“[J]urisdictional inquiries cannot rest on such bright-line rules—there are no ‘talismanic jurisdictional formulas.’” – CAFC
On April 18, the United States Court of Appeals for the Federal Circuit (CAFC) reversed and remanded the U.S. District Court for the Northern District of California’s decision dismissing Apple Inc.’s complaint for declaratory judgment of noninfringement for lack of personal jurisdiction. Apple brought the complaint against patent owner Zipit Wireless, Inc.
The CAFC found the district court erred in interpreting precedential cases as applying a bright-line rule that patent infringement notice letters and related communications can never form the basis for personal jurisdiction.
Zipit is a Delaware corporation with a principal place of business in Greenville, South Carolina, and with each of its 14 employees located in South Carolina. Zipit is the assignee of U.S. Patent Nos. 7,292,870 and 7,894,837, which are generally directed to wireless instant messaging devices that use Wi-Fi to send and receive instant messages.
Despite determining that Apple had established that minimum contacts existed with California and Zipit failed to show that exercise of jurisdiction would be unreasonable, the district court dismissed Apple’s declaratory judgment action for lack of jurisdiction.
The district court believed Federal Circuit precedent held that the exercise of personal jurisdiction would be unconstitutional when all of the contacts were for the purpose of warning against infringement or negotiating license agreements. Therefore, the district court determined that the exercise of jurisdiction over Zipit would be unreasonable because (1) Zipit’s lack of binding obligations tying it to California and (2) Zipit’s contacts with California all related to the attempted resolution of the status of the patents-in-suit.
When determining whether the exercise of specific personal jurisdiction is appropriate, the court considers if the defendant has minimum contacts with that jurisdiction. When minimum contacts are satisfied, the exercise of jurisdiction is “presumptively reasonable,” and the burden is placed on the defendant to present a compelling case that the presence of some other considerations would render jurisdiction unreasonable.
Zipit Had Minimum Contacts with California
The parties’ communications regarding the patents-in-suit and the relevant lawsuit dated back to at least 2013, when Zipit first contacted Apple in the Northern District of California. Over the course of three years, the parties exchanged several rounds of correspondence and met in person twice at Apple’s Cupertino headquarters located in the Northern District. By 2016, the parties continued to disagree on the validity of the patents-in-suit and whether Apple’s product fall within the scope of the patents-in-suit.
The parties discussed, among other things, the possibility of Apple buying or licensing the patents-in-suit from Zipit; the status and perceived strength of ongoing inter partes review proceedings involving the patents-in-suit; and technical details regarding potential infringement (and allegations of willful infringement). Zipit also sent multiple letters and claim charts discussing its allegations of infringement. Ultimately, these discussions led to Zipit filing a patent infringement action against Apple.
Considering the evidence of Zipit’s communication with Apple in California, the district court found, and the Federal Circuit agreed, that Zipit directed its activities to California and that minimum contacts were satisfied. The district court relied on Xilinx, Inc. v. Papst Licensing GmbH & Co., where the court held the defendant had purposefully directed its activities to California when it sent multiple notice letters to the and traveled there to discuss the plaintiff’s alleged patent infringement and potential licensing arrangements.
However, Zipit relied on Autogenomics, Inc. v. Oxford Gene Tech. Ltd. to argue that minimum contacts were not satisfied here. Specifically, Zipit suggested Autogenomics created a bright-line rule that cease-and-desist letters and related in-person discussion cannot support minimum contacts for personal jurisdiction. But the Federal Circuit disagreed and explained there were material factual distinctions between Autogenomics and this case, and precedent supported the determination that minimum contacts with California were satisfied here.
Zipit Failed to Make a Compelling Case of Unreasonableness
Having determined that Zipit purposefully directed its activities at California, the court considered whether Zipit presented a compelling case that the presence of some other considerations would render jurisdiction unreasonable. The CAFC concluded Zipit had not done so.
Exercise of Jurisdiction Would Not be Unreasonable
Although the district court considered the Burger King factors and determined that Zipit had not shown that the exercise of jurisdiction would be unreasonable, the district court concluded that it would be unreasonable to exercise jurisdiction over Zipit because “Zipit’s contacts with California all related to the attempted resolution of the status of” the patents-in-suit, i.e., “for the purpose of warning against infringement.” But the Federal Circuit disagreed in light of Trimble Inc. v. PerDiemCo LLC, where the court stated that “there is no general rule that demand letters can never create specific personal jurisdiction.”
Zipit highlighted a settlement-promoting policy argument made in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., where the court stated that a right holder should be permitted to send a notice letter to a party in a particular forum to try to settle disputes without being haled into court in that forum. But the CAFC reasoned that this policy cannot control the inquiry—it must be considered together with the other Burger King factors.
The CAFC held that “the district court erred in reading our precedent as creating a bright-line rule that communications directed to ‘the attempted resolution’ of the parties’ dispute regarding the patents-in-suit trumps all other considerations of fairness and reasonableness.” “[J]urisdictional inquiries cannot rest on such bright-line rules—there are no ‘talismanic jurisdictional formulas,’” the Federal Circuit wrote. Rather, courts must consider a variety of interests.
Applying the Burger King Factors
The Burger King factors include:  “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,” and  the “shared interest of the several States in furthering fundamental substantive social policies.”
First, the Federal Circuit found that while adjudicating in California will created some burden for Zipit, “Zipit’s evidence in support of hardship is a single sentence. . . and [a] ‘general assertion of hardship, without supporting evidence’—beyond the single sentence—‘[is] unpersuasive.’”
The CAFC also noted that Zipit went beyond attempting to resolve its dispute with Apple outside of court; it amplified its allegations of infringement after Apple stated it did not need a patent license, and Zipit, in the end, sued Apple for patent infringement. Therefore, Zipit could have foreseen being haled into court in California.
Second, it was undisputed that California has an interest in adjudicating the dispute because it has interests in commerce and scientific development and has an interest in protecting its residents from unwarranted claims of patent infringement.
Third, it was clear that Apple had an interest in obtaining convenient and effective relief because it is headquartered in California and has an interest in protecting itself.
For the fourth and fifth factors, the CAFC considered the policy argument discussed above and stated it must balance these factors against the other factors.
Ultimately, the Federal Circuit held that was not “one of the ‘rare’ situations in which sufficient minimum contacts exists but where the exercise of jurisdiction would be unreasonable.” Zipit failed to meet its burden to present a compelling case that these factors would render the exercise of jurisdiction unreasonable, especially considering the extent of Zipit’s contacts in California.