You Infringed My Patent, Now Wait Until I Sue You: The Federal Circuit's Decision in Avocent Huntsville Corp. v. Aten International Co.
Journal of Patent & Trademark Office Society, Vol. 92, p. 371, Summer 2010
35 Pages Posted: 13 Jan 2012
Date Written: February 5, 2010
The Federal Circuit recently held that it lacked personal jurisdiction over a foreign defendant, because neither the patentee's sales within the forum state nor their patent enforcement letters constituted sufficient contacts for personal jurisdiction. This Note argues that the Federal Circuit erroneously held that a patentee's sales in the forum state are irrelevant to specific personal jurisdiction. The Note surveys the legal background of personal jurisdiction in declaratory judgment actions, particularly in the patent context. The Note then argues that the Federal Circuit's recent line of cases incorrectly held that a patentee's sales of the patented product within the forum state are irrelevant to specific personal jurisdiction. The patentee's sales of the patented product are relevant to establishing the patent's validity, and therefore, the patentee's sales of the patented product should also be relevant to establishing personal jurisdiction over the patentee. Secondly, the Federal Circuit failed to consider that the patentee's sales of the patented product are relevant to establishing the proper remedy for infringement of the patent. Therefore, the patentee's sales of the patented product should be relevant to establishing personal jurisdiction in a suit where such a remedy is at issue. And finally, economic analysis also supports a finding of personal jurisdiction in patent declaratory judgment actions, especially against foreign patentees. Resolution of the declaratory judgment action would likely enhance competition within the forum state while causing relatively little inconvenience to the foreign patentee. Furthermore, the accused infringer should receive the benefit of forum selection for incurring the costs of commencing the litigation. Therefore, the Note argues, the Supreme Court should review and overturn the Federal Circuit's jurisprudence on personal jurisdiction in patent declaratory actions, and hold that forum sales of the patented product are relevant to personal jurisdiction.
Keywords: patents, declaratory judgment, personal jurisdiction, civil procedure
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