by Dabney Carr
As patent litigation becomes increasingly international in scope, issues of personal jurisdiction over foreign defendants arise more frequently. Judge Ellis of the Eastern District of Virginia recently dealt with an unusual issue of jurisdiction over a foreign defendant with no contacts with the United States, ruling that the plaintiff had no right to jurisdictional discovery and dismissing the foreign defendant. Tom Tom, Inc. v. AOT Systems GmbH, Case No. 1:12CV528, 2012 U.S. Dist. LEXIS 137407 (E.D. Va. Sept. 14, 2012) found here [enhanced version available to Lexis.com subscribers].
Tom Tom involved a declaratory judgment action for patent invalidity and/or non-infringement against AOT, a corporation based in Lindau, Germany. Tom Tom alleged that AOT purported to have "exclusive control" of a U.S. patent relating to technology used in GPS navigation and that AOT had threatened to bring a lawsuit to enforce the patent. Tom Tom also alleged that AOT had filed a lawsuit in Germany on the European counterpart to the patent.
AOT moved to dismiss for lack of personal jurisdiction and submitted an affidavit denying that it was the patentee or an assignee of the patent. AOT claimed that it was merely an exclusive licensee of the patent, and that the sole patentee was the named inventor, Dr. Michael Adolph, who was the director of AOT.
Tom Tom argued that jurisdiction was proper under 28 U.S.C. 293, the patent long-arm statute, which provides that the District Court in the Eastern District of Virginia shall have jurisdiction over a foreign patentee who fails to designate an agent for service of process in the U.S.
Applying Federal Circuit law, Judge Ellis held that the exercise of personal jurisdiction under § 293 was limited to patentees and their assignees, and Tom Tom had failed to show that AOT was either a patentee or an assignee. Essentially, Judge Ellis held, the affidavit from AOT trumped Tom Tom's allegations that AOT claimed to "control" the patent.
Tom Tom also sought jurisdictional discovery, but Judge Ellis rejected that request on the grounds that jurisdictional discovery is only appropriate where the party asserting jurisdiction demonstrates that it can supplement its allegations through discovery. Tom Tom, Judge Ellis held, offered no persuasive reason to question the veracity of AOT's affidavit, and so it had not demonstrated that it could supplement its allegations through discovery.
The lesson that plaintiffs should take from Tom Tom is that it is crucial to have some evidence to establish personal jurisdiction before filing suit. If jurisdiction is challenged, a plaintiff will have to come forward with some evidence of contact with the forum that can serve as the basis to allow discovery to confirm the presence of jurisdiction. Without such prima facie evidence of jurisdiction, a court is not likely to permit any jurisdictional discovery.
All is not lost for Tom Tom, however. Tom Tom also named Dr. Adolph as a defendant and successfully served him under the Hague Convention. Thus, Tom Tom can seek discovery from Dr. Adolph that may well reveal a basis for jurisdiction over AOT.
Copyright © 2012, Troutman Sanders LLP
Virginia IP Law
Troutman Sanders LLP Troutman Sanders Building | 1001 Haxall Point | Richmond, Virginia, 23219, Phone:(804) 697-1200
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