Pieczenik v. Dyax

Infringement Action Dismissed for Lack of Personal Jurisdiction


September 17, 2001

Kovalick, Vincent P.


Last Month at the Federal Circuit - October 2001

Judges: Bryson (author), Michel, and Dyk

In Pieczenik v. Dyax Corp., No. 00-1519 (Fed. Cir. Sept. 17, 2001), the Federal Circuit affirmed a judgment of the district court that had dismissed a patent infringement action for lack of personal jurisdiction over Dyax Corporation (“Dyax”).

Plaintiff, George Pieczenik, asserted three patents against Dyax in the U.S. District Court for the Southern District of New York. The patents are related to DNA technology. Dyax moved to dismiss the complaint for lack of personal jurisdiction, contending that it did not have sufficient contacts with the State of New York. Discovery revealed that Dyax has no facilities, properties, employees, subsidiaries, operations, bank accounts, or telephone listings in New York, is not registered to do business in New York, and does not pay corporate taxes in New York.

Pieczenik asserted jurisdiction based on two agreements between Dyax and Pall Corporation (“Pall”), a New York company, under which Dyax provided services to Pall. Pieczenik also pointed to an agreement between Dyax and Ortho-Clinical Diagnostics, Inc. (“Ortho”), another New York company, which granted Ortho a license to practice the technology protected by certain Dyax patents. The district court was not persuaded and dismissed the complaint for lack of personal jurisdiction.

The Federal Circuit ruled that in New York the cause of action must arise from a transaction of business in New York. None of the transactions relied upon by Pieczenik satisfied this test. As to the agreements between Dyax and Pall, Dyax had performed the work for both of those agreements in Massachusetts, and the patents cover the processes by which those products were made. Thus, any cause of action for direct infringement arose from Dyax’s activities in Massachusetts, not from activities in New York.

As to Dyax’s agreement with Ortho, Pieczenik had failed to show that the agreement was negotiated or executed in New York. Nor did Pieczenik show that Dyax representatives had visited New York in connection with the licensing agreement. Finally, the choice of law provision in the contract specified that Massachusetts law would govern any disputes arising out of the contracts. Since the mere existence of a contract with a New York corporation is not sufficient to constitute a transaction of business under the New York long-arm statute, the Federal Circuit agreed that personal jurisdiction was lacking.