Radio Systems Corp. v. Accession, Inc.
638 F.3d 785
Fed. Cir.2011Background
- Radio Systems is a Tennessee plaintiff seeking a declaratory judgment of noninfringement/invalidity of Accession's '141 patent; Accession is a New Jersey patentee.
- The '141 patent covers the Wedgit portable pet door; Radio Systems' SmartDoor is the competing device.
- Pre-suit communications between Sullivan (Accession) and Radio Systems included multiple letters/emails and a Tennessee demonstration in 2009.
- Accession engaged in licensing/marketing efforts regarding Wedgit prior to August 2009, and later asserted infringement/priority considerations to PTO in New Jersey.
- Radio Systems filed suit in the Eastern District of Tennessee in November 2009; district court dismissed for lack of personal jurisdiction; appeal follows.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Accession's Tennessee-directed activities support specific jurisdiction | Radio Systems contends pre-August 2009 contacts relate to enforcement | Accession's pre-2009 activities were commercialization, not enforcement | No jurisdiction; pre-August 2009 activities insufficient |
| Whether PTO communications constitute enforcement for jurisdiction | PTO communications and related actions are enforcement efforts | Outside-forum enforcement; Avocent controls | No jurisdiction; enforcement activities outside forum not sufficient |
| Whether the NDA forum-selection clause yields consent to Tennessee jurisdiction | Clause confers Tennessee jurisdiction for related disputes | DJ action not arising under NDA; clause not controlling | Forum clause in NDA does not apply; no consent to Tennessee jurisdiction |
Key Cases Cited
- Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed.Cir.1998) (informational cease-and-desist notices alone insufficient for jurisdiction in DJ actions)
- Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d 1324 (Fed.Cir.2008) (enforcement activities outside forum generally do not establish jurisdiction; DJ arises from enforcement activities related to patent)
- Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012 (Fed.Cir.2009) (only enforcement/defense activities related to the patent count toward jurisdiction)
- Electronics for Imaging, Inc. v. Coyle, 340 F.3d 1344 (Fed.Cir.2003) (in-state attorney communications can create agency-like enforcement links when related to the patent-in-suit)
- Campbell Pet Co. v. Miale, 542 F.3d 879 (Fed.Cir.2008) (extrajudicial enforcement actions at a forum can support jurisdiction when tied to patent enforcement)
- Hildebrand v. Steck Mfg. Co., 279 F.3d 1351 (Fed.Cir.2002) (prescribed approach to DJ jurisdiction in patent context)
- Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063 (10th Cir.2008) (outside-forum enforcement efforts can establish jurisdiction when targeted at forum interests)
- Bancroft & Masters, Inc. v. Augusta National, Inc., 223 F.3d 1082 (9th Cir.2000) (outside-forum enforcement communications can trigger jurisdiction)