Troutman Sanders LLP: First EDVA Case Under 35 USC 293 (Jurisdiction Over Foreign Defendant)

Troutman Sanders LLP: First EDVA Case Under 35 USC 293 (Jurisdiction Over Foreign Defendant)

By Robert Angle

On May 11, TomTom, Inc., filed a Complaint for Declaratory Judgment of Invalidity and/or Non-Infringement of a Patent Held by a Non-Resident Patentee against AOT Systems GmbH, a German Company.  This appears to be the first case filed in the U.S. District Court for the Eastern District of Virginia (EDVA) under 35 U.S.C. § 293, which was amended by the America Invents Act to change jurisdiction from the U.S. District Court for the District of Columbia to the EDVA.  Section 293 provides that:

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

(Emphasis added).   

Here, AOT, an exclusive licensee of U.S. Patent No. 6,356,836 and its European counterparts, sent letters to TomTom beginning in February 2011 accusing TomTom of patent infringement.  TomTom denied any infringement, but was unable to convince AOT of its innocence.  After more than a year of threatened litigation, and after AOT filed suit in Germany on the European patents in February 2012, TomTom decided to use § 293 to force AOT into litigation in the U.S. A copy of the Complaint can be found here

While § 293 may have relatively narrow applications, it will be interesting to see how AOT responds and how this case develops, so stay tuned... 

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