Addressing the issue of personal jurisdiction in the context of attorney malpractice, the U.S. Court of Appeals for the Federal Circuit reversed and remanded a district court’s dismissal of a malpractice suit against a Canadian law firm and patent attorney. Touchcom, Inc. v. Bereskin & Parr, Case Nos. 08-1229 (Fed. Cir., August 3, 2009) (Lourie J.) (Prost, J., dissenting).
Plaintiff Touchcom, Inc. engaged the defendants to procure patents covering inventions relating to a pump system. Bereskin & Parr (B&P) filed a Canadian application that included a complete set of the relevant source code. Later, however, B&P filed a Patent Cooperation Treaty (PCT) application that did not contain the complete set of code. The PCT application, with the code omitted, was later transmitted to the U.S. Patent and Trademark Office (USPTO) as part of a national phase application.
In due course, the applications issued into patents. Several years later the plaintiff commenced patent infringement actions in the United States. In the course of those actions, its patents were held invalid for indefiniteness as a result of the missing code. Touchcom filed a malpractice action. B&P moved to dismiss the complaint for lack of personal jurisdiction and the district court granted the motion, focusing on Fed. R. Civ. P. 4(k)(1)(A) and the requirements of the applicable Virginia long-arm statute. Touchcom appealed.
The Federal Circuit performed a personal jurisdiction analysis under both Fed. R. Civ. P. 4(k)(1)(A) and 4(k)(2), noting that plaintiff failed to raise Rule 4(k)(2) as a basis for jurisdiction at the lower court. Under Rule 4(k)(1)(A), the Federal Circuit found that defendants were not subject to personal jurisdiction, concluding that the defendants did not purposefully avail themselves of the privilege of doing business in Virginia and thus, under the Virginia long-arm statute, did not have minimum contacts. The only relevant contact in Virginia was the filing of the patent applications and B&P had not even visited Virginia in the course of prosecution.
The Court then looked to Rule 4(k)(2), which requires three things: a claim arising under federal law; that the defendant is not subject to jurisdiction in any other state in the United States and that due process is not violated. Under the first element, the Court concluded that the malpractice claims arose under federal law because patent scope and validity were ultimately at issue. Next, the Court found that it was B&P’s burden to show that it was subject to personal jurisdiction in another U.S. jurisdiction and that B&P had not done so.
In considering the third element, the Court used a due process analysis different than the one under Rule 4(k)(1)(A) because Rule 4(k)(2) considers nationwide contacts. In considering fairness in this context, the Court considered five factors: the burden on the defendant, the forum’s interest in the dispute, the plaintiff’s interest in obtaining relief, the interstate judicial system’s interest in obtaining the most efficient resolution and the shared interest of the states in furthering fundamental policies. The Court concluded that a finding of personal jurisdiction under Rule 4(k)(2) did not violate due process. Thus, the Federal Circuit reversed the lower court and found that the district court possessed personal jurisdiction over the defendants.
In dissent, Judge Prost agreed with the majority’s analysis of Rule 4(k)(1)(A) and its treatment of the first two elements of Rule 4(k)(2). Judge Prost stated further that this was one of the “rare situations” in which minimum contacts are present, but exercising personal jurisdiction would nevertheless violate due process because of the attenuated nature of plaintiff’s interest and state’s interest in adjudicating the dispute in the forum.