The second prong concerns personal jurisdiction, which means that the accused infringer must establish that a federal district court has the authority to exercise its power over the defendant (i.e., the patent owner). This can be established by proving that the defendant had certain minimum contacts with the state in which the court sat.
Minimum contacts can be established by showing that the defendant engaged in certain activities within the state. Prior to the recent Federal Circuit decision in Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147 (Fed. Cir. May 12, 2021), most courts had held that merely sending communications that included implicit or explicit assertions of patent infringement were not enough to establish that the requisite minimum contacts existed.
However, the Trimble court clarified that such communications could be the basis for minimum contacts to exist. This ruling represented a contrast with a 23-year-old precedent that indicated that a patent owner could not be subject to personal jurisdiction into a particular state merely for sending infringement notice letters into that state. See Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998).
The court examined the contrast between the two decisions (i.e., Trimble vs. Red Wing Shoe) and noted that the contacts were more extensive in the Trimble case. As a result, patent owners should recognize that each communication with a potential infringer increases the risk that an accused infringer will bring a declaratory judgment action.
Read part 1 here.