Stepping over Red Wing Shoe to a home forum

The Federal Circuit’s 1998 decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc. long stood for the proposition that “a patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement.”  In Red Wing, patentee HHI’s warning letters were deemed insufficient to create personal jurisdiction for a declaratory judgement action in Red Wing’s home state. 

The Federal Circuit’s recent decision in Trimble Inc. v. PerDiemCo LLC limits the reach of Red Wing.  Here, patentee PerDiemCo’s twenty-two communications with Trimble via letter, email, and telephone “over a period of three months” were deemed sufficient to establish PerDiemCo’s personal jurisdiction in Trimble’s home state.  The court held the patentee’s “actions went far beyond ‘solely … informing a party who happens to be located [in California] of suspected infringement…. Rather, PerDiemCo amplified its threats of infringement as the communications continued.’”  The court held that patentee’s attempts to extract a license “in this case are much more akin to ‘an arms-length negotiation in anticipation of a long-term continuing business relationship,’ over which a district court may exercise jurisdiction.”