Filed under: Case Updates | 17 May, 2011 | by GHollis

Decided: April 25, 2011

The question before the CAFC was whether a patentee’s activities directed at the forum state were sufficient to give the forum court personal jurisdiction over the patentee in a declaratory judgment action.  The district court in this case previously held that the defendant’s (Accession) activities were not sufficient to give the court personal jurisdiction over the defendant, and the CAFC affirmed. 

Accession invented a pet door and procured a patent for it.   In a subsequent attempt to commercialize it’s patent, Accession solicited Radio Systems for a licensing agreement but was rejected.   Radio Systems pursued its own patent concerning similar subject matter. Radio Systems’ application initially received a Notice of Allowance.  The notice was  rescinded after Accession notified the PTO of its own prior patent; said previous patent was not disclosed by Radio Systems.  Accession also accused Radio Systems of infringing its patent.  In response to these allegations, Radio Systems filed a complaint in the United States District Court for the Eastern District of Tennessee seeking a declaratory judgment of non-infringement and invalidity.  Accession moved to dismiss the action for lack of personal jurisdiction.

The jurisdictional issue in this case turns on whether the court’s exercise of jurisdiction would be consistent with the requirements of due process. Radio Systems based its argument on specific jurisdiction and not general jurisdiction.  General jurisdiction would have required continuous and systematic general business contacts and there was none.  Instead, Radio Systems argued that the district court had specific jurisdiction over Accession based on events related to the instant dispute.  In order to satisfy due process requirements for establishing specific jurisdiction over a defendant, the plaintiff must show that the defendant purposely directed its activities at residents of the forum and that the plaintiff’s claim arises from or relates to those activities. In addition, the plaintiff must satisfy the court that the assertion of personal jurisdiction under the circumstances is reasonable and fair.

To meet the first requirement, the Eastern District of Tennessee previously held that the patentee’s activities must relate to the enforcement or defense of the patent. Accordingly, the district court in this case concluded that Radio Systems’ prior declaratory judgment action did not result from Accessions attempt to defend or enforce its patent in the forum of Tennessee.  In addition,  neither Accession’s prior attempts to commercialize the patent nor its cease-and desist letters to Radio Systems met  the specific jurisdictions standard because they were not directed at the residents of Tennessee.  Thus without sufficient basis to support personal jurisdiction the CAFC affirmed the district court’s ruling.

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1390.pdf