Touchcom v. Bereskin & Parr

This case was decided on jurisdictional grounds. The plaintiff had hired a Canadian law firm to prosecute its patent and something went wrong along the way. The plaintiff is now attempting to sue the firm in the U.S. and the issue of personal jurisdiction was raised. The main question, and answer, is "whether the act of filing an application for a U.S. patent at the USPTO is sufficient to subject the filing attorney to personal jurisdiction in a malpractice claim that is based upon that filing and is brought in federal court. For the reasons discussed below, we conclude that it is." (p. 7.)

The issue of personal jurisdiction was determined under Fed. R. Civ. P. 4(k)(2), which provides for jurisdiction for a claim that arises under federal law but "the defendant is not subject to the jurisdiction of any state’s courts of general jurisdiction." (p. 12.) This rule applies when a defendant did not have sufficient contacts with any single state to confer jurisdiction but did have sufficient contacts with the U.S. as a whole. (p. 14.)

Applying this rule, the Federal Circuit concluded that the defendants did have sufficient contacts and the due process requirements were met so that personal jurisdiction would be appropriate under Rule 4(k)(2) (subject to a determination on remand that they are not subject to jurisdiction in any state).

Judge Prost dissented, agreeing with the majority's conclusion concerning Rule (4)(k)(2) and personal jurisdiction, but differing on the grounds that exercising personal jurisdiction would violate due process. (p. 26.)