## Facts

- Genetic Implant Systems, Inc. (Genetic), a Washington dental-implant company, sought a declaratory judgment of noninfringement and invalidity of U.S. Patent No. 4,960,381.
- Gerald A. Niznick was the sole named inventor and assigned the patent to Core-Vent Corp. (Core-Vent), which marketed patent-covered dental implants.
- Core-Vent sold products directly in Washington until the patent issued in 1990.
- In 1991, Core-Vent entered an exclusive worldwide marketing and distribution agreement with Dentsply International, Inc.; thereafter, Dentsply made substantial sales of Core-Vent products in Washington, including products covered by the patent.
- Genetic alleged Core-Vent and Niznick repeatedly threatened infringement litigation against Genetic and its CEO and sent three infringement-accusation letters (1994–1995), rejecting a settlement proposal.
- Genetic alleged the threats were also communicated to others in the industry, causing Washington-based business harm (lost customers and deterred investment).
- The district court dismissed for lack of personal jurisdiction over both Core-Vent and Niznick; Genetic appealed.

## Issues

1. Whether Washington could exercise specific personal jurisdiction over Core-Vent consistent with due process based on in-forum sales of patent-covered products and patent-enforcement threats.
2. Whether Washington could exercise personal jurisdiction over Niznick individually based on his corporate role and alleged enforcement-related communications.

## Decision

- The Federal Circuit reversed the dismissal as to Core-Vent, holding Washington had specific personal jurisdiction over the corporation.
- The court affirmed the dismissal as to Niznick, holding Washington lacked personal jurisdiction over him individually.
- The judgment was affirmed in part and reversed in part, and the case was remanded for further proceedings against Core-Vent.

## Legal Principles

- Specific jurisdiction requires: (1) purposeful direction of activities toward the forum, (2) claims arising out of or relating to those activities, and (3) a reasonable and fair exercise of jurisdiction.
- Substantial, ongoing sales of patent-covered products into a forum through an exclusive distributor can constitute purposeful availment by the patentee/assignee.
- A declaratory-judgment patent action may “arise out of or relate to” a patentee’s forum-directed sales of the accused/patented products and enforcement efforts directed at a forum resident.
- Personal jurisdiction over a corporation does not automatically establish personal jurisdiction over its officers or employees.
- Acts taken in a corporate capacity, without a prima facie basis to disregard the corporate form or to show independent, forum-directed wrongful conduct by the individual, do not suffice to hale the officer into the forum.

## Conclusion

Washington could exercise specific personal jurisdiction over Core-Vent because it purposefully exploited the Washington market through substantial sales of patent-covered products and the declaratory-judgment dispute related to those forum contacts, but the same facts did not establish personal jurisdiction over Niznick individually absent a separate, non-corporate basis to treat him as amenable to suit in Washington.


Genetic Implant Sys., Inc. v. Core-Vent Corp., 123 F.3d 1455 (Fed. Cir. 1997)