For Purposes of Evaluating Personal Jurisdiction in the Context of a Declaratory Judgment, Defendant’s Activities Must Relate to the Defense of Validity or Enforcement of the Asserted Patents

Apr 8, 2016

Reading Time : 2 min

In response to licensing letters from defendant, plaintiff filed a declaratory judgment that it did not infringe the asserted patents, a declaratory judgment that the patents were unenforceable, a claim to correct inventorship, and several state law claims including breach of contract, unjust enrichment, and conversion. Plaintiff alleged that defendant obtained confidential and proprietary information concerning high-performance computing technology and subsequently filed and obtained the asserted patents. According to plaintiff, defendant’s employees intentionally acquired substantial amounts of proprietary information from plaintiff’s employees located in Washington. In analyzing defendant’s motion to dismiss the declaratory judgment claims of non-infringement and unenforceability, the court noted that the relevant inquiry for specific personal jurisdiction is to ascertain the extent to which defendant purposefully directed its patent enforcement activities at residents of the forum. The court reasoned that although cease-and-desist letters and licensing negotiations directed at the forum may relate to enforcement activities, without more, such activities are insufficient to confer personal jurisdiction under the “fair play and substantial justice” prong of the due process analysis. These activities must be combined with “other activities” related to the defense or enforcement of the patents. Such “other activities,” the court noted, include initiating judicial or extra-judicial enforcement within the forum, entering into an exclusive license agreement, or other undertaking which imposes enforcement obligations with a party residing or regularly doing business in the forum. The court further found that defendant’s alleged solicitation of proprietary information from plaintiff’s employees did not relate to “enforcement and defense activities” and therefore could not be considered as part of the analysis. The court thus granted defendant’s motion to dismiss the declaratory judgment claims.

The court, however, denied defendant’s motion to dismiss the inventorship claims because plaintiff adequately alleged that defendant purposefully directed its activities at plaintiff’s employees located in Washington. The court reasoned that plaintiff’s claims arose out of or related to defendant’s alleged solicitation of plaintiff’s employees and misappropriation of plaintiff’s technology. Regarding the remaining state law claims, the court found that pendant personal jurisdiction was applicable because the state law claims “arise out of a common nucleus of operative facts” with plaintiff’s inventorship claims.

Cray Inc. v. Raytheon Company, 2-15-cv-01127 (W.D. Wash. April 5, 2016, Order) (Robart, J.).

Share This Insight

Categories

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.