Virtual Contacts in Patent Cases: How Should Internet-Related Contacts Affect the Personal Jurisdiction Analysis?

In the 1990s, when the Internet was still considered novel, courts struggled with the question of how Internet-related contacts should be treated in the personal jurisdiction analysis. So when Zippo Manufacturing v. Zippo DOT Com established an apparently easy-to-apply test for deciding whether a defendant’s virtual contacts are sufficient for personal jurisdiction, many courts embraced it . To date, however, the Federal Circuit has neither adopted nor rejected the Zippo approach, leaving litigants and lower courts in patent cases with little guidance on the issue. Although a recent decision suggests that the Federal Circuit recognizes the limitations of Zippo, it is time for the court to set forth clear guidelines for analyzing questions of personal jurisdiction in patent cases when the defendant’s contacts with the forum state are limited to Internet activity

Virtual Contacts in Patent Cases: How Should Internet-Related Contacts Affect the Personal Jurisdiction Analysis?

In the 1990s, when the Internet was still considered novel, courts struggled with the question of how Internet-related contacts should be treated in the personal jurisdiction analysis. So when Zippo Manufacturing v. Zippo DOT Com established an apparently easy-to-apply test for deciding whether a defendant’s virtual contacts are sufficient for personal jurisdiction, many courts embraced it . To date, however, the Federal Circuit has neither adopted nor rejected the Zippo approach, leaving litigants and lower courts in patent cases with little guidance on the issue. Although a recent decision suggests that the Federal Circuit recognizes the limitations of Zippo, it is time for the court to set forth clear guidelines for analyzing questions of personal jurisdiction in patent cases when the defendant’s contacts with the forum state are limited to Internet activity

Personal Jurisdiction and the Fairness Factor(s)

It has been more than seventy-five years since the Supreme Court decided International Shoe Co. v. Washington, yet questions surrounding the personal jurisdiction doctrine loom large. Over the past decade, the Roberts Court has issued a handful of personal jurisdiction opinions, including Ford Motor Co. v. Montana Eighth Judicial District Court, a case decided in 2021 that addressed an issue related to specific jurisdiction. What is more, courts across the country, including several state supreme courts, have been grappling with the question whether a corporation’s registration to do business constitutes consent to personal jurisdiction in that state. This consent issue is particularly divisive in states like Georgia and Pennsylvania—where jurisdiction via registration is expressly provided for by statute. Indeed, over the past two years the Supreme Court of Georgia upheld the exercise of consent jurisdiction in Cooper Tire & Rubber Co. v. McCall, while the Supreme Court of Pennsylvania struck down its statute as unconstitutional in Mallory v. Norfolk Southern Railway Company. The conflicting decisions in McCall and Mallory have now teed up the consent-by-registration question for the U.S. Supreme Court. Under International Shoe’s bifurcated test, personal jurisdiction over nonresident defendants comports with due process when the defendants have sufficient minimum contacts with the state and the exercise of jurisdiction is fair or reasonable. Until recently, the Roberts Court’s personal jurisdiction jurisprudence relegated the fairness prong of this test to, at most, an afterthought. However, Ford bucks that trend, providing hope that courts will once again turn to fairness considerations when making tough calls on jurisdiction. Using Ford as a launching pad, this Article argues that fairness—specifically, the fairness factors first articulated in World-Wide Volkswagen Corp. v. Woodson—should be part of every jurisdictional calculus, whether the plaintiff is relying on specific jurisdiction, general jurisdiction, or one of the traditional grounds for personal jurisdictional such as consent by registration. Applying a uniform methodology to the flexible due process standard will improve the consistency and predictability of personal jurisdiction determinations over time, while still allowing courts to decide these questions on a case-by-case basis

Standing to Sue in the Myriad Genetics Case

In recent years, the topic of gene patents has generated significant debate among medical researchers, biotechnology companies, academics, policymakers, and patent lawyers. The controversy implicates a wide range of legal and policy questions, including whether human genes should be patentable, and whether such patents stimulate or stifle innovation. In Association for Molecular Pathology v. Myriad Genetics, a high-profile case recently before the United States Court of Appeals for the Federal Circuit, a divided panel of the court addressed these questions. Before reaching the merits of the case, however, the court had to decide whether the plaintiffs had standing to sue the patent owner for declaratory relief. Although scholars and other commentators have discussed at length the substantive issues raised by the Myriad case, little has been said about this crucial procedural question. This Essay explores the question of standing in the Myriad case, specifically, and in patent declaratory judgment actions more generally. In Myriad, the Federal Circuit concluded that only one of the twenty plaintiffs had standing to sue. While this was sufficient for the case to proceed, this Essay critically examines the Federal Circuit\u27s approach to standing in Myriad. The Essay argues that the court misinterpreted and misapplied Supreme Court precedent, thus adopting a formalistic and overly narrow test for standing. The Essay urges the Supreme Court, if presented with the opportunity, to grant certiorari in Myriad to reconfirm its holding in MedImmune v. Genentech that standing in patent declaratory judgment actions must be analyzed under the all the circumstances test, not according to bright line rules. Finally, the Essay concludes by underscoring the importance of declaratory judgment actions to our patent system. The Supreme Court consistently has adopted legal standards that facilitate patent declaratory relief actions because of the public benefit afforded when bad patents are invalidated. The Federal Circuit, too, should consider its obligation to the public when deciding the justiciability of patent declaratory judgment actions

The Future of Internet-Related Personal Jurisdiction After Goodyear Dunlap Tires v. Brown and J. McIntyre v. Nicastro

For the past two decades, courts have struggled with the question of how Internet-related contacts should be treated in the personal jurisdiction analysis. Some courts have utilized the traditional minimum contacts framework of International Shoe v. Washington , while others have devised new tests to accommodate this technological evolution. So when the US Supreme Court granted certiorari in two personal jurisdiction cases last term— Goodyear Dunlap Tires v. Brown and J. McIntyre v. Nicastro — many believed these unsettled questions of Internet related personal jurisdiction would finally be resolved. Disappointingly for litigants, lower courts, and academics, however, Goodyear and McIntyre give little guidance about the future of personal jurisdiction in our virtual world

Against Settlement of (Some) Patent Cases

For decades now, there has been a pronounced trend in civil litigation away from adjudication and toward settlement. This settlement phenomenon has spawned a vast critical literature beginning with Owen Fiss\u27s seminal work, Against Settlement. Fiss opposes settlement because it achieves peace rather than justice, and because settlements often are coerced due to power and resource imbalances between the parties. Other critics have questioned the role that courts play (or ought to play) in settlement proceedings and have argued that the secondary effects of settlement -especially the lack of decisional law-are damaging to our judicial system. Still, despite these criticisms, settlement remains the norm in civil litigation today. This Article considers the settlement phenomenon in the context of patent litigation. In recent years, courts have seen an explosion of patent litigation. Consistent with the general trend in civil lawsuits, most of those patent suits have been settled. While scholars have studied and debated reverse payment or pay for delay patent settlements in depth, what is missing from the literature is a comprehensive treatment of the normative questions raised by the widespread settlement of conventional patent cases. Do conventional patent settlements necessarily promote the public good? Should courts encourage these patent disputes to settle? Are there certain types of patent cases that should be adjudicated rather than settled? This Article sets out to answer these questions. It begins by contextualizing the antisettlement arguments of Fiss and other scholars within the framework of patent litigation. The Article then identifies some of the unique problems that patent settlements create, namely that settlement allows potentially invalid patents to remain in force in contravention of the public good. Next, the Article canvasses the case law and literature, and it concludes that the judiciary systematically encourages patent litigants to settle. The final part of the Article argues that, from a social welfare perspective, settlement is not the best way to resolve all patent disputes. Rather, the Article proposes, trial judges should serve as protectors of the public interest. It then concludes by recommending various factors to inform the decision whether a particular patent case should be settled or be adjudicated, and by offering suggestions for how trial courts might influence outcomes in patent litigation

The Local Rules of Patent Procedure

Congress, the Executive, and the Judiciary have all had “patent litigation abuse” on their minds recently. The concern is that too many frivolous patent suits are being filed and used to extract unwarranted settlements. The story is that bad actors—patent assertion entities (PAEs) or, more pejoratively, “patent trolls”—are suing small companies and end users for patent infringement even though PAEs make no patented products themselves. Over the past two years, Congress proposed nearly a dozen bills aimed at curbing patent litigation abuse, the Executive took various anti-troll measures, and the Supreme Court decided a pair of cases that make it easier to shift fees based on patent litigation misconduct. In the meantime, federal district courts have been addressing the patent litigation situation for years through procedural reform. Beginning in 2000, districts started adopting local patent rules to manage patent litigation. Today, thirty district courts in twenty different states have comprehensive local patent rules, and many more individual judges have adopted “local-local” rules or standing orders that apply to patent cases in their courts. While commentators have generally lauded the efforts of district courts to manage patent litigation, the consequence is highly divergent patent practice from one federal district court to the next. This Article is the first academic treatment of local patent rules to consider their effect both on patent policy and our federal system of civil procedure. It argues that the local patent rules movement undermines policies germane to patent law, particularly uniformity, and transgresses the trans-territorial and trans-substantive ideals of the Federal Rules of Civil Procedure. Yet, specialized procedural rules appear not only to be the current reality in patent litigation, but the inevitable future as well. The Article therefore proposes the promulgation of a national set of procedural rules to govern patent litigation—the Federal Rules of Patent Procedure—which will borrow from and be shaped by the local patent rules experiment

Standing to Sue in the Myriad Genetics Case

In recent years, the topic of gene patents has generated significant debate among medical researchers, biotechnology companies, academics, policymakers, and patent lawyers. The controversy implicates a wide range of legal and policy questions, including whether human genes should be patentable, and whether such patents stimulate or stifle innovation. In Association for Molecular Pathology v. Myriad Genetics, a high-profile case recently before the United States Court of Appeals for the Federal Circuit, a divided panel of the court addressed these questions. Before reaching the merits of the case, however, the court had to decide whether the plaintiffs had standing to sue the patent owner for declaratory relief. Although scholars and other commentators have discussed at length the substantive issues raised by the Myriad case, little has been said about this crucial procedural question. This Essay explores the question of standing in the Myriad case, specifically, and in patent declaratory judgment actions more generally. In Myriad, the Federal Circuit concluded that only one of the twenty plaintiffs had standing to sue. While this was sufficient for the case to proceed, this Essay critically examines the Federal Circuit\u27s approach to standing in Myriad. The Essay argues that the court misinterpreted and misapplied Supreme Court precedent, thus adopting a formalistic and overly narrow test for standing. The Essay urges the Supreme Court, if presented with the opportunity, to grant certiorari in Myriad to reconfirm its holding in MedImmune v. Genentech that standing in patent declaratory judgment actions must be analyzed under the all the circumstances test, not according to bright line rules. Finally, the Essay concludes by underscoring the importance of declaratory judgment actions to our patent system. The Supreme Court consistently has adopted legal standards that facilitate patent declaratory relief actions because of the public benefit afforded when bad patents are invalidated. The Federal Circuit, too, should consider its obligation to the public when deciding the justiciability of patent declaratory judgment actions

The Local Rules of Patent Procedure

Congress, the Executive, and the Judiciary have all had “patent litigation abuse” on their minds recently. The concern is that too many frivolous patent suits are being filed and used to extract unwarranted settlements. The story is that bad actors—patent assertion entities (PAEs) or, more pejoratively, “patent trolls”—are suing small companies and end users for patent infringement even though PAEs make no patented products themselves. Over the past two years, Congress proposed nearly a dozen bills aimed at curbing patent litigation abuse, the Executive took various anti-troll measures, and the Supreme Court decided a pair of cases that make it easier to shift fees based on patent litigation misconduct. In the meantime, federal district courts have been addressing the patent litigation situation for years through procedural reform. Beginning in 2000, districts started adopting local patent rules to manage patent litigation. Today, thirty district courts in twenty different states have comprehensive local patent rules, and many more individual judges have adopted “local-local” rules or standing orders that apply to patent cases in their courts. While commentators have generally lauded the efforts of district courts to manage patent litigation, the consequence is highly divergent patent practice from one federal district court to the next. This Article is the first academic treatment of local patent rules to consider their effect both on patent policy and our federal system of civil procedure. It argues that the local patent rules movement undermines policies germane to patent law, particularly uniformity, and transgresses the trans-territorial and trans-substantive ideals of the Federal Rules of Civil Procedure. Yet, specialized procedural rules appear not only to be the current reality in patent litigation, but the inevitable future as well. The Article therefore proposes the promulgation of a national set of procedural rules to govern patent litigation—the Federal Rules of Patent Procedure—which will borrow from and be shaped by the local patent rules experiment

Public Enforcement of Patent Law

Law enforcement in the modern regulatory state is largely a joint enterprise. In areas such as securities, antitrust, civil rights, and environmental law, enforcement responsibilities are allocated between public and private actors. Patent law, on the other hand, is enforced almost exclusively through private lawsuits. Considering patent law\u27s constitutionally mandated public purpose--“to promote the Progress of Science and useful Arts”-- this privatization of patent enforcement is troubling. In recent years, there has been some movement away from this purely private enforcement scheme for patent law. The Department of Justice and the Federal Trade Commission, for example, have involved themselves in certain patent matters that implicate antitrust law. Although this is a step in the right direction, these regulators alone cannot adequately enforce patent law due to their limited jurisdiction, resources, and expertise. This article thus proposes a robust public enforcement regime for patent law. It argues that Congress should arm the U.S. Patent and Trademark Office (“PTO”), the agency responsible for reviewing patents ex ante, with broad powers to police patent validity ex post. The PTO is best situated to lead this effort because of the agency\u27s expertise, institutional resources, and enhanced powers under the America Invents Act. Moreover, charging the PTO with the responsibility for policing patents should serve to dispel allegations of agency capture and institutional bias toward patent owners