. See Mwani v. bin Laden, 417 F.3d 1, 17 

(D.C. Cir. 2005). When we “do not see what facts additional discovery could produce 

that would affect our jurisdictional analysis,” we must “conclude the district court did not 

abuse its discretion in dismissing the action when it did.” Id. (quoting Goodman 

Holdings v. Rafidain Bank, 26 F.3d 1143, 1147 (D.C. Cir. 1994)). MSI’s arguments for 

discovery are concerned primarily with seeking additional information about placements 

or sales of CCS’s IntraTemp product. While that information might have been relevant 

to whether or not CCS “offered to sell” its product at the trade show, on appeal MSI has 

abandoned its “offer to sell” argument as a basis to establish personal jurisdiction. 

Because placement and sales information is not relevant to whether CCS’s display or 

demonstration at the trade show constituted an infringing “use,” further jurisdictional 

discovery along those lines would be unhelpful. Nor is there anything in the complaint 

or MSI’s response to the motion to dismiss that make out a prima facie showing of 

jurisdiction sufficient to require that MSI be permitted to conduct jurisdictional discovery. 

See Trintec, 395 F.3d at 1283. 

While we can conceive of situations where CCS’s conduct would constitute a 

“use” under the statute, such a situation would involve, at a minimum, practicing all of 

the elements of at least one claim. The declaration MSI provided gave no hint of such 

 5

 Because MSI fails to make a prima facie case of personal jurisdiction 

under the District of Columbia’s long-arm statute, we too do not reach the issue of 

whether the exercise of personal jurisdiction over CCS in the District of Columbia 

comports with the requirements of due process. 

2007-1163 9
2007-1163 10

an appropriate set-up, so the decision to deny discovery based upon that declaration 

was a judgment call the district court was entitled to make. 

III. CONCLUSION 

 For the aforementioned reasons, we affirm. 

AFFIRMED.