Nexlearn, LLC v. Allen Interactions, Inc. , 859 F.3d 1371 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
NEXLEARN, LLC,
Plaintiff-Appellant
v.
ALLEN INTERACTIONS, INC.,
Defendant-Cross-Appellant
______________________
2016-2170, 2016-2221
______________________
Appeals from the United States District Court for the
District of Kansas in No. 6:15-cv-01294-EFM-KGG, Judge
Eric F. Melgren.
______________________
Decided: June 19, 2017
______________________
PAUL K. VICKREY, Vitale Vickrey Niro & Gasey, Chi-
cago, IL, argued for plaintiff-appellant.
MARTIN B. PAVANE, Cozen O'Connor, New York, NY,
argued for defendant-cross-appellant. Also represented
by DARREN SCOTT MOGIL.
______________________
Before MOORE, SCHALL, and HUGHES, Circuit Judges.
MOORE, Circuit Judge.
2 NEXLEARN, LLC v. ALLEN INTERACTIONS, INC.
NexLearn, LLC appeals from the District of Kansas’
dismissal of its complaint for lack of personal jurisdiction.
For the reasons discussed below, we affirm.
BACKGROUND
On September 24, 2015, NexLearn filed suit against
Allen Interactions, Inc. (“Allen”) in the District of Kansas
alleging infringement of U.S. Patent No. 8,798,522 (“the
’522 patent”) and breach of contract. NexLearn alleged in
its complaint that on February 10, 2009, Allen and
NexLearn entered into a nondisclosure agreement
(“NDA”) to allow Allen to learn more about NexLearn’s
social simulation software called SimWriter®. It alleged
that pursuant to the NDA, NexLearn provided Allen with
a trial version of SimWriter, which Allen accessed “on
several occasions, after which Allen stated it was no
longer interested in pursuing a deal with NexLearn.”
J.A. 38. It alleged Allen thereafter developed its social
simulation software called ZebraZapps based on infor-
mation it “learned from its analysis of the confidential
demo,” giving rise to NexLearn’s claims of patent in-
fringement and breach of contract. J.A. 38–39. NexLearn
asserted infringement of at least claims 1, 3–9, 11, 12, 14,
and 25 of the ’522 patent, which is directed to a computer
program for social simulation, and asserted breach of the
NDA by misusing NexLearn’s confidential information.
The NDA contains a choice-of-law provision stating Kan-
sas law governs the agreement.
Allen moved to dismiss NexLearn’s complaint for lack
of personal jurisdiction. 1 Allen is a Minnesota corporation
1 Allen alternatively moved for failure to state a
claim upon which relief could be granted. It argued that
if it was subject to personal jurisdiction in Kansas,
NexLearn’s claims should be dismissed because the
’522 patent is directed to unpatentable subject matter and
NEXLEARN, LLC v. ALLEN INTERACTIONS, INC. 3
with its principal place of business in Mendota Heights,
Minnesota. It argued it was not subject to specific or
general jurisdiction in Kansas due to its limited contacts
with the forum, which it argued amounted to a single sale
unrelated to its ZebraZapps product and represented less
than 1% of its revenue over the past five years. It argued
the NDA’s choice-of-law provision did not subject it to an
action in Kansas because NexLearn’s complaint asserted
that its breach of contract claim was supplemental to its
patent infringement claim, J.A. 36, requiring NexLearn to
establish personal jurisdiction over its infringement claim
in order to bring its contract claim.
NexLearn opposed Allen’s motion and filed additional
evidence to support its claim that the court could exercise
personal jurisdiction over Allen under a specific jurisdic-
tion theory. NexLearn’s president, Dennis Rees, filed a
declaration stating Allen agreed to an End-User License
Agreement (“EULA”) when it accessed the SimWriter
trial. The EULA specifies that “any dispute arising out of
or related to this Agreement or the Product must be
brought exclusively in a court sitting in Wichita, Kansas.”
J.A. 216. Mr. Rees declared that since launching Zebra-
Zapps in 2011, Allen “continually sent direct emails
regarding ZebraZapps to two NexLearn employees.”
J.A. 187 ¶ 2. He declared that another NexLearn employ-
ee was offered a free trial of ZebraZapps after attempting
to purchase ZebraZapps from Allen’s website without
success. He declared Allen specifically targeted Kansas
residents by including Kansas in the address selector’s
dropdown menu on its ZebraZapps website. The declara-
tion summarized Allen’s activities with a trade associa-
NexLearn failed to allege breach of contract prior to the
NDA’s expiration in 2011. Because we affirm the district
court’s holding that it lacked personal jurisdiction over
Allen, we do not reach these alternative arguments.
4 NEXLEARN, LLC v. ALLEN INTERACTIONS, INC.
tion, which disseminated a magazine to Kansas residents
that included an advertisement for Allen.
Drawing all reasonable inferences in favor of
NexLearn, the district court held that NexLearn failed to
allege that Allen had sufficient contacts with Kansas to
permit the exercise of specific jurisdiction. It determined
the NDA and EULA Kansas choice-of-law and forum-
selection provisions were not relevant for specific jurisdic-
tion over NexLearn’s patent infringement claim. It held
that because five of Allen’s six emails to NexLearn em-
ployees were sent before the ’522 patent issued on Au-
gust 5, 2014, NexLearn’s patent infringement claim could
not have arisen out of or related to these emails. It held
Allen’s sole post-issuance email, as well as its offer of a
free trial of ZebraZapps to a NexLearn employee, could
not form a basis for exercising jurisdiction because these
contacts were manufactured by NexLearn’s unilateral
acts. The NexLearn employees, it reasoned, received
Allen’s emails only because they subscribed to Allen’s
mass emailing list and received a free trial of ZebraZapps
only because of a purchase attempt. Regarding Allen’s
ZebraZapps website, the district court held the website
alone, absent evidence of an actual sale, was insufficient
to confer specific jurisdiction. It held neither Allen’s
single sale of an unaccused product to a Kansas resident
nor its general advertisement in a trade publication was
relevant to NexLearn’s patent infringement claim. Be-
cause it held it lacked personal jurisdiction over
NexLearn’s patent infringement claim, and because
NexLearn did not assert breach of contract as an inde-
pendent basis for the district court’s subject matter juris-
diction, the district court granted Allen’s motion to
dismiss.
NexLearn appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
NEXLEARN, LLC v. ALLEN INTERACTIONS, INC. 5
DISCUSSION
“Personal jurisdiction is a question of law that we re-
view de novo.” Autogenomics, Inc. v. Oxford Gene Tech.
Ltd., 566 F.3d 1012, 1016 (Fed. Cir. 2009). We apply
Federal Circuit law when reviewing claims “intimately
involved with the substance of the patent laws” and the
law of the regional circuit when reviewing state law
claims. Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344,
1348 (Fed. Cir. 2003). Where, as here, the district court
decided personal jurisdiction “based on affidavits and
other written materials in the absence of an evidentiary
hearing, a plaintiff need only to make a prima facie show-
ing that defendants are subject to personal jurisdiction.”
Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324,
1329 (Fed. Cir. 2008). We “accept the uncontroverted
allegations in the plaintiff’s complaint as true and resolve
any factual conflicts in the affidavits in the plaintiff’s
favor.” Id. To make a prima facie showing, we ask
“whether a forum state’s long-arm statute permits service
of process and whether assertion of personal jurisdiction
violates due process.” Autogenomics, 566 F.3d at 1017.
The Kansas Supreme Court has interpreted Kansas’ long-
arm statute to extend jurisdiction to the fullest extent
allowed by due process. Merriman v. Crompton Corp.,
146 P.3d 162, 179 (Kan. 2006).
Pursuant to 28 U.S.C. § 1367(a), “it is well estab-
lished—in certain classes of cases—that, once a court has
original jurisdiction over some claims in the action, it may
exercise supplemental jurisdiction over additional claims
that are part of the same case or controversy.” Exxon
Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546, 552
(2005). To exercise supplemental jurisdiction, the district
court “must first have original jurisdiction over at least
one claim in the action.” Id. at 554.
6 NEXLEARN, LLC v. ALLEN INTERACTIONS, INC.
A. NexLearn’s Patent Infringement Claim
NexLearn alleges that personal jurisdiction exists for
its patent infringement claim, the only claim over which it
asserts the district court possesses original jurisdiction. A
district court can exercise personal jurisdiction over an
out-of-state defendant pursuant to either general or
specific jurisdiction. Under general jurisdiction, a district
court can “hear any and all claims against [out-of-state
defendants] when their affiliations with the State are so
‘continuous and systematic’ as to render them essentially
at home in the forum State.” Daimler AG v. Bauman, 134
S. Ct. 746, 749 (2014) (citation omitted). Specific jurisdic-
tion instead “focuses on the relationship among the de-
fendant, the forum, and the litigation.” Walden v. Fiore,
134 S. Ct. 1115, 1121 (2014) (alteration omitted). To
comport with due process, the out-of-state defendant must
have “minimum contacts” with the forum State “such that
the maintenance of the suit does not offend traditional
notions of fair play and substantial justice.” Int’l Shoe Co.
v. Washington, 326 U.S. 310, 316 (1945). At oral argu-
ment, NexLearn stated it alleged both general and specif-
ic jurisdiction. Oral arg. at 15:03–16:10. NexLearn did
not argue general jurisdiction in its briefing to us or below
to the district court. See NexLearn Br. 10; J.A. 7
(“NexLearn does not allege general jurisdiction but rather
that Allen had minimum contacts with Kansas based on
specific jurisdiction.”). We thus decline to address general
jurisdiction.
To determine whether specific jurisdiction exists we
apply a three-part test, in which we determine whether:
(1) the defendant purposefully directed its activities to the
forum State; (2) the claims arise out of or relate to those
activities (collectively, the minimum contacts prong); and
(3) the assertion of jurisdiction is reasonable and fair.
Avocent, 552 F.3d at 1332. We hold that NexLearn failed
to allege sufficient minimum contacts with Allen to war-
NEXLEARN, LLC v. ALLEN INTERACTIONS, INC. 7
rant the exercise of specific jurisdiction over its patent
infringement claim in Kansas.
1. Contacts Predating ’522 Patent Issuance
Many of the contacts NexLearn asserts confer specific
jurisdiction over Allen occurred prior to the ’522 patent’s
issuance. Five of the six emails NexLearn cites were sent
before August 5, 2014. Allen’s actions relating to
NexLearn’s SimWriter trial—executing the NDA, access-
ing the trial, and agreeing to the EULA—happened over
five years before the ’522 patent issued. Various other
contacts alleged by NexLearn, including Allen’s presenta-
tions at trade association conferences in which Kansas
residents are members and Allen’s advertisement in a
trade association magazine, took place before August 5,
2014.
Allen’s pre-issuance emails, presentations, and adver-
tisements are not relevant to NexLearn’s claim that Allen
“infringes at least claims 1, 3–9, 11, 12, 14, and 25 of the
’522 patent.” 2 See J.A. 39. Specific jurisdiction requires
that the plaintiff’s suit “arises out of or relates to the
defendant’s contacts with the forum.” Daimler, 134 S. Ct.
at 749 (citation and alterations omitted). If a defendant
purposefully derives benefit from his activities within a
forum, he may be sued in that forum “for consequences
that arise proximately from such activities.” Burger King
Corp. v. Rudzewicz, 471 U.S. 462, 474 (1985). Allen’s
2 Because our review is limited to whether Allen is
subject to specific jurisdiction in Kansas, our analysis
focuses on whether Allen’s pre-issuance contacts are suit-
related. We recognize of course that Allen’s contacts could
be relevant to a general jurisdiction analysis, which
permits a court to exercise jurisdiction based on contacts
unrelated to the underlying action. See Walden, 134
S. Ct. at 1121 n.6.
8 NEXLEARN, LLC v. ALLEN INTERACTIONS, INC.
emails, presentations, and advertisements predating
August 5, 2014 cannot constitute infringing acts giving
rise to NexLearn’s claim because they did not occur “dur-
ing the term of the patent.” 3 35 U.S.C. § 271(a). Because
NexLearn’s infringement claim does not proximately arise
from these actions, they are not relevant to our specific
jurisdiction inquiry.
To the extent Allen’s SimWriter trial activities are
“related” to Allen’s later development of ZebraZapps, they
are too attenuated to form a sufficient contact giving rise
to NexLearn’s claim of infringement. NexLearn’s patent
infringement claim does not arise proximately from these
activities which occurred before NexLearn ever had a
property right. This conduct is too far removed from
NexLearn’s infringement claim to be a relevant jurisdic-
tional contact.
The provisions within the NDA and EULA likewise do
not render Allen subject to specific jurisdiction in Kansas.
Burger King makes clear that the NDA’s Kansas choice-
of-law provision “standing alone would be insufficient to
confer jurisdiction.” 105 S. Ct. at 482. Unlike the facts
surrounding the contract in Burger King, the NDA in this
3 In some circumstances a defendant’s suit-related
contacts may extend to activities that occurred long before
the plaintiff’s cause of action became ripe. See, e.g.,
Burger King, 471 U.S. at 479–80 (considering the defend-
ant’s forum-related contract negotiations in breach of
contract suit). But in no way does NexLearn connect
Allen’s independent pre-issuance actions with any later
infringing conduct to render them relevant. See Synthes
(U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. Medico,
563 F.3d 1285, 1297–98 (Fed. Cir. 2009) (holding display
of products at a trade show after the patent’s issuance
and “for the purpose of generating interest in infringing
products” was a relevant jurisdictional contact).
NEXLEARN, LLC v. ALLEN INTERACTIONS, INC. 9
case does not otherwise evidence Allen’s “deliberate
affiliation with the forum State and the reasonable fore-
seeability of possible litigation there.” Id. The NDA, by
its terms, expired in 2011. J.A. 44 ¶ 19. We fail to see
how a provision in an expired NDA stating the “Agree-
ment shall be governed by the laws of the State of Kan-
sas” shows reasonable foreseeability of litigation in
Kansas over NexLearn’s claim of infringement of the
’522 patent. See J.A. 43 ¶ 9. While the EULA does not
bear an expiration date, it suffers the same deficiency.
The EULA requires that “any dispute arising out of or
related to this Agreement or the Product must be brought
exclusively in a court sitting in Wichita, Kansas.”
J.A. 216. This provision only recites forum selection for
disputes arising out of the EULA or related to the Sim-
Writer product. It does not specify the forum for disputes
relating to infringement of the ’522 patent or relating to
the ZebraZapps product. Nor does NexLearn’s complaint
even assert breach of EULA; NexLearn’s breach of con-
tract claim rests on breach of the NDA. J.A. 38 ¶ 11
(“Allen’s misuse of NexLearn’s confidential information
constitutes a breach of the NDA.”).
We agree with the district court’s determination that
Allen’s contacts predating the issuance of the ’522 patent
are not relevant contacts for establishing specific jurisdic-
tion over NexLearn’s patent infringement claim.
2. Allen’s ZebraZapps Website & Contacts Postdating
’522 Patent Issuance
NexLearn alleges Allen’s operation of an interactive
ZebraZapps website creates a substantial connection with
its patent infringement claim in Kansas. According to
NexLearn, “Allen has specifically targeted Kansas resi-
dents in facilitating the purchase of ZebraZapps” on its
website by allowing Kansas residents to select “Kansas”
from a dropdown menu in the billing-address section
when ordering ZebraZapps. J.A. 187–88 ¶ 4. NexLearn
10 NEXLEARN, LLC v. ALLEN INTERACTIONS, INC.
also identifies two instances in which Allen interacted
with NexLearn employees residing in Kansas after the
’522 patent issued. On September 9, 2014, Allen sent an
email to its email subscribers, which included NexLearn
employees, describing new features in ZebraZapps.
J.A. 205–07. In July 2015, Allen’s Director of Customer
Success Services offered a NexLearn employee a free trial
of ZebraZapps after she unsuccessfully attempted to
purchase the product from Allen’s website. J.A. 188 ¶ 5.
We agree with the district court that Allen’s Zebra-
Zapps website alone does not render it subject to specific
jurisdiction in Kansas. See J.A. 11–14. We also agree
with the district court that the addition of Allen’s two
contacts with NexLearn employees is insufficient to confer
specific jurisdiction over Allen. But we do not agree with
the district court’s analysis in reaching that conclusion.
We evaluate Allen’s website as we would any other
contact under a specific jurisdiction theory; for there to be
minimum contacts, there must be evidence that Allen
purposefully availed itself of Kansas and that NexLearn’s
claim arises out of or relates to those contacts. 4 The
existence of Allen’s website, without more, is insufficient
to show that Allen has minimum contacts with Kansas.
Cf. Nuance Commc’ns, Inc. v. Abbyy Software House, 626
F.3d 1222, 1235 (Fed. Cir. 2010) (holding “this court
cannot determine that Abbyy Software purposefully
availed itself of the privilege of conducting activities in
California by some affirmative act or conduct, and that
Nuance’s claims arise out of those activities,” although
Abbyy Software maintained a website that “promotes the
4 We agree with the district court’s decision not to
apply the Zippo “sliding scale” test to assess personal
jurisdiction in this case. See J.A. 12–13 (citing Zippo Mfg.
Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1124 (W.D.
Pa. 1997)).
NEXLEARN, LLC v. ALLEN INTERACTIONS, INC. 11
sale of [the infringing] products in California”); Campbell
Pet Co. v. Miale, 542 F.3d 879, 884 (Fed. Cir. 2008) (not
relying on defendant’s website as a contact for specific
jurisdiction and specifying in the general jurisdiction
context, “maintenance of a website is also insufficient to
give rise to general jurisdiction over the defendants in the
State of Washington, as the website is not directed at
customers in Washington and does not appear to have
generated any sales in Washington”). We addressed
whether a defendant’s website gave rise to specific juris-
diction in Trintec, in which Trintec alleged Pedre was
subject to specific jurisdiction in the District of Columbia
based on “Pedre’s use of its own interactive website to
advertise its products, which Trintec alleges customers in
the District of Columbia can use to purchase those prod-
ucts from Pedre.” Trintec Indus., Inc. v. Pedre Promotion-
al Prods., Inc., 395 F.3d 1275, 1281 (Fed. Cir. 2005). We
explained the difficulty with that specific jurisdiction
theory was that “Pedre’s website is not directed at cus-
tomers in the District of Columbia, but instead is availa-
ble to all customers throughout the country.” Id. Absent
evidence that “any District residents have ever actually
used Pedre’s website to transact business,” Trintec’s
allegations (together with other evidence of Pedre’s con-
tacts) were insufficient to show specific jurisdiction exist-
ed. Id. at 1281–82.
Allen’s inclusion of Kansas in its dropdown of all
states on its website is not enough to subject Allen to
jurisdiction in Kansas. Allen’s address selector may
indicate its amenability to selling ZebraZapps to Kansas
residents, but it does not establish minimum contacts
arising out of or related to the infringement claim. While
a Kansas resident could purchase ZebraZapps from
Allen’s website, what is missing is any evidence that such
a sale has taken place. Apart from the NexLearn employ-
ee that unsuccessfully attempted to purchase ZebraZapps,
NexLearn does not even allege that any Kansas resident
12 NEXLEARN, LLC v. ALLEN INTERACTIONS, INC.
has accessed Allen’s ZebraZapps website. There is no
evidence that Allen’s website facilitated the making,
using, offering, or selling of ZebraZapps in Kansas in
order to connect Allen’s website with NexLearn’s patent
infringement claim. In this respect, Allen’s website is
conceptually no different than operating an out-of-state
store. That a store would accept payment from a hypo-
thetical out-of-state resident and ship its product there
does not create a substantial connection for an infringe-
ment claim between the store and the hypothetical resi-
dent’s forum State. The store’s willingness to enter future
transactions with out-of-state residents does not, without
more, show purposeful availment of each State in which it
would, but has not yet, provided or even offered a sale.
Something more is needed—whether it be actual sales,
targeted advertising, or contractual relationships—to
connect the defendant’s infringing acts of making, using,
offering, or selling its product with the forum State. What
is sufficient may vary from case to case, but it cannot be
that the mere existence of an interactive website, like the
existence of an out-of-state store, is “suit-related con-
duct . . . creat[ing] a substantial connection with the
forum State.” Walden, 134 S. Ct. at 1121.
The addition of Allen’s two post-issuance contacts
with NexLearn employees do not suffice to render Allen
subject to jurisdiction in Kansas. We do not agree with
the district court’s determination that Allen’s sole post-
issuance email to NexLearn employees was irrelevant
because NexLearn “unilaterally expressed an interest in
ZebraZapps or Allen.” J.A. 10–11. It is true that when
determining whether a defendant has minimum contacts
with a forum State, the “unilateral activity of another
party or a third person is not an appropriate considera-
tion.” Helicopteros Nacionales de Colom., S.A. v. Hall, 466
U.S. 408, 417 (1984); see also Walden, 134 S. Ct. at 1122(“[T]he relationship must arise out of contacts that the
‘defendant himself’ creates with the forum State.” (quot-
NEXLEARN, LLC v. ALLEN INTERACTIONS, INC. 13
ing Burger King, 471 U.S. at 475)). But Allen’s email to
NexLearn employees is not categorically irrelevant simply
because the NexLearn employees solicited the email. It is
undisputed that Allen accepted these employees’ requests
to receive emails about ZebraZapps and Allen. It is also
undisputed that Allen thereafter emailed these NexLearn
employees about ZebraZapps and its company. Allen
extinguished the unilateral nature of these contacts when
it affirmatively responded to these employees’ requests by
including them on its email subscription list and sending
an email to these subscribers.
While Allen’s post-issuance email is relevant to our
specific jurisdiction inquiry, it is not enough to confer
specific jurisdiction. The sole post-issuance email in the
record consists of a mass-email advertisement about “new
features, updates, and enhancements” made to Zebra-
Zapps. J.A. 205–06. At the end of the email, Allen in-
structs the recipients of its email to “[l]earn more about
the new features and start creating exceptional e-learning
solutions with ZebraZapps today” and provides a link to
its website. J.A. 207. We have previously held that
similar contacts, in which an advertisement was “nation-
ally distributed and not limited to [the forum State],” are
“attenuated evidence [that] does not show that the [forum
State] was a target market.” Compare Grober v. Mako
Prods., Inc., 686 F.3d 1335, 1347 (Fed. Cir. 2012) (nation-
al advertisement mailed twice per year did not show the
defendant purposefully availed itself of the privileges of
conducting activities within California), with Quill Corp.
v. North Dakota, 504 U.S. 298, 304, 308 (1992) (defend-
ant’s mailing of 24 tons of catalogs and flyers each year
into North Dakota subjected it to specific jurisdiction
there). While Kansas need not be the only target of
Allen’s conduct, Allen’s mailing of one advertisement to
all of its nationwide subscribers does not “create a sub-
stantial connection with the forum State.” Walden, 134
S. Ct. at 1121. We also question whether NexLearn’s
14 NEXLEARN, LLC v. ALLEN INTERACTIONS, INC.
infringement claim could arise out of or relate to this
advertisement because the advertisement does not appear
to expressly offer ZebraZapps for sale. “[M]ere advertis-
ing and promoting of a product may be nothing more than
an invitation for offers.” Grp. One, Ltd. v. Hallmark
Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001); see also
3D Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373 (Fed.
Cir. 1998) (holding price quotation letters were offers for
sale under § 271 where they contained “a description of
the allegedly infringing merchandise and the price at
which it can be purchased”). Regardless of whether
Allen’s single email could qualify as an offer for sale
under § 271(a), it is insufficient to establish minimum
contacts with Kansas in this case.
For similar reasons, we do not agree with the district
court’s determination that Allen’s offer of a free Zebra-
Zapps trial to a NexLearn employee is irrelevant to our
specific jurisdiction inquiry. See J.A. 14 (explaining it
“cannot consider those contacts that are created or manu-
factured by the plaintiff for purposes of establishing
personal jurisdiction”). NexLearn did not unilaterally
cause this contact to arise; Allen purposefully directed
activities to Kansas when it offered the NexLearn em-
ployee the free trial. So long as Allen’s offer of the free
ZebraZapps trial qualifies as or relates to a make, use,
offer, or sale of an accused product under § 271(a), we fail
to see why this contact is irrelevant to NexLearn’s patent
infringement claim simply because the recipient was a
NexLearn employee. If Allen’s offer of the free trial
constituted or gave rise to an act of infringement, it is
immaterial whether or not the offer was made to an
employee of the patent holder. This contact is jurisdic-
tionally relevant to NexLearn’s patent infringement
claim.
As with Allen’s single post-issuance email to
NexLearn employees, however, Allen’s single offer of a
free ZebraZapps trial is too attenuated to establish mini-
NEXLEARN, LLC v. ALLEN INTERACTIONS, INC. 15
mum contacts with Kansas. In light of the “relationship
among the defendant, the forum, and the litigation,”
Allen’s single offer is too insignificant to justify haling it
into court in Kansas. See Walden, 134 S. Ct. at 1121(alteration omitted); cf. J. McIntyre Mach., Ltd. v. Nicas-
tro, 564 U.S. 873, 888–89 (2011) (Breyer, J., concurring)
(“[T]he Court, in separate opinions, has strongly suggest-
ed a single sale of a product in a State does not constitute
an adequate basis for asserting specific jurisdiction over
an out-of-state defendant . . . .”). It does not create a
substantial connection with either Kansas or NexLearn’s
cause of action. We have previously held that a defend-
ant’s contacts with a forum State, similar to those here,
were insufficient to establish minimum contacts. In
Maynard, for example, we held Maynard failed to allege
Philadelphia Cervical was subject to specific jurisdiction
in Kentucky where Philadelphia Cervical “(1) sent a letter
to Maynard in Kentucky dated December 1, 1992,
(2) maintained an Internet web page, and (3) sold a Phil-
adelphia Cervical product to Maynard in Kentucky.” See
Maynard v. Phila. Cervical Collar Co., 18 F. App’x 814,
816–17 (Fed. Cir. 2001). In Katz, we explained that the
defendant’s single sale to the plaintiff, among the thou-
sands of containers it sold in a different State, did not
subject the defendant to specific jurisdiction. Katz v.
Ladd Uniform Co., 975 F.2d 869 (Fed. Cir. 1992) (un-
published) (“Katz’s isolated mail-order requests were for
the supply of three gas containers, with a total sales value
of $26.85. . . . Ladd’s isolated action did not satisfy the
‘minimum contacts’ that are necessary to meet the re-
quirements of due process.”). Here, Allen’s isolated offer
of a free trial to a Kansas resident is insufficient to estab-
lish a substantial connection with Kansas to warrant the
exercise of specific jurisdiction.
Allen’s website together with its contacts with
NexLearn create only an “attenuated affiliation” with
Kansas as opposed to a “substantial connection” with the
16 NEXLEARN, LLC v. ALLEN INTERACTIONS, INC.
forum State as required for specific jurisdiction. See
Burger King, 471 U.S. at 475. We thus affirm the district
court’s dismissal of NexLearn’s patent infringement claim
for lack of personal jurisdiction.
B. NexLearn’s Breach of Contract Claim
We affirm the district court’s dismissal of NexLearn’s
remaining claim for breach of contract for lack of subject
matter jurisdiction. NexLearn’s complaint asserts the
District of Kansas has original subject matter jurisdiction
over only its patent infringement claim, resting its breach
of contract claim on “supplemental jurisdiction pursuant
to 28 U.S.C. § 1367.” J.A. 36 ¶ 1. While neither party
disputes that a claim for patent infringement falls within
the district court’s subject matter jurisdiction pursuant to
28 U.S.C. §§ 1331, 1338(a), the district court’s dismissal of
that claim for lack of personal jurisdiction left no remain-
ing claim over which the district court could exercise
original subject matter jurisdiction. See J.A. 17. A dis-
trict court cannot exercise supplemental jurisdiction over
a claim where original subject matter jurisdiction does not
exist. 28 U.S.C. § 1367(a). Because we affirm the district
court’s dismissal of NexLearn’s patent infringement claim
for lack of personal jurisdiction, we affirm the district
court’s dismissal of NexLearn’s supplemental claim for
breach of contract.
CONCLUSION
For the reasons discussed above, we affirm the district
court’s dismissal of NexLearn’s complaint.
AFFIRMED
COSTS
Costs to Allen.