The U.S. Court of Appeals for the Federal Circuit upheld a lower court’s dismissal of a patent suit for lack of personal jurisdiction, finding that the defendant’s demonstration of the accused device at a trade show did not constitute an infringing “use” under the patent laws. Medical Solutions, Inc. v. C. Change Surgical LLC, Case No. 07-1163 (Fed. Cir., Sept. 9, 2008) (Zagel, J., sitting by designation).
Medical Solutions, Inc. (MSI) sued C. Change Surgical LLC (“CCS”) for infringement of two patents relating to devices that control the temperature of medical fluids in the operating room. MSI chose to sue CCS in the United States District Court for the District of Columbia, a forum where CCS had limited contacts.
The evidence established that the only contact that CCS had with the District of Columbia was a single trade show. CCS representatives occupied a booth at the trade show and displayed promotional materials related to the accused product. The CCS representatives who attended the trade show discussed the accused device with potential customers and showed how parts of the device functioned. In the district court, MSI argued that CCS’s activities at the trade show constituted a “use” for purposes of infringement under §271(a).
The lower court ruled in favor of CCS, granting CCS’s Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction. On appeal, the Federal Circuit affirmed the lower court’s ruling. Specifically, the Federal Circuit held that the display and active demonstration of the accused device by the CCS representatives to potential customers at the trade show did not establish that the accused device was put into service so as to constitute an infringing use.
In defining “use” to mean “to put into action or service,” the Court found that displaying a prototype product at a booth and providing brochures about the product does not constitute “use” where the technology pertains to systems used in hospitals for controlling the temperature of medical fluids. The Court stated that under the facts of the case the demonstration or display of the accused product at the trade show was not putting the product into service and was therefore not an act of infringement for purposes of §271(a). The Federal Circuit, reasoning that a use determination is highly case-specific, concluded that the facts as alleged in the case did not establish a prima facie case of infringement.
Practice Note: While the Federal Circuit refrained from deciding whether the demonstration of a product at a trade show could ever be sufficient to establish a prima facie case, it appears prudent, in light of this decision, to choose a forum in which an alleged infringer has installed the accused device for its intended use.