Last Week in the Federal Circuit (May 17-21): Avoiding Special Rules For Patent Litigation

There's a new Chief Judge at the Federal Circuit (as of Saturday), but life continues as usual here at Federal Circuitry. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. 

Precedential opinions:

Non-precedential opinions: 5

Rule 36: 0 

Longest pending case from argument: Conway v. United States, No. 20-1292 (159 days)

Shortest pending case from argument (non-Rule 36): In re: Rajagopalan, No. 20-1956 (14 days) 

Case of the (recent) week: Trimble Inc. v. PerDiemCo LLC, 19-2164 (May 12, 2021)

Panel: Judges Newman, Dyk, and Hughes, with Judge Dyk writing the opinion

You should read this case if: you have a declaratory judgment patent case involving specific personal jurisdiction

Since there were no precedential patent decisions last week while the week before had several, we decided to switch things up slightly by writing about one of the earlier week’s cases. The decision caught our eye because the Court discusses the importance of avoiding special patent rules when it comes to general rules of civil litigation. 

The case is about whether, and under what circumstances, demand letters for patent infringement sent into a state suffice to establish specific personal jurisdiction in that state over the patent owner. The Federal Circuit rejected any bright-line rule on this issue. Instead it held that the “central question” is “whether a defendant’s connection to a forum is sufficient to satisfy the minimum contacts or purposeful availment test,” a question that must be answered based on each case’s specific facts. 

The Court identified three reasons for rejecting any bright-line rule. First, it stressed the Supreme Court’s continued warnings against creating “special rules for patent litigation in the context of rules governing civil litigation generally.” Both eBay—for permanent injunctions—and SCA—for laches—rejected such special patent rules. Unless “Congress has enacted a patent-specific statute that ‘placed patent infringement cases in a class by themselves,’” courts generally should not themselves undertake such an endeavor. 

Second, the Court read non-patent Supreme Court cases as holding “that communications sent into a state may create specific personal jurisdiction, depending on the nature and scope of such communications.” Past Federal Circuit decisions had applied that principle in the context of patent litigation. The Court also noted other factors that past Federal Circuit decisions have considered, such as “hiring an attorney or patent agent in the forum state to prosecute a patent application” or the “presence of ‘an exclusive licensee doing business in the forum state.’” 

Third, the Court held that specific jurisdiction in patent cases should consider “a broad set of a defendant’s contacts with a forum.” According to the Court, that broad set includes considering “nonexclusive patent licenses” connected to the forum state.

Applying these considerations, the Federal Circuit held that the declaratory judgment plaintiffs had established specific personal jurisdiction over the patent-owner defendant. The patent owner “accumulat[ed] an extensive number of contacts with the forum in a short period of time,” going “far beyond ‘solely informing a party who happens to be located [in the forum state] of suspected infringement.’” The patent owner had also “negotiated some ten other nonexclusive licenses, including several with large firms operating nationwide.” Those and related facts were enough to satisfy the minimum contacts required for personal jurisdiction.