Patent Watch: Grober v. Mako Prods., Inc.

Alerts / August 2, 2012

[T]he district court's power to enter summary judgment does not allow it to bypass performing a complete patent infringement analysis.

On July 30, 2012, in Grober v. Mako Prods., Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Prost, Moore) affirmed-in-part, vacated-in-part and remanded the district court's summary judgment that Mako did not infringe U.S. Patent No. 6,611,662, which related to an autonomous self-leveling, self-correcting stabilizing platform for filming motion pictures from moving vehicles. This technology, known in the entertainment industry as the Perfect Horizon, won Grober an Academy Award in technical achievement. The Federal Circuit stated:

[T]he claim language and specification show that "payload platform" means "a three-dimensional structure upon which the payload (e.g., a camera) is directly mounted upon or affixed to." Because this court finds that the district court erred in its claim construction of the term "payload platform," this court vacates the district court's claim construction and remands for further proceedings. Based on its claim construction, the district court improperly found that the MakoHead did not infringe the '662 patent. . . . This court has stated that "district courts are widely acknowledged to possess the power to enter summary judgment sua sponte, so long as the losing party was on notice that she had to come forward with all of her evidence." However, the district court's power to enter summary judgment does not allow it to bypass performing a complete patent infringement analysis. Patent infringement requires a two-step analysis. First, "the court determines the scope and meaning of the patent claims asserted," and then compares the claims "to the allegedly infringing devices." In this case, the district court performed the first step. At that point, however, the process hit a couple short circuits. In the first place, the adopted claim construction did not entirely dispose of the case because several claims did not include the construed term. More important, the trial court did not place the accused device alongside each asserted claim for a complete comparison. This court vacates the district court's grant of summary judgment of non-infringement.

The district court properly dismissed the Kleins and Oppenheimer Cine Rental, LLC. ("Oppenheimer") for lack of personal jurisdiction. Jordan Klein, Sr. and Jordan Klein, Jr. are the only two shareholders of Mako Products, Inc. ("Mako"), owning a 10 percent and 90 percent share, respectively. Mako owns the MakoHead stabilizing platform system, which it rents for use in movie and television production. Mako is a Florida corporation, with its only place of business in Florida. The Kleins are both members of Mako's board of directors and listed as the only two "officer/director[s]" in Mako's corporate records with the state of Florida. The Kleins demonstrated the MakoHead at a California trade show on behalf of Mako. Oppenheimer is a rental company located in Washington that rents hundreds of products, including the MakoHead, to the movie and television industry.

There are two types of personal jurisdiction -- general and specific. In this case, the district court correctly found that Appellants did not make a prima facie showing of general jurisdiction. General jurisdiction arises when a defendant maintains contacts with the forum state that are sufficiently "continuous and systematic," even when the cause of action has no relation to those contacts. The district court correctly found that it lacked general jurisdiction over Oppenheimer. Oppenheimer has very limited contacts with California. Oppenheimer has shipped unspecified items to the defendant Spectrum Effects, Inc. of California. However, the record gives no indication of the context and significance of these shipments for Oppenheimer's business. Appellants failed to show that these acts amount to continuous and systematic contacts with California. Additionally, Oppenheimer has exhibited products unrelated to the accused device at a California trade show.
While this may support the inference that Oppenheimer meets potential business partners at trade shows, this showing does not rise above a sporadic and insubstantial contact with California. Similarly, an isolated advertisement in a nationally distributed trade publication based in California and Mako's website listing Oppenheimer as a contact do not amount to a continuous and systemic presence in California.

The district court also correctly found that Appellants did not make a prima facie showing of specific jurisdiction. "Specific jurisdiction . . . must be based on activities that arise out of or relate to the cause of action, and can exist even if the defendant's contacts are not continuous and systematic." When analyzing specific personal jurisdiction over a nonresident defendant, a court considers whether: "(1) the defendant purposefully directed its activities at residents of the forum state, (2) the claim arises out of or relates to the defendant's activities with the forum state, and (3) assertion of personal jurisdiction is reasonable and fair." The plaintiff has the burden of proving parts one and two of the test, and then the burden shifts to the defendant to prove that personal jurisdiction is unreasonable.

Appellants did not show that Oppenheimer has sufficient contacts with the state of California to warrant specific jurisdiction. Appellants could not establish that Oppenheimer has operated or rented the MakoHead in California. Beyond shipment of an unspecified amount of products between itself and Spectrum Effects, Inc., Oppenheimer did not operate at all in California. In fact, Appellants did not show that out of the hundreds of available products, the accused MakoHead, was ever shipped to California.

While Oppenheimer advertised the MakoHead twice per year in a magazine based in California, this trade publication was nationally distributed and not limited to California. Appellants could not show that Oppenheimer targeted the California market at all. Appellants at best showed Oppenheimer on a list as a North West contact, with two other West Coast contacts also on the list. Again, this attenuated evidence does not show that California was a target market for Oppenheimer. In sum, Oppenheimer, on this record, did not purposefully avail itself of the privileges of conducting activities within California, "thus invoking the benefits and protections of its laws."

The district court also properly declined to find personal jurisdiction over the Klein defendants. The fiduciary shield doctrine buffers corporate officers from personal jurisdiction when their official duties were their only contact with a forum state. . . . This court finds no error in the district court's personal jurisdiction determinations. Appellants did not show that the Kleins or Oppenheimer performed any relevant activities to establish general or specific personal jurisdiction. This court concludes that the district court properly declined personal jurisdiction over the Kleins and Oppenheimer.

If you have questions about the material presented above, please contact Dr. Lawrence M. Sung (lsung@bakerlaw.com or 202.861.1537) or any member of our Intellectual Property Team.

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