Clarifying what type of patent enforcement action might create
personal jurisdiction, the US Court of Appeals for the Federal
Circuit found that where a patent owner visits a forum to negotiate
licensing, that activity supports sufficient minimum contacts to
make personal jurisdiction fair and reasonable. Xilinx, Inc. v.
Papst Licensing GmbH & Co. KG, Case No. 15-1919 (Fed.
Cir., Feb. 15, 2017) (Dyk, J).
Papst Licensing, a German non-practicing entity, sent two patent
infringement notice letters to Xilinx, a California company, and
traveled to California to negotiate a license to its
Eventually, Xilinx filed for a declaratory judgment in
California seeking a declaration of non-infringement and invalidity
of Papst's patents. The district court dismissed the case for
lack of personal jurisdiction over Papst. The district court
concluded that under Federal Circuit precedent, Papst's efforts
to license its patents to Xilinx were "enforcement
activities" that were irrelevant to jurisdiction and therefore
insufficient to create personal jurisdiction. Xilinx
The Federal Circuit reversed, noting that the California Long
Arm Statute is coextensive with the Due Process Clause and
therefore only a due process analysis was required. After
confirming its analysis, the Court found that the district court in
California had specific (as opposed to general) personal
jurisdiction over Papst.
The Federal Circuit noted that Papst had purposefully directed
its activities to California by sending notice letters threatening
an infringement suit and traveling to California to meet with
Xilinx. Xilinx's declaratory judgment related to these relevant
contacts. The Court explained that, except in rare cases, minimum
contacts make jurisdiction presumptively reasonable unless the
defendant can provide a compelling case that jurisdiction is
unreasonable based on, e.g., the burden on the defendant,
the forum state's interest in adjudicating the dispute, the
plaintiff's interest in obtaining convenient and effective
relief, the interstate judicial system's interest in obtaining
the most efficient resolution of controversies, or the shared
interest of several states in furthering fundamental substantive
social policies. The Federal Circuit noted that the state of
California had a vested interest in protecting its residents from
unwarranted infringement claims and that Xilinx had an interest in
using a forum near its home. Xilinx's declaratory judgment
action was an efficient method of resolving the dispute, and there
was no conflict with other states.
Papst argued that a California forum presented a burden. The
Federal Circuit had previously found (in its 1998 Red Wing
Shoe and its 2008 Avocent Huntsville v. Aten
International decisions) that enforcement activity undertaken
within a jurisdiction was by itself insufficient to meet the
reasonableness requirement for personal jurisdiction. The Federal
Circuit disagreed, noting that here, unlike the prior cases, Papst
had not stopped at cease-and-desist letters, but had traveled to
California to meet with Xilinx. By traveling to California, Papst
created a "territorial presence" that "reinforce[d]
the reasonable foreseeability of suit there." The Court
reasoned that the lack of burden on Papst was further supported by
its foreign non-practicing entity status, which deprives it of a
home forum and requires it to litigate far from home regardless,
and the fact that it had litigated in California
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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