The Personal Jurisdiction Burden
While the Federal Circuit’s decision in In re HTC Corp,1 opened up all of the district courts for lawsuits against a foreign defendant for purposes of venue, personal jurisdiction requirements still restrict a patentee’s ability to pull a foreign defendant into any federal court. In a typical stream-of-commerce situation presented by the foreign manufacture of an infringing product, the patentee must argue that a foreign defendant is subject to a district court’s personal jurisdiction because the defendant purposefully ships products to the forum US state or otherwise has minimum contacts with the forum state to warrant the court’s exercise of personal jurisdiction. Unfortunately for patentees, the Federal Circuit has thus far avoided the task of articulating a single test by which to assess whether a foreign manufacturer’s placement of products into the stream of commerce results in minimum contacts sufficient for personal jurisdiction to exist.
In fact, when presented with opportunities to establish such a test, the Federal Circuit has expressly avoided doing so.2 Thus, a patent owner should look closely at the tendencies of the forum state, as well as its long-arm statute, if personal jurisdiction over a foreign defendant will be based on the defendant’s placement of the infringing product into the stream of commerce. The results in some jurisdictions will be heavily weighted to whether the defendant was aware that its products would foreseeably reach the forum state, whereas other jurisdictions will require that the defendant engage in additional conduct purposefully directed to the forum state. These approaches loosely reflect the “Asahi divide,” resulting from the Supreme Court’s 4-4 split in Asahi Metal Industry Co v Superior Court of California, Solano County.3 In view of these approaches, there are some pre-suit guidelines that patent owners should consider.