Wednesday, October 14, 2009

Filing of patent subjects Canadian firm to 4(k)(2) personal jurisdiction

The Federal Circuit recently decided Touchcom, Inc. v. Bereshkin & Parr, 574 F.3d 1403 (Fed. Cir. 2009). 

In this case, a Canadian law firm's sole contact with the United States was the filing of a patent application.  The law firm prosecuted a patent for Touchcom that was later held by a Texas district court to be invalid.  Touchcom sued Bereshkin & Parr for legal malpractice in the Eastern District of Virginia (which includes Alexandria, the location of th
e federal Patent and Trademark Office).  The district court dismissed the case for lack of personal jurisdiction. 

The Federal Circuit overturned the district court, holding that there were no contacts with Virginia in particular, since contact was limited to the patent filing and subsequent long-distance communications.  The filing of a patent did, however, subject the defendant to jurisdiction under the "nationwide aggregate contacts" Federal Rule of Civil Procedure 4(k)(2).

Additional coverage here and here.


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