Under the Due Process Clause of the Fourteenth Amendment, a state or federal court may exercise jurisdiction over a defendant only if the defendant is at home in the forum state or has sufficient minimum contacts with the forum state and the exercise of jurisdiction would not offend traditional notions of fair play and substantial justice. A common fact pattern in patent cases that implicates this requirement occurs when an out-of-state patent holder sends a notice letter to a party in a forum state accusing that party of infringing the patent holder’s patents. Before the patent holder can sue in its forum of choice, the accused infringer seeks declaratory judgment of non-infringement and/or invalidity in the forum state. The patent holder then moves to dismiss, arguing that the notice letter did not create personal jurisdiction over the patent holder in the forum state.
In Red Wing Shoe Co. v. Hockerson-Halberstadt, the Federal Circuit held that the sending of a notice letter does not create personal jurisdiction over the patent holder in the target forum because “[p]rinciples of fair play and substantial justice afford a patentee sufficient latitude to inform others of its patent rights without subjecting itself to jurisdiction in a foreign forum.” 148 F.3d 1355, 1360-61 (Fed. Cir. 1998). Two recent Federal Circuit cases have clarified that notice letters sent by an out-of-state patent holder into a forum state might create personal jurisdiction in that state over the patent holder. Trimble v. PerDiemCo, 997 F.3d 1147 (Fed. Cir. 2021); Apple v. Zipit Wireless, 2022 WL 1132169 (Fed. Cir. April 18, 2022). We report here on these cases.