United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MERIAL LIMITED AND MERIAL SAS, 

Plaintiffs-Appellees, 

and 

BASF AGRO B.V., 

Plaintiff, 

v. 

CIPLA LIMITED, 

Defendant-Appellant, 

and 

VELCERA, INC. AND FIDOPHARM, INC., 

Defendants-Appellants, 

and 

ARCHIPELAGO SUPPLIERS, ARROWTARGET 

ENTERPRISES LTD., 

GENERIC PETMEDS, INHOUSE DRUGSTORE, 

LISA PERKO, 

PETCARE PHARMACY, AND PETMEDS R US, 

Defendants. 

__________________________ 

2011-1471, -1472 

__________________________ 
BASF AGRO v. CIPLA LIMITED 2

Appeals from the United States District Court for the 

Middle District of Georgia in Case No. 07-CV-0125, Judge 

Clay D. Land. 

____________________________ 

Decided: May 31, 2012 

____________________________ 

GREGORY A. CASTANIAS, Jones Day, of Washington, 

DC, argued for the plaintiffs-appellees. With him on the 

brief were DAMON M. LEWIS; and J. PATRICK ELSEVIER, of 

San Diego, California. Of counsel on the brief were JUDY 

JARECKI-BLACK, Merial Limited, of Duluth, Georgia, 

FRANK G. SMITH, III, Alston & Bird, LLP, of Atlanta, 

Georgia, and EDWARD DONALD TOLLEY, Cook, Noell, 

Tolley, Bates & Michael, LLP, of Athens, Georgia. 

NAGENDRA SETTY, Sheppard, Mullin, Richter & 

Hampton LLP, of San Francisco, California, argued for 

defendant-appellant Cipla Limited. Of counsel were PAUL 

WENDELL GARRITY and MARK EDWARD MCGRATH, of New 

York, New York. 

JONATHAN G. GRAVES, Cooley LLP, of Reston, Virginia, argued for defendants-appellants FidoPharm, Inc., 

et al. With him on the brief were PHILLIP E. MORTON; and 

TRYN T. STIMART, of Washington, DC. Of counsel was 

LORI R. MASON, of Palo Alto, California. Of counsel on the 

brief were GEORGE C. LOMBARDI, Winston & Strawn LLP, 

of Chicago, Illinois; and ELIZABETH P. PAPEZ, of Washington, DC. 

__________________________ 

Before LOURIE, SCHALL, and REYNA, Circuit Judges. 
3 BASF AGRO v. CIPLA LIMITED

Opinion for the court filed by Circuit Judge LOURIE. 

Dissenting opinion filed by Circuit Judge SCHALL. 

LOURIE, Circuit Judge. 

Cipla Ltd. (“Cipla”) joins with Velcera, Inc. and FidoPharm, Inc. (collectively, “Velcera”) in appealing from a 

judgment entered by the United States District Court for 

the Middle District of Georgia in favor of Merial Ltd. and 

Merial SAS (collectively, “Merial”) holding Cipla in contempt for violating an earlier injunction and holding 

Velcera in contempt for acting in concert with Cipla to 

violate that injunction. Merial Ltd. v. Cipla Ltd., No. 

3:07-CV-125 (CDL), 2011 U.S. Dist. LEXIS 65639, 2011 

WL 2489753 (M.D. Ga. June 21, 2011) (“Contempt Order”). For reasons set forth below, we affirm the district 

court’s judgment. 

BACKGROUND

The Patented Pest Control Technology 

This appeal concerns patented compositions for protecting domestic dogs and cats from infestation with 

ectoparasites, e.g., fleas and ticks. In particular, the 

dispute centers on topically applied or “spot on” veterinary compositions containing pesticidal N-phenylpyrazole 

derivatives, such as fipronil, applied directly to the skin of 

an animal. BASF’s U.S. Patent 5,232,940 (“the ’940 

patent”), now expired, claimed fipronil and fipronil-based 

compositions as well as methods of using such compositions for pest control. Merial, as the exclusive licensee of 

the ’940 patent, developed commercially successful spoton fipronil compositions sold under the brand name 

Frontline. 

In addition to producing fipronil-only products, Merial 

devised dual-acting pest control compositions covered by 

U.S. Patent 6,096,329 (“the ’329 patent”). In particular, 
BASF AGRO v. CIPLA LIMITED 4

the ’329 patent claims spot-on compositions containing 

fipronil combined with a second active ingredient—

specifically, an insect growth regulator (“IGR”). In contrast to pesticides, which work through direct toxicity, 

IGRs act not by killing individual parasites but rather by 

interrupting the life cycle within a parasite population. 

The ’329 patent discloses numerous IGRs—such as 

methoprene, for example—that mimic natural insect 

hormones to prevent immature or juvenile-stage parasites 

from reaching reproductive maturity, thereby limiting 

and eventually depleting an infestation. In the pesticideplus-IGR compositions disclosed in the ’329 patent, the 

paired active ingredients complement one another 

through their distinct methods of action to achieve improved pest protection relative to either agent administered alone. Merial markets compositions combining 

fipronil and methoprene as Frontline Plus, the leading 

veterinary flea and tick treatment in the United States. 

The 2008 Default Judgment 

Cipla is a pharmaceutical company incorporated under the laws of India with its principal place of business 

in Mumbai, India. In November 2007, Merial filed suit 

against Cipla and various internet retailers in the United 

States District Court for the Middle District of Georgia 

alleging infringement of the ’940 and ’329 patents (“the 

2007 complaint”). Merial alleged that Cipla was subject 

to personal jurisdiction in the district court by virtue of 

Cipla’s alleged contacts with and conduct within the state 

of Georgia, and Merial provided Cipla with service of 

process in Mumbai by courier and registered mail. According to the 2007 complaint, Cipla and the defendant 

online retailers sold throughout the United States spot-on 

veterinary pesticide products known as “Cipla Protektor” 

and “Cipla Protektor Plus” that constituted infringing 
5 BASF AGRO v. CIPLA LIMITED

formulations of fipronil or fipronil and methoprene, respectively. 

Neither Cipla nor any of the other defendants responded to the 2007 complaint or entered an appearance 

in the district court. Merial therefore moved to hold the 

defendants in default pursuant to Federal Rule of Civil 

Procedure 55, and the district court granted that motion 

on March 6, 2008. In relevant part, the district court 

found that the ’940 and ’329 patents were not invalid, 

found that Cipla had infringed each patent, and entered a 

permanent injunction barring Cipla from directly or 

indirectly infringing the ’940 or ’329 patents in the future: 

[Cipla], as well as those persons and entities in 

active concert with [Cipla] who have notice of this 

order, are herewith permanently enjoined from 

committing any act that infringes or causes or induces infringement of any claim of the ’940 or ’329 

patents, including but not limited to making, having made, using, causing to be used, selling, causing to be sold, offering for sale, and causing to be 

offered for sale in the United States, and importing and causing to be imported into the United 

States, any product that infringes any claim of the 

’940 or ’329 patents, including but not limited to 

the veterinary products denominated CIPLA 

PROTEKTOR that contain fipronil and the products denominated CIPLA PROTEKTOR PLUS 

that contain fipronil and methoprene. 

BASF Agro B.V. v. Cipla Ltd., No. 3:07-CV-125 (CDL) 

(M.D. Ga. Mar. 6, 2008), ECF No. 18, slip op. at 2–3 

(“Default Order”). On April 14, 2008, Cipla filed in the 

court an “informal” communication that referenced the 

default proceedings but was “not intended to constitute an 

appearance,” in which Cipla denied infringing or having 
BASF AGRO v. CIPLA LIMITED 6

“any presence in the United States and in this judicial 

district” and requested dismissal of the action. J.A. 1130–

31. The district court denied Cipla’s request for such 

“informal equitable assistance” and entered final judgment on April 15, 2008. BASF Agro B.V. v. Cipla Ltd., 

No. 3:07-CV-125 (CDL) (M.D. Ga. Apr. 15, 2008), ECF 

Nos. 22, 23. 

The PetArmor Plus Venture 

Velcera was formed in 2004 to develop veterinary 

pharmaceuticals for companion animals such as dogs and 

cats, beginning with products for inhalation-based drug 

delivery. Led by former Merial executives, Velcera later 

began preparations to enter the market for flea and tick 

control products. In particular, Velcera intended to 

introduce products that would “directly compete” with 

Merial’s Frontline series “at a substantially lower price.” 

J.A. 2222. Through its relationship with a two-person 

British company known as Omnipharm Ltd. (“Omnipharm”), Velcera engaged with Cipla to develop, test, 

manufacture, and distribute such products, and by April 

2011 those efforts culminated in U.S. sales of spot-on pest 

control compositions containing fipronil and methoprene—sold as PetArmor Plus and Velcera Fipronil Plus 

(collectively, “PetArmor Plus”)—that prompted the contempt proceedings at issue in this appeal. See J.A. 2222–

27. We now briefly recount the roles played by each of the 

principal entities, and their many subsidiaries, in the 

development and production of PetArmor Plus. 

In February 2008, Velcera established FidoPharm as 

its wholly owned subsidiary, and, on the same day, FidoPharm executed a license and development agreement 

with Omnipharm under which Omnipharm would develop 

the PetArmor Plus formulations and license those formulations exclusively to FidoPharm for sale in the United 
7 BASF AGRO v. CIPLA LIMITED

States. J.A. 2225–26. In addition, the license and development agreement between FidoPharm and Omnipharm 

identified Cipla as the intended manufacturer of PetArmor Plus. Id. FidoPharm simultaneously entered into a 

separate manufacture and supply agreement with QEDetal Ltd. (“QEDetal”)—an Irish entity held entirely by the 

director of Omnipharm and established through a collaboration between Omnipharm and Cipla. J.A. 2225; 4859–

60. Under that agreement, QEDetal would supply FidoPharm with finished PetArmor Plus products for importation and sale within the United States. FidoPharm was 

to submit orders and payments to QEDetal, QEDetal 

would then direct Cipla to produce and deliver sufficient 

product to fulfill FidoPharm’s order, and finally QEDetal 

would transfer the finished PetArmor Plus to FidoPharm. 

J.A. 2225–26. 

Like Velcera, Cipla entered into its own set of parallel 

development and supply agreements with Omnipharm 

and QEDetal, respectively, in April 2008. Under its 

development agreement with Omnipharm, Cipla agreed 

to conduct laboratory testing and otherwise assist in the 

development and regulatory approval of the PetArmor 

Plus formulations. J.A. 2226. In addition, Cipla’s manufacture and supply agreement with QEDetal specified 

that Cipla would satisfy QEDetal’s requirements for 

fulfilling PetArmor Plus orders placed by FidoPharm 

pursuant to the FidoPharm/QEDetal manufacture and 

supply agreement. Id.

In practice, the parties’ interrelated web of agreements and intermediaries involved in producing and 

distributing PetArmor Plus functioned as follows: Velcera 

(through FidoPharm) would place an order for PetArmor 

Plus with Omnipharm, which would then pass the order 

to Cipla. Upon producing the product in India, Cipla 

would transfer ownership of the new PetArmor Plus to 
BASF AGRO v. CIPLA LIMITED 8

QEDetal LZE,1 which would in turn ship the product from 

India to Dubai and there transfer title to QEDetal. Formal ownership of the product would transfer yet again in 

Dubai, from QEDetal to FidoPharm, and, finally, FidoPharm would import the PetArmor Plus for sale in the 

United States. Monetary consideration for each order 

would flow from FidoPharm to Cipla along a reciprocal 

path that mirrored the product supply chain. 

With their contractual agreements in place, Velcera, 

Cipla, and Omnipharm worked to develop PetArmor Plus 

and secure regulatory approval in the United States. 

Through FidoPharm, Velcera worked with Omnipharm to 

design the PetArmor Plus formulation and directed Cipla 

to manufacture and test candidate formulations in India. 

In addition, Velcera established LoradoChem, Inc. (“LoradoChem”) as a wholly-owned subsidiary of Velcera’s 

wholly-owned FidoPharm subsidiary to file the regulatory 

applications necessary for approval to import and sell 

PetArmor Plus in the United States. LoradoChem prepared and submitted to the United States Environmental 

Protection Agency (“EPA”) an “Identical/Substantially 

Similar Product” pesticide registration application, which 

facilitates expedited registration for products that are 

substantially similar or identical to a previously registered pesticide formulation. See 7 U.S.C. § 136a(c)(3)(B). 

In communications with the EPA, LoradoChem identified 

PetArmor Plus as “identical or substantially similar” to 

Merial’s previously registered Frontline Plus products 

and submitted experimental data generated by Cipla to 

support that assertion. Indeed, those data showed that 

PetArmor Plus contains the same concentrations of 

fipronil and methoprene as Frontline Plus. As required 

 1

 QEDetal LZE is a corporate entity established in 

the United Arab Emirates and owned, like QEDetal, by 

the director of Omnipharm. J.A. 2227. 
9 BASF AGRO v. CIPLA LIMITED

by the EPA, LoradoChem also submitted Cipla’s EPA 

establishment number 87688-IND-01 with its application, 

identifying Cipla as the sole manufacturer of PetArmor 

Plus. In view of LoradoChem’s submissions, the EPA 

approved PetArmor Plus for pesticide registration as 

identical/substantially similar to Frontline Plus on January 10, 2011. 

Soon thereafter, PetArmor Plus production began. 

Upon request, Cipla manufactured each unit of PetArmor 

Plus for delivery to QEDetal, transfer to QEDetal LZE 

and FidoPharm, and eventual importation into the United 

States. Cipla supplied PetArmor Plus in finished, market-ready condition, with the pesticide formulation provided in single-dose pipettes and enclosed in its final 

retail packaging. Cipla’s PetArmor Plus packaging included Cipla’s EPA establishment number, as required for 

all pesticide products sold in the United States, as well as 

U.S. telephone numbers promising 24-hour customer 

support. An exemplary unit of PetArmor Plus, finished 

and ready for sale, is depicted below: 
BASF AGRO v. CIPLA LIMITED 10

Br. Appellee at 43. The first shipments of PetArmor Plus 

arrived in the United States in March 2011 and were 

offered for sale the following month. 

The 2011 Contempt Proceedings 

Having become aware of Cipla’s role in the impending 

commercial launch of PetArmor Plus, Merial filed a 

motion for contempt in the United States District Court 

for the Middle District of Georgia on March 28, 2011 (the 

“contempt proceedings”). J.A. 1135–54. Merial contended 

that Cipla’s activities relating to PetArmor Plus violated 

that court’s 2008 injunction against infringement of the 

’329 patent.2 In particular, Merial alleged that PetArmor 

Plus was no more than a rebranded version of Cipla’s 

enjoined Protektor Plus product and that the importation 

and sale of PetArmor Plus within the United States 

therefore violated the injunction. Velcera moved to intervene in the contempt proceedings as an interested party 

on April 8, 2011, and was promptly joined as a defendant 

and ordered to show cause why it should not be held in 

contempt for acting in concert with Cipla to contravene 

the 2008 injunction. 

Meanwhile, Velcera had filed a declaratory judgment 

complaint against Merial in the United States District 

Court for the District of Delaware on February 11, 2011, 

alleging noninfringement and invalidity of the ’329 patent 

(the “Delaware action”).3 Merial answered on March 7, 

2011, denying Velcera’s allegations and asserting coun-

 2

 The ’940 patent, covering fipronil-only pest control 

compositions, had expired by the time Merial initiated the 

contempt proceedings in March 2011. 3

 Velcera’s declaratory judgment complaint also included claims of noninfringement and invalidity directed 

at Merial’s U.S. Patents 6,620,943 and 6,881,848. Those 

patents are not at issue in this appeal. 
11 BASF AGRO v. CIPLA LIMITED

terclaims that included infringement of the ’329 patent. 

Cipla was not a party to the Delaware action.

In the contempt proceedings, Cipla sought to vacate 

the 2008 injunction as void, alleging that the district 

court had lacked personal jurisdiction over Cipla when it 

issued the Default Order in 2008. Cipla and Velcera 

argued that even if the injunction rested on sound jurisdictional footing, their production and sale of PetArmor 

Plus did not violate the court’s earlier order. Velcera 

further maintained that, as a non-party to the underlying 

default judgment, it was not subject to the injunction and, 

regardless, that it had not acted in concert with Cipla to 

violate the injunction. Finally, Velcera contended that 

the contempt proceedings should be stayed pending a 

decision on the ’329 patent’s validity in the co-pending 

Delaware action. 

The district court declined to stay the contempt proceedings and issued its decision on June 21, 2011. The 

court concluded that Cipla had been subject to its jurisdiction when it issued the 2008 injunction pursuant to 

Federal Rule of Civil Procedure 4(k)(2) instead of the 

Georgia long-arm statute, that PetArmor Plus was not 

more than colorably different from Cipla’s previously 

enjoined Protektor Plus product, and that Cipla and 

Velcera had knowingly acted in concert to violate the 

court’s order. Contempt Order, 2011 WL 2489753, at *8–

14. In light of the defendants’ “contumacious” conduct, 

the court issued a permanent injunction precluding Cipla 

from making, using, selling, or importing into the United 

States veterinary products containing fipronil and methoprene and prohibiting Velcera from doing the same with 

any such products developed, manufactured, or packaged 
BASF AGRO v. CIPLA LIMITED 12

with the assistance or participation of Cipla.4 Id. at *16–

17. 

Cipla and Velcera timely appealed from the district 

court’s judgment of contempt; we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 

DISCUSSION

We review a district court’s exercise of personal jurisdiction over an accused infringer without deference, 

applying Federal Circuit law rather than the law of the 

regional circuit. Nuance Commc’ns v. Abbyy Software 

House, 626 F.3d 1222, 1230 (Fed. Cir. 2010). Findings of 

fact that bear on personal jurisdiction are reviewed for 

clear error. Id. When reviewing a district court’s determination as to contempt of an injunction against infringement, we apply an abuse of discretion standard, 

Fujifilm Corp. v. Benun, 605 F.3d 1366, 1370 (Fed. Cir. 

2010) (per curiam), and the factual findings underlying a 

contempt decision are reviewed for clear error, TiVo Inc. 

v. EchoStar Corp., 646 F.3d 869, 883 (Fed. Cir. 2011) (en 

banc). Whether a non-party to an injunction proceeded 

“in active concert” with another party bound by that 

injunction, as set forth in Fed. R. Civ. P. 65(d)(2)(C), 

presents an issue of fact that we review for clear error. 

Additive Controls & Measurement Sys., Inc. v. Flowdata, 

 4

 Soon after the district court entered the Contempt 

Order, Velcera’s declaratory judgment claims relating to 

the ’329 patent in the Delaware action were dismissed for 

lack of subject matter jurisdiction: “Given the current 

injunction [in the Georgia contempt proceedings] and the 

fact that Velcera does not have a new, non-enjoined 

product containing fipronil and methoprene, there is no 

actual controversy between the parties.” Velcera Inc. v. 

Merial Ltd., No. 11-CV-134 (GMS) (D.Del. Aug. 3, 2011), 

ECF No. 38, slip. op. at 4 n.4. 
13 BASF AGRO v. CIPLA LIMITED

Inc., 154 F.3d 1345, 1351 (Fed. Cir. 1998) (“Additive 

Controls II”). 

Between them, Cipla and Velcera (collectively, “Appellants”) present a panoply of arguments disputing various 

aspects of the Contempt Order. We will address each in 

turn. 

I 

Appellants first challenge the contempt judgment as 

founded on an invalid injunction, alleging that the district 

court lacked personal jurisdiction over Cipla when it 

issued the default judgment in 2008. Appellants therefore argue that the district court erred in denying Cipla’s 

motion to vacate the 2008 default judgment and injunction pursuant to Fed. R. Civ. P. 60(b)(4). In particular, 

Appellants contend that Rule 4(k)(2) could not have 

conferred jurisdiction over Cipla in the Middle District of 

Georgia due to Cipla’s present assertion of consent to 

jurisdiction in the Northern District of Illinois and 

Merial’s failure to observe effective procedures for service 

of process in India. Furthermore, Cipla asserts that the 

district court’s reliance on Rule 4(k)(2) was impermissible 

because Merial did not plead Rule 4(k)(2) as a basis for 

personal jurisdiction in the 2007 complaint. 

Merial responds that Rule 4(k)(2) was applicable 

when it filed suit in 2007, that Cipla had denied contacts 

with Illinois or any other U.S. jurisdiction at that time, 

and that Cipla’s belated consent to jurisdiction in Illinois 

does not defeat Rule 4(k)(2) because there is no independent basis for jurisdiction in that forum. Merial argues 

further that Cipla’s complaints regarding service of process are untimely and therefore waived on appeal. Finally, 

Merial argues that it is irrelevant whether or not its 

original complaint explicitly mentioned Rule 4(k)(2) 

because there is no requirement to plead a specific basis 
BASF AGRO v. CIPLA LIMITED 14

for personal jurisdiction and because courts may rely on 

that rule even when it has not been cited by the parties. 

For the reasons set forth below, we hold that Rule 

4(k)(2) supports the district court’s exercise of personal 

jurisdiction over Cipla in entering the 2008 default judgment and injunction and that the district court therefore 

correctly denied Cipla’s motion to vacate that judgment 

on jurisdictional grounds. 

A 

“Rule 4 is the starting point for any personal jurisdiction analysis in federal court.” Synthes (U.S.A.) v. G.M. 

Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d 1285, 

1293 (Fed. Cir. 2009) (citing Fed. R. Civ. P. 4 and Omni 

Capital Int’l, Ltd. v. Rudolf Wolff & Co., 484 U.S. 97, 104 

(1987)). Personal jurisdiction over foreign defendants in 

federal court typically depends on the existence of sufficient contacts between the defendant and the forum state, 

requiring the plaintiff to establish that the exercise of 

personal jurisdiction over the defendant would satisfy the 

forum state’s long-arm statute and comport with constitutional principles of due process such that the defendant 

would be subject to personal jurisdiction in the courts of 

the forum state. See generally 4A Charles Alan Wright, et 

al., Federal Practice and Procedure § 1069 (3d ed.). 

Rule 4(k)(2) was adopted to provide a forum for federal claims in situations where a foreign defendant lacks 

substantial contacts with any single state but has sufficient contacts with the United States as a whole to satisfy 

due process standards and justify the application of 

federal law. Synthes, 563 F.3d at 1295–96 (citing advisory committee notes to the 1993 amendment establishing 

Rule 4(k)(2)). Rule 4(k)(2) thus approximates a federal 

long-arm statute, allowing district courts to exercise 

personal jurisdiction even if the defendant’s contacts with 
15 BASF AGRO v. CIPLA LIMITED

the forum state would not support jurisdiction under that 

state’s long-arm statute, as long as (1) the plaintiff’s claim 

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

to personal jurisdiction in the courts of any state, and 

(3) the exercise of jurisdiction satisfies due process requirements. Id. at 1293–94. 

B 

As noted, one precondition for applying Rule 4(k)(2) is 

that the defendant must not be subject to personal jurisdiction in the courts of any state (sometimes called the 

“negation requirement”). Id. at 1293. Although the 

burden of establishing personal jurisdiction ordinarily 

falls on the plaintiff, in the context of Rule 4(k)(2) that 

general proposition would saddle the plaintiff with an 

extraordinary challenge in “proving a negative many 

times over,” that is, demonstrating that the defendant is 

not subject to jurisdiction in each of the fifty states. 

Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1413 

(Fed. Cir. 2009). We have therefore adopted a burdenshifting mechanism so that “if the defendant contends 

that he cannot be sued in the forum state and refuses to 

identify any other where suit is possible, then the federal 

court is entitled to use Rule 4(k)(2).” Id. at 1415 (quoting 

ISI Int’l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 

548, 551 (7th Cir. 2001)).

During the contempt proceedings, Cipla identified the 

Northern District of Illinois as an alternate forum for suit 

and claimed that if it had been sued there “in October 

2007 or 2008, Cipla would have agreed that there was 

personal jurisdiction.” Appellants contend that this 

proclamation necessarily divested the district court of 

personal jurisdiction and consequently rendered the 

default judgment void. In contrast, Merial maintains, 

and the district court held, that the proper inquiry when a 
BASF AGRO v. CIPLA LIMITED 16

defendant seeks to overturn a default judgment predicated on Rule 4(k)(2) by consenting to an alternate forum 

“is to determine whether the defaulted action could have 

been brought in that designated forum in the first place 

under that forum’s long-arm jurisdiction.” Contempt 

Order, 2011 WL 2489753, at *9. Finding that Illinois law 

would not have supported personal jurisdiction over Cipla 

in 2007 based on Cipla’s contacts with Illinois at that 

time, the district court held that Rule 4(k)(2)’s negation 

requirement had been satisfied notwithstanding Cipla’s 

post-judgment designation of an alternative forum. Id. 

We agree with the district court’s analysis and conclusion. 

The district court correctly concluded that Cipla’s ex

post consent to suit in the Northern District of Illinois was 

not independently sufficient to prevent it from exercising 

personal jurisdiction under Rule 4(k)(2). Discussing the 

negation requirement in Touchcom, we stated that a 

defendant can “avoid the application of [Rule 4(k)(2)] only 

when it designates a suitable forum in which the plaintiff 

could have brought suit.” 574 F.3d at 1415 (emphasis 

added). Contrary to Cipla’s contentions, a defendant 

cannot defeat Rule 4(k)(2) by simply naming another 

state; the defendant’s burden under the negation requirement entails identifying a forum where the plaintiff 

could have brought suit—a forum where jurisdiction 

would have been proper at the time of filing, regardless of 

consent. Consistent with that obligation, a defendant 

does not identify “a more appropriate state” by suggesting 

an alternative forum with no basis for personal jurisdiction but for its consent. Id. at 1414 (quoting ISI, 256 F.3d 

at 552) (emphasis added). Absent some independent basis 

for jurisdiction, neither forum is manifestly more appropriate than the other in such situations, and we see little 

reason to conclude that the defendant’s preference should 

prevail when choosing among districts of equivalent 
17 BASF AGRO v. CIPLA LIMITED

jurisdictional competence based on equal contacts—or 

lack thereof—with the defendant. 

In any event, we need not decide today the general 

requirements for a defendant to prevent the application of 

Rule 4(k)(2) by consenting to suit in another jurisdiction, 

for it suffices in this case to hold that a defendant, like 

Cipla, challenging a prior default judgment may not do so 

by naming another forum that would not have had an 

independent basis for jurisdiction at the time of the 

original complaint. As the district court recognized, the 

incentives for gamesmanship under a contrary rule would 

be particularly acute in such cases because the defaulting 

party could use a simple, unilateral statement of consent 

not only to achieve transfer into a forum it considers more 

convenient (or less convenient for its opponent), but also 

to undo an adverse final judgment for the chance to 

litigate from a clean slate. See Contempt Order, 2011 WL 

2489753, at *9 (“Allowing a defendant to avoid the consequences of a default after the fact simply by professing 

that it will now consent to jurisdiction if the default is 

lifted creates an opportunity for mischief and manipulation of the courts.”). In sum, the district court applied the 

correct standard in evaluating a default judgment premised on Rule 4(k)(2) by requiring Cipla to identify an 

alternative forum where Merial could have brought suit 

in 2007. 

In addition, we find no clear error in the district 

court’s application of the foregoing principles to the facts 

of this case. To support its claims that personal jurisdiction would have existed in Illinois, Cipla presented documents indicating that it had a relationship with an 

Illinois corporation dating to 2003, but that evidence 

contains only bare statements of expected collaboration 

and provides no details regarding the extent of any resulting contacts with Illinois by the time Merial filed suit. 
BASF AGRO v. CIPLA LIMITED 18

Cipla also submitted evidence suggesting that it made 

“over 86 shipments or sales of products” to companies in 

Illinois in the past three years. Br. Def.-Appellant Cipla 

at 32 (citing J.A. 2684–2808). But that evidence does not 

show that any such shipments arrived in Illinois before 

Merial filed suit in November 2007,5 nor does it provide 

any information on the revenue or sales generated by the 

listed shipments. After conducting a careful analysis of 

the Illinois long-arm statute, the district court concluded 

that the evidence of alleged contacts provided an insufficient basis to conclude that Cipla would have been subject 

to personal jurisdiction in the Northern District of Illinois 

for the claims asserted in the 2007 complaint. In view of 

the available evidence, that decision was not in error. 

C 

As a predicate to establishing personal jurisdiction, 

Rule 4(k)(2) also requires service of process or waiver of 

service, and Federal Rule of Civil Procedure 4(f) governs 

the requirements for serving a party in a foreign country. 

Rule 4(f)(1) indicates that a party may be served outside 

of the United States by “internationally agreed means . . . 

such as those authorized by the Hague Convention on the 

Service Abroad of Judicial and Extrajudicial Documents” 

(“the Hague Convention”). India became a signatory to 

the Hague Convention, effective August 1, 2007. In so 

doing, India prohibited service through channels including mail and private process servers and instead required 

foreign plaintiffs to effect service through the Central 

Authority of India. See Tuckerbrook Alt. Invs., LP v. 

Banerjee, 754 F. Supp. 2d 177, 181–82 (D. Mass. 2010). 

 5

 In its analysis, the district court nonetheless 

treated three of those shipments as having occurred 

“during the time frame surrounding the filing of the 

Complaint.” Contempt Order, 2011 WL 2489753, at *9. 
19 BASF AGRO v. CIPLA LIMITED

Appellants argue that exercising personal jurisdiction 

over Cipla pursuant to Rule 4(k)(2) would violate due 

process because Merial’s 2007 service in India was legally 

deficient. Appellants allege that when it filed the 2007 

complaint, Merial served Cipla in Mumbai via “courier 

and registered post” in an attempt to comply with Rule 

4(f)(2)(A), but Rule 4(f)(2) generally applies only “if there 

is no internationally agreed means” of service. Because 

Merial bypassed the Central Authority of India, Appellants assert that Merial’s service of process failed to meet 

mandatory standards under the Hague Convention and 

was therefore insufficient to support personal jurisdiction 

under Rule 4(k)(2). Accordingly, Appellants argue that 

the district court’s 2008 default order and injunction must 

be vacated as void for lack of personal jurisdiction. 

As Merial correctly notes, however, Appellants have 

raised the issue of insufficient service for the first time on 

appeal. As that contention surely could have been, but 

was not, presented in Cipla’s Rule 60(b)(4) motion or 

raised before the district court during the subsequent 

contempt proceedings, we deem that argument waived 

and need not consider it here. See SEC v. Internet Solutions for Bus. Inc., 509 F.3d 1161, 1167 (9th Cir. 2007). 

D 

In general, parties may satisfy federal pleading standards by alleging personal jurisdiction generally, without 

asserting a specific basis for the court’s personal jurisdiction over a defendant. 4 Wright, et al., supra, § 1067.6. 

Furthermore, our precedent holds that Rule 4(k)(2) can be 

considered even when the plaintiff has affirmatively pled 

a different basis for personal jurisdiction. See Touchcom, 

574 F.3d at 1410 (“The court did not examine whether 

Rule 4(k)(2) permitted the exercise of personal jurisdiction 

[because the plaintiff] did not allege that that rule permit-
BASF AGRO v. CIPLA LIMITED 20

ted the exercise of jurisdiction. However . . . we are 

entitled to consider it.”); see also ISI, 256 F.3d at 551 

(“Although the parties did not alert the district judge to 

Rule 4(k)(2) . . . . Federal courts are entitled to apply the 

right body of law, whether the parties name it or not.”). 

In the 2007 complaint, Merial alleged that the district 

court had “personal jurisdiction over CIPLA by virtue of 

its actions . . . within this State and judicial district, or its 

systematic and continuous contact with this State and 

judicial district,” J.A. 837, and that allegation stood 

uncontested until the contempt proceedings arose several 

years later. In the contempt proceedings, Cipla argued, 

and the district court concluded, that the available record 

did “not support a finding that Cipla had sufficient contacts with the state of Georgia for it to be subject to 

personal jurisdiction under the Georgia long-arm statute 

for the present action,” but the court agreed with Merial 

that it could evaluate whether its jurisdictional requirements had nonetheless been satisfied pursuant to Rule 

4(k)(2). Contempt Order, 2011 WL 2489753, at *8 n.9 

(citing Touchcom, 574 F.3d at 1415). Cipla argues that it 

was entitled to rely on the allegations evident from the 

face of Merial’s complaint. Since the 2007 complaint 

recited a defective basis for jurisdiction, Cipla argues that 

it rightly declined to answer in the interest of forgoing 

futile litigation and that Rule 4(k)(2) should be unavailable until the default judgment is vacated and Merial’s 

complaint is formally amended to provide Cipla with a 

full opportunity to respond on the merits. As explained 

below, we find those arguments unpersuasive. 

As Cipla notes, “[a] defendant is always free to ignore 

the judicial proceedings, risk a default judgment, and 

then challenge that judgment on jurisdictional grounds.” 

Ins. Corp. of Ir., Ltd. v. Compagnie des Bauxites de 

Guinee, 456 U.S. 694, 706 (1982). Upon receiving a com-
21 BASF AGRO v. CIPLA LIMITED

plaint, defendants are of course entitled to evaluate the 

circumstances and forge their own strategic decisions; the 

soundness of those decisions, however, is another matter. 

See Restatement (Second) of Judgments, § 65 cmt. b. 

(“When the person knew about the action but perceived 

that the court lacked . . . jurisdiction, he is given a right to 

ignore the proceeding at his own risk but to suffer no 

detriment if his assessment proves correct.”) (emphases 

added). Cipla essentially urges that, because the 2007 

complaint did not refer to Rule 4(k)(2), the possibility of 

jurisdiction arising under that rule did not factor into its 

decision not to appear, and the district court’s subsequent 

invocation of Rule 4(k)(2) as its basis for asserting personal jurisdiction constituted an unfair change in circumstances and therefore compels a return to square one in 

this litigation. 

But such claims of reliance and unfair surprise ring 

hollow where, as here, it is beyond dispute that Cipla had 

actual notice of suit and chose to risk a default judgment, 

based on its subjective assessment of the complaint6 and 

despite existing precedent indicating that Rule 4(k)(2) 

could apply whether or not it was raised by the parties. 

See ISI, 256 F.3d at 551. Regardless of the specific jurisdictional allegations in the 2007 complaint, Cipla should 

have apprehended that a Rule 4(k)(2) inquiry might arise, 

particularly as a foreign company believing itself to be 

outside the reach of the forum state’s long-arm statute. 

Furthermore, even though Cipla’s initial belief that the 

complaint recited an incorrect basis for jurisdiction was 

ultimately vindicated, that issue remained an open question at the time, and Cipla had the option of filing a pre-

 6

 See, e.g., Br. Def.-Appellant Cipla at 20 (“As Cipla 

knew when it received the complaint . . . Merial’s allegations of jurisdiction under the Georgia Long Arm statute 

were defective factually and as a matter of law . . . .”). 
BASF AGRO v. CIPLA LIMITED 22

answer motion under Rule 12(b)(2) to settle all issues of 

personal jurisdiction up front. Cipla instead chose to do 

nothing, and it must bear the consequences of that decision. 

Cipla attempts to distinguish Touchcom on the basis 

that we were not reviewing a default judgment in that 

case, so vacatur was not necessary there for the plaintiff 

to amend its complaint on remand. Those distinctions are 

unavailing. In Touchcom, the plaintiffs pursued a legal 

malpractice claim against a Canadian law firm for alleged 

errors in prosecuting a U.S. patent, alleging that the 

governing state long-arm statute conferred personal 

jurisdiction on the district court in view of the defendant’s 

contacts with the forum state. 574 F.3d at 1409–10. The 

district court dismissed for lack of personal jurisdiction 

because the plaintiffs had not pled sufficient facts to 

establish personal jurisdiction under state law. Id. at 

1409. Although we agreed with the district court’s analysis under state law, we nonetheless reversed and remanded on the basis that the district court could exert 

personal jurisdiction over the defendants pursuant to 

Rule 4(k)(2). Id. at 1411–12, 1418. Citing ISI, we held 

that Rule 4(k)(2) applied even though it had never been 

raised at any point prior to appeal, much less recited as a 

basis for jurisdiction in the plaintiffs’ original complaint. 

Id. at 1410–11. Nowhere was our remand decision conditioned on subsequent formal amendments to the complaint—indeed, the issue was not even mentioned—and 

we do not read Touchcom as being so limited. Contrary to 

Cipla’s contentions, the main distinction we see between 

the facts in Touchcom and the present dispute is that here 

Merial did raise Rule 4(k)(2) before the district court such 

that the parties were able to contest its application prior 

to appeal, which, if anything, favors Merial’s position. We 
23 BASF AGRO v. CIPLA LIMITED

therefore see no reason to distinguish Touchcom based on 

the facts of this case. 

The Eleventh Circuit considered the retroactive application of Rule 4(k)(2) following a default judgment in 

Oldfield v. Pueblo de Bahia Lora, S.A., 558 F.3d 1210 

(11th Cir. 2009). In that case, a U.S. plaintiff brought 

suit against a foreign corporation to recover for injuries he 

suffered at a resort operated by the defendant in Costa 

Rica. The plaintiff’s complaint alleged personal jurisdiction under the relevant state long-arm statute, and when 

the defendant did not appear, the district court entered a 

default judgment. Id. at 1215. The defendant later 

moved to set aside the default judgment for want of 

personal jurisdiction, and the plaintiff countered by 

raising Rule 4(k)(2) for the first time as an alternative 

basis for jurisdiction. Id. at 1216. Under circumstances 

thus very similar to the appeal before us, and without 

requiring amendment of the complaint, the Eleventh 

Circuit court performed a full Rule 4(k)(2) analysis. As 

Cipla points out, the court in Oldfield ultimately concluded that Rule 4(k)(2) did not support jurisdiction over 

the defendant. Id. at 1223–24; see Br. Def.-Appellant 

Cipla at 24–25. But that was because the substantive 

requirements of Rule 4(k)(2) had not been met, not because Rule 4(k)(2) had been omitted from the complaint. 

See Oldfield, 558 F.3d at 1223–24. As far as the propriety 

of considering Rule 4(k)(2) for the first time after a default 

judgment, Oldfield thus supports the district court’s 

approach in this case. 

Finally, we note that Cipla had a full opportunity to 

litigate over personal jurisdiction during the contempt 

proceedings, and, having lost on that issue, now insists 

that the default judgment must nonetheless be vacated 

because the basis for jurisdiction alleged in the 2007 

complaint differed from the basis ultimately relied upon 
BASF AGRO v. CIPLA LIMITED 24

by the district court. But the judgment’s legal viability is 

not keyed to the particular grounds for personal jurisdiction set out in the complaint. The important question is 

whether the district court ultimately had actual jurisdiction over the parties. Once it received notice of suit in 

2007, the choice was Cipla’s whether the jurisdictional 

question should be settled then or at some point postjudgment. With the benefit of hindsight, Cipla would 

understandably prefer to turn back the litigation clock to 

reconsider that choice, but the district court’s default 

judgment was premised on a valid exercise of personal 

jurisdiction under Rule 4(k)(2), and we therefore decline 

to upset its decision on that basis. 

II 

Appellants next dispute the district court’s decision to 

deny its request for a stay of the contempt proceedings 

pending resolution of the parallel Delaware action. The 

district court held that the “first-to-file” rule would not 

support a stay and, moreover, that the Delaware action 

was not in fact the first filed. Contempt Order, 2011 WL 

2489753, at *1 n.3. Appellants contend that the district 

court should have issued a stay because the Delaware 

action was filed before Merial instituted the contempt 

proceedings and because the Delaware action raised 

pivotal questions of validity and infringement that warranted a full trial and could have rendered the contempt 

proceedings moot. Appellants thus ask that we vacate the 

district court’s judgment and remand with instructions to 

stay further contempt proceedings pending a final determination on infringement and validity of the ’329 patent 

in the Delaware action. This we decline to do. 

The “first-to-file” rule is a doctrine of federal comity, 

intended to avoid conflicting decisions and promote judicial efficiency, that generally favors pursuing only the 
25 BASF AGRO v. CIPLA LIMITED

first-filed action when multiple lawsuits involving the 

same claims are filed in different jurisdictions. See generally Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937–

38 (Fed. Cir. 1993); Church of Scientology of Cal. v. U.S. 

Dep’t of the Army, 611 F.2d 738, 749–50 (9th Cir. 1979). 

The filing date of an action derives from the filing of the 

complaint. Fed. R. Civ. P. 3; Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 96 n.3 (9th Cir. 1982). Under the 

first-to-file rule, a district court may choose to stay, transfer, or dismiss a duplicative later-filed action, although 

there are exceptions and the rule is not rigidly or mechanically applied—“an ample degree of discretion, appropriate for disciplined and experienced judges, must be 

left to the lower courts.” Kerotest Mfg. Co. v. C-O-Two 

Fire Equip. Co., 342 U.S. 180,183–84 (1952). 

As an initial matter, we disagree with Appellants’ 

contention that the Delaware action antedates the matter 

now before us on appeal. Velcera filed its declaratory 

judgment complaint in Delaware on February 11, 2011, 

approximately six weeks before Merial moved on March 

28, 2011, to hold Cipla in contempt. But the date of 

Merial’s contempt motion is irrelevant in determining 

which action was filed first—what matters is the initiation of suit. Here, the contempt proceedings elaborated a 

preexisting case that originated with Merial’s initial 

infringement complaint against Cipla, filed in November 

2007. The district court thus correctly viewed the contempt proceedings as first filed. Furthermore, even if the 

Delaware action could be considered the first suit filed, 

the district court was well within its considerable discretion in concluding that principles of comity would not 

support a stay because the precise issues at stake differed 

between the proceedings, and a key party (Cipla) was 

absent from the Delaware action. See Contempt Order, 
BASF AGRO v. CIPLA LIMITED 26

2011 WL 2489753, at *1 n.3. We therefore affirm the 

denial of Velcera’s motion for stay. 

III 

Appellants next urge reversal on grounds that the district court’s analysis of PetArmor Plus failed to apply the 

correct standard for determining contempt based on a 

newly accused product. On review, and as described more 

fully below, we uphold the district court’s judgment. 

We have recently applied a modified analysis to contempt determinations in the context of alleged continuing 

infringement in violation of an injunction. Under TiVo, 

contempt requires proof that (1) the newly accused product is no more than colorably different from the previously 

adjudged infringing product, and (2) the newly accused 

product actually infringes the asserted patent. 646 F.3d 

at 882. The district court found that Merial satisfied both 

requirements as to PetArmor Plus in the contempt proceedings. Contempt Order, 2011 WL 2489753, at *11–12. 

Appellants attack both findings as founded on inadequate evidence and reliant on unsustainable assumptions 

derived from the 2008 default judgment against Cipla. At 

the outset, Velcera complains that—as a non-party to the 

original default proceedings—it never received a full and 

fair opportunity to litigate various issues including 

whether the ’329 patent is valid, whether Cipla’s Protektor Plus product infringed the ’329 patent, or whether 

Protektor Plus ever even existed. Those arguments are 

baseless. Velcera, as an unsolicited intervenor in this 

action, joined subject to all prior determinations of fact 

and law that preceded its intervention. Knowles v. Bd. of 

Pub. Instruction of Leon Cnty., 405 F.2d 1206, 1207 (5th 

Cir. 1969). Patent validity and infringement by an originally accused product are generally not open to challenge 

in contempt proceedings, Additive Controls II, 154 F.3d 
27 BASF AGRO v. CIPLA LIMITED

at 1350, and for purposes of this litigation, the 2008 

default judgment against Cipla established, among other 

things, that the ’329 patent was not invalid and was 

infringed by Cipla’s Protektor Plus product. In short, the 

time for contesting those underlying determinations has 

passed, and we will not consider them anew in this appeal. 

Appellants next argue that the district court could not 

competently evaluate whether colorable differences exist 

between PetArmor Plus and Protektor Plus because the 

default judgment allegedly offered no guidance on which 

specific features of Protektor Plus were focused on to 

establish infringement. In support of its position, Appellants rely on our statement in TiVo that “one should focus 

on those elements of the adjudged infringing products 

that the patentee previously contended, and proved, 

satisfy specific limitations of the asserted claims.” 646 

F.3d at 882. Again insisting that Merial never “proved” 

infringement by Protektor Plus, Appellants argue that the 

colorable differences analysis did not rest on affirmatively 

adjudged infringing features. 

We conclude that the district court applied the correct 

standards and committed no clear error in finding no 

more than colorable differences between PetArmor Plus 

and Protektor Plus. In contempt proceedings following a 

contested infringement action, as in TiVo, it will often be 

that the underlying infringement litigation focused detailed attention on a few heavily disputed claim limitations and certain corresponding elements of an infringing 

product, and the colorable differences analysis in such 

cases will benefit from that precision. But when, as here, 

infringement has been established through default, the 

judgment is no less binding or authoritative simply because comprehensive and painstaking factual analyses 

regarding every claim limitation may have been unneces-
BASF AGRO v. CIPLA LIMITED 28

sary or impractical at the time of the initial decision. As 

such, whether or not the default order here included an 

exhaustive infringement analysis, it necessarily and 

conclusively established that Protektor Plus met each 

limitation recited in the asserted claims of the ’329 patent. For example, claim 1 of the ’329 patent requires a 

spot-on pest control composition comprising (1) a synergistic effective amount of fipronil, (2) a synergistic effective amount of an IGR, and (3) at least one customary 

spot-on formulation adjuvant. ’329 patent col.10 ll.11–15. 

The evidence showed that Protektor Plus contained 9.7% 

fipronil, 11.8% methoprene, and at least one customary 

spot-on adjuvant—all of which Cipla admitted by default 

in 2008. Contempt Order, 2011 WL 2489753, at *6. By 

comparison, the district court found during the contempt 

proceedings that PetArmor Plus for cats contains 9.8% 

fipronil, 11.8% methoprene, and at least one customary 

spot-on adjuvant. Id. at *12. Furthermore, the court 

credited Merial’s expert testimony that any two spot-on 

adjuvants would function interchangeably and that 

replacing one for another in any such pest control composition would not amount to a colorable difference. Id. The 

district court thus had ample basis to conclude that 

PetArmor Plus and Protektor Plus are not more than 

colorably different. 

Appellants also fault the district court’s conclusion 

that PetArmor Plus infringes the ’329 patent. Appellants 

argue that the district court relied on inadequate evidence 

and erroneously compared PetArmor Plus to Merial’s 

Frontline Plus rather than the ’329 patent claims themselves. 

It is undisputed that Merial’s Frontline Plus product 

is covered by the ’329 patent’s claims, and, contrary to the 

Appellants’ contentions, “[o]ur case law does not contain a 

blanket prohibition against comparing the accused prod-
29 BASF AGRO v. CIPLA LIMITED

uct to a commercial embodiment” in an infringement 

analysis. Adams Respiratory Therapeutics, Inc. v. Perrigo 

Co., 616 F.3d 1283, 1288 (Fed. Cir. 2010). The district 

court thus elected to compare the accused product to 

Frontline Plus, and we see no error in that decision, 

particularly given its context in a summary contempt 

proceeding where such an approach would be especially 

convenient or expeditious and the benchmark commercial 

product represents a recognized embodiment of the patent 

at issue. On the merits, the district court considered 

undisputed evidence that PetArmor Plus contains precisely the same concentrations of fipronil and methoprene 

as Frontline Plus, and that those concentrations constitute synergistically effective amounts as recited in the 

claims. Indeed, Velcera not only represented to the EPA 

that PetArmor Plus is essentially identical to Frontline 

Plus, but also explicitly traded on the products’ equivalence. See, e.g., J.A. 6745, 6753–54 (PetArmor Plus packaging prominently stating “COMPARE TO FRONTLINE 

PLUS – same active ingredients,” and PetArmor Plus 

promotional materials emphasizing identity between the 

PetArmor Plus and Frontline Plus formulations). Further, Merial highlighted trial testimony in which Dennis 

Steadman, Velcera’s CEO, “readily admitted at the hearing that if the ’329 Patent is valid, then PetArmor Plus 

violates that Patent.” Contempt Order, 2011 WL 

2489753, at *12. That testimony was as follows: 

THE COURT: Mr. Steadman, let me just make 

sure I understand one thing you testified to. I 

understand that you made the conscious decision 

that PetArmor Plus you did not feel violated the 

’329 patent because you believed the ’329 patent 

was invalid. Correct? 

THE WITNESS: That’s correct. 
BASF AGRO v. CIPLA LIMITED 30

THE COURT: If—and I know you don’t agree with 

this. But if the ’329 patent were valid, then you 

would acknowledge that PetArmor Plus would infringe on that patent, if it were valid. 

THE WITNESS: If it were valid, that combination, I—yeah, I believe would. 

. . . . 

THE COURT: You’re betting the store on the invalidity of the ’329 patent. 

THE WITNESS: You betcha. 

J.A. 4903–06. One would be hard-pressed to conceive of 

more compelling testimonial evidence on infringement, 

particularly when those statements come from the defendant’s chief executive regarding his own product. In 

assessing whether PetArmor Plus infringes the ’329 

patent, the district court thus had before it considerable 

evidence indicating infringement, and we discern no error 

in its affirmative conclusion on the basis of that evidence. 

In view of the foregoing, the district court appropriately 

considered both prongs of the contempt analysis as required under TiVo, and its conclusions were not clearly 

erroneous. 

IV 

The Appellants’ next argument raises territoriality 

concerns with the district court’s contempt judgment, 

emphasizing that Cipla restricted its involvement in the 

PetArmor Plus venture to activities in India. After analyzing Cipla’s role in the development, manufacture, and 

distribution of PetArmor Plus, the district court nonetheless concluded that Cipla had contemptuously “caused an 

infringing product to be sold in the United States, in 

direct violation of the Court’s March 6, 2008 order.” 
31 BASF AGRO v. CIPLA LIMITED

Contempt Order, 2011 WL 2489753, at *13. According to 

Appellants, the district court thereby overextended U.S. 

law to penalize Cipla for conduct that occurred entirely 

overseas. We find no such extraterritorial infirmity in the 

judgment, as described more fully below. 

Appellants first advance the blanket proposition that 

domestic patent law does not, and was not intended to, 

reach past the territorial limits of the United States. 

According to Appellants, “decades of precedent” hold that 

extraterritorial conduct cannot constitute patent infringement under 35 U.S.C. § 271. Br. Def.-Appellant 

Velcera at 26–27 (citing Deepsouth Packing Co. v. Laitram 

Corp., 406 U.S. 518 (1972); Brown v. Duchesne, 60 U.S. 

183 (1856); Rotec Indus., Inc. v. Mitsubishi Corp., 215 

F.3d 1246 (Fed. Cir. 2000)); Br. Def.-Appellant Cipla at 

45–48 (same). Merial responds that foreign acts can 

violate U.S. patent law if, like Cipla’s, they induce acts of 

direct infringement within the United States. 

Although we recognize the fundamental territoriality 

of U.S. patent law, see Microsoft Corp. v. AT&T Corp., 550 

U.S. 437 (2007), Cipla’s alleged foreign conduct is not 

necessarily outside the scope of § 271. To be sure, purely 

extraterritorial conduct cannot constitute direct infringement of a U.S. patent, as § 271(a) includes express language limiting its scope to domestic acts: “[W]hoever 

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.” 35 

U.S.C. § 271(a) (2006) (emphases added). Consistent with 

this principle, all of the decisions cited by Appellants 

concerned claims for direct infringement and therefore 

required an infringing act within the United States. See

Deepsouth, 406 U.S. at 527 (“to secure the injunction it 

seeks, Laitram must show a § 271(a) direct infringement 
BASF AGRO v. CIPLA LIMITED 32

by Deepsouth in the United States”); Brown, 60 U.S. at 

193 (“The declaration . . . alleges that the defendant used 

[the invention] without his consent.”); Rotec, 215 F.3d at 

1251 (“According to Rotec, Defendants violated § 271(a) 

when they ‘offered to sell’ the invention . . . .”). While 

those decisions thus support the proposition that § 271(a) 

direct infringement claims require domestic infringing 

acts, § 271(a) is not the only provision of § 271. In particular, § 271(b), which defines infringement by inducement, contains no such territorial proscription. See 35 

U.S.C. § 271(b) (“Whoever actively induces infringement 

of a patent shall be liable as an infringer.”). Section 

271(b) therefore does not, on its face, foreclose liability for 

extraterritorial acts that actively induce an act of direct 

infringement that occurs within the United States, and 

Appellants cite no authority to that effect. We therefore 

decline to read the statute as being so limited. 

In short, where a foreign party, with the requisite 

knowledge and intent, employs extraterritorial means to 

actively induce acts of direct infringement that occur 

within the United States, such conduct is not categorically 

exempt from redress under § 271(b). Cf. DSU Med. Corp. 

v. JMS Co., 471 F.3d 1293, 1305–06 (Fed. Cir. 2006) (en 

banc in relevant part) (approving of a jury instruction 

that read, in part: “Unlike direct infringement, which 

must take place in the United States, induced infringement does not require any activity by the indirect infringer in this country, so long as the direct infringement 

occurs here.”). We therefore reject the Appellants’ overbroad contention that acts outside of the United States 

cannot violate any provision of § 271. 

Appellants next argue that, even if foreign activities 

can give rise to liability in some circumstances, our decision in International Rectifier Corp. v. Samsung Electronics Co., 361 F.3d 1355 (Fed. Cir. 2004), prohibits a 
33 BASF AGRO v. CIPLA LIMITED

contempt finding in this case. More specifically, Appellants argue that their layered contractual arrangements 

and elaborate distribution chain—by which they sought to 

insulate themselves from one another through foreign, 

allegedly independent intermediaries—mirror those that 

on their facts precluded a contempt judgment in International Rectifier. 

Appellants’ reliance on International Rectifier is misplaced. In International Rectifier, the district court had 

enjoined a foreign manufacturer from “making, using, 

offering for sale or selling in or importing into the United 

States” a patented computer component. 361 F.3d at 

1360. The enjoined foreign manufacturer then contracted 

with a German company to make, sell, and deliver unfinished versions of the patented component outside of the 

United States, after which the German company finished 

and packaged the patented components for sale to its 

customers around the world, including in the United 

States. Id. at 1358. Although the district court held the 

manufacturer in contempt for violating the injunction, we 

reversed, holding that the manufacturer’s extraterritorial 

conduct had not violated the injunction and that there 

was no basis for attributing the German company’s independent actions to the manufacturer. Id. at 1360–62. 

But our decision in International Rectifier turned on the 

specific terms of the injunction there at issue, which 

“track[ed] section 271(a) of the Patent Act” and therefore 

prohibited only direct infringement and could not reach 

extraterritorial activities. Id. at 1360. In contrast, Cipla’s current overseas activities are not necessarily outside of the broader injunction now before us, which 

prohibits not only direct infringement, but also “any act 

that . . . causes or induces infringement” of the ’329 patent. Contempt Order, 2011 WL 2489753, at *12. And, 

unlike in International Rectifier, it is therefore unneces-
BASF AGRO v. CIPLA LIMITED 34

sary to establish whether Cipla exerted control over the 

allegedly independent actions of Omnipharm and/or 

QEDetal, for Cipla’s own extraterritorial conduct can 

violate the present injunction as indirectly infringing 

pursuant to § 271(b). International Rectifier therefore 

does not preclude a finding of contempt in this case. 

Finally, Cipla contends that the district court’s contempt order lacks any findings on or meaningful discussion of indirect infringement and argues that the district 

court applied an inadequate inducement analysis. According to Cipla, the district court’s conclusion that Cipla 

“caused” Velcera’s infringement cannot be sustained as a 

basis for contempt because it falls short of sufficient 

factual findings and misstates the correct legal standard 

on inducement. We disagree. 

Regardless of the precise language used to frame the 

issue, the substance of the district court’s analysis is 

clear—Cipla violated the injunction because, at a minimum, its involvement in the PetArmor Plus venture 

induced infringement of the ’329 patent. To support a 

finding of inducement under § 271(b), the accused infringer must have knowingly and intentionally induced 

another party’s direct infringement. Global-Tech Appliances, Inc. v. SEB, S.A., 563 U.S. __, 131 S.Ct. 2060, 2068 

(2011); DSU, 471 F.3d at 1306. Here, the district court 

explicitly found that (1) PetArmor Plus infringes the ’329 

patent; (2) Velcera sold PetArmor Plus in the United 

States; (3) Cipla and Velcera were aware of the ’329 

patent and the 2008 injunction; (4) Cipla played fundamental roles in manufacturing, packaging, and assisting 

in the development of the PetArmor Plus product for 

Velcera to sell in the United States; (5) Cipla knew that 

PetArmor Plus was to be sold in the United States; and 

(6) Cipla knew and intended that such sales would infringe the ’329 patent. Those findings bear directly on the 
35 BASF AGRO v. CIPLA LIMITED

question of inducement, and they are not clearly erroneous. 

Nor can we say that those findings are inadequate to 

support a finding of inducement or that the district court 

erred in its ultimate conclusion that Cipla “caused an 

infringing product to be sold in the United States” in 

direct violation of the injunction. Contempt Order, 2011 

WL 2489753, at *13. Although Cipla complains that the 

district court’s use of the term “caused” signals the application of an incorrect standard for inducement, the contempt order simply reflects the language of the injunction 

itself, which is central to the contempt analysis and uses 

the terms “cause” and “induce” interchangeably to describe prohibited indirectly infringing conduct.7 Accordingly, we understand the district court’s conclusion that 

“Cipla caused an infringing product to be sold in the 

United States, in direct violation of the Court’s March 6, 

2008 Order,” id., to mean that Cipla violated the injunction’s prohibition against any act that induces infringement of the ’329 patent. We affirm it as such. 

 7

 By its terms, the 2008 injunction proscribed both 

direct infringement and inducement, banning Cipla from 

“committing any act that infringes or causes or induces

infringement of any claim of the ’940 or ’329 patents.” 

Contempt Order, 2011 WL 2489753, at *2 (emphases 

added). Regarding the latter, the terms “induces” and 

“causes” are introduced in the alternative, while “causing” 

predominates throughout the remainder of the injunction 

as prohibited directly and indirectly infringing acts are 

alternately enumerated, for example, “using, causing to 

be used, selling, causing to be sold, offering for sale, and 

causing to be offered for sale . . . importing and causing to 

be imported.” Id. (emphases added). 
BASF AGRO v. CIPLA LIMITED 36

V 

Velcera next contends that even if Cipla’s conduct violated the 2008 injunction, the district court committed 

independent error by also finding Velcera—a non-party to 

the 2008 default judgment—in contempt for working in 

“active concert or participation” with Cipla to violate the 

2008 injunction. We disagree. 

It is well recognized that courts may not enter injunctions against persons or entities that were not party to 

the litigation before them. A soundly issued injunction 

can, however, affect such non-parties in at least two 

important respects—those who are legally identified with 

an enjoined party may be bound as if they themselves 

were named in the injunction, and those who act in concert with an enjoined party to assist in violating the 

injunction may also be held in contempt. Fed. R. Civ. P. 

65(d); Additive Controls & Measurement Sys., Inc. v. 

Flowdata, Inc., 96 F.3d 1390, 1394–95 (Fed. Cir. 1996) 

(“Additive Controls I”). For the latter “active concert” 

form of liability, a non-party to an injunction may not be 

held in contempt for its wholly independent conduct; the 

law limits contempt liability to non-parties that “act with 

an enjoined party to bring about a result forbidden by the 

injunction . . . if they are aware of the injunction and 

know that their acts violate the injunction.” Additive 

Controls II, 154 F.3d at 1353. 

Velcera posits that the district court erred by failing 

to separately analyze its individual actions under the 

aiding and abetting standard, calling repeated attention 

to what it calls the “bona fide legal and business relationships” that separated Velcera from Cipla in the development, production, and sale of PetArmor Plus. Under a 

proper analysis, according to Velcera, its “arms-length” 

business relationship and lack of a direct contractual 
37 BASF AGRO v. CIPLA LIMITED

relationship with Cipla evince independent activity undertaken for purposes other than assisting Cipla in efforts 

to violate the injunction. 

In determining that Velcera acted in concert with Cipla, the district court relied in part on Velcera’s admissions that by the time of its infringing acts it was aware of 

the ’329 patent, knew PetArmor Plus would infringe the 

’329 patent (apart from its subjective belief that the ’329 

patent was invalid), and had notice of the 2008 injunction 

against Cipla. There is thus little room to dispute that, as 

it cooperated with and relied on Cipla in its efforts to 

bring PetArmor Plus to market, Velcera was aware of the 

existing injunction and understood that acting in concert 

with Cipla to market an infringing product (like PetArmor Plus) would violate the injunction. As to whether 

Velcera in fact worked in active concert with Cipla with 

the common aim of evading the injunction, Velcera attempts to couch its complaints in terms of legal error—

that the district court ignored its independent, armslength arrangements with Cipla—but its argument in 

reality boils down to disagreement with the factual conclusions the district court drew from those relationships. 

The district court clearly contemplated the structure of 

Velcera’s interactions with Cipla—it heard extensive 

testimony from Velcera’s CEO detailing the relationships, 

roles, and specific contractual agreements among the 

various players in the PetArmor Plus venture, and the 

court recounted those arrangements in the contempt 

order. The district court thus appreciated and accepted 

Velcera’s account regarding the formal legal and business 

relationships behind PetArmor Plus; its view simply 

diverged from Velcera’s narrative as to the true nature of 

those relationships: “Clever lawyers cannot shield the 

true substance of the contumacious conduct, no matter 

how many different entities attempt to launder Cipla’s 
BASF AGRO v. CIPLA LIMITED 38

fingerprints off the product.” Contempt Order, 2011 WL 

2489753, at *6. 

Our task on appeal is not to determine whether that 

factual conclusion was correct, but rather whether it was 

clearly erroneous. Additive Controls II, 154 F.3d at 1351 

(“We review . . . factual findings in contempt proceedings 

for clear error.”). Conclusive documentary evidence on 

issues rooted in subjective intent is not always readily 

apparent, but here the district court considered the complex, multilayered relationships that linked Velcera and 

Cipla in the production of PetArmor Plus. In view of both 

parties’ admitted knowledge of the injunction and their 

obvious incentives to evade it, the district court interpreted those relationships as designed primarily to obfuscate illicit and intentional concerted action rather than as 

bona fide, constructive business arrangements. Having 

reviewed the same record, we do not view that conclusion 

as clearly erroneous, and Velcera’s arguments and selfserving testimonial evidence to the contrary are insufficient to persuade us otherwise. Accordingly, we affirm 

the district court’s decision to hold Velcera in contempt as 

a non-party working in active concert with Cipla to violate 

the 2008 injunction. 

VI 

Finally, Appellants argue that even if they violated 

the district court’s 2008 injunction by bringing PetArmor 

Plus to market in the United States, it was nevertheless 

inappropriate to permanently enjoin sales of PetArmor 

Plus in the contempt judgment because, inter alia, the 

balance of hardships allegedly weighs in their favor and 

Merial allegedly failed to establish irreparable injury. See

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 390 

(2006). 
39 BASF AGRO v. CIPLA LIMITED

On the balance of hardships, Velcera contends that 

the district court ignored its small size relative to Merial, 

which, if properly considered, would tip the balance of 

hardships in its favor. While an injunction would have a 

crippling effect on its business, Velcera suggests that 

continued infringing sales of PetArmor Plus “would not 

seriously threaten Merial’s future.” The district court, 

however, expressly considered and ultimately discounted 

that argument,8 as was properly within its discretion. As 

we have noted, “[o]ne who elects to build a business on a 

product found to infringe cannot be heard to complain if 

an injunction against continuing infringement destroys 

the business so elected.” Broadcom Corp. v. Qualcomm 

Inc., 543 F.3d 683, 704 (Fed. Cir. 2008); see also Polaroid 

Corp. v. Eastman Kodak Co., No. 76-1634-Z 1985, U.S. 

Dist. LEXIS 15003, at *6, 9 (D. Mass. Oct. 11, 1985) (“To 

the extent that Kodak has purchased that success at 

Polaroid’s expense, it has taken a ‘calculated risk’ that it 

might infringe existing patents. . . . Public policy favors 

the innovator, not the copier.”). As to irreparable harm, 

the district court concluded that the introduction of PetArmor Plus as a generic competitor to Frontline Plus 

would result in considerable lost market share and price 

erosion, thus favoring the entry of a permanent injunction. That does not amount to clear error, particularly in 

view of evidence that Velcera’s marketing strategy was 

geared specifically to target Frontline Plus by touting 

PetArmor Plus as a cheaper but otherwise equal alternative. We therefore decline to disturb the district court’s 

 8

 See Contempt Order, 2011 WL 2489753, at *15 

(“In this case, the law requires the Court to issue a ruling 

with potentially devastating consequences for Velcera. To 

fail to follow the law, however, and favor Velcera because 

of personal sympathy toward the plight of a fledgling 

company, would be exponentially more tragic.”). 
BASF AGRO v. CIPLA LIMITED 40

injunction against the further infringing distribution of 

PetArmor Plus. 

CONCLUSION

In sum, we conclude that (1) the 2008 default judgment against Cipla rested on a valid exercise of personal 

jurisdiction; (2) the district court did not abuse its discretion by declining to stay the contempt proceedings in view 

of the then-pending Delaware action; (3) the district court 

did not clearly err in determining that PetArmor Plus 

infringes the ’329 patent and is not more than colorably 

different from Cipla’s previously enjoined Protektor Plus 

product; (4) Cipla’s extraterritorial role in the development, production, and ultimate U.S. sale of PetArmor 

Plus violated the district court’s injunction against induced infringement of the ’329 patent; (5) Velcera’s actions bringing PetArmor Plus to market in concert with 

Cipla qualified as contemptuous conduct despite its status 

as a non-party to the 2008 default judgment; and (6) the 

district court did not abuse its discretion in prohibiting 

further sales of PetArmor Plus. We have considered each 

of the remaining arguments advanced by the Appellants 

and find them to be without merit. Because we find no 

reversible error in our review of the contempt proceedings, we affirm the judgment of the district court. 

AFFIRMED 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MERIAL LIMITED AND MERIAL SAS, 

Plaintiffs-Appellees, 

and 

BASF AGRO B.V., 

Plaintiff, 

v. 

CIPLA LIMITED, 

Defendant-Appellant, 

and 

VELCERA, INC. AND FIDOPHARM, INC., 

Defendants-Appellants, 

and 

ARCHIPELAGO SUPPLIERS, ARROWTARGET 

ENTERPRISES LTD., 

GENERIC PETMEDS, INHOUSE DRUGSTORE, 

LISA PERKO, 

PETCARE PHARMACY, AND PETMEDS R US, 

Defendants. 

__________________________ 

2011-1471, -1472 

__________________________ 

Appeals from the United States District Court for the 

Middle District of Georgia in Case No. 07-CV-0125, Judge 

Clay D. Land. 
BASF AGRO v. CIPLA LIMITED 2

__________________________ 

SCHALL, Circuit Judge, dissenting. 

Because I believe that the United States District 

Court for the Middle District of Georgia erred in not 

allowing Cipla Limited (“Cipla”) to designate the Northern District of Illinois as a substitute forum for suit 

against it, I respectfully dissent from the decision of the 

majority affirming the district court’s exercise of personal 

jurisdiction over Cipla. I would reverse the decision of the 

court and would vacate the contempt order and underlying default judgment against Cipla. I also would vacate 

the injunction against Cipla, Velcera, Inc. (“Velcera”), and 

Fidopharm, Inc. (“Fidopharm”). Finally, I would remand 

to the district court with the instruction that it transfer 

the case to the United States District Court for the Northern District of Illinois. 

I.

In the district court, Cipla responded to Merial Limited’s and Merial SAS’s (collectively, “Merial”) motion for 

contempt by moving to vacate the 2008 default judgment 

against it. In its motion, Cipla argued that the judgment 

was void because, when it was entered, Cipla was not 

subject to the personal jurisdiction of the court. In response to the motion, Merial alleged, for the first time, 

Rule 4(k)(2) as an alternate basis for jurisdiction. In 

ruling on Cipla’s motion, although the district court 

determined that, in 2008, Cipla had not been subject to 

personal jurisdiction under Georgia’s long-arm statute, it 

determined that Cipla had been subject to personal jurisdiction under Rule 4(k)(2). Contempt Order, 2011 WL 

2489753, at *9. 

The district court first noted that, when Cipla was 

sued in 2007, it did not designate a substitute forum in 
3 BASF AGRO v. CIPLA LIMITED

which the action could be brought, and that it was not 

until Cipla filed its reply in response to Merial’s opposition to its motion to vacate the default judgment that it 

designated Illinois as a substitute forum. Id. at *8. 

Under these circumstances, the court stated, it was not 

enough that Cipla now consented to personal jurisdiction 

in Illinois. Rather, it was necessary to determine whether 

suit could have been brought in Illinois in 2007: 

The Court finds that Cipla’s “after the fact” willingness to consent to jurisdiction in Illinois so that 

it may vacate a previously entered default judgment is not sufficient to support a finding that it 

could have been sued in another state and thus 

avoid Rule 4(k)(2) jurisdiction. Instead the Court 

finds that Rule 4(k)(2) requires a determination of 

whether an Illinois court could have exercised 

personal jurisdiction over Cipla at the time the 

Complaint in this action was filed absent consent 

to jurisdiction by Cipla. 

Id. at *9. See also id. (“The Court finds that the proper 

inquiry in a case where a defendant seeks to avoid a 

default judgment due to lack of personal jurisdiction by 

designating a forum where it is subject to jurisdiction 

pursuant to Rule 4(k)(2) is to determine whether the 

defaulted action could have been brought in that designated forum in the first place under that forum’s long-arm 

jurisdiction.”). Examining what it understood to be the 

state of Cipla’s contacts with Illinois in 2007, the court 

concluded that Merial had carried its burden “of demonstrating that Cipla would not have been subject to personal jurisdiction in . . . 2007 in Illinois under Illinois 

law.” Id. Accordingly, the court found that Cipla “was 

not subject to any state’s courts of general jurisdiction 

under Rule 4(k)(2).” 
BASF AGRO v. CIPLA LIMITED 4

II. 

In affirming the decision of the district court, the majority observes that it “need not decide . . . the general 

requirements for a defendant to prevent the application of 

Rule 4(k)(2) by consenting to suit in another jurisdiction . . . .” Maj. op. at 15. The majority states that “it 

suffices in this case to hold that a defendant, like Cipla, 

challenging a prior default judgment may not do so by 

naming another forum that would not have had an independent basis for jurisdiction at the time of the original 

complaint.” Id. Starting from that premise, the majority 

agrees with the district court that, Cipla’s consent notwithstanding, it was necessary to determine whether, in 

2007, personal jurisdiction over Cipla existed under the 

Illinois long-arm statute, and the majority finds no error 

in the district court’s analysis under that statute. Maj. 

op. at 16-17. Significantly, the majority rejects Cipla’s 

argument that it was entitled to rely on the allegations in 

Merial’s 2007 complaint, which did not mention Rule 

4(k)(2) as a basis for personal jurisdiction, but, instead, 

recited jurisdiction based solely upon Georgia’s long-arm 

statute. Complaint at ¶14, Merial Ltd. v. Cipla Ltd., No. 

3:07-CV-125 (CDL) (M.D. Ga. Nov. 13, 2007). The majority reasons that 

[r]egardless of the specific allegations in the 2007 

complaint, Cipla should have apprehended that a 

Rule 4(k)(2) inquiry might arise, particularly as a 

foreign company believing itself to be outside the 

reach of the forum state’s long-arm statute. Furthermore, even though Cipla’s initial belief that 

the complaint recited an incorrect basis for jurisdiction was ultimately vindicated, that issue remained an open question at the time, and Cipla 

had the option of filing a pre-answer motion under 

Rule 12(b)(2) to settle all issues of personal juris-
5 BASF AGRO v. CIPLA LIMITED

diction up front. Cipla instead chose to do nothing, and it must bear the consequences of that decision. 

Maj. op. at 20. 

III. 

I am dissenting because, in my view, the majority affirms a decision of the district court which rests upon two 

fundamental errors. As I explain below, I believe that the 

district court erred in holding that Cipla could not designate Illinois as a substitute forum because it had failed to 

do so in 2007. I also believe that the district court erred 

in requiring a determination that the 2007 action could 

have been brought in Illinois in the first place under the 

Illinois long-arm statute. 

A. 

Turning to the first point, I begin with the principle, 

which the majority recognizes, that “[a] defendant is 

always free to ignore the judicial proceedings, risk a 

default judgment, and then challenge that judgment on 

jurisdictional grounds in a collateral proceeding.” Ins. 

Corp of Ireland, Ltd. v. Compagnie des Bauxites de 

Guinee, 456 U.S. 694, 706, 102 S. Ct. 2099, 2106, 72 L. Ed. 

2d 492, 504 (1982). See Baragona v. Kuwait Gulf Link 

Transp. Co., 594 F.3d 852, 854-55 (11th Cir. 2010) (holding that defendants had not waived personal jurisdiction 

defense to default judgment despite allegations of defendants’ “’lawyerly gamesmanship’ in ignoring valid service, 

retaining counsel in the United States, [and] monitoring 

court proceedings”); Oldfield v. Pueblo De Bahlia Lora, 

S.A., 558 F.3d 1210 (11th Cir. 2009) (vacating default 

judgment because of lack of personal jurisdiction); Jackson v. FIE Corp., 302 F.3d 515, 523 (5th Cir. 2002) (“[A] 

party’s right to object to personal jurisdiction is waived 
BASF AGRO v. CIPLA LIMITED 6

under Rule 12(h) [of the Federal Rules of Civil Procedure] 

if such party fails to assert that objection in his first 

pleading or general appearance. But a party’s right to 

contest personal jurisdiction is not waived by his failure 

to appear at all.”) (footnote omitted); Foster v. Arletty 3 

Sarl, 278 F.3d 409, 413 (4th Cir. 2002) (citing Ins. Corp. of 

Ireland, Ltd.); Practical Concepts, Inc. v. Republic of 

Bolivia, 811 F.2d 1543, 1547 (D.C. Cir. 1987) (“When [a] 

person [named as a defendant] kn[o]w[s] about the action 

but perceive[s] that the court lack[s] territorial or subject 

matter jurisdiction, he is given a right to ignore the 

proceeding at his own risk but to suffer no detriment if his 

assessment proves correct.”) (quoting Restatement (Second) of Judgments § 65, cmt. b (1982)). 

In my view, for the following reasons, this principle 

applies with particular force in this case: (1) Merial at all 

times had the burden of making out a prima facie case of 

personal jurisdiction over Cipla. See Touchcom, Inc. v. 

Bereskin & Parr, 574 F.3d 1403, 1410 (Fed. Cir. 2009) 

(holding that in the absence of an evidentiary hearing, 

plaintiff must make a prima facie showing of personal 

jurisdiction); Stubbs v. Wyndham Nassau Resort & Crystal Palace Casino, 447 F.3d 1357, 1360 (11th Cir. 2006) 

(Plaintiff “has the burden of establishing a prima facie 

case of personal jurisdiction.) (citing Meier ex. rel. Meier v. 

Sun Int’l Hotels, Ltd., 288 F.3d 1264, 1268-69 (11th Cir. 

2002)); RAR, Inc. v. Turner Diesel, Ltd., 107 F.3d 1272, 

1276 (7th Cir. 1997) (“The plaintiff, moreover, has the 

burden of demonstrating the existence of personal jurisdiction.); (2) jurisdiction over Cipla under Georgia’s longarm statute was the sole basis for personal jurisdiction 

asserted by Merial in its 2007 complaint; (3) it has been 

determined – and Merial has not challenged the determination – that personal jurisdiction over Cipla did not lie 

under Georgia’s long-arm statute, which, again, was the 
7 BASF AGRO v. CIPLA LIMITED

sole basis asserted in the 2007 complaint; and (4) it was 

not until Merial filed its response to Cipla’s motion to 

vacate that Merial invoked Rule 4(k)(2), at which point 

Cipla promptly designated Illinois as a substitute forum. 

See Oldfield, 558 F.3d at 1218 n.22 (implicitly recognizing 

that, even after a default judgment, an alternative forum 

may be identified). I thus believe that the district court 

erred in penalizing Cipla for not designating Illinois as a 

substitute forum prior to the time Rule 4(k)(2) was first 

asserted by Merial. Put most simply, I believe that because Merial had the burden of establishing personal 

jurisdiction and because Cipla was entitled to ignore what 

it viewed as a defective basis for such jurisdiction stated 

in the 2007 complaint, it was error not to allow Cipla to 

designate a substitute forum the first time Rule 4(k)(2) 

was asserted as the ground for personal jurisdiction over 

it. 

The district court criticized Cipla – and the majority 

joins in that criticism – for not having sought to consent 

to jurisdiction in the Northern District of Illinois when it 

was sued in 2007. Thus, the district court looked askance 

at what it characterized as “Cipla’s ‘after the fact’ willingness to consent to jurisdiction in Illinois so that it may 

vacate a previously entered default judgment.” Contempt 

Order, 2011 WL 2489753, at *9. For its part, as noted 

above, the majority states that “Cipla should have apprehended that Rule 4(k)(2) might arise” and that Cipla “had 

the option of filing a pre-answer motion under Rule 

12(b)(2) to settle all issues of personal jurisdiction.” Maj. 

Op. at 20. Finally, the majority points to Touchcom, 574 

F.3d at 1415, and states that, in that case, “we held that 

Rule 4(k)(2) applied even though it had never been raised 

at any point prior to appeal, much less recited as a basis 

for jurisdiction in the plaintiffs’ original complaint.” Maj. 

op. at 21. 
BASF AGRO v. CIPLA LIMITED 8

The difficulty I have with both the district court’s and 

the majority’s position is that, I believe, both positions 

ignore what was said in Ins. Corp. of Ireland, Ltd.: “A 

defendant is always free to ignore the judicial proceedings, risk a default judgment, and then challenge that 

judgment on jurisdictional grounds in a collateral proceeding.” 456 U.S. at 706, 102 S. Ct. at 2106, 72 L. Ed. 2d 

at 504. That is precisely what Cipla did here. In other 

words, both the district court and the majority are critical 

of Cipla for following a course of action which the Supreme Court has expressly stated was available to it. In 

my view, this is incorrect. 

I also do not agree with the majority’s view that “Cipla should have apprehended that Rule 4(k)(2) might 

arise,” which, I think, ignores the allegations in the 2007 

complaint. In that complaint, Merial alleged that the 

defendants had contacts with Georgia sufficient to support personal jurisdiction under Rule 4(k)(1) by virtue of 

their sales to the state of Georgia.1 These factual allegations precluded the assertion of personal jurisdiction 

under Rule 4(k)(2), which requires that “the defendant is 

not subject to jurisdiction in any state’s courts of general 

jurisdiction.” F.R.C.P. 4(k)(2)(A). I do not believe Cipla 

should have been on notice of the application of Rule 

4(k)(2) when the allegations in the complaint precluded 

the application of Rule 4(k)(2). 

At the same time, I am not persuaded by the majority’s reliance on Rule 12(b)(2) and its citation to Touchcom. It is true that Rule 12(b)(2) states that a party “may 

assert” by motion the defense of lack of personal jurisdic-

 1

 Notably, in 2007, Merial elected not to plead the 

application of Rule 4(k)(2) in the alternative, as specifically contemplated by this Court in Touchcom. 574 F.3d 

at 1415. 
9 BASF AGRO v. CIPLA LIMITED

tion. The critical words are “may assert,” however. The 

rule is not mandatory. As discussed, Cipla had the option, which it pursued, of ignoring the 2007 suit in Georgia and later challenging any default judgment in a 

collateral proceeding. As far as Touchcom is concerned, I 

have no quarrel with the majority’s reading of the case 

insofar as it indicates that Rule 4(k)(2) may apply 

whether or not it is raised by the parties. But that is not 

the issue here. I see no error in the district court having 

allowed Merial to assert Rule 4(k)(2) for the first time in 

the contempt proceeding. The error I see was not allowing Cipla, in the face of that assertion, to designate a 

substitute forum. 

B. 

As noted above, the district court stated that “Rule 

4(k)(2) requires a determination of whether an Illinois 

court could have exercised personal jurisdiction over Cipla 

at the time the Complaint in this action was filed absent 

consent to jurisdiction by Cipla.” Contempt Order, 2011 

WL 2489753, at *9. The majority agrees with the district 

court; it states: 

Contrary to Cipla’s contentions, a defendant cannot defeat Rule 4(k)(2) by simply naming another 

state; the defendant’s burden under the negation 

requirement entails identifying a forum where the 

plaintiff could have brought suit – a forum where 

jurisdiction would have been proper at the time of 

filing, regardless of consent. Consistent with that 

obligation, a defendant does not identify “a more 

appropriate state” by suggesting an alternative 

form with no basis for personal jurisdiction but its 

consent. 

Maj. op. at 15. Thus, both the district court and the majority take the position that, Cipla’s consent to jurisdiction in 
BASF AGRO v. CIPLA LIMITED 10

Illinois notwithstanding, it was necessary to determine 

that suit could have been brought in Illinois in the first 

place under its long-arm statute. I do not believe that the 

law supports this requirement. 

In Touchcom, we stated that “a court is entitled to use 

Rule 4(k)(2) to determine whether it possesses personal 

jurisdiction over the defendant unless the defendant 

names a state in which the suit can proceed.” 574 F.3d at 

1414. We then proceeded to adopt the approach set forth 

by the Seventh Circuit in ISI International, Inc. v. Borden 

Ladner Gervais LLP, 256 F.3d 548, 551-52 (7th Cir. 2001). 

There, the court stated: 

A defendant who wants to preclude the use of 

Rule 4(k)(2) has only to name some other state in 

which the suit could proceed. Naming a more appropriate state would amount to a consent to personal jurisdiction there (personal jurisdiction 

unlike federal subject-matter jurisdiction is waivable). If, however, the defendant contends that he 

cannot be sued in the forum state and refuses to 

identify any other where suit is possible, then the 

federal court is entitled to use Rule 4(k)(2). 

256 F.3d at 552 (citations omitted). See Touchcom, 574 

F.3d at 1415 (“We conclude that the approach articulated 

by the Seventh Circuit is . . . in tune with the purposes 

behind the enactment of Rule 4(k)(2).”). See also Bradford 

Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1272 (Fed. 

Cir. 2010) (citing Touchcom and stating that the Federal 

Circuit has “adopted the Seventh Circuit’s approach that 

allows a district court to use Rule 4(k)(2) whenever a 

foreign defendant contends that he cannot be sued in the 

forum state and refuses to identify any other state where 

suit is possible.” (emphasis added). 
11 BASF AGRO v. CIPLA LIMITED

The reason I disagree with the district court and the 

majority is that I am unable to identify any support for 

imposing the requirement that, before a party in Cipla’s 

situation may consent to personal jurisdiction in a substitute forum, it must be demonstrated that suit could have 

been brought in that forum in the first place absent the 

party’s consent. That such support is lacking is not, I 

think, surprising. In Ins. Corp. of Ireland, Ltd., the 

Supreme Court discussed the difference between subjectmatter jurisdiction and personal jurisdiction. After noting 

that subject-matter jurisdiction is an Article III requirement and “functions as a restriction on federal power and 

contributes to the characterization of the sovereign[,]” the 

Court stated that “no action of the parties can confer 

subject-matter jurisdiction upon a federal court. Thus, 

the consent of the parties is irrelevant.” 456 U.S. at 702, 

102 S. Ct. at 2104, 72 L. Ed. 2d at 500-01. On the other 

hand, the Court stated, “[t]he requirement that a court 

have personal jurisdiction flows not from [Article III] but 

from the Due Process Clause. The personal jurisdiction 

requirement recognizes and protects an individual liberty 

interest. It represents a restriction on judicial power not 

as a matter of sovereignty, but as a matter of individual 

liberty.” Id., 102 S. Ct. at 2104, 72 L. Ed. 2d at 501 (footnote omitted). The Court concluded that “[b]ecause the 

requirement of personal jurisdiction represents first of all 

an individual right, it can, like other such rights, be 

waived.” Id. at 703, 102 S. Ct. at 2105, 72 L. Ed. 2d at 

502. Notably, after making this statement, the Court 

cited to McDonald v. Mabee, 243 U.S. 90, 37 S. Ct. 343, 61 

L. Ed. 608 (1917), where, it stated, “the Court indicated 

that regardless of the power of the State to serve process, 

an individual may submit to the jurisdiction of the court 

by appearance.” Id., 102 S. Ct. at 2105, 72 L. Ed. 2d at 

502. Significantly, in ISI International, whose approach 

we have adopted, the court relied on this aspect of per-
BASF AGRO v. CIPLA LIMITED 12

sonal jurisdiction when it stated that “[a] defendant who 

wants to preclude use of Rule 4(k)(2) has only to name 

some other state in which suit could proceed. Naming a 

more appropriate state would amount to a consent to 

personal jurisdiction there (personal jurisdiction unlike 

federal subject matter jurisdiction is waivable).” 256 F.3d 

at 552. See, e.g., Bradford, 603 F.3d at 1271-2 (stating 

that jurisdiction may lie over defendant simply by its 

acknowledgment in the briefing on appeal that it is subject to jurisdiction in Michigan); Knowlton v. Allied Van 

Lines, Inc., 900 F.2d 1196, 1200 (8th Cir. 1990) (stating 

“consent is a valid basis of personal jurisdiction, and 

resort to minimum-contacts or due process analysis to 

justify the jurisdiction is unnecessary.” (citing Ins. Corp. 

of Ireland, Ltd., 456 U.S. at 703, 102 S. Ct. at 2105, 72 L. 

Ed. 2d at 502.); SEC v. Blazon Corp., 609 F.2d 960, 965 

(9th Cir. 1979) (“A defendant cannot waive his right to 

assert a lack of subject matter jurisdiction, but he can 

confer jurisdiction over his person upon a court otherwise 

lacking that jurisdiction by expressly consenting to it.”). 

In my view, because the rule that allows a party to defeat 

Rule 4(k)(2) jurisdiction by designating a substitute forum 

is founded upon the proposition that personal jurisdiction 

is waivable, it is not necessary to independently establish 

that suit could lie in the substitute forum absent the 

designation. I thus believe that the district court erred in 

imposing such a requirement in this case and that the 

majority, in turn, errs in endorsing what the district court 

did. 

I believe the Seventh Circuit’s opinion in ISI International is instructive. There, neither party had raised the 

issue of Rule 4(k)(2) before the district court. ISI, Int’l, 

256 F.3d at 551. The Seventh Circuit stated: 

ISI International did not rely on Rule 4(k)(2), but 

S&A's appellate lawyer was ready for the ques-
13 BASF AGRO v. CIPLA LIMITED

tions asked during the oral argument. When the 

court inquired whether S&A would be subject to 

personal jurisdiction in any other state (California, for example), counsel was noncommittal. 

More discovery would be needed, counsel suggested. But S&A does not need discovery to learn 

its own acts. Nor is it apparent how more facts 

could contribute to resolution of the question. 

S&A had it within its power to knock out Rule 

4(k)(2) by agreeing that it is subject to personal 

jurisdiction in some other state. It proved unwilling to do so. We therefore conclude that under 

Rule 4(k)(2) jurisdiction is proper in the United 

States District Court for the Northern District of 

Illinois. 

Id. at 552. Thus, consent to jurisdiction by defendant’s 

counsel would have been sufficient to defeat Rule 4(k)(2) 

jurisdiction.2 The Seventh Circuit rejected the need for 

further factual inquiry as the consent of defendant’s 

counsel was all that was required.

It appears that the majority arrives at its holding 

based upon the appearance of the words “could proceed” 

and “appropriate” in ISI International, see 256 F.3d at 

552, and the words “could have brought suit” and “suitable” in Touchcom, see 574 F.3d at 1415. Reading the 

 2

 The quoted passage also, I believe, contradicts the 

assertion of the district court in this case that consent 

must occur at the time the complaint is filed. In ISI 

International, the question of consent necessarily arose at 

a time after the complaint was filed as neither party 

raised the issue of Rule 4(k)(2) before the district court. 

Thus, the Seventh Circuit implicitly acknowledges that 

defendants could defeat Rule 4(k)(2) by consenting to 

jurisdiction elsewhere at some time after the complaint 

was filed. 
BASF AGRO v. CIPLA LIMITED 14

relevant part of its opinion, see Maj. op. at 14-15, I understand the majority to be taking the position that these 

words support the requirement that, in this case, there be 

a showing that suit could have been brought in Illinois in 

the first place. I am unable to agree. I do not believe that 

these words, standing alone, are enough to support engrafting this added requirement onto the Rule 4(k)(2) 

procedure, especially where that procedure is founded 

upon the principle that personal jurisdiction is a matter 

that is waivable. In addition, I am unable to reconcile 

this added requirement with the Seventh Circuit’s statement that the consent of defendant’s counsel at oral 

argument would have been sufficient to “knock out Rule 

4(k)(2).” ISI, Int’l, 256 F.3d at 552.

The majority also expresses the concern that allowing 

a party in Cipla’s situation to designate another forum 

would allow the party to undo an adverse final judgment 

and obtain “the chance to litigate from a clean slate.” 

Maj. op. at 15-16. The majority’s desire to see litigation 

brought to a conclusion is understandable. However, this

concern is present in every case where a default judgment 

is challenged for lack of personal jurisdiction. I do not 

believe this legitimate concern can trump the requirement 

that a court have personal jurisdiction over a defendant 

and the consequences that result when a judgment is 

entered against that defendant in the absence of such 

jurisdiction. 

Moreover, allowing Cipla to designate an alternative 

forum would aid in bringing this litigation to a conclusion. 

If this case were transferred to the Northern District of 

Illinois, Cipla would have two options, either respond to 

the allegations and fully litigate the dispute or suffer the 

consequences of a default judgment. Importantly, Cipla 

would no longer be able to challenge a default judgment 
15 BASF AGRO v. CIPLA LIMITED

for lack of personal jurisdiction, and Merial would have 

the opportunity to fully press its case. 

IV. 

For the foregoing reasons, I believe that the district 

court erred in not allowing Cipla to designate the Northern District of Illinois as a substitute forum for suit 

against it. I therefore would reverse the decision of the 

court and would hold that the court lacked personal 

jurisdiction over Cipla under Rule 4(k)(2). Consequently, 

I (1) would vacate the contempt order and underlying 

default judgment against Cipla; (2) would vacate the 

injunction against Cipla, Velcera, and Fidopharm; and (3) 

would remand with the instruction that the court transfer 

the case to the Northern District of Illinois. Accordingly, I 

respectfully dissent.