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Inamed Corp. v. Kuzmak

United States Court of Appeals for the Federal Circuit

May 15, 2001, Decided

00-1292

Opinion

 [***1775]   [*1358]  CLEVENGER, Circuit Judge.

Inamed Corp., Inamed Development Co., and BioEnterics Corp. (collectively, "Inamed" or "appellants") appeal from an order of the United States District Court for the Central District of California dismissing their action for declaratory judgment against defendant Lubomyr I. Kuzmak, M.D., for lack of personal jurisdiction. Inamed Corp. v. Kuzmak, No. 99-2160 (C.D. Cal. Feb. 24, 2000) ("Inamed Corp."). Because we conclude that the district court erred in determining that it lacked personal jurisdiction over the defendant, we reverse and remand.

This appeal stems from a declaratory [**2]  judgment action related to four patents directed to devices and methods for the surgical treatment of obesity. The defendant-appellee, Dr. Kuzmak, is listed as a co-inventor of U.S. Patent No. 4,592,339 ("the '339 patent"), directed to an adjustable silicone gastric band used to constrict the size of a stomach, and U.S. Patent No. 4,696,288 ("the '288 patent"), directed to a method for performing gastric banding surgery using a calibrating tube and electronic sensor apparatus. Dr. Kuzmak is also listed as sole inventor of U.S. Patent No. 5,074,868 ("the '868 patent"), directed to a reversible gastric band, and U.S. Patent  [*1359]  No. 5,226,429 ("the '429 patent"), directed to a method for performing a gastric banding operation via laparoscopic surgery. At all times relevant to this appeal, Dr. Kuzmak has been a resident of New Jersey. The appellants are all corporations with principal places of business in California.

Between 1989 and 1993, Inamed entered into four license agreements with Dr. Kuzmak involving his four patents. The fourth agreement, dated July 1, 1993 ("the 1993 Agreement"), superseded the three previous agreements between Dr. Kuzmak and Inamed. The 1993 Agreement granted [**3]  Inamed an exclusive license to practice all four patents in exchange for royalty fees based on Inamed's commercial exploitation of the patents. From 1992 to 1998, Inamed made annual royalty payments to Dr. Kuzmak of more than $ 1.3 million based on the sale of gastric bands manufactured in California by Inamed. In 1998, Inamed attempted to renegotiate the license agreement. When these negotiations proved unsuccessful, Inamed terminated the contract on December 6, 1998.

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249 F.3d 1356 *; 2001 U.S. App. LEXIS 9255 **; 58 U.S.P.Q.2D (BNA) 1774 ***

INAMED CORPORATION, INAMED DEVELOPMENT COMPANY and BIOENTERICS CORPORATION, Plaintiffs-Appellants, v. LUBOMYR I. KUZMAK, Defendant-Appellee.

Subsequent History: Appeal after remand at Inamed Corp. v. Kuzmak, 2003 U.S. App. LEXIS 9535 (Fed. Cir., May 15, 2003)

Prior History:  [**1]  Appealed from: United States District Court for the Central District of California. Judge Margaret M. Morrow.

Disposition: REVERSED and REMANDED.

CORE TERMS

infringement, patents, license, negotiation, purposefully, declaratory, terminated, gastric, prong, band, out-of-state, mail

Civil Procedure, Appeals, Standards of Review, De Novo Review, Patent Law, Jurisdiction & Review, General Overview, Jurisdiction, In Rem & Personal Jurisdiction, Constitutional Limits, In Personam Actions, Due Process, Evidence, Burdens of Proof, Allocation, International Trade Law, Dispute Resolution, International Commercial Arbitration, Arbitration, Minimum Contacts, Personal Jurisdiction & Venue, Jurisdictional Sources, Preliminary Considerations, Venue, Individual Defendants, Subject Matter Jurisdiction, Jurisdiction Over Actions, Federal Venue Transfers, Convenience Transfers