In The Pink: Lack Of Personal Jurisdiction Results In Dismissal Of Non-infringement Verdict
Addressing personal jurisdiction in a declaratory judgment action, the US Court of Appeals for the 10th Circuit reversed the district court’s bench trial verdict, finding that the district court lacked specific personal jurisdiction over the defendant. C5 Med. Werks v. CeramTec GmBH, Case No. 17-1173 (10th Cir. Sept. 11, 2019) (Eid, J).
CeramTec is a German producer of ceramics and ceramic components for medical prostheses. CeramTec’s products use a chromium-based ceramic composite that causes the products to appear pink. CeramTec has promoted its products at trade shows, including three trade shows held in Colorado. Previously, CeramTec owned a patent for the use of chromium-based materials in its products. Shortly before its patent expired, it applied for a trademark registration for the color pink for its hip joint component, eventually securing a Supplemental Registration. CeramTec then attempted to enforce its trademark against C5 Medical Werks, a Colorado-based manufacturer of pink ceramic components for medical prostheses. CeramTec seized C5’s products from a tradeshow in Paris, France, and sent C5 a cease-and-desist letter in Colorado.
C5 later filed an action in Colorado seeking declaratory judgment of non-infringement and cancellation of CeramTec’s trademark registration. C5 filed a motion to dismiss based on lack of personal jurisdiction. The case eventually proceeded to a bench trial, where the district court found in favor of C5 and entered declaratory judgment of non-infringement. CeramTec appealed, challenging the district court’s exercise of personal jurisdiction and the merits of the bench trial verdict.
The 10th Circuit held that the district court did not have personal jurisdiction over CeramTec and reversed the decision with instructions that the case be dismissed. Because CeramTec did not have a physical presence or customers in Colorado, the Court reasoned that the district court would only have personal jurisdiction if CeramTec had “minimum contacts” with Colorado—i.e., if CeramTec had purposefully directed its activities to Colorado, and C5’s injuries arose out of CeramTec’s Colorado-related activities.
The 10th Circuit found that CeramTec did not have minimum contacts. CeramTec’s attendance at trade shows in Colorado were not purposeful because CeramTec did not choose where the trade shows were held; it only chose to attend the trade show, regardless of the location. The Court further found that CeramTec’s enforcement activities were not sufficient for personal jurisdiction. CeramTec’s seizure of C5’s products occurred in France, not Colorado, and C5 failed to demonstrate how CeramTec’s seizure of products abroad affected any transactions in Colorado. Finally, the Court found that CeramTec’s cease-and-desist letter sent to C5 in Colorado failed to confer jurisdiction in C5’s declaratory judgment action. Because the Court determined that the district court lacked personal jurisdiction over CeramTec, it did not reach the merits of the case.