A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Apple Inc. v. Zipit Wireless, Inc., No. 2021-1760 (Fed. Cir. (N.D. Cal.) Apr. 18, 2022). Opinion by Stoll, joined by Hughes and Mayer.
Between 2013 and 2016, Zipit (located in South Carolina) and Apple (located in California) communicated about two Zipit patents directed to wireless instant messaging devices. Their communications included telephone calls, letters, emails, and in-person meetings at Apple’s California headquarters. Zipit contended that Apple infringed the patents and should purchase or license them, and Apple contended that it did not infringe and that the patents are invalid.
In 2020, Zipit filed and then voluntarily dismissed an infringement action against Apple in the Northern District of Georgia. Apple then filed a declaratory judgment action in the Northern District of California. Zipit moved to dismiss that action for lack of specific personal jurisdiction. The district court agreed and dismissed the case. The court determined that although Zipit had minimum contacts with California and had not shown the exercise of jurisdiction would be unreasonable, the exercise of jurisdiction was precluded by Federal Circuit precedent because Zipit lacked “binding obligations tying it to California” and because Zipit’s contacts with California “all related to the attempted resolution of the status of” the two asserted patents “for the purpose of warning against infringement.” Apple appealed.
Reviewing the question of personal jurisdiction de novo, the Federal Circuit reversed. The Federal Circuit determined that Zipit had sufficient minimum contacts with California and that the exercise of jurisdiction would not be unreasonable. The Federal Circuit also ruled that the district court had erred by reading Federal Circuit precedent “as applying a bright-line rule that patent infringement notice letters and related communications can never form the basis for personal jurisdiction.” The Federal Circuit explained that there is no such bright-line rule: “Although some of our earlier precedent … suggests that there is such a bright-line rule,” Supreme Court precedent “has made clear that jurisdictional inquiries cannot rest on such bright-line rules—there are no ‘talismanic jurisdictional formulas.’”
Thus, the Federal Circuit reversed the district court’s judgment dismissing Apple’s complaint for lack of personal jurisdiction and remanded.