C5 MEDICAL WERKS, LLC and COORSTEK MEDICAL, LLC, Plaintiffs - Appellees,
CERAMTEC GMBH, Defendant-Appellant.
from the United States District Court for the District of
Colorado (D.C. No. 1:14-CV-00643-RBJ-CBS)
Jessica L. Ellsworth, Hogan Lovells U.S. LLP, Washington,
D.C. (Clay C. James, Hogan Lovells U.S. LLP, Denver,
Colorado; Anna Kurian Shaw, Sean Marotta, Katherine B.
Wellington, Hogan Lovells U.S. LLP, Washington, D.C., with
her on the briefs), for the Defendant-Appellant.
D. Vogl, Orrick, Herrington & Sutcliffe LLP, New York,
New York (Lisa T. Simpson, Christopher T. Cariello, Orrick,
Herrington & Sutcliffe LLP, New York, New York; Mark S.
Davies, Orrick, Herrington & Sutcliffe LLP, Washington,
D.C.; Diana Rutowski, Scott Lonardo, Orrick, Herrington &
Sutcliffe LLP, Menlo Park, California; Michael J. Hoffman,
Erin A. Kelly, Bryan Cave LLP, Denver, Colorado, with him on
the brief), for the Plaintiffs-Appellees.
HARTZ, PHILLIPS and EID, Circuit Judges.
C5 Medical Werks sued Defendant-Appellant CeramTec in the
United States District Court for the District of Colorado for
cancellation of CeramTec's trademarks and a declaratory
judgment of non-infringement. CeramTec moved to dismiss for
lack of personal jurisdiction. The district court denied
CeramTec's motion and, after a bench trial, found in
favor of C5. CeramTec appealed both the district court's
finding of personal jurisdiction and its determination on the
conclude that the district court did not possess personal
jurisdiction over CeramTec. We hold CeramTec's attendance
at various tradeshows was fortuitous and, as such, was
insufficient to show purposeful availment of the forum state,
Colorado. Further, to the extent CeramTec engaged in
enforcement activity, it did so outside of Colorado.
Accordingly, we reverse the district court's denial of
CeramTec's motion to dismiss for lack of personal
jurisdiction and remand with instructions that the case be
is a German company that produces ceramics and ceramic
components for medical prostheses. These components use a
ceramic composite called BIOLOX Delta. BIOLOX Delta contains
0.33% chromium, making it appear pink. C5 is a Delaware
company headquartered in Grand Junction, Colorado. C5 also
produces ceramic components for medical prostheses. C5's
composite currently in use is called Cerasurf-p. Cerasurf-p
also contains 0.33% chromium and also appears pink. Unlike
C5, CeramTec has no physical presence in Colorado. At the
time C5 filed this suit against CeramTec, CeramTec had no
employees, officers, or customers in Colorado. Though
CeramTec has no physical presence in Colorado, CeramTec has
participated in three national industry conferences in
Colorado, where it promoted its pink ceramic products.
at one time had a patent on the use of the chromium-based
material in its ceramic medical implants. Shortly before the
patent expired, CeramTec began an application with the U.S.
Patent and Trademark Office (PTO) to register the color pink
for its hip joint components. The PTO denied CeramTec's
application for a listing on the Principal Register but
allowed the company to list its trademark on the Supplemental
Register. After CeramTec's patent expired, other
companies, including C5, began using a chromium composite in
their ceramic components. In response, CeramTec made various
attempts to enforce its trademark against C5's use of the
color pink in its components. CeramTec seized C5's
products from a tradeshow in Paris, France. CeramTec also
sent a cease-and-desist letter to C5 in Colorado, objecting
to C5's production of pink ceramic implants.
March 2014, C5 initiated the present lawsuit. C5 sought
cancellation of CeramTec's trademarks in the PTO and a
determination on the merits that C5's products do not
infringe on CeramTec's trademarks. In May 2014, CeramTec
moved to dismiss C5's complaint for lack of personal
jurisdiction. A month later, CeramTec filed a complaint
against C5 in the District Court of Delaware, alleging
trademark infringement, unfair competition, and deceptive
trade practices. In the Colorado suit, the district court
found it had personal jurisdiction over CeramTec. After a
bench trial, the district court found in favor of C5 and
granted C5's request for a declaration of
appeal, CeramTec argues that the district court lacked
personal jurisdiction. It also challenges the district
court's declaration that CeramTec has no trade dress
rights in the color pink.
court reviews a personal jurisdiction ruling de novo.
Bell Helicopter Textron, Inc. v. Heliqwest Int'l,
Ltd., 385 F.3d 1291, 1296 (10th Cir. 2004). Factual
findings made by the district court during a bench trial are
reviewed for clear error, and its legal conclusions are
reviewed de ...