Oxford Gene (Again?) Avoids California Jurisdiction

Posted on | March 20, 2008 | No Comments

2008-1217 Autogenomics v. Oxford Gene Tech
CD/CA 07-cv-846

Autogenomics appeals Judge Mariana Pfaelzer’s order dismissing its declaratory judgment action for lack of personal jurisdiction.  Oxford Gene Tech is a British company that owns 6,057,270 related to analyzing polynucleotide sequences.  OGT sent a cease and desist to Autogenomics and, after licensing discussions collapsed, Autogenomics filed a declaratory judgment action.  In support of personal jurisdiction, Autogenomics showed that OGT:

• Had entered into a “joint venture” with another California company;
• Made one sale of arrays into California for $7,600;
• Attended three conference or trade shows in California since 2003;
• Advertised on the internet, with Univ. of California one of the top institutional viewers;
• Entered into at least 10 licenses with California companies, generating tens of millions of dollars;
• Sent the cease and desist and negotiated with Autogenomics.

The court found that these facts or allegations did not support either general or specific jurisdiction.  For the former, these contacts were not considered “continuous and systematic”—the court described them as a series of unconnected activities that happened to involve a number of interested California companies.  Business with California, not in California.

The court also found no specific jurisdiction.  The licensing with California companies appears to have been on a non-exclusive basis (at least vis-à-vis the asserted patent), and thus could not support specific jurisdiction (citing Akro v. Luker and various district court decisions).  Likewise, sending the cease and desist and discussing licensing cannot support specific jurisdiction under Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc.  Finally, the cause of action did not “arise out of or relate to” defendant’s other “isolated and sporadic” contacts. 

The court also rejected Autogenomics plea for jurisdiction based on “fairness and reasonableness,” because OGT was a foreign patentee and had allegedly “evaded” California jurisdiction before.  The court declined, noting that 35 U.S.C. § 293 guaranteed at least one appropriate U.S. venue for Autogenomics.

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