United States: Don't Get Personal

Last Updated: July 27 2015
Article by Diana Rutowski and Cam Phan

Xilinx, Inc. v. Papst Licensing GMBH & Co. KG (Judge Lucy Koh) (July 9, 2015)

The Supreme Court's 2014 ruling in Daimler v. Bauman raised the bar to establish personal jurisdiction over a defendant. Daimler has made it substantially more difficult for a foreign corporation to be haled into US courts. While Daimler dealt specifically with the issue of whether the acts of a US-based subsidiary should be imputed to the parent foreign corporation for personal jurisdiction purposes, it generally found that a court only has general personal jurisdiction if the foreign defendant's affiliations with the forum state are "so continuous and systemic as to render [it] essentially at home in the forum state."

Here, Xilinx and Altera sought to pull in defendant Papst Licensing GMBH into a patent case before Judge Lucy Koh, but was unsuccessful in overcoming the personal jurisdiction hurdle in light of Daimler. First, though Judge Koh recognized that defendant Papst "certainly has many connections to the State of California," she found general jurisdiction lacking because Papst is not incorporated in California nor does it have its principal place of business here. Judge Koh made clear that, except in "exceptional case[s]," the paradigm forum for the exercise of general jurisdiction is a party's domicile, formal place of incorporation, or principal place of business. Nonresidents should not be subject to general jurisdiction "in every State in which [the defendant] engages in a substantial, continuous, and systematic course of business." Therefore, despite the fact that Papst had brought a number of patent infringement suits in California courts, had licensing agreements with California companies, allegedly obtained revenues from California companies, and had California-based counsel, Judge Koh found an insufficient connection to the state for general personal jurisdiction. Judge Koh noted that a court in the Eastern District of New York found general jurisdiction with a similar set of facts (Illinois non-practicing entity with a principal place of business in Arizona engaged in licensing agreements with companies in New York), but explained that the case was decided before Daimler and should not be followed because it was inconsistent with Daimler. Thus, facts that would have established general jurisdiction in the past may no longer suffice.

Second, with respect to specific jurisdiction, Judge Koh concluded that the facts related solely to Papst's attempts to license the patents, which the Federal Circuit has held insufficient to support exercise of personal jurisdiction. To establish specific jurisdiction in a declaratory judgment action, only activities related to the specific enforcement of the patents at issue are relevant. Accordingly, Judge Koh found no specific jurisdiction, rejecting plaintiffs' arguments based on the following alleged contacts with California:

  1. Cease-and-desist letters: Under well-established Federal Circuit precedent, cease-and-desist letters directed to the jurisdiction about the asserted patents threatening suit for patent infringement are insufficient;
  2. In-person meetings: Papst' meetings with plaintiffs in California are also insufficient because they were "mere attempts to license the patents at issue" and not "patent enforcement meetings."
  3. Potential license targets: The mere act of maintaining a list of potential license targets based in California, without more, is simply an activity related to Papst's attempts to license the patents-in-suit, and not "enforcement activities."
  4. Non-exclusive licensee: While the Federal Circuit has held that jurisdiction is proper where the defendant grants an exclusive license in the forum that includes the right to litigate infringement claims, Judge Koh concluded that the mere grant of a non-exclusive license to an in-state licensee does not subject Papst to personal jurisdiction in California.
  5. Enforcement obligations on the part of the licensee: Specific jurisdiction may be established if the license agreement contemplates a relationship beyond royalty or cross-licensing payment, including for example, imposing enforcement obligations with a party residing or regularly doing business in the forum. Here, however, Judge Koh concluded that the in-state licensee has no such obligations.
  6. California as the forum: Papst bought the asserted patents from FTE, who bought it from Rambus. The original purchase agreement between FTE and Rambus selected California as the forum to govern disputes. The purchase agreement between FTE and Papst selected Texas as the forum of choice. Accordingly, Judge Koh did not put much weight on the California forum selection clause.
  7. California-based attorney: The simple act of retaining patent counsel based in California to pay maintenance fees on a patent is insufficient to vest California with personal jurisdiction over a declaratory judgment action challenging the validity of that patent.
  8. Attorney licensed in California: Even more so, Papst's hiring of a license negotiations lawyer, who is based in Texas but licensed in California, is insufficient to justify an exercise of jurisdiction over Papst.
  9. Activities relating to other patents: Papst's enforcement activities regarding other patents are irrelevant to whether this Court can assert specific jurisdiction over Papst based on its efforts to enforce the current patents.

Getting personal, Courts will look to state of incorporation, principal place of business in the forum state, and specific enforcement activities relating to the asserted patents before exercising general or specific jurisdiction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.