Addressing the issue of personal jurisdiction and territorial use for a patent infringement claim, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s ruling that there was no personal jurisdiction over a foreign defendant and no use of the patented invention in the United States for the other defendant. Renata Marcinkowska v. IMG Worldwide, Inc., et al., Case No. 09-1213 (Fed. Cir., Aug. 20, 2009) (per curiam) (non-precedential).

This action arises from the staging of a tennis match between top players Roger Federer and Rafael Nadal in Mallorca, Spain in 2007, an event known as “The Battle of the Surfaces.” The match featured a court with one side made of clay and the other side made of grass. The plaintiff, a former professional tennis player, owns a patent directed to a tennis court with different surfaces on each side of the net. Plaintiff sued the S&S, an advertising agency based in Argentina, and IMG, a sports marketing and management company incorporated in Ohio, for patent infringement, as well as claims under the Lanham Act and unfair trade practices and civil conspiracy under South Carolina law.

The Federal Circuit first found that there was no general or specific jurisdiction over S&S because they were based in Argentina, due to a lack of evidence of any contact by S&S with South Carolina (the state of residence of the plaintiff). Further, the plaintiff initiated contact with the defendant, and defendant did not enable third parties in South Carolina to infringe the patent-in-suit.

The Federal Circuit then looked at whether the alleged infringement, which occurred in Spain, could constitute patent infringement. After stating the general rule that “[t]he patent laws of the United States “do not, and were not intended to, operate beyond the limits of the United States,” the Court analyzed whether IMG’s use of a globally-accessible website promoting the match and promotion and broadcast of the match in the United States constituted “use” under the patent laws. The Court affirmed the district court’s holding that this interpretation stretched the definition of “use” too thin because the hybrid tennis court was not “used” in the United States—it was “used” in Spain and that use was broadcast in the United States. The Federal Circuit similarly dismissed the plaintiff’s other claims because the plaintiff failed to allege facts beyond that it was her “idea” that was used by defendants.

Practice Note: To infringe a patent, the use of the accused product or method must be in the physical boundaries of the United States, rather than foreign use that is reproduced or promoted in the United States.