Patent Litigation, Personal Jurisdiction, and the Public Good

56 Pages Posted: 4 Mar 2010 Last revised: 7 Feb 2011

See all articles by Megan M. La Belle

Megan M. La Belle

Catholic University of America (CUA) - Columbus School of Law

Date Written: March 2, 2010


There is consensus among scholars, policymakers, and industry leaders that our patent system currently faces a crisis of confidence as a result of the proliferation of bad patents. For now, validity challenges asserted in litigation – usually as a defense to a claim of patent infringement – serve as the primary gatekeeper of patent quality. When an alleged infringer’s validity challenge is successful, the court invalidates the patent and the intellectual property enters the public domain where anyone may use it. This creates a “public good” which inures to the benefit of society at large. In recent years, scholars have proposed alternative reform measures to address the problem of bad patents, but little has been written about how our litigation system might be retooled to better serve the important public function of eradicating bad patents. This Article seeks to fill that void by examining, in particular, the underutilization of declaratory judgment actions to challenge suspect patents.

Validity challenges asserted in declaratory judgment actions have a significantly higher success rate than those raised in defense to infringement claims. Actions for declaratory relief can be particularly effective at invalidating bad patents because the alleged infringer rather than the patent holder chooses the forum and controls the timing of the suit. Yet declaratory relief actions make up a surprisingly small percentage of the total number of patent cases.

This Article argues that one reason so few declaratory judgment actions are filed is because of a longstanding but incorrect jurisdictional doctrine that precludes many alleged infringers from seeking declaratory relief in a convenient forum – the Federal Circuit’s categorical rule that patent holders will not be subject to personal jurisdiction in declaratory judgment actions based on cease-and-desist letters sent into the forum state. The Article then critically examines and rejects various possible justifications for that doctrine, ultimately demonstrating that the doctrine is both legally unsound and contrary to public policy. Finally, the Article concludes with a proposal that would empower alleged infringers with more robust declaratory judgment rights, facilitate validity challenges, and ultimately provide more of the public good of invalidating bad patents.

Keywords: Patent, Declaratory Judgment, Personal Jurisdiction

Suggested Citation

La Belle, Megan Maureen, Patent Litigation, Personal Jurisdiction, and the Public Good (March 2, 2010). George Mason Law Review, Vol. 18, No, 1, p. 43, Fall 2010, CUA Columbus School of Law Legal Studies Research Paper No. 2010-29, Available at SSRN:

Megan Maureen La Belle (Contact Author)

Catholic University of America (CUA) - Columbus School of Law ( email )

3600 John McCormack Rd., NE
Washington, DC 20064
United States

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