Patent-holding plaintiffs have limited ways to get the attention of parties that they believe have infringed their patents—primarily, sending demand letters and filing complaints. Any such plaintiff concerned about where any future litigation might occur will have to think twice about the former, given several recent Federal Circuit rulings.
The Federal Circuit has overturned a Northern District of California judge’s dismissal of an Apple declaratory judgment action filed against Zipit Wireless, Inc. for lack of jurisdiction. At issue was whether demand letters sent by Zipit and related communications could form the basis for the exercise of personal jurisdiction over ZipIt in that district. While District Judge Edward J. Davila held that it would be unreasonable to subject ZipIt to jurisdiction there based on those contacts, the Federal Circuit disagreed in an April 18 precedential decision—holding that the lower court was wrong to apply a “bright-line rule” that such letters and communications “can never form the basis for personal jurisdiction”. This is the second time in the past year that the Federal Circuit has reached this same conclusion, potentially exposing letter-writing NPEs to greater risk of declaratory judgment actions.
The expansion of Zipit Wireless, Inc.’s litigation has abruptly reversed. Earlier in 2020, the plaintiff had sued LG Electronics (LGE), a case that was stayed in mid-May to await the outcome of trials instituted by the Patent Trial and Appeal Board (PTAB) over petitions for inter partes review (IPR) of the two patents-in-suit. Undeterred, Zipit hit Alphabet (Google), Apple, BLU Products, HTC, Lenovo (Motorola Mobility), Microsoft, Nokia, Panasonic, Sony, TCL (TTE Technology), and ZTE in multiple districts last month. However, in the last week of June, the plaintiff voluntarily dismissed, without prejudice, each of those new complaints. One of the prior defendants, Apple, has responded by filing a complaint of its own (3:20-cv-04448), in the Northern District of California this time, seeking declaratory judgments that it does not infringe either patent asserted in the dismissed complaint.