Personal Jurisdiction: What Activities Are Sufficient?

Autogenomics, Inc. v. Oxford Gene Tech. Limited, No. 2008-1217 (Fed. Cir. May 18, 2009):

Holding: “[O]nly enforcement or defense efforts related to the patent rather than the patentee’s own commercialization efforts are to be considered for establishing specific personal jurisdiction in a declaratory judgment action against the patentee.” Slip op. at p. 13 (citing Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1328 (Fed. Cir. 2008)).

Comments:

This case gives a nice summary of related rules from previous personal jurisdiction cases:

1. “‘[C]ease-and-desist letters alone do not suffice to justify personal jurisdiction’ in a declaratory judgment action.” Id. at p. 10.
2. “[A]ttempts at ‘extra-judicial patent enforcement’ by harming plaintiff’s business activities in forum state is a sufficient additional factor to justify the exercise of personal jurisdiction.” Id. at p. 11.
3. “[E]ntry into an exclusive license with an entity in the forum state is sufficient extra activity to establish jurisdiction.” Id.
4. Personal jurisdiction exists when a patentee contracted with an exclusive distributor to sell the patented products in the forum state where the agreement was “analogous to a grant of a patent license.” Id.
5. Personal jurisdiction exists when a party “initiated a suit seeking to enforce the same patent that is the subject of this suit against other parties, unrelated to this action, in the same district court.” Id.
6. “[E]xclusive licensing of the accused infringer’s competitor in the forum state constituted the required ‘additional activity’ beyond sending warning letters.” Id.