Xilinx, Inc. v. Papst Licensing Gmbh & Co. Kg
848 F.3d 1346
Fed. Cir.2017Background
- Xilinx (Delaware corp., HQ in San Jose) designs programmable logic devices; Papst (German assignee, non‑practicing entity) owns two patents directed to memory test methods and seeks to monetize them.
- Papst performs worldwide due diligence identifying potential infringers, sends cease‑and‑desist/ licensing letters, travels to meet alleged infringers, and has litigated patents in California federal courts multiple times.
- Papst sent two notice letters to Xilinx and, in October 2014, three Papst representatives traveled to California to meet Xilinx about alleged infringement and licensing; no license resulted.
- Xilinx filed a declaratory judgment action in N.D. Cal. (Nov. 7, 2014) seeking noninfringement and invalidity; Papst sued in D. Del. the same day and moved to dismiss the California action for lack of personal jurisdiction.
- The district court dismissed Xilinx’s California action for lack of personal jurisdiction (no general jurisdiction; contacts either mere licensing efforts or unrelated past enforcement), and denied further jurisdictional discovery.
- The Federal Circuit reversed: it found minimum contacts (letters + in‑person visit) and held exercise of specific jurisdiction in California was reasonable under due process, remanding for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction (specific) — whether Papst is subject to suit in CA for Xilinx's declaratory claims | Papst purposefully directed activities to California (letters + in‑person meeting); claims arise from those contacts; exercising jurisdiction is reasonable | Letters/offers to license alone should not make jurisdiction reasonable; enforcing jurisdiction based on such contacts would be unfair (Red Wing) | Held: Specific jurisdiction exists — minimum contacts shown by letters and in‑person meeting; Papst failed to show a "compelling case" that jurisdiction would be unreasonable |
| Mootness of appeal | Xilinx: appeal is not moot because transferred Delaware suit did not moot Xilinx's separate claim; Xilinx has not filed counterclaims in transferred action | Papst: transfer of its infringement suit to N.D. Cal. provided Xilinx an alternative route, mooting the appeal | Held: Appeal not moot; availability of unpursued alternative relief does not moot the appeal |
| Denial of jurisdictional discovery | Xilinx argued additional discovery could show further forum‑related enforcement activities supporting jurisdiction | Papst argued existing record was sufficient and additional discovery unnecessary | Court did not reach this issue on appeal (reversed on jurisdictional merits), so no ruling needed on discovery |
| Relevance of prior, unrelated patent enforcement in forum | Xilinx: Papst's history of litigating patents in CA supports reasonableness and diminishes burden | Papst: Prior suits on other patents are irrelevant to jurisdiction over these patents | Held: Prior enforcement in California is relevant to reasonableness; it weighs against finding undue burden on Papst |
Key Cases Cited
- Red Wing Shoe Co. v. Hockerson‑Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998) (warning letters may create minimum contacts but may not satisfy fairness prong)
- Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d 1324 (Fed. Cir. 2008) (contacts must relate materially to enforcement/defense of the patent)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (U.S. 1985) (two‑step specific jurisdiction analysis and reasonableness factors)
- Walden v. Fiore, 134 S. Ct. 1115 (U.S. 2014) (physical entry into forum is a relevant contact)
- Asahi Metal Industry Co. v. Superior Court, 480 U.S. 102 (U.S. 1987) (reasonableness prong may bar jurisdiction where burden is substantial and forum's and plaintiff's interests are weak)
- Daimler AG v. Bauman, 134 S. Ct. 746 (U.S. 2014) (distinguishing general and specific jurisdiction; two‑step approach noted)
- International Shoe Co. v. Washington, 326 U.S. 310 (U.S. 1945) (foundational minimum contacts doctrine)
- Electronics for Imaging, Inc. v. Coyle, 340 F.3d 1344 (Fed. Cir. 2003) (prima facie showing standard for jurisdictional facts)
- Akro Corp. v. Luker, 45 F.3d 1541 (Fed. Cir. 1995) (due process inquiry in patent suits governed by Fifth Amendment principles)
- Breckenridge Pharmaceutical, Inc. v. Metabolite Labs., Inc., 444 F.3d 1356 (Fed. Cir. 2006) (exclusive licensing and forum contacts relevant to jurisdiction)