In Patent Cases, Only Enforcement and Defense Activities Directed Toward The Forum State Count in the Personal Jurisdiction Analysis

This case involved a dispute between Radio Systems, a pet-related product manufacturer in Knoxville Tennessee, and Accession, located in Hamilton, New Jersey. Radio Systems manufactures several pet-related products, including a patented electronic pet access door (the “SmartDoor”), which unlocks in response to a transmitter worn by the pet. Accession’s sole employee is its president, Thomas Sullivan. Mr. Sullivan is the named inventor of U.S. Patent No. 7,207,141 (“the ‘141 patent”), issued on April 24, 2007, and assigned to Accession. The ‘141 patent is directed to a portable pet access door (the “Wedgit”) that can be inserted into sliding glass doors.

There were several communications between these parties regarding a possible business alliance and then, later, a dispute eventually ensued as to whether Accession should be added as a co-inventor of Radio Systems patent. Radio Systems filed a declaratory judgment action, seeking a judgment of non-infringement and invalidity of Accession’s ‘141 Patent. Accession moved to dismiss for lack of personal jurisdiction or, in the alternative, to transfer. The district court granted the motion and Radio Systems appealed to the Federal Circuit.

Holding: Sending cease and desist letters into the forum state will not be enough to confer jurisdiction over the defendant. Likewise, activities that are directed at commercializing the patent are not sufficient. It is only those enforcement or defense activities specifically directed towards that forum state that count in the personal jurisdiction analysis. Because the communications between the parties before August 2009 were targeted towards creating a mutually beneficial business arrangement, rather than defense and enforcement, they would not be sufficient to confer jurisdiction. Calls that Accession made to the USPTO in Virginia about Radio Systems’ patents were also not sufficient to establish personal jurisdiction in Tennessee because enforcement and defense activities outside the forum state don’t count either. And finally, even though the parties had entered into a non-disclosure agreement that had a forum selection clause naming Tennessee as the forum for disputes arising out of the NDA, the forum selection clause had no effect on the personal jurisdiction analysis, because the litigation did not arise out of that agreement. The district judge’s dismissal for lack of personal jurisdiction was affirmed.

R. Bradford Brittian, Pitts & Brittian, P.C., of Knoxville, TN, argued for the plaintiff-appellant. With him on the brief were Robert E. Pitts, Paul A. Forsyth and Matthew J. Stark.

Robert J. Basil, Collier & Basil, PC, of New York, NY, argued for the defendant-appellee.

Before BRYSON, LINN, and DYK, Circuit Judges.

Radio Systems Corp. v. Accession, Inc., 638 F.3d 785, 98 U.S.P.Q.2d 1485 (Fed.Cir. 2011).


Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )


Connecting to %s