## 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 Washi ngton, 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 Wi nston-Salem, North Carolina, argued for defendant-appellee. Wi th 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 Dis trict 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. De c. 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 di d not abuse its discretion in denying MSI further jurisdictional discovery, we affirm.

* Honorable James B. Zagel, District J udge, United States District Court for the Northern District of Illi nois, 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 th e temperature of medical and surgical fluids in the operating room. CCS is a North Carolina Limited Li ability Company with its only place of business in Winston Salem, North Carolina. CCS develops and commercializes technologies that improve oper ating room efficiency and patient safety. To date, the only technology that has been develo ped by CCS is Intr aTemp, a mobile workspace that controls the te mperature of surgical fluids. According to MSI, IntraTemp infringes two of MSI’s patent s, 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 juri sdiction. MSI asserted that personal jurisdiction existed in the District of Columbia because CCS promoted, showed, and used the allegedly infringing In traTemp product at an industr y trade show hosted by the Association of periOperative Registered Nurses (“AORN”), which was held in Washington, D.C. between March 19 a nd 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 adverti sing the allegedly infr inging product. CCS representatives working at the booth discussed the Intr aTemp product with potential customers and showed how part s of the device functioned. Brochures describing IntraTemp were available. MSI alleged, without dispute, that CCS later placed the

2007-1163 2IntraTemp product in two hospitals – one in Ma ryland, and the other in Georgia - as a direct result of its ma rketing 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, o ffices, 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 produc ts 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 cont acted 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 no t charge the hospital for the use of those units. CCS insisted that all negotiations le ading up to the placement of the IntraTemp units in the hospitals in Georgia and Mary land 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 argum ent that CCS “used” MSI’s patented invention when CCS displayed and demonstrat ed its IntraTemp product at the trade

2007-1163 3show. Medical Solutions , 468 F. Supp. 2d at 133-34. T he district court similarly rejected MSI’s argument that CCS “offered to sell” the allegedly in fringing IntraTemp product at the trade show. Id. at 134-35. Applying tradition al 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 produ ct for purposes of 35 U.S.C. ' 271(a). 1 Id. at 135. Lastly, the district court denied MSI’s r equest for jurisdictional discovery because MSI failed to show that additi onal discovery would be beneficial to its establishment of personal jurisdiction. Id. at 135-36. This appeal followed. We have jurisdic tion pursuant to 28 U.S.C. § 1295(a)(1). II. DISCUSSION Whether or not a district court has pers onal 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 pe rsonal jurisdiction over the defendant in a patent infringement case if two things are tr ue. First, jurisdicti on must exist under the forum state’s long-arm statute. Trintec Indus., Inc. v. P edre Promotional Prods., Inc. , 395 F.3d 1275, 1279 (Fed. Cir. 2005). Second, t he assertion of personal jurisdiction must be consistent with the limita tions of the due process clause. Id. The law of the forum (here the District of Columbia) governs the first inquiry; Feder al 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 juri sdiction over CCS w ould comport with the requirements of due process.

2007-1163 4Under the District of Colu mbia’s long-arm statute, per sonal jurisdiction is proper over a non-resident defendant for “causing tortious injury in the District of Columbia by an act or omission in the Distric t of Columbia.” D.C. Code ' 13-423(a)(3). The U.S. Patent Act states that the tort of patent infringement o ccurs when a party “without authority makes, uses, offers to sell, or sells any patented invent ion, within the United States or imports into the United States any patented inv ention during the term of the patent therefor.” 35 U.S.C. ' 271(a). Absent discovery on the issue of personal jurisdiction, MSI wa s required “only to make a prima facie showing” of jurisdicti on to defeat CCS’s motion to dismiss. Trintec , 395 F.3d at 1282. In the district court, MSI ar gued that CCS’s activities constituted both an “offer to sell” and a “use” under ' 271(a). On appeal, MSI abandons it s “offer to sell” argument and advances only its “use” argument. Specifical ly, MSI contends that the district court failed to consider the totality of the ci rcumstances 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 dist rict court should have applied the totality of the circumstances test to det ermine 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 per sonal jurisdiction involved attempts to sell

2007-1163 5products 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 Colu mbia 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 statut e 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 re cord 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 def endant has “used” a patented invention have held that “the mere demons tration 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 s ubstantially advances, an actual sale, the demonstration of an accused pro duct 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 ca se 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-A ppellant at 5, Trintec Indus., Inc. v. P edre 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 ac tivities at those shows constituted a “use” under ' 271(a). Trintec mentioned the defendant’s trade show exhibitions as evidence of the defendan t’s purposeful estab lishment 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 displa y of the infringing hanger bars would not constitute an infringing “use”). 3 The inquiry as to what constitutes a “u se” 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 cons idered and interpreted all of the facts with regard to CCS’s “use” of the allegedly infringing Intr aTemp product at the trade show. In Gerber Garment Technology, In c. 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 ju risdiction where the defendant demonstrated the allegedly infringing knif e-cutting machines at a trade show, but the defendant in that case also purposefully engaged in other activities related to th e 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 “t o 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 prototy pe of its product, st affed 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 i napposite here since MSI hangs it s hat on the “uses” rather than the “sells” prong of ' 271(a).

2007-1163 7activities was putting the IntraTemp device into service. MSI claims that “[t]he infringing InterTemp [sic] warmer was not just passive ly shown or displayed; CCS staffed its booth with several sales representatives, w ho actively demonstrated the IntraTemp’s actual functions in use.” The portion of the joint appendix cited in s upport of this claim, however, does not indicate whether the In traTemp device was used to heat medical items at the trade show. The cl osest evidence that MSI points to on appeal in support of its claim that CCS “activel y demonstrated” IntraTemp at the trade show appears to be the declaration of Mr. Cordell stating that the CCS repres entative 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 representativ e 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 ca se 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 demons trative 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, 1 995) (holding that a de monstration “hardly qualifies as using the patented pr ocess for its intended purposes”).

2007-1163 8demonstration of IntraTemp at the trade show di d 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 additiona l discovery could produce that would affect our jurisdicti onal analysis,” we must “conclude the district court did not abuse its discretion in dismissi ng 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 “offer ed 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 in formation is not relevant to whether CCS’s display or demonstration at the tr ade show constituted an infringing “use,” further jurisdictional discovery along those lines woul d be unhelpful. Nor is t here anything in the complaint or MSI’s response to the motion to dismi ss that make out a prima facie showing of jurisdiction sufficient to require that MSI be permitted to conduc t 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 invo lve, 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 t oo do not reach the issue of whether the exercise of personal jurisdicti on over CCS in the District of Columbia comports with the requirements of due process.

2007-1163 92007-1163 10 an appropriate set-up, so the decision to d eny discovery based upon that declaration was a judgment call the district court was entitled to make. III. CONCLUSION For the aforementione d reasons, we affirm. AFFIRMED.