United States Court of Appeals for the Federal Circuit 

2006-1646 

LITECUBES, LLC, 

and CARL R. VANDERSCHUIT, 

Plaintiffs-Appellees, 

v. 

NORTHERN LIGHT PRODUCTS, INC. 

(doing business as GlowProducts.com), 

Defendant-Appellant. 

Rudolph A. Telscher, Jr., Harness, Dickey & Pierce, P.L.C., of St. Louis, Missouri, 

argued for plaintiffs-appellees. With him on the brief were Matthew L. Cutler and Kara R. 

Yancey. 

F. Ross Boundy, Davis Wright Tremaine LLP, of Seattle, Washington, argued for 

defendant-appellant. With him on the brief was Robert J. Carlson, Christensen O’Connor 

Johnson Kindness PLLC, of Seattle, Washington. Of counsel on the brief was Kevin P. 

Anderson, Wiley Rein LLP, of Washington, DC. Of counsel was Julian D. Forman, Davis 

Wright Tremaine LLP, of Seatte, Washington. 

Appealed from: United States District Court for the Eastern District of Missouri 

Judge E. Richard Webber 
United States Court of Appeals for the Federal Circuit 

2006-1646 

LITECUBES, LLC, and CARL R. VANDERSCHUIT, 

Plaintiffs-Appellees, 

v. 

NORTHERN LIGHT PRODUCTS, INC. 

(doing business as GlowProducts.com), 

Defendant-Appellant. 

Appeal from the United States District Court for the Eastern District of Missouri in case 

no. 4:04-CV-00485, Judge E. Richard Webber. 

___________________________ 

DECIDED: April 28, 2008 

___________________________ 

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and GAJARSA, 

Circuit Judge. 

GAJARSA, Circuit Judge. 

 This patent and copyright case requires that we clarify the often-confused 

boundary between elements of a federal claim, which must be established before relief 

can be granted, and the requirements for establishing subject matter jurisdiction. 

Plaintiffs-Appellees Litecubes, LLC and Carl R. Vandershuit (collectively “Litecubes”), 

brought an action in the U.S. District Court for the Eastern District of Missouri alleging 

patent and copyright infringement by Defendant-Appellant Northern Lights Products, 

Inc., doing business as GlowProducts.com (“GlowProducts”). The district court entered 
a judgment against GlowProducts after a jury verdict of copyright and patent 

infringement. Subsequently, GlowProducts filed a motion to dismiss the case for lack of 

subject matter jurisdiction on the grounds that it did not sell the allegedly infringing 

products within the United States, nor import the products into the United States. The 

district court denied the motion on the grounds that GlowProducts did import the goods 

into the United States. 

GlowProducts appeals the denial of its motion to dismiss for lack of subject 

matter jurisdiction. We affirm the district court’s denial of the motion to dismiss, but do 

so on different grounds. The district court erred in treating the issue of whether the 

goods had been imported into the United States as an issue impacting its subject matter 

jurisdiction. A plaintiff must prove that allegedly infringing activity took place in the 

United States to prevail on claims of patent or copyright infringement, but as with any 

other element of the claims, failure to do so does not divest the federal courts of subject 

matter jurisdiction over the action. 

 We also affirm the district court’s denial of GlowProducts’ motion for a judgment 

as a matter of law. Substantial evidence supports the jury’s finding of infringement. 

We have jurisdiction to hear the appeal pursuant to 28 U.S.C. 1295(a)(1). 

I. 

A. 

Vanderschuit is the owner and founder of Litecubes, and the inventor and owner 

of U.S. Patent No. 6,416,198 (the “’198 patent”). The ’198 patent discloses an 

illuminatable novelty item that can be placed in beverages, i.e., a lighted artificial “ice 

cube.” Litecubes is the licensee of the ’198 patent and the owner of a registered 

copyright on the Litecube (the “Litecube Copyright”). 

2006-1646 2
Litecubes asserted three independent claims from the ’198 patent, claims 1, 16, 

and 31. Claim 1 claims: 

An illuminatable beverage accessory device comprising: 

a. at least one light source; 

b. at least one power source switchably connected to said light source; 

c. a cartridge having a light-source chamber to contain said light source, a 

power-source chamber below said light-source chamber, and two wire 

lead channels on the cartridge underside and in communication with said 

light-source chamber; 

d. a lid under said cartridge, said lid having a lid chamber mating with said 

power-source chamber to thereby contain said power-source therein and 

further having a power-switching means for powering said at least one 

light source into and from an on-light mode into and from an off-light 

mode; 

e. a housing covering said cartridge and said lid such that a cavity is 

defined therein and a water-tight integrity is maintained within said 

housing; and 

f. a filler within said cavity, said filler adapted to retain heat when said 

device is heated. 

’198 patent cols. 7-8 (emphasis added). Claim 16 is identical to claim 1 except that 

subpart (f) requires “a filler within said cavity, said filler adapted to retain cold when said 

device is cooled.” Id. cols. 8-9. Claim 31 differs from claims 1 and 16 in that (a) it does 

not require a filler adapted to retain heat or cold, and (b) it requires that the power 

source “reciprocally translate . . . from an open light-on mode to a closed light-off 

mode.” Id. cols. 9-10. 

At a Markman hearing, the district court construed the claim 1 term “a filler within 

said cavity, said filler adapted to retain heat when said device is heated” to mean “filler 

within said cavity, said filler made suitable to or fit for the specific use of retaining heat

2006-1646 3
when said device is heated.” Litecubes v. N. Light Prods., Inc., No. 4:04cv00485 (E.D. 

Mo. March 7, 2005) (“Markman Order”) (emphasis added). Similarly, the district 

construed the relevant term in claim 16 to mean “filler within said cavity, said filler made 

suitable to or fit for the specific use of retaining cold when said device is cooled.” Id.

(emphasis added). Neither party challenges these constructions on appeal. 

B. 

GlowProducts is a Canadian corporation operating from its offices in Victoria, 

British Columbia, which acquires novelty items from Chinese manufacturers and then 

sells the items primarily in North America. GlowProducts does not have offices, 

facilities, or assets in the United States. Evidence at trial, however, established that 

GlowProducts sold the accused products directly to customers located in the United 

States and that GlowProducts would ship the products, f.o.b.,1 from its Canadian offices 

to its customers in the United States. 

Two types of products sold by GlowProducts are at issue, the EXA cubes and the 

ICM cubes (which include the “8 Mode Multi Cube” and the “3 Setting Flashing Lighted 

Ice Cube”). Both products are artificial ice cubes containing an L.E.D. and battery. The 

EXA cubes are nearly identical to the Litecube product (“the Litecube”) and include a 

power source that can “reciprocally translate . . . from an open light-on mode to a closed 

light-off mode,” ’198 patent cols. 9-10. GlowProducts does not allege any error on the 

merits in the jury’s finding that the “EXA” cube infringed claim 31; nor does it contest the 

merits of the jury’s finding that the EXA cube infringes the Litecube Copyright. 

 1

 “F.o.b” or “free on board” is “a method of shipment whereby goods are 

delivered at a designated location, usually a transportation depot, at which legal title and 

thus the risk of loss passes from seller to buyer.” MEMC Elec. Materials, Inc. v. 

Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1374 n.3 (Fed. Cir. 2005). 

2006-1646 4
The ICM cubes are a different shape than the Litecube and, thus, were not 

alleged to have infringed the Litecube Copyright. Nor do they have a reciprocally 

translating power source as required by claim 31. Accordingly, at issue at trial was 

whether they infringe claims 1 and 16 of the ’198 patent. In dispute was only whether 

the ICM cubes meet the limitation that the cube contain a filler adapted to retain heat or 

cold when the device is heated or cooled. GlowProducts concedes that the ICM cubes 

meet all of the remaining limitations of claims 1 and 16. 

C. 

 Litecubes filed this action in April 2004. A five-day jury trial was held in October 

2005. Midway through trial, GlowProducts raised for the first time the issue of subject 

matter jurisdiction, arguing that the trial court did not have jurisdiction over the claims 

because there was no evidence that at the time the lawsuit was brought GlowProducts 

had made any sales in the United States or imported products into the United States. 

Trial Tr. vol. III 169. GlowProducts’ theory was that because its sales to United States’ 

customers were shipped f.o.b., the sales took place in Canada and that it was the 

customer who imported the goods into the United States. 

After the trial had concluded and the jury entered a verdict of willful infringement, 

GlowProducts filed a motion to dismiss for lack of subject matter jurisdiction on these 

grounds. Neither Litecubes nor the district court challenged GlowProducts 

characterization of the issue as jurisdictional. Instead Litecubes opposed the motion on 

the grounds that there was ample evidence that GlowProducts had sold, offered to sell, 

or imported the allegedly infringing products to the United States. Id. The district court 

agreed. The court denied GlowProducts’ motion, finding evidence of infringement 

2006-1646 5
“sufficient to establish subject matter jurisdiction in this Court” because GlowProducts 

“clearly imported the accused products into the United States.” Litecubes v. N. Light 

Prods., Inc., No. 4:04cv00485, at *3 (E.D. Mo. Aug. 25, 2006) (Memorandum and

Order). The district court did not reach the issue of whether there were sales or offers to 

sell in the United States.2 The district court also dismissed GlowProducts’ motions for 

judgment as a matter of law (“JMOL”), concluding that substantial evidence supported 

the jury verdict. Id. at *12 

After the district court issued a final judgment, GlowProducts appealed. In their 

initial briefing to this court, both parties assumed, without any analysis, that the issue of 

whether there was allegedly infringing activity in the United States was jurisdictional. 

However, because we have an independent obligation to properly determine our own 

jurisdiction, the panel requested that the parties be prepared to discuss at oral 

argument: 

 Whether failing to establish that an alleged infringer “makes, uses, offers 

to sell, or sells any patented invention, within the United States or imports 

into the United States any patented invention” is sufficient to divest the 

federal courts of subject matter jurisdiction over a patent infringement 

action, or instead whether the location of the allegedly infringing activity is 

a factual element of the claim which must be proven to show patent 

infringement but which does not affect the subject matter jurisdiction of the 

federal courts. 

 2

 Litecubes had not initially pled infringement based on importation, relying 

instead only on the sale and offer to sell prongs of § 271. However the court allowed 

Litecubes leave to amend their complaint to include importation (and held that this 

amendment would relate back to the initial filing) because the issue was raised at trial. 

2006-1646 6
Letter to Parties (Nov. 29, 2007).3

 At oral argument, Litecubes argued for the first time 

that the issue was not one of subject matter jurisdiction, but should properly be 

considered an element of the claim. GlowProducts did not provide any authority to the 

contrary, suggesting only that it was “not an easy question.”4

 

II. 

Subject matter jurisdiction is a question of law that we review de novo. 

Pennington Seed, Inc. v. Produce Exch. No. 299, 457 F.3d 1334, 1338 (Fed. Cir. 2006); 

see also Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 95 (1998) (“Every federal 

appellate court has a special obligation to ‘satisfy itself not only of its own jurisdiction, 

but also that of the lower courts in a cause under review,’ . . . .” (quoting Mitchell v. 

Maurer, 293 U.S. 237, 244 (1934))). Pursuant to 28 U.S.C. § 1338(a), “[t]he district 

courts shall have original jurisdiction of any civil action arising under any Act of 

Congress relating to patents, plant variety protection, copyrights and trademarks.” 

Under what is known as the “well-pleaded complaint rule,” subject matter jurisdiction 

exists if a “well-pleaded complaint establishes either that federal patent law creates the 

cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a 

substantial question of federal patent law, in that patent law is a necessary element of 

one of the well-pleaded claims.” AT&T Co. v. Integrated Network Corp., 972 F.2d 1321, 

 3

 The parties were also asked to address whether the extraterritorial scope 

of the Copyright Act was an issue of subject matter jurisdiction and whether that issue 

should be decided under the Eighth Circuit’s or this Circuit’s law. 

4

 Both parties suggested that if the issue was not jurisdictional, this court 

could still consider whether there was sufficient evidence that the allegedly infringing 

acts took place within the United States by reviewing the district court’s denial of 

Litecubes’ motion for JMOL on this issue, despite Litecubes’ failure to appeal the denial 

of JMOL on this ground. 

2006-1646 7
1323-24 (Fed. Cir. 1992) (quoting Christianson v. Colt Indus. Operating Corp., 486 U.S. 

800, 808 (1988)). 

Litecubes alleged in its complaint that GlowProducts violated 35 U.S.C. § 271(a), 

which provides that “[e]xcept as otherwise provided . . . whoever 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 

therefore, infringes the patent.” It is beyond dispute that this statute creates a federal 

cause of action for patent infringement over which the district courts have subject matter 

jurisdiction under § 1338(a).5

 And Litecubes, as GlowProducts concedes, properly pled 

every element of a § 271(a) claim, alleging in Count I of its complaint that GlowProducts 

has infringed the ’198 patent by “offering for sale and/or selling in the United States and 

in this judicial district illuminatable beverage accessories” that “infringe one or more 

claims of the ’198 patent.” Compl. ¶ 26. 

Nevertheless, GlowProducts argues that even though Litecubes’ well-pleaded 

complaint establishes that federal patent law creates the cause of action, there is no 

subject matter jurisdiction over this suit because Litecubes has failed to prove that 

GlowProducts sold or offered to sell products in the United States or imported products 

into the United States. 

Subject matter jurisdiction does not fail simply because the plaintiff might be 

unable to ultimately succeed on the merits. See Steel Co., 523 U.S. at 89 (“[J]urisdiction 

. . . is not defeated . . . by the possibility that the averments might fail to state a cause of 

 5

 The district court also has jurisdiction over § 271(a) causes of action under 

28 U.S.C. § 1331, the general federal question jurisdictional statute, to which the same 

well-pleaded complaint rule applies, Franchise Tax Bd. v. Constr. Laborers Vacation 

Trust, 463 U.S. 1, 27-28 (1983). 

2006-1646 8
action on which petitioners could actually recover.” (quoting Bell v. Hood, 327 U.S. 678, 

682 (1946))). To the contrary, “[i]t is firmly established . . . that the absence of a valid 

(as opposed to arguable) cause of action does not implicate subject-matter jurisdiction, 

i.e., the courts’ statutory or constitutional power to adjudicate the case.” Id. (emphasis in 

original). Thus, a failure to prove the allegations alleged in a complaint requires a 

decision on the merits, not a dismissal for lack of subject matter jurisdiction. See, e.g., 

Binderup v. Pathe Exch., Inc., 263 U.S. 291, 305 (1923). Indeed even if, unlike here, the 

complaint fails to allege a cause of action upon which relief can be granted, this “failure 

to state a proper cause of action calls for a judgment on the merits and not for a 

dismissal for want of jurisdiction.” 6 Bell, 327 U.S. at 682. 

As the Supreme Court long ago held: 

A complaint setting forth a substantial claim under a federal statute 

presents a case within the jurisdiction of the court as a federal court; and 

this jurisdiction cannot be made to stand or fall upon the way the court 

may chance to decide an issue as to the legal sufficiency of the facts 

alleged any more than upon the way it may decide as to the legal 

sufficiency of the facts proven. Its decision either way upon either question 

is predicated upon the existence of jurisdiction, not upon the absence of it. 

Binderup, 263 U.S. at 305; see also Christianson, 486 U.S. at 807-08 (noting the 

longstanding rule that “in order to demonstrate that a case is one ‘arising under’ federal 

patent law ‘the plaintiff must set up some right, title or interest under the patent laws, or 

at least make it appear that some right or privilege will be defeated by one construction, 

 6

 There is a limited and narrow exception to Bell’s general rule if the federal 

claim pled is “immaterial and made solely for the purpose of obtaining jurisdiction” or 

“wholly insubstantial and frivolous.” Steel Co., 523 U.S. at 89. Dismissal for lack of 

subject matter jurisdiction on the grounds that the federal claim asserted is not 

colorable, however, is “proper only when the claim is ‘so insubstantial, implausible, 

foreclosed by prior decisions of this Court, or otherwise completely devoid of merit as 

not to involve a federal controversy.’” Id. (quoting Oneida Indian Nation of N.Y. v. 

County of Oneida, 414 U.S. 661, 666 (1974)). This is clearly not our case. 

2006-1646 9
or sustained by the opposite construction of these laws.’” (quoting Pratt v. Paris Gas 

Light & Coke Co., 168 U.S. 255, 259 (1897))); Montana-Dakota Utils. Co. v. N.W. Pub. 

Serv. Co., 341 U.S. 246, 249 (1951) (“Petitioner asserted a cause of action under the 

Power Act. To determine whether that claim is well founded, the District Court must take 

jurisdiction, whether its ultimate resolution is to be in the affirmative or the negative. If 

the complaint raises a federal question, the mere claim confers power to decide that it 

has no merit, as well as to decide that it has.”). 

Accordingly, there can be no question that Litecubes’ allegations, which state a 

claim under the patent laws, are sufficient to create general federal question jurisdiction. 

Moreover, while Congress can restrict the federal question jurisdiction granted in § 1331 

or § 1338, for example by mandating that a certain threshold fact be established in 

order for the federal court to have jurisdiction over a particular cause of action,7

 the 

Supreme Court has recently reiterated in a unanimous opinion that it is critical to 

distinguish between a statutory limitation that is truly jurisdictional and one that is simply 

an element of the claim that must be established on the merits. Arbaugh v. Y & H Corp., 

546 U.S. 500 (2006). As the Supreme Court explained, there are important 

 7

 “[C]ertain statutes confer subject-matter jurisdiction only for actions 

brought by specific plaintiffs, e.g., 28 U.S.C. § 1345 (United States and its agencies and 

officers); 49 U.S.C. § 24301(l)(2) (Amtrak), or for claims against particular defendants, 

e.g., 7 U.S.C. § 2707(e)(3) (persons subject to orders of the Egg Board); 28 U.S.C. § 

1348 (national banking associations), or for actions in which the amount in controversy 

exceeds, e.g., 16 U.S.C. § 814, or falls below, e.g., 22 U.S.C. § 6713(a)(1)(B), 28 

U.S.C. § 1346(a)(2), a stated amount.” Arbaugh, 546 U.S. at 516. And at times 

Congress has enacted a separate provision limiting the scope of the § 1331 in narrow 

circumstances. See, e.g., Weinberger v. Salfi, 422 U.S. 749, 756-61 (holding that 42 

U.S.C. § 405(h) bars 28 U.S.C. § 1331 jurisdiction over suits to recover Social Security 

benefits). 

2006-1646 10
consequences of labeling a requirement as a “determinant of subject-matter jurisdiction, 

rather than an element of [the plaintiff’s] claim for relief”:

First, “subject-matter jurisdiction, because it involves the court’s power to 

hear a case, can never be forfeited or waived.” Moreover, courts, including 

this Court, have an independent obligation to determine whether subjectmatter jurisdiction exists, even in the absence of a challenge from any 

party. . . . 

Second, in some instances, if subject-matter jurisdiction turns on 

contested facts, the trial judge may be authorized to review the evidence 

and resolve the dispute on her own. If satisfaction of an essential element 

of a claim for relief is at issue, however, the jury is the proper trier of 

contested facts. 

Third, when a federal court concludes that it lacks subject-matter 

jurisdiction, the court must dismiss the complaint in its entirety. . . . In 

contrast, when a court grants a motion to dismiss for failure to state a 

federal claim, the court generally retains discretion to exercise 

supplemental jurisdiction, pursuant to 28 U.S.C. § 1367, over pendent 

state-law claims. 

Id. at 514 (internal citations omitted). 

The Court cautioned that courts have at times erroneously called a limitation 

jurisdictional that was actually simply an element of the claim: 

 On the subject-matter jurisdiction/ingredient-of-claim-for-relief dichotomy, 

this Court and others have been less than meticulous. “Subject matter 

jurisdiction in federal-question cases is sometimes erroneously conflated 

with a plaintiff’s need and ability to prove the defendant bound by the 

federal law asserted as the predicate for relief—a merits-related 

determination.” 

Id. at 511 (quoting 2 J. Moore et al., Moore’s Federal Practice § 12.30[1], at 12-36.1 (3d 

ed. 2005)); see also Steel Co., 523 U.S. at 90 (“‘Jurisdiction . . . is a word of many, too 

many, meanings’”); Montana-Dakota Utils. Co., 341 U.S. at 249 (holding that the Court 

of Appeals erred in reversing a judgment of the district court on the grounds that there 

was no subject matter jurisdiction, noting that “[a]s frequently happens where jurisdiction 

2006-1646 11
depends on subject matter, the question whether jurisdiction exists has been confused 

with the question whether the complaint states a cause of action”). To prevent such 

mischaracterizations, the Arbaugh Court issued a “readily administrable bright line rule”: 

“If the Legislature clearly states that a threshold limitation on a statute’s scope shall 

count as jurisdictional, then courts and litigants will be duly instructed . . . . But when 

Congress does not rank a statutory limitation on coverage as jurisdictional, courts 

should treat the restriction as non-jurisdictional in character.” Id. at 516. 

Here, Congress has not clearly stated in 35 U.S.C. § 271 or in any other statute 

that § 271’s requirement that the infringing act happen within the United States is a 

threshold jurisdictional requirement as opposed to an element of the claim. To the 

contrary, the statute, which creates liability for patent infringement on “whoever 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 therefore” in no way distinguishes the territorial limitation from any of the other 

elements necessary to show infringement. Id.

In most situations our analysis would end there—Arbaugh’s bright line rule 

mandates that the requirement that the allegedly infringing act occur in the United 

States be treated as non-jurisdictional. However, at least pre-Arbaugh, there has been a 

particular tendency among courts and litigants to label limitations on the extraterritorial 

reach of a statute as “jurisdictional.”8

 We therefore must consider whether there is 

 8

 See, e.g., McBee v. Delica, 417 F.3d 107 (1st Cir. 2005) (Lanham Act); 

United Phosphorus, Ltd. v. Angus Chem. Co., 322 F.3d 942 (7th Cir. 2003) (en banc) 

(Foreign Trade Antitrust Improvement Act); Mannington Mills, Inc. v. Congoleum Corp., 

595 F.2d 1287 (3d Cir. 1979) (Sherman Antitrust Act); Des Brisay v. Goldfield Corp., 

549 F.2d 133 (9th Cir. 1977) (Securities Act). 

2006-1646 12
something unique about a limitation that determines the extraterritorial scope of a 

statute that converts what would otherwise be a factual element of the claim into a 

restriction on the subject matter jurisdiction of the federal courts. We conclude that 

there is not. 

There is no absolute rule prohibiting the extraterritorial reach of federal statutes. 

Rather, it is well-established that “Congress has the authority to enforce its laws beyond 

the territorial boundaries of the United States.” E.E.O.C. v. Arabian Am. Oil Co., 499 

U.S. 244, 248 (1991). Whether Congress did extend any particular statute to reach 

extraterritorial activity is simply a question of statutory interpretation.9

 If Congress has 

extended a cause of action to reach extraterritorial activity, there is no independent bar 

to the federal courts adjudicating such extraterritorial disputes, providing a court has 

personal jurisdiction over the defendants.10 Thus, in these respects, a limitation on the 

extraterritorial scope of a statute is no different than any other element of a claim which 

must be established before relief can be granted under a particular statute. 

Congressional authority to regulate extraterritorial behavior does implicate a type 

of “jurisdiction”—the “jurisdiction to prescribe” recognized under international law. The 

“jurisdiction to prescribe” is a state’s authority to “make its law applicable to the 

activities, relations, or status of persons,” including its “authority to subject foreign 

 9

 While there is a presumption that Congress does not intend a statute to 

apply to extraterritorial activity, it is only a presumption and can be rebutted if Congress 

has clearly expressed an affirmative intention to the contrary. Id. 10 The personal jurisdiction requirement—which prevents federal courts from 

exercising authority over defendants without sufficient contacts with the United States, 

see Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945)—is an important limitation on the 

jurisdiction of the federal courts over purely extraterritorial activity that is independent of 

the extraterritorial reach of a federal statute or the court’s subject matter jurisdiction. 

Here, there is no dispute that the district court had personal jurisdiction over 

GlowProducts. 

2006-1646 13
interests or activities to its laws.” Restatement (Third) of the Foreign Relations Law of 

the United States § 401 & comment a (1987) (“Restatement”); see also Hartford Fire 

Ins. Co. v. California, 509 U.S. 764, 813 (1993) (Scalia, J., dissenting).11 But as the 

influential Restatement recognizes, this type of “jurisdiction” is distinct from a court’s 

“jurisdiction to adjudicate” or from the domestic law concept of the “subject matter 

jurisdiction” of federal courts. Restatement § 401 comments a & c, § 421 comments a 

& j.12

Emphasizing this distinction, the Supreme Court held in Lauritzen v. Larsen, 345 

U.S. 571 (1953), that the extraterritorial scope of a statute was an element of the claim, 

not a requirement of subject mater jurisdiction. In Lauritzen, the Court considered 

whether the Jones Act, which on its face created a cause of action for “any seaman who 

shall suffer personal injury in the course of his employment,” 46 U.S.C. § 688 (1952), 

applied to a dispute between two Danish citizens that took place on a Danish ship in 

 11 It is well-established that international law does not provide an 

independent limitation on Congress’ legislative authority. See, e.g., Lauritzen v. Larsen, 

345 U.S. 571, 578 (1953). But it is the international law concept of territorial limitations 

on the jurisdiction to prescribe that underlays the longstanding presumption that 

Congress does not intend its statute to have extraterritorial effect. See, e.g., F. 

Hoffmann-La Roche Ltd. v. Empagran S.A., 542 U.S. 155, 163 (2004) (“[T]his Court 

ordinarily construes ambiguous statutes to avoid unreasonable interference with the 

sovereign authority of other nations.”); The Charming Betsy, 6 (Cranch) U.S. 64, 118 

(1804) (Marshall, C.J.). Thus, as discussed above, the question is generally whether 

Congress has exercised its prescriptive jurisdiction to reach extraterritorial behavior, not 

whether it has such jurisdiction. Of course, more generally, Congress does have 

domestic limitations on its jurisdiction to prescribe, or what is also called its legislative 

jurisdiction—it can only exercise those powers given to it in Article I of the U.S. 

Constitution. Here this power is provided by Article I Section 8’s grant of power “to 

promote the Progress of Science and useful Arts, by securing for limited Times to 

Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” 

12 The Restatement notes that some courts have used the term “subject 

matter jurisdiction” to refer to what it calls jurisdiction to prescribe. Recognizing the 

confusion this engenders, the Restatement avoids the use of the term “subject matter 

jurisdiction.” Restatement § 401 comment c. 

2006-1646 14
international waters. Relying on the long-standing presumption that, if possible, statutes 

should be construed consistent with international law, the Court held as a matter of 

statutory construction that the Jones Act did not reach such extraterritorial activities. 

Lauritzen, 345 U.S. at 577-93. Nevertheless, the Court dismissed the defendant’s 

contention that the district court was without jurisdiction over the claim. Noting that the 

defendant had not objected to personal jurisdiction, the Court explained, “[a]s frequently 

happens, a contention that there is some barrier to granting plaintiff’s claim is cast in 

terms of an exception to jurisdiction of subject matter. A cause of action under our law 

was asserted here, and the court had power to determine whether it was or was not well 

founded in law and in fact.” Id. at 575 (citing Montana-Dakota Utils. Co., 341 U.S. at 

249); see also Hartford Fire Ins. Co., 509 U.S. at 812-13 (Scalia, J., dissenting) (“It is 

important to distinguish two distinct questions raised by this petition: whether the District 

Court had jurisdiction, and whether the Sherman Act reaches the extraterritorial conduct 

alleged here. . . . Respondents asserted nonfrivolous claims under the Sherman Act, 

and 28 U.S.C. § 1331 vests district courts with subject-matter jurisdiction over cases 

‘arising under’ federal statutes. . . . The second question—the extraterritorial reach of 

the Sherman Act—has nothing to do with the jurisdiction of the courts. It is a question of 

substantive law turning on whether, in enacting the Sherman Act, Congress asserted 

regulatory power over the challenged conduct.”). 

Notably, while some courts have, notwithstanding Lauritzen, at times referred to 

the extraterritorial scope of a particular statute as a jurisdictional requirement, in 

Arbaugh, the Supreme Court pointed to one of its own decisions, E.E.O.C. v. Arabian 

American Oil Co., 499 U.S. 244 (1991), in which it had characterized the extraterritorial 

2006-1646 15
effect of Title VII as jurisdictional, as an example of a “drive-by jurisdictional ruling[]” in 

which it had been “less than meticulous” in distinguishing between subject matter 

jurisdiction and an ingredient of a claim for relief. Arbaugh, 546 U.S. at 511. The Court 

explained that such cases “should be accorded ‘no precedential effect’ on the question 

of whether the federal court had the authority to adjudicate the claim in suit.” Id. 

Arbaugh’s treatment of Arabian American Oil, coupled with the Court’s holding in 

Lauritzen, strongly suggests that limitations on the extraterritorial reach of statutes are 

subject to Arbaugh’s general rule—they should be considered elements of the claim 

unless Congress has clearly labeled the limitation jurisdictional. Id. at 516.13 

Consistent with this understanding, while our court has never addressed the 

issue explicitly, we have been able to find no instance in which this court has treated the 

question of whether allegedly infringing activity took place within the United States as a 

question of subject matter jurisdiction. Rather, either the question has arisen in the 

context of whether there was personal jurisdiction, see, e.g., Beverly Hills Fan Co. v. 

 13 The Supreme Court’s holding in Arbaugh, as well as the application of 

Arbaugh’s rule to the extraterritorial scope of a statute, was anticipated in significant 

respects by the dissent in the Seventh Circuit’s en banc decision in United Phosphorous 

v. Angus Chemical Co., 322 F.3d 942, 953 (7th Cir. 2003) (en banc) (Wood, J., 

dissenting). Judge Wood, writing for herself and three other members of the court 

concluded the Foreign Trade Antitrust Improvements Act (“FTAIA”), which states that 

the Sherman Act “shall not apply” to conduct involving foreign trade or commerce 

unless that conduct has a “direct, substantial and reasonably foreseeable effect” on 

U.S. commerce, should be construed as an element of an antitrust claim, not an issue 

of subject matter jurisdiction. Persuasively, Judge Wood explained that “the fact that the 

FTAIA does not contain a clear congressional statement that it is intended to restrict the 

subject matter jurisdiction of the federal courts (or for that matter even a brief mention of 

the term ‘jurisdiction’) should be enough to resolve the question before us.” Id. at 955; 

see also id. at 954, 953-65 (faulting the majority for failing to properly distinguish 

between the subject matter jurisdiction of the courts and Congress’s prescriptive 

jurisdiction and arguing that “the ‘subject matter jurisdiction’ characterization is 

inconsistent with the Supreme Court’s decision in Steel Co.”) 

2006-1646 16
Royal Sovereign Corp., 21 F.3d 1558, 1569-72 (Fed. Cir. 1994), which is not contested 

here, or the issue has been treated as an element of the claim that is a question of fact 

for the jury to decide, see, e.g., Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 

1258 (Fed. Cir. 2000) (affirming the district court’s grant of summary judgment on the 

grounds that there had been no offer to sell in the United States because the plaintiff 

“offers no evidence upon which a reasonable jury could find in its favor” on the issue); 

MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1377 

(Fed. Cir. 2005) (affirming a grant of summary judgment of no direct infringement under 

35 U.S.C. § 271(a) because “MEMC has presented no evidence demonstrating that [the 

alleged infringer] sold the accused wafers . . . in the United States”). 

We therefore conclude that Arbaugh’s rule governs the instant inquiry, and we 

find, consistent with this court’s prior implicit treatment, that Congress has not clearly 

stated that any of the limitations in § 271 are jurisdictional. Accordingly, we hold that 

whether the allegedly infringing act happened in the United States is an element of the 

claim for patent infringement, not a prerequisite for subject matter jurisdiction.14 Given 

this holding, we affirm the district court’s denial of GlowProducts’ motion to dismiss the 

patent claims for lack of subject matter jurisdiction, but do so on different grounds. 

There was no need for the district court to consider whether GlowProducts had imported 

products into the United States in order to determine whether it had jurisdiction over the 

case. Litecubes, by alleging a violation of § 271, has properly invoked federal question 

 14 Foreign litigants nevertheless have substantial protection if the activity 

complained of took place wholly outside of the United States. In many such cases, the 

court may not have personal jurisdiction over the defendant. Moreover, such cases will 

often be able to be quickly disposed of in a Rule 12(b)(6) motion to dismiss for failure to 

state a claim or in a motion for summary judgment. 

2006-1646 17
jurisdiction under § 1331 and § 1338. This jurisdiction does not depend on whether 

Litecubes is able to succeed on the merits in proving all of the elements of patent 

infringement that it alleged in the complaint. 

III. 

GlowProducts also argues that the district court had no subject matter jurisdiction 

over Litecubes’ copyright claims as the U.S. copyright laws have no extraterritorial 

reach. This Circuit “applies copyright law as interpreted by the regional circuits,” here 

the Eighth Circuit. Pods, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1368 (Fed. Cir. 2007) 

(quoting Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1368 (Fed. Cir. 

2006)). However “[o]n matters relating to this court’s jurisdiction, we apply Federal 

Circuit law, not that of the regional circuit from which the case arose.” Nystrom v. TREX 

Co., 339 F.3d 1347, 1350-51 (Fed. Cir. 2003). The question raised here, whether the 

lack of extraterritorial reach of the Copyright Act limits the subject matter jurisdiction of 

the federal courts, implicates the substance of the Copyright Act but is ultimately a 

question of our jurisdiction. Accordingly, we believe that we have an independent 

obligation to determine for ourselves whether jurisdiction is proper, and we apply 

Federal Circuit law.15 

Under the U.S. Copyright Act, the owner of copyright has the exclusive right to 

“distribute copies . . . of the copyrighted work to the public by sale or other transfer of 

ownership, or by rental, lease, or lending.” 17 U.S.C. § 106. In addition, the Act 

provides that “[i]mportation into the United States, without the authority of the owner of 

 15 Even if we were to apply Eighth Circuit law, we would reach the same 

result. Neither this court nor the Eighth Circuit has decided the issue presented. Thus 

our analysis of how the Eighth Circuit likely would decide the issue would be based on 

the same analysis of Supreme Court and other circuit precedent as here. 

2006-1646 18
copyright under this title, of copies . . . of a work that have been acquired outside the 

United States is an infringement of the exclusive right to distribute copies . . . under 

section 106 [17 U.S.C. § 106].” Id. § 602. By its terms § 106 does not require that the 

distribution of the goods occur within the United States. It has long been established, 

however, that the Copyright Act does not “reach acts of infringement that take place 

entirely abroad.” Subafilms Ltd. v. MGM-Pathe Commn’ns Co., 24 F.3d 1088, 1098 (9th 

Cir. 1994) (en banc); see also, e.g., The Robert Stigwood Group Ltd. v. O’Reilly, 530 

F.2d 1096, 1101 (2d Cir. 1976) (“Copyright laws do not have extraterritorial operation.”). 

Both parties stated at oral argument that the Patent Act and the Copyright Act 

should be interpreted consistently, and thus that if the Patent Act’s requirement that the 

infringing act take place in the United States is not a jurisdictional requirement, the 

exclusion from the Copyright Act of acts taking place entirely abroad should also not be 

jurisdictional. We agree. 

The principles and case law discussed above, which led us to conclude that the 

Patent Act’s territorial requirement is an element of the claim that must be established to 

prove infringement, but not a requirement for subject matter jurisdiction, apply equally to 

the Copyright Act’s limitation on the extraterritorial reach of the statute. As discussed, 

whether the territorial limitation is explicit in the statute, as in the Patent Act, or implied 

based on the presumption that Congress does not intend its acts to have extraterritorial 

effect, as in the Copyright Act, the limit on the extraterritorial reach of a statute is a 

question of statutory interpretation—what did Congress intend the scope of its exercise 

of prescriptive jurisdiction to be—not an independent limitation on the federal court’s 

authority. And Arbaugh’s bright-line rule applies. That is, whether an accused action is 

2006-1646 19
within the extraterritorial limitation should be treated as an element of the claim, not a 

predicate for subject matter jurisdiction, unless Congress has clearly provided that the 

limitation is jurisdictional. See Arbaugh, 546 U.S. at 516 (“[W]hen Congress does not 

rank a statutory limitation on coverage as jurisdictional, courts should treat the 

restriction as non-jurisdictional in character.”); Lauritzen, 345 U.S. 571 (holding that the 

Jones Act, which on its face had no territorial limitations, did not reach purely 

extraterritorial activities, but that this requirement was not a limitation of the jurisdiction 

of the federal courts); see also supra Part II. 

As in the patent context, in its brief to this court and at the district court, 

GlowProducts assumed without any analysis that the lack of extraterritorial effect of the 

copyright laws is a question of subject matter jurisdiction rather than a question of 

whether a claim upon which relief can be granted has been established. But the cases 

it relies on provide minimal support for such a position. 

 GlowProducts’ reliance on Subafilms, which it cites as its primary authority, is 

misplaced. While GlowProducts is correct that Subafilms is a leading case on the 

extraterritorial reach of the Copyright Act, Subafilms did not hold that the extraterritorial 

limitation limited the subject matter jurisdiction of the federal courts. Rather, Subafilms

held that “the mere authorization of acts of infringement that are not cognizable under 

the United States copyright laws because they occur entirely outside of the United 

States does not state a claim for infringement under the Copyright Act.” 24 F.3d at 1099 

(emphasis added). Moreover, Subafilms reaffirmed that “the existence of subject matter 

jurisdiction under 28 U.S.C. § 1338(a) is distinct as a general matter from the question 

of whether a valid cause of action is stated.” Subafilms, 24 F.3d at 1091 n.5. The court 

2006-1646 20
further recognized, without deciding, that Peter Starr Production Co. v. Twin Continental 

Films, 783 F.2d 1440 (9th Cir. 1986), which it overruled in part, may have erred in 

“framing the subject matter jurisdiction inquiry as coextensive with the question of 

whether the allegations in the complaint stated a good cause of action.” Subafilms, 24 

F.3d at 1091 n.5; see also L.A. News Serv. v. Reuters Tel. Int’l, Ltd., 340 F.3d 926, 931 

& n.9 (9th Cir. 2003) (“Subafilms reaffirmed that the copyright laws have no application 

beyond the U.S. border . . . . Subafilms also suggested that federal question jurisdiction 

under the copyright laws may not be coextensive with legislative jurisdiction under those 

laws, i.e., the reach Congress has chosen to give to American intellectual property 

statutes.”). Similarly, none of the Second Circuit cases on which GlowProducts relies 

hold that the extraterritorial reach of the Copyright Act is a question of subject matter 

jurisdiction. See, e.g., The Robert Stigwood Group, 530 F.2d at 1101 (holding that 

performances of the copyrighted work performed in Canada were properly excluded 

from the calculation of damages); cf. Bassett v. Mashantucket Pequot Tribe, 204 F.3d 

343, 349 (2d Cir. 2000) (holding that the federal courts have subject matter jurisdiction if 

a suit arises under the Copyright Act, which occurs when “(1) [T]he complaint is for a 

remedy expressly granted by the Act, e.g., a suit for infringement or for the statutory 

royalties for record reproduction; or, (2) [T]he complaint . . . asserts a claim requiring 

construction of the Act . . . .” (internal quotation marks omitted)). 

 A least one circuit has treated the extraterritorial effect of the copyright laws as a 

question of subject matter jurisdiction. See Palmer v. Braun, 376 F.3d 1254, 1258 (11th 

Cir. 2004) (“[I]t is only where an infringing act occurs in the United States that the 

infringement is actionable under the federal Copyright Act, giving federal courts 

2006-1646 21
jurisdiction over the action.”). In Palmer, however, the Eleventh Circuit did not have the 

benefit of Arbaugh’s recent clarification of the boundary between subject matter 

jurisdiction and elements of the claim nor its suggestion that this confusion between 

subject matter jurisdiction and elements of a claim has extended to the issue of the 

extraterritorial scope of a statute. Arbaugh, 546 U.S. at 511. Moreover, Palmer simply 

assumed the issue was a jurisdictional one, without any analysis of whether the 

question was more properly considered a question on the merits. We decline to follow 

the Eleventh Circuit’s approach. 

 There is no indication that Congress intended the extraterritorial limitations on the 

scope of the Copyright Act to limit the subject matter jurisdiction of the federal courts. 

Accordingly, we hold that the issue is properly treated as an element of the claim which 

must be proven before relief can be granted, not a question of subject matter 

jurisdiction, and we affirm the district court’s denial of GlowProduct’s motion for 

dismissal for lack of subject matter jurisdiction over the copyright claims. 

IV. 

 In addition to filing the post-trial motion to dismiss, GlowProducts filed motions for 

judgment as a matter of law, arguing that substantial evidence did not support the jury 

verdicts of infringement for either the copyright or patent claims. In part, these motions 

were based on the same argument as the motion to dismiss—that Litecubes had failed 

to establish that any of the allegedly infringing acts took place within United States 

borders. Unlike the motion to dismiss, these JMOL motions were a procedurally correct 

mechanism to challenge the jury findings of infringement based on the location of the 

allegedly infringing activity. GlowProducts, however, has not appealed this aspect of its 

2006-1646 22
JMOL motions. Accordingly, we ordinarily would consider the issue waived and decline 

to reach the issue. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 

1319 (Fed. Cir. 2006) (“[A]rguments not raised in the opening brief are waived.”). 

However, the circumstances here are rather unusual, and both parties at oral argument 

appeared to agree that if we concluded that the extraterritorial issue was not 

jurisdictional, we should consider the issue under the JMOL standard. Given this, and 

that the parties have fully briefed the issue, albeit under the incorrect rubric of subject 

matter jurisdiction, we exercise our discretion, see id. at 1320 n.9 (noting that the court 

maintains discretion to consider arguments not properly raised in the briefs), to consider 

whether the district court erred in denying Litecubes’ JMOL motions on the ground that 

the evidence was insufficient to establish a sale or offer for sale of the allegedly 

infringing products within the United States or importation of the products to the United 

States. 

When reviewing a district court’s denial of a JMOL motion, “we reapply the 

district court’s JMOL standard anew.” Juicy Whip v. Orange Bang, 292 F.3d 728, 736 

(Fed. Cir. 2002); Chicago Title Ins. Co. v. Resolution Trust Corp., 53 F.3d 899, 904 (8th 

Cir. 1995) (“We review the grant or denial of a motion for judgment as a matter of law de 

novo, using the same standard employed by the district court.”). “Therefore, for [a party] 

to prevail on appeal it must prove that the jury’s factual findings were not supported by 

substantial evidence or that the facts were not sufficient to support the conclusions 

necessarily drawn by the jury on the way to its verdict.” Mycogen Plant Sci., Inc. v. 

Monsanto Co., 243 F.3d 1316, 1331 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso 

Mfg. Mich., Inc., 192 F.3d 1353, 1357 (Fed. Cir. 1999)); Jackson v. Prudential Ins. Co., 

2006-1646 23
736 F.2d 450, 453 (8th Cir. 1984) (“[JMOL] motions should not be granted if reasonable 

persons could differ as to the conclusions to be drawn from the evidence. . . . The trial 

court has not erred if there is substantial evidence -- more than a mere scintilla of 

evidence -- to support a verdict in favor of the party opposing such a motion.” (internal 

citations omitted)). 

Although the district court based its ruling on a finding that GlowProducts 

imported its goods into the United States, we believe that the preferable initial inquiry, 

given the facts of this case and our prior established law, is whether there was a sale 

within the United States. It is uncontested that GlowProducts sold and shipped the 

allegedly infringing products directly to customers located in the United States. 

GlowProducts bases its argument that these were not sales in the United States on the 

grounds that the products were shipped f.o.b., and thus title over the goods were 

transferred while the goods were still in Canada. Our case law, however, is inconsistent 

with such a theory, and we conclude that there is substantial evidence of a sale within 

the United States for the purposes of § 271. 

In North American Philips Corp. v. American Vending Sales, Inc., 35 F.3d 1576 

(Fed. Cir. 1994), a personal jurisdiction case, this court rejected the notion that simply 

because goods were shipped f.o.b., the location of the “sale” for the purposes of § 271 

must be the location from which the goods were shipped. Id. at 1579 (holding that the 

“tort” of patent infringement is defined by § 271 and occurs “where the allegedly 

infringing sales are made”). To the contrary, we determined that the sale also occurred 

at the location of the buyer. Id. The court recognized that 

unlike the ‘making’ and the ‘using’ of an infringing article, which as purely 

physical occurrences are relatively straightforward to place, the ‘selling’ of 

2006-1646 24
an infringing article has both a physical and a conceptual dimension to it. 

That is to say, it is possible to define the situs of the tort of infringementby-sale either in real terms as including the location of the seller and the 

buyer and perhaps the points along the shipment route in between, or in 

formal terms as the single point at which some legally operative act took 

place, such as the place where the sales transaction would be deemed to 

have occurred as a matter of commercial law. 

Id. North American Philips rejected the formalistic approach and concluded that 

regardless of whether the goods were shipped f.o.b., “to sell an infringing article to a 

buyer in Illinois is to commit a tort there (though not necessarily only there.).” Id.

(explaining that “to hold otherwise would exalt form over substance in an area where the 

Supreme Court has generally cautioned against such an approach” (citing Burger King 

Corp. v. Rudzewic, 471 U.S. 462 (1985))). Moreover, the court explained that “even if 

we were to conclude that a ‘mechanical’ test might be appropriate here for some 

reason, appellee has failed to explain why the criterion should be the place where legal 

title passes rather than the more familiar places of contracting and performance. 

Appellees have pointed to no policy that would be furthered by according controlling 

significance to the passage of legal title here.” Id.; see also McGoldrick v. BerwindWhite Coal Mining Co., 309 U.S. 33, 64 (1940) (“[T]he place where the title passes has 

not been regarded as the test of the interstate character of a sale. We have frequently 

decided that where a commodity is mined or manufactured in one State and in 

pursuance of contracts of sale is delivered for transportation to purchasers in another 

State, the mere fact that the sale is f.o.b. cars in the seller's State and the purchaser 

pays the freight does not make the sale other than interstate.”); cf. Rotec Indus., Inc. v. 

Mitsubishi Corp., 215 F.3d 1246, 1258 (Fed. Cir. 2000) (looking to federal law to 

2006-1646 25
interpret “offer to sale” under § 271 and concluding that it “is to be interpreted according 

to its ordinary meaning in contract law, as revealed by traditional sources of authority”). 

While North American Philips dealt with the issue of where a “sale” took place 

under § 271 in the context of personal jurisdiction, we see no basis for construing the 

location of a “sale” differently when the issue is whether the plaintiff has established that 

the sale took place within the United States for the purposes of infringement. Indeed, 

this court has already relied on North American Philips’s interpretation of § 271 when 

determining whether summary judgment of non-infringement was appropriate on the 

grounds that there was no sale in the United States. See MEMC Elec. Materials, Inc. v. 

Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1377 (Fed. Cir. 2005) (“North 

American Philips . . . noted that in some cases the criterion for determining the location 

of a “sale” under section 271(a) is not necessarily where legal title passes; the ‘more 

familiar places of contracting and performance’ may take precedence over the passage 

of legal title. Thus simply because an article is delivered ‘free on board’ outside of the 

forum, a sale is not necessarily precluded from occurring in the forum.”); see also

Rotec, 215 F.3d at 1254. In MEMC, as here, the issue was whether the defendant’s 

actions could be construed by a reasonable jury to constitute a sale or offer to sell in the 

United States. It was undisputed that the defendant SUMCO manufactured the accused 

chip wafers in Japan and then sold the product to a Japanese company, Samsung 

Japan; Samsung Japan then sold the products to Samsung Austin, in the United States. 

Relying on North American Philips, the court found it “significant[]” that “there was no 

evidence that ‘contracting and performance’ took place in the United States.” MEMC, 

420 F.3d at 1377. The court explained that there was no evidence demonstrating a sale 

2006-1646 26
directly from SUMCO to Samsung Austin, and that “all of the essential activities” of the 

sale between SUMCO and Samsung Japan took place in Japan. Id. Accordingly, the 

court found no error in the district court’s grant of summary judgment of noninfringement. Id. In contrast, here it is undisputed that GlowProducts sold the products 

directly to customers in the United States. Since the American customers were in the 

United States when they contracted for the accused cubes, and the products were 

delivered directly to the United States, under North American Philips and MEMC there is 

substantial evidence to support the jury’s conclusion that GlowProducts sold the 

accused cubes within the United States. 

Since we find substantial evidence of a sale within the United States, we need 

not determine whether there was also an offer to sell within the United States or 

importation into the United States. 

We also conclude that substantial evidence supported the jury verdict of 

copyright infringement. Although we apply Eighth Circuit law to the question of whether 

GlowProducts’ activities are within the scope of the Copyright Act, the Eighth Circuit has 

not spoken on the extraterritorial scope of the Act. We therefore “need to predict how 

the[Eighth Circuit] would have decided the issue.” Panduit Corp. v. All States Plastic 

Mfg. Co., 744 F.2d 1564, 1575 (Fed. Cir. 1984). 

Section 106(3) of the Copyright Act makes it an act of infringement to “distribute” 

copies of the copyrighted work “to the public by sale.” 17 U.S.C. § 106(3); Nat’l Car 

Rental Sys., Inc. v. Computer Assocs. Int’l, Inc., 991 F.2d 426, 429 (8th Cir. 1993); 2-8 

Nimmer on Copyright § 8.11 (2007) (“The copyright owner . . . has the exclusive right 

publicly to sell, give away, rent or lend any material embodiment of his work.”). Neither 

2006-1646 27
party has argued that courts should interpret identical, generalized terms such as “sale” 

or “importation” differently between the Copyright Act and the Patent Act. To the 

contrary, both parties rely on their arguments regarding the Patent Act to support their 

arguments for the applicability of the Copyright Act. See Appellants’ Br. 25 

(“GlowProducts does not ‘import’ under the Copyright Act for the same reasons it does 

not ‘import’ under the Patent Act.”); Appellee’s Br. 45 (“For the same reasons that 

jurisdiction exists under the Patent Act, jurisdiction similarly exists under the Copyright 

Act.”). We agree that the term “sale” should be interpreted consistently in copyright and 

patent law, and accordingly, conclude that the Eighth Circuit would find substantial 

evidence of sales in the United States sufficient to uphold the jury’s finding of liability 

under the Copyright Act.16 

Moreover, the Copyright Act does not explicitly require that sales be “in the 

United States,” and courts have generally held that the Copyright Act only does not 

reach activities that “that take place entirely abroad.” Subafilms, 24 F.3d at 1098 

(emphasis added); see 4-17 Nimmer on Copyright § 17.02 (“[A] distinction should be 

drawn between purely extraterritorial conduct, which is itself nonactionable, and conduct 

that crosses borders, so that at least a part of the offense takes place within the United 

States. . . . It may be concluded . . . that U.S. courts may entertain such multiterritorial 

infringement claims.”). Thus for example, in Palmer, the Eleventh Circuit found that the 

Copyright Act applied when the alleged infringer, analogously to the instant case, sold 

copyrighted work from France to customers in the United States, and then shipped 

these works to the U.S. buyers. Palmer, 376 F.3d at 1258; see also GB Mktg. USA Inc. 

 16 If there are arguments for interpreting the location of the “sale” for 

Copyright Act purposes differently than for the Patent Act, these have been waived. 

2006-1646 28
v. Gerolsteiner Brunner GmbH & Co., 782 F. Supp. 763, 772-73 (W.D.N.Y. 1991), cited 

by Palmer, 376 F.3d at 1258 (holding that a bottle water distributor could maintain an 

action under the Copyright Act against a foreign bottler who applied labels to the bottles 

in Germany, when the labels were specifically designed for marketing in the United 

States and were sold to a company which imported the bottles to the United States). 

Substantial evidence supports the jury’s conclusion that, by selling to customers in the 

United States, GlowProducts’ distribution of the accused products has taken place, at 

least in part, in the United States. 

We therefore affirm the denial of JMOL for the copyright claim. 

V. 

GlowProducts also argues that even assuming that the allegedly infringing 

activity was within the United States, the district court erred in refusing to issue a 

judgment as a matter of law on the question of patent infringement by the ICM cubes. 

GlowProducts argues that JMOL was appropriate because the ICM cubes do not 

meet the limitation of claim 1 that requires the cubes to contain a “filler adapted to retain 

heat when said device is heated” or the limitation of claim 16 that the cubes contain a 

“filler adapted to retain cold when said device is cooled.” The parties do not contest the 

propriety of the district court’s claim construction. Therefore, the only issue is whether 

substantial evidence supports the jury’s factual finding that GlowProducts’ cubes met 

the contested claim limitations, which as construed require that the filler be “made 

suitable to or fit for the specific use of retaining heat when said device is heated” or 

“made suitable to or fit for the specific use of retaining cold when said device is cooled.” 

2006-1646 29
Markman Order, at *5. We conclude there was substantial evidence to sustain the jury’s 

finding. 

A. 

At trial, Dr. Kevin Trankler, a chemist with expertise in thermodynamics, testified 

as an expert witness on Litecube’s behalf. Trankler concluded that after running various 

tests on the ICM cube to “determine. . . whether the filler material had the ability to 

retain cold over a period of time,” J.A. at 927, it was his opinion that the filler in the cube 

“is adapted to retain heat or cold.” J.A. at 937. He also testified that he was aware that 

“adapted” was defined by the court as requiring the filer be “suitable for or fit to the 

specific purpose of.” J.A. at 928. Trankler’s experiment demonstrated that after the ICM 

cube was placed in the freezer, the filler cooled to -6.1 C (below the freezing 

temperature of water), and that when the frozen cube was placed in room temperature 

water, the filler took approximately thirty minutes to return to room temperature. Trankler 

concluded based on these and similar results that the filler was adapted to retain heat or 

cold. He explained that insulators such as ceramics, wood, or Styrofoam would not be 

adapted to retain heat or cold because “they would warm up a lot faster” and “may not 

cool down to the same temperature either” as the ICM filler. J.A. at 931-32.17

In addition, Litecubes introduced excerpts from GlowProducts’ website describing 

the accused cubes as being adapted to keep drinks warm or cool. For example, the 

website stated, “[t]he 8 Mode Multi-Cube is a great lighted ice cube for livening up your 

 17 In their brief GlowProducts suggests that “Trankler admitted that 

comparable tests results for a sandwich ‘would likely look the same.’” Appellants’ Br. 30.

This leaves out part of Trankler’s testimony. When asked on cross examination what the 

curve (i.e., plot of temperature v. time) would look like for a sandwich, Trankler testified 

that he “suspect[ed] that the curve would look the same; it would still be a curve, but 

that the slope would be farther to the left.” J.A. at 940. 

2006-1646 30
drinks. Not only will it amuse your guests, but it will keep their drink warm or cool with its 

internal gel” and explained that “[t]his light up ice cube also comes with internal gel that 

can be heated or frozen to keep your drink warm or cool.” J.A. at 6262-64.

Vanderschuit, Litecubes’ founder, also testified that artificial ice cubes, including 

Litecube’s own product, would never be able to match, nor were they intended to match, 

the cooling properties of an actual ice cube, but instead would simply slightly lower the 

temperature of a room temperature drink for twenty to thirty minutes or help maintain 

the temperature of a cooled drink for slightly longer.18 

To rebut Trankler’s testimony, GlowProducts called as its expert witness Dr. Ann 

Mescher. She admitted there was nothing technically wrong with Trankler’s tests but 

suggested that “he simply didn’t answer the question.” J.A. at 995. According to 

Mescher, the appropriate question was whether the fillers “make a practical difference,” 

i.e., in her words, whether they were “particularly suited for the specific purpose of 

keeping a hot drink hotter than it would be if it weren’t there.” J.A. at 992, 995. To 

answer this question, Dr. Mescher ran two tests and concluded that the filler had “no 

practical effect.” In the first test, she placed a GlowProducts cube and a Litecube that 

had been refrigerated overnight in a glass of water that was also refrigerated overnight 

and compared the water temperature in these glasses to a control refrigerated glass of 

water without a cube. She found that neither the Litecube nor the GlowProducts cube 

had “a measurable impact on the rate at which the liquids heat.” The validity of this test 

was called into question during cross examination by her admission that water was the 

 18 Supporting this contention was the fact that Litecube’s own commercial 

embodiment of the patent performed identically to the GlowProducts’ cubes in tests 

done by GlowProducts’ expert. 

2006-1646 31
substance most well-adapted to retain heat or cold at the relevant temperatures, and 

that if one used a cube that had water as the filler, it would also not show any 

measurable difference from the control. In her second experiment, she froze 

GlowProducts and Litecubes cubes in the freezer overnight to cool them to -28 C and 

then placed each in a room temperature glass of water. She found that that the cubes 

lowered the temperature of the water by about one degree and that it took about sixty 

minutes for the water to return to its initial temperature. She characterized these results 

as showing that the cubes had “no measurable impact.” J.A. at 1022-23. 

B. 

 As construed, the contested claim limitation required the jury to find that 

GlowProducts’ cubes contained “filler made suitable to or fit for the specific use of 

retaining heat when said device is heated” or “filler made suitable to or fit for the specific 

use of retaining cold when said device is cooled.” Markman Order, at *5. 

No one disputed the scientific accuracy of Dr. Trakler’s experiments that showed 

that the filler material used by GlowProducts was able to cool down to the temperature 

of the freezer and retain its cold temperature above room temperature for about thirty 

minutes, nor Dr. Mescher’s experiment which showed that the allegedly infringing 

products when frozen were able to keep a glass of water below room temperature for 

about an hour. Whether a person skilled in the art would consider this level of cold 

retention sufficient to make the filler material “suitable to” the specific use of retaining 

cold or heat, is a question of fact for the jury. Faced with conflicting expert testimony, 

the jury was entitled to credit Dr. Trankler’s testimony that the level of cold retention 

shown by the filler established that the material was adapted to the purpose of retaining 

2006-1646 32
cold. See Comark Commc’ns. v. Harris Corp., 156 F.3d 1182, 1192 (Fed. Cir. 1998) (“It 

is not the province of an appellate court to second guess the jury’s credibility 

determinations or to reevaluate the weight to be given the evidence”); Brooktree Corp. 

v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1569 (Fed. Cir. 1992) (“Issues of 

credibility of witnesses are for the jury, and are not amenable to appellate review.”); cf.

Anderson v. Bessemer City, 470 U.S. 564, 575 (1985) (“When [in a bench trial] a trial 

judge’s finding is based on his decision to credit the testimony of one of two or more 

witnesses, each of whom has told a coherent and facially plausible story that is not 

contradicted by extrinsic evidence, that finding, if not internally inconsistent, can virtually 

never be clear error.”).19 The jury could also have taken into consideration the testimony 

of Litecubes’ founder as well as GlowProducts’ own advertising as to what level of heat 

retention made the filler suitable to the specific use of retaining heat or cold in the 

context of the invention. This evidence also supported the finding that the filler used in 

the GlowProducts’ cubes was suitable to the specific use of retaining heat or cold. 

Accordingly, we hold that the district court did not err in denying the JMOL motion on 

these grounds. 

VI. 

 We conclude that there is no basis to overturn the jury verdict of copyright 

and patent infringement. While we do not adopt the district court’s reasoning, the district 

court reached the correct result in denying GlowProduct’s motion to dismiss for lack of 

 19 The jury need not have credited Mescher’s argument that for the filler to 

be “suitable to or fit for the specific use of retaining cold” it must have a “practical effect” 

on the temperature of the water the cube was in. No such result was required by the 

district court’s claim construction. But even if this was a requirement, the jury could have 

found that the tests, including Mescher’s own, established a sufficient practical effect to 

meet the claim limitations. 

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2006-1646 34

subject matter jurisdiction. The issues of the extraterritorial reach of the Patent and 

Copyright Acts raised in the motion are not properly considered jurisdictional. We further 

conclude that substantial evidence supports the jury’s verdict of infringement. The 

judgment of the district court is, therefore, affirmed. 

AFFIRMED

COSTS 

No costs.