Law School Canons: You can’t always “have it your way!”

Editor’s Note: Avery Welker is a rising 2L at Mizzou and likely a future patent attorney. He authors a series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com.  – Dennis Crouch

By Avery Welker

If PerDiemCo LLC (PerDiemCo | Defendant) could have it their way, sending demand letters to a company in another state would not constitute minimum contacts for purposes of personal jurisdiction. Trimble, Inc. v. PerDiemCo LLC, No. 19-2164, 2021 WL 1898127, at *1, *7 (Fed. Cir. May 12, 2021). PerDiemCo is the assignee of eleven patents[1] at issue, all related to geofencing and electronic logging technology (commonly used in the trucking industry). Trimble, Inc., and ISE (Trimble’s wholly-owned subsidiary) (Trimble | Plaintiff) offer geofencing and logging technologies along with manufacturing and selling positioning devices. Id. at *1. Below is a figure depicting this technology, which shows the geofenced areas (boxed in), the entry and exit points (see figure reference 2204), and location information logs while a contact is within a geofenced area (see figure reference 2202). U.S. Patent No. 10,171,950 fig.22 (filed May 22, 2018) (issued Jan. 1, 2019).

The entire web of incorporations, headquarters, locations, and personal jurisdiction issue reads like a Civil Procedure personal jurisdiction final exam hypo. Trimble, Inc. is incorporated in Delaware and headquartered in Sunnyvale, California (in the Northern District of California). Trimble Inc., WL at *1. ISE is an Iowa LLC with its principal place of business in Coralville, Iowa (in the Northern District of Iowa). Id. PerDiemCo is a Texas LLC with office space in Marshall, Texas (Eastern District of Texas). Id. The sole owner, employee, and officer lives and works in Washington D.C. and has never visited the office space in Texas. Id.

PerDiemCo sent a letter to ISE in 2018 alleging ISE’s devices used technology in PerDiemCo’s patents (see footnote 1). Id. PerDiemCo attached an unfiled complaint against ISE for the Northern District of Iowa, asserting nine patents against ISE, included a claim chart, offered a non-exclusive license to PerDiemCo’s patents, and a draft nondisclosure agreement for negotiations. Id. ISE subsequently forwarded the letter to Trimble’s IP counsel in Westminster, Colorado. Id. at *2. The counsel responded to PerDiemCo to inform that the issues would be communicated through Trimble. Id. PerDiemCo responded to Trimble and alleged that Trimble’s products also infringed in PerDiemCo’s patents, attaching a claim chart. Id. The parties agreed to negotiate for a few months. Id. PerDiemCo leveled new allegations of patent infringement against Trimble’s geofencing products and allegations based on two previously unasserted patents. Id. PerDiemCo repeatedly threatened to sue Trimble in the Eastern District of Texas on the infringement accounts. Id.

In response, Trimble and ISE sought a declaratory judgment action of non-infringement in the Northern District of California for all patents asserted by PerDiemCo in January 2019. Id. Trimble and ISE asserted that PerDiemCo was subject to specific personal jurisdiction in the Northern District of California. Id. While the district court (and later the Federal Circuit) held that the minimum contacts standard was satisfied, the district court dismissed the action, and Trimble and ISE appealed. Id. at *3, *7.

PerDiemCo argued that specific personal jurisdiction would be unreasonable, citing the five “fairness” factors outlined in Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477 (1985).[2] In Burger King, the Court had to decide whether exercising personal jurisdiction over two out-of-state Burger King franchisees would be fair. Id. at 466, 476. The Court ultimately concluded, after weighing the fairness factors (see footnote 2), that the exercise of personal jurisdiction, in that case, did not offend due process, as the franchisees had fair notice of the danger of suit in Florida. Id. at 487. The franchisees did not show the Court that it would be fundamentally unfair to exercise jurisdiction. Id.

Factor 1 – the burden on the defendant: PerDiemCo argued that litigating anywhere other than the Eastern District of Texas would impose an undue burden. Trimble Inc., WL at *7. However, the district court found that PerDiemCo’s office in Texas was essentially for show since PerDiemCo’s sole employee lived and worked in Washington D.C. Id. Since PerDiemCo filed lawsuits very far away from Washington D.C. and litigating patents away from D.C. is the main operation of PerDiemCo’s business, the Federal Circuit found no burden. Id.

Factor 2 – the forum State’s interest in adjudicating the dispute: The Federal Circuit found that California had an interest in litigating the suit as Tremble resided in California, and the State desires to protect its residents from any frivolous claims of patent infringement. Id. at *8.

Factor 3 – the plaintiff’s interest in obtaining convenient and effective relief: Here, the Federal Circuit found that Trimble had an obvious interest in getting relief from a court in its home forum, where principal employees and documents are. Id.

Factor 4 – the interstate judicial system’s interest in obtaining the most effective resolution of controversies: The Federal Circuit found that even if, as PerDiemCo asserted, a settlement would be the most efficient conflict resolution, both parties could reach a settlement pending litigation in the Northern District of California. Id.

Factor 5 – the shared interest of the several states in furthering fundamental substantive social policies: Given that the same patent laws govern all states, there is no conflict in litigating in the Northern District of California. Id.

Upon the Federal Circuit’s factor weighing, they ultimately decided that PerDiemCo did not show that jurisdiction was unreasonable and reversed the district court’s dismissal, remanding for further proceedings. Id.

Here, PerDiemCo couldn’t “have it their way.” Nothing short of jurisdictional rules so unfair that make litigation so tricky that the party would be severely disadvantaged will defeat asserting personal jurisdiction. Burger King, 471 U.S. at 477. Burger King makes it abundantly clear – if it’s fair, personal jurisdiction is lawful!

[1] U.S. Patent Nos. 8,149,113, 9,319,471, 9,485,314, 9,621,661, 9,680,941, 9,871,874, 9,954,961, 10,021,198, 10,104,189, 10,148,774, 10,171,950.

[2] The factors are: (1) “the burden on the defendant,” (2) “the forum State’s interest in adjudicating the dispute,” (3) “the plaintiff’s interest in obtaining convenient and effective relief,” (4) “the interstate judicial system’s interest in obtaining the most efficient resolution of controversies,” and (5) the “shared interest of the several States in furthering fundamental substantive social policies.” Burger King, 471 U.S. at 477 (quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980).

3 thoughts on “Law School Canons: You can’t always “have it your way!”

  1. 1

    Nice writeup Avery.
    P.S. An underlying motivation in these jurisdictional [or venue] challenges is the belief in getting a “home court advantage” for one of the parties. Has anyone ever done a valid statistical study of to what extent there really is a “home court advantage” to a party in a patent case in a federal court?
    [That is, excluding other forum selection advantages. Such as getting the judge in Waco Texas, or getting a “rocket docket” judge, or getting into a district with strict local rules for parent cases requiring prompt specific claim infringement demonstrations against specific products.]

    1. 1.1

      ?

      Your question seemed to start off ok, but then you veered into elements that most definitely would be considered as part of any ‘home court advantage’ (in an aspect that cuts both ways), so I cannot tell what point it is that you think you are trying to make.

      Would love to see the author take a more holistic view in regards to the concept of “you can’t always get what you want” and view it from those entities that DO seem to be able to get what they want (and AVOID the ‘risk’ of patent coverage at the same time that they freely — and purposefully — avail themselves of the ‘benefits’ of obtaining profits within States.

      1. 1.1.1

        In case anyone was actually confused, here is one lawfirm’s published definition of “home court advantage.” “[Y]our likelihood of success may be affected by litigating in your competitor’s home court rather than your own. The jury will be selected from the local area where your competitor may be well known and may be a significant employer. Although legally irrelevant in theory,..”

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