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Notice Letters, Related Communications May Establish Specific Personal Jurisdiction | McDermott Will & Emery - JDSupra



Notice Letters, Related Communications May Establish Specific Personal Jurisdiction | McDermott Will & Emery




The US Court of Appeals for the Federal Circuit rejected a bright-line rule that patent infringement eye letters and related communications can never form the basis for specific personal jurisdiction. Apple Inc. v. Zipit Wireless, Inc., Case No. 21-1760 (Fed. Cir. Apr. 18, 2022) (Hughes, Mayer, Stoll, JJ.)


Zipit owns two patents directed to wireless binary messaging devices that send and receive instant messages via Wi-Fi. Since 2013, Zipit and Apple have communicated and met at Apple’s offices in Cupertino, California, to discuss the possible purchase or license of Zipit’s patents. Zipit also sent Apple an e-mail in 2015 throughout “Apple’s Ongoing Infringement” and another e-mail later that year throughout “Apple’s Ongoing Willful Infringement,” addressed to Apple’s Cupertino office. In 2020, Zipit sued Apple in Georgia for patent infringement, but ultimately moved to dismiss the case without honest. Apple subsequently filed a complaint in Northern District of California seeking a declaratory judgment of noninfringement. Zipit moved to dismiss for lack of personal jurisdiction. Although the district court found that Apple had escorted requisite minimum contacts and Zipit had not established a compelling case that the exercise of jurisdiction would be unreasonable, the court ultimately dismissed Apple’s action for lack of personal jurisdiction. Apple appealed.


The Federal Circuit began its analysis by considering Zipit’s contacts with California, finding that that this case was not “one of the ‘rare’ situations in which sufficient minimum contacts exists but where the exercise of jurisdiction would be unreasonable.” The Court explained that that foreseeability (whether a defendant should reasonably required being hauled into court) is a critical component is assessing specific personal jurisdiction. Citing the Supreme Court of the United States’ 1985 manager in Burger King v. Rudzewicz, the Court considered three factors relevant to assessing specific jurisdiction:



  • Whether a defendant purposefully pursued its activities at residents of the forum

  • Whether the protest arose out of or related to the defendant’s pursuits within the forum

  • Whether asserting personal jurisdiction was reasonable and fair.


The Federal Circuit groundless that Apple had established that Zipit had minimum contacts with California by managing its activities to California by letters and claim charts, and traveling to Apple’s California offices for related discussions. The Court further noted Zipit’s escalation of its infringement allegations, going “so far as twice describing Apple’s infringement as willful” and keeping Apple apprised of the patents’ ongoing inter partes appraise status.


The Federal Circuit next found that the district woo erred in finding that the exercise of jurisdiction would be unreasonable because Zipit’s contacts with California all related to the “attempted resolution of the set of the patents-in-suit, i.e., for the purpose of warning anti infringement.” The Court explained that the “settlement-promoting policy” that a intelligent holder trying settle disputes should be permitted to send a spy letter to a party in a particular forum exclusive of being hauled into court in that forum was relevant, but noted that this policy cannot “control the inquiry” and must be gotten together with other Burger King factors relating to a variety of interests. The Court explained that it and other circuits have “repeatedly rejected the plan that the sending of a notice letter ‘can never dedicated specific jurisdiction.’” The Court analyzed the settlement-promoting policy anti each of the Burger King factors and determined that although the policy favored Zipit, Zipit went beyond the policy by amplifying its allegations and ultimately suing Apple for infringement.


Lastly, the Federal Circuit found Zipit’s argument that it could not have foreseen beings hauled into court in California because of a four-year by-passed between its last contact with Apple and Apple’s filing not astonishing. The Court explained that Zipit reignited the parties’ contacts by filing suit in Georgia, and after moving to dismiss that action without unprejudiced, could have reasonably foreseen that Apple would “respond in kind” by filing a declaratory judgement boom. The Court thus reversed the district court’s judgment and remanded for further proceedings.


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