Autogenomics v. Oxford Gene (CAFC 2008-1217)

In dissent, Judge Newman best tells the story, as Judge Moore simply dripped wet from behind the ears.

The court rules that the foreign patent owner is not subject to suit in California despite its commercial presence in California including the grant of at least ten patent licenses to companies in California; despite a manufacturing venture of the patent owner with a California-based company to produce and sell microarrays designed by the patent owner; despite participation by the patent owner with respect to the patented technology in trade shows and scientific meetings in California; and despite the patent owner's threats of infringement against Autogenomics, a California company whose accused activities are conducted in California. On the entirety of these contacts, jurisdiction of this declaratory judgment action was proper in the Central District of California.

It is not disputed that there is a "case of actual controversy" in accordance with the Declaratory Judgment Act, 28 U.S.C. §2201(a), between the patent owner Oxford Gene Technology Inc., a British company, and the plaintiff Autogenomics. The only question is whether the requirements of personal jurisdiction have been met in California, the resident forum of Autogenomics, recognizing that Oxford is not registered to do business in any of the United States.

Where a foreign defendant has not consented to suit in a forum, the inquiry into personal jurisdiction turns on a trio of criteria, generally designated as purposeful availment, relatedness, and reasonableness. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472-77 (1985); Akro Corp. v. Luker, 45 F.3d 1541, 1545 (Fed. Cir. 1995). First, the defendant must have purposefully availed itself of the forum by conducting activities in the forum. Second, the plaintiff's claim must arise from or be related to the defendant's activities in the forum. And third, the court's exercise of personal jurisdiction must comport with the principles of due process and fairness.

Autogenomics readily made a prima facie showing as to these criteria, for Oxford owns several United States patents, including the patent that is the subject of this declaratory action, and is exercising its United States patent rights through approximately ten licensees in California.... Many of Oxford's contacts with California relate directly to the '270 patent, the subject of this lawsuit.

On being reasonable:

The reasonableness inquiry applies to both defendant and plaintiff, invoking "notions of fair play and substantial justice," Akro, 45 F.3d at 1546, as measured by factors such as those discussed in Burger King:

[C]ourts in appropriate cases may evaluate the burden on the defendant, the forum State's interest in adjudicating the dispute, the plaintiff's interest in obtaining convenient and effective relief, the interstate judicial system's interest in obtaining the most efficient resolution of controversies, and the shared interest of the several States in furthering fundamental substantive social policies.

471 U.S. at 477 (quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980)) (quotation marks omitted). Considerations of reasonableness give effect to the equitable authority of courts to provide access to adjudication when such is warranted, while protecting both sides from unfair burdens. Considerations of fairness and justice are central to the due process analysis, the Court observing that "[t]hese considerations sometimes serve to establish the reasonableness of jurisdiction upon a lesser showing of minimum contacts than would otherwise be required." Burger King, 471 U.S. at 477 (citing Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 780 (1984); Calder v. Jones, 465 U.S. 783, 788-89 (1984); McGee v. International Life Ins. Co., 355 U.S. 220, 223-24 (1957)).

Judge Newman goes on to cite today's ruling as incompatible with much precedence, including statute.

Depriving Autogenomics of the opportunity to resolve the threat of infringement is contrary to the purpose and principles of the Declaratory Judgment Act. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 128-32 (2007) (explaining that public policy favors declaratory challenge to adverse patents by persons whose substantial rights may be affected).

The court's decision that Oxford cannot be brought before the court in the Central District of California is contrary to law, precedent, and policy.

Affirmed.

[Note: CAFC Judge Newman and Alfred E. Newman are decidedly not related.]