Minimum Contacts for Declaratory Judgment Jurisdiction

by Dennis Crouch

Maxchief Investments v. Wok & Pan, Indus. (Fed. Cir. 2018)

This is a fairly simple case case. Maxchief filed a declaratory judgment lawsuit against patentee Wok in E.D.Tennessee.  The case was dismissed though because Wok&Pan lacked sufficient minimum contacts with the state of Tennessee under Int’l Shoe.

For specific jurisdiction in a patent DJ action, the court has particularly held that the focus should be on the defendant-patentee’s contacts with the forum state only as they “relate in some material way to the enforcement or the defense of the patent.”  In this case, Wok did send infringement notice letter’s to Maxchief’s lawyer in Tennessee — however, the appellate court found those letters didn’t constitute sufficient contacts with Tennessee since the letter alleged that Coleman (a KS company) was infringing, not Maxchief.  The court went on to hold – in the alternative – that “sending notice letters of patent infringement” is not enough to create jurisdiction.  This outcome should be distinguished from Xilinx where minimum contacts were found based upon (1) infringement notice letters and (2) a representative traveling to the state to discuss the alleged infringement.  Xilinx, Inc. v. Papst Licensing GmbH & Co. KG, 848 F.3d 1346 (Fed. Cir. 2017).

Under Section 293 of the Patent Act, foreign patent holders – such as Wok – can be sued in the DC Eastern District of Virginia District Court unless they have filed papers with the PTO designating a domestic representative.  D.D.C. is not a hotbed for patent infringement lawsuits, only one has been filed thus far in 2018. [I had forgotten that this provision was amended in the AIA, moving default venue against foreign patent owners from DC to E.D. Va.]