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Display of Medical Device at Trade Show Insufficient to Establish Personal Jusridiction for Patent Infringement

In Medical Solutions Inc. v. C. Change Surgical (September 9, 2008), the Federal Circuit held that CCS’s mere display of the allegedly infringing medical device device at a trade show did not constitute a "use" under the patent laws sufficient to establish personal jurisdiction.

According to the opinion by District Judge Zagel sitting by designation,
Several courts addressing whether a defendant has "used" a patented invention have held that "the mere demonstration or display of an accused product, even in an obviously commercial atmosphere" is not an act of infringement for purposes of ' 271(a). Fluid Mgmt. Ltd. P’ship v. H.E.R.O. Indus., Ltd., No. 95-5604, 1997 WL 112839, at *4 (N.D. Ill. Mar. 11, 1997) (quoting Intermedics, Inc. v. Ventritex, Inc., 775 F. Supp. 1269, 1286 (N.D. Cal. 1991) (concluding that absent concurrent sales-oriented activity which results in, or at least substantially advances, an actual sale, the demonstration of an accused product at a scientific trade show does not constitute an infringing "use")); see also Brennan v. Mr. Hanger, Inc., 479 F. Supp. 1215, 1231 (S.D.N.Y. 1979) (noting that the mere display of the infringing hanger bars would not constitute an infringing "use").
footnote 3. A demonstration of an accused device plus the simultaneous solicitation of purchase orders has been held to amount to a sufficient degree of "selling" activity. See U.S. Envtl. Prods., Inc. v. Infilco degremont, Inc., 611 F. Supp. 371 (N.D. Ill. 1985). However, that
holding is inapposite here since MSI hangs its hat on the "uses" rather than the "sells" prong of ' 271(a).
The inquiry as to what constitutes a "use" of a patented item is highly case-specific, Van Well Nursery, Inc. v. Mony Life Ins. Co., 362 F. Supp. 2d 1223, 1229 (E.D. Wash. 2005). We find that the district court correctly considered and interpreted all of the facts with regard to CCS’s "use" of the allegedly infringing IntraTemp product at the trade show. In Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 699 F. Supp. 1576, 1580-81 (N.D. Ga. 1988), the court found that the plaintiff established a prima facie case for the exercise of personal jurisdiction where the defendant demonstrated the allegedly infringing knife-cutting machines at a trade show, but the defendant in that case also purposefully engaged in other activities related to the litigation in that forum. Here, MSI asserts nothing other than CCS’s activities, which appear to fall short of practicing all of the elements of any one claim, at the trade show as evidence to confer personal jurisdiction over CCS.

The ordinary meaning of "use" is "to put into action or service." NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005) (quoting
Webster’s Third New International Dictionary 2523 (1993)). MSI’s patented
technology pertains to systems for warming and controlling the temperature of
medical and surgical items. At the trade show, CCS displayed a prototype of its
product, staffed its booth with representatives, and made available brochures
about the product. But none of these activities was putting the IntraTemp device into service. MSI claims that "[t]he infringing InterTemp [sic] warmer was not just passively shown or displayed; CCS staffed its booth with several sales epresentatives, who actively demonstrated the IntraTemp’s actual functions in use." The portion of the joint appendix cited in support of this claim, however, does not indicate whether the IntraTemp device was used to heat medical items at the trade show. The closest evidence that MSI points to on appeal in support of its claim that CCS "actively demonstrated" IntraTemp at the trade show appears to be the declaration of Mr. Cordell stating that the CCS representative showed at least one attendee how to take the basin off the device when the basin still had fluid in it. Even if we accept as true that a CCS representative took a basin off an accused device during a trade show, that alone would not establish that the accused device was put into service so as to
constitute an infringing use. Much more would be needed to qualify as an infringing use, including that the device was used to heat medical items at the show. In this case we need not (and do not) decide whether the demonstration of a product at a trade show could ever be sufficient to establish an infringing use.4
footnote 4. That said, we do recognize other courts have held that demonstrations of a device are not proper evidence of "use" because using a device means using it to perform its actual function or service, not using it as a demonstrative display. See Union Asbestos & Rubber Co. v. Evans Prods. Co., 328 F.2d 949, 951 (7th Cir. 1964); Advanced Semiconductor
Materials Am., Inc. v. Applied Materials, Inc., No. 93-20853, 1995 WL
419747, at *6 (N.D. Cal. July 10, 1995) (holding that a demonstration
"hardly qualifies as using the patented process for its intended purposes").
We simply conclude that the facts as alleged in this case do not establish a prima facie case. For these reasons, we agree with the district court’s conclusion that CCS’s display and demonstration of IntraTemp at the trade show did not constitute a "use" of the allegedly infringing product.5

footnote 5. Because MSI fails to make a prima facie case of personal jurisdiction under the District of Columbia’s long-arm statute, we too do not reach the issue of whether the exercise of personal jurisdiction over CCS in the District of Columbia comports with the requirements of due
. . . While we can conceive of situations where CCS’s conduct would constitute a “use” under the statute, such a situation would involve, at a minimum, practicing all of the elements of at least one claim. The declaration MSI provided gave no hint of such
an appropriate set-up, so the decision to deny discovery based upon that declaration was a judgment call the district court was entitled to make.
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