Thursday, January 15, 2009
A divided panel of the Federal Circuit recently affirmed a district court's finding that an international corporation did not submit itself to specific personal jurisdiction in Alabama by sending three letters asserting patent infringement. Avocent Huntsville Corp. v. Aten International Co., No. 2007-1553, 2008 U.S. App. LEXIS 25477 (Fed. Cir. Dec. 16, 2008) involved a declaratory judgment action filed by a Delaware corporation located in Alabama (Avocent Huntsville) against a Taiwanese corporation (Aten International). Both companies are involved in the manufacture and sale of keyboard-video-mouse switches. After Aten International sent three letters seeking to enforce a patent, Avocent Huntsville sought a declaratory judgment of non-infringement in the Northern District of Alabama. The district court granted the defendant's 12(b)(2) motion concluding that Aten International "did not purposefully submit itself to jurisdiction in Alabama by sending the three letters..."
On appeal, the divided panel agreed with the district court's finding that specific jurisdiction was not proper. First, the court easily dismissed of the argument that specific jurisdiction could be established by mere letters asserting patent infringement. Next, the court examined the argument that specific jurisdiction was proper because some of the products subject to the patent were sold within the forum:
In short, a defendant patentee’s mere acts of making, using, offering to sell, selling, or importing products—whether covered by the relevant patent(s) or not—do not, in the jurisdictional sense, relate in any material way to the patent right that is at the center of any declaratory judgment claim for non-infringement, invalidity, and/or unenforceability. Thus, we hold that such sales do not constitute such "other activities" as will support a claim of specific personal jurisdiction over a defendant patentee.
In the twenty-eight page opinion the court provides an excellent overview of its personal jurisdiction jurisprudence in the patent context. The dissenting justice argued that the majority's holding contravenes precedent and ignores all factors related to the relationship among plaintiff, defendant, and the forum. You can read the full opinion here.