Wednesday, February 15, 2017

CAFC trims sails of "Red Wing" in Xilinx v. Papst

The CAFC observed:

We disagree with Papst that this case is controlled by
Red Wing and its holding that certain types of contacts,
by themselves, are not sufficient to establish the reasonableness
of jurisdiction. As we have discussed in the
minimum contacts analysis, Papst has done more than
just send letters to Xilinx. Representatives from Papst
traveled to California to meet with Xilinx in person to
discuss Papst’s infringement contentions and licensing
offer with respect to the patents-in-suit.5 The Supreme
Court noted in Burger King that “territorial presence
frequently will enhance a potential defendant’s affiliation
with a State and reinforce the reasonable foreseeability of
suit there.” 471 U.S. at 476.

Moreover, there are other facts that, under the Burger
King analysis, confirm the view that the burden on the
defendant is not undue. For instance, the burden on
Papst is mitigated by Papst’s status as a non-practicing
patent holder residing outside the United States.
This is
not a case like Red Wing, where the defendant conducts
its affairs in one state and is called to litigate in a distant
state rather than its own residence. See 148 F.3d at 1357.
By the very nature of its business, Papst must litigate its
patents in the United States in fora far from its home
business relationship” and that the policy favoring settlement
“squarely invokes one of the considerations
enumerated by the Supreme Court for the second prong of
a proper Due Process analysis, namely, ‘the interstate
judicial system’s interest in obtaining the most efficient
resolution of controversies.’” Id. (quoting World-Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980)).

AND prior litigations are a factor:

The lack of significant burden on Papst is also evidenced
by Papst’s prior litigations in California itself.
Papst has repeatedly availed itself of the California
federal court system—at least seven times—by filing
patent infringement lawsuits there. In this respect, this
case is similar to Viam. In Viam, we held that requiring
an Italian patent owner and its Iowa exclusive agent to
litigate a declaratory judgment action in California was
not unduly burdensome where those entities had initiated
a suit enforcing the same patent in the same district in
California against other parties. 84 F.3d at 430. Our
reasoning that personal jurisdiction was fair rested in
relevant part on the fact that the suit demonstrated that
the patent owner “has found a way to shoulder successfully
the burden of litigating in California.” Id.
Our decision in Acorda Therapeutics Inc. v. Mylan
Pharmaceuticals Inc., 817 F.3d 755, 764 (Fed. Cir. 2016),
makes clear the relevance of a defendant’s litigations in
the forum. There we explained that the burden on an
accused infringer answering an infringement lawsuit “will
be at most modest, as [the accused infringer], a large
generic manufacturer, has litigated many . . . lawsuits in
[the forum], including some that it initiated.” Id.



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