Addressing the issue of personal jurisdiction, the U.S. Court of Appeals for the Federal Circuit upheld a district court’s refusal to exercise personal jurisdiction over a foreign patentee. Autogenomics, Inc. v. Oxford Gene Technology Limited, Case No. 07-CV-846 (May 18, 2009) (Moore, J.; Newman, J., dissenting).
The Court upheld a California district court’s ruling that it possessed neither specific nor general personal jurisdiction over the British company Oxford Gene Technology Limited (OGT) and found that the district court did not abuse its discretion in denying jurisdictional discovery to Autogenomics.
OGT is a British biotechnology company organized under the laws of England and Wales. OGT is the owner of a U.S. patent directed to oligonucleotide microarrays for analysis of polynucleotides. OGT is not registered to do business in California nor does it have facilities, assets, employees or agents there. Autogenomics is a biotechnology company organized under the laws of California and uses microarray technology in its business.
After licensing negotiations with OGT broke down, Autogenomics brought a declaratory action seeking judgment of non-infringement and invalidity of certain claims of OGT’s patent. The district court dismissed the case for lack of personal jurisdiction, not allowing the alleged infringer to conduct jurisdictional discovery.
In upholding the district court’s finding of no general personal jurisdiction, the Court ruled that this was a “classic case” of sporadic and insubstantial contacts with the forum state. The Court noted that Oxford had some commercial contacts with California. Specifically, OGT attended conferences where it likely met potential customers as well as entered into several non-exclusive license agreements with other California companies for technology unrelated to the patent at issue. Autogenomics argued that OGT’s presence at these conferences was tantamount to having a “mobile office.” Rejecting Autogenomics’ assertion, the Court acknowledged that OGT did not have a physical presence or license to do business in California and ruled that its contacts were insufficient to establish general jurisdiction.
The Court also upheld the district court’s decision that it lacked specific personal jurisdiction over OGT. According to the Court, not every type of contact is material to the specific jurisdiction analysis in a declaratory judgment action. Relying on its recent holding in Avocent, the Court asserted that only enforcement or defense efforts related to the patent rather than the patentee’s own commercialization efforts are to be considered to establish specific personal jurisdiction in a declaratory judgment action against a patentee. The Court acknowledged that this rule allows foreign patentees, such as OGT, the opportunity to engage in significant commercialization and licensing efforts in a state while benefiting from the Avocent rule, but noted that U.S. parties like Autogenomics may bring their declaratory actions in the U.S. District Court for the District of Columbia when they cannot establish personal jurisdiction in a specific state. Finally, the Court concluded that the district court did not abuse its discretion in denying Autogenomics jurisdictional discovery, because Autogenomics had failed to move for such discovery with the required degree of specificity to show it would “demonstrate facts sufficient to constitute a basis for jurisdiction.”
Judge Newman dissented, arguing that the majority’s reading of Avocent was in direct conflict with the Federal Circuit’s and the Supreme Court’s precedent.