Patent Holder Subject to Personal Jurisdiction in Florida
In Breckenridge Pharmaceutical, Inc. v. Metabolite Laboratories, Inc. et al. (Fed. Cir. 2006), the Federal Circuit held that a patent owner’s dealings with a Florida licensee was sufficient to give the court jurisdiction over the patent owner.
Beckenridge filed suit against Metabolite and PamLab in the United Stated District Court for the Southern District of Florida for a declaratory judgment of non-infringement of the patent and alleging state law claims of tortious interference with contract and unfair competition.
The Federal Circuit held that Florida’s long-arm statute authorized personal jurisdiction over Metabolite and that such jurisdiction would comport with due process:
In sum, our case law has held as follows: where a defendant has sent cease and desist letters into a forum state that primarily involve a legal dispute unrelated to the patent at issue, such as an injunction obtained for misappropriation of trade secrets, the exercise of personal jurisdiction is improper. Silent Drive, 326 F.3d at 1202.
Likewise, a defendant may not be subjected to personal jurisdiction if its only additional activities in the forum state involve unsuccessful attempts to license the patent there. Hildebrand, 279 F.3d at 1356. The same is true where the defendant has successfully licensed the patent in the forum state, even to multiple non-exclusive licensees, but does not, for example, exercise control over the licensees’ sales activities and, instead, has no dealings with those licensees beyond the receipt of royalty income. Red Wing Shoe, 148 F.3d at 1357-58.
In contrast, the defendant is subject to personal jurisdiction in the forum state by virtue of its relationship with its exclusive forum state licensee if the license agreement, for example, requires the defendant-licensor, and grants the licensee the right, to litigate infringement claims. Akro, 45 F.3d at 1546. Finally, the defendant will also be subject to personal jurisdiction in the forum state if the exclusive licensee (or licensee equivalent) with which it has established a relationship is not headquartered in the forum state, but nonetheless conducts business there. Genetic Implant, 123 F.3d at 1457-59.
The CAFC agreed with the lower court that Federal Circuit law should be applied to determine whether personal jurisdiction of the defendant in Florida would comport with due process stating that even the non-patent issues were “intimately linked to patent law”.