United States Court of Appeals
for the Federal Circuit
__________________________
RADIO SYSTEMS CORPORATION,
Plaintiff-Appellant,
v.
ACCESSION, INC.,
Defendant-Appellee.
__________________________
2010-1390
__________________________
Appeal from the United States District Court for the
Eastern District of Tennessee in Case No. 09-CV-0481,
Judge Thomas A. Varlan.
___________________________
Decided: April 25, 2011
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R. BRADFORD BRITTIAN, Pitts & Brittian, P.C., of
Knoxville, Tennessee, argued for the plaintiff-appellant.
With him on the brief were ROBERT E. PITTS, PAUL A.
FORSYTH and MATTHEW J. STARK.
ROBERT J. BASIL, Collier & Basil, PC, of New York,
New York, argued for the defendant-appellee.
__________________________
Before BRYSON, LINN, and DYK, Circuit Judges.
RADIO SYSTEMS v. ACCESSION 2
BRYSON, Circuit Judge.
This is another in a series of cases presenting us with
the question whether a patentee’s activities directed at
the forum state were sufficient to give the forum court
personal jurisdiction over the patentee in a declaratory
judgment action. The district court in this case held that
the defendant’s activities were not sufficient to give it
personal jurisdiction over the defendant, and we agree.
I
Radio Systems Corporation is a Delaware corporation
with its principal place of business in Knoxville, Tennes-
see. It manufactures several pet-related products, includ-
ing a patented electronic pet access door (the
“SmartDoor”), which unlocks in response to a transmitter
worn by the pet. Accession, Inc., is a New Jersey corpora-
tion with its principal place of business in Hamilton, New
Jersey. Accession’s sole employee is its president, Tho-
mas Sullivan. Mr. Sullivan is the named inventor of U.S.
Patent No. 7,207,141 (“the ’141 patent”), issued on April
24, 2007, and assigned to Accession. The ’141 patent is
directed to a portable pet access door (the “Wedgit”) that
can be inserted into sliding glass doors.
In November 2006, Mr. Sullivan sent an unsolicited
letter to Radio Systems designed to interest the company
in licensing the Wedgit. After Radio Systems did not
respond to the solicitation and two subsequent telephone
calls, Mr. Sullivan sent another letter to Radio Systems in
January 2007 for the same purpose, this time indicating
that he had received a notice of allowance from the Patent
and Trademark Office (“PTO”) for the pending patent on
his device. Radio Systems responded by e-mail, asking for
the patent application number. Mr. Sullivan answered by
3 RADIO SYSTEMS v. ACCESSION
e-mail, providing the application number and suggesting
that “we may both benefit from a cooperative effort.”
Radio Systems did not respond to that e-mail.
In June 2007, Mr. Sullivan e-mailed Radio Systems
again, noting that the ’141 patent had issued and propos-
ing that Accession supply Radio Systems with Wedgit pet
doors for sale to consumers. The parties exchanged
correspondence for several months but reached no agree-
ment. Meanwhile, Radio Systems applied for a patent on
its SmartDoor device and began marketing it in August
2007.
In February 2009, Mr. Sullivan e-mailed Radio Sys-
tems again to tout “mutually beneficial opportunities to
bring [the Wedgit] to market.” Radio Systems ultimately
agreed to meet with Mr. Sullivan to view a demonstration
of the Wedgit. Before the meeting, the parties signed a
nondisclosure agreement prepared by Radio Systems. In
April 2009, Mr. Sullivan traveled to Tennessee to demon-
strate the Wedgit to David Anderson, a Radio Systems
representative. According to Mr. Sullivan’s account of the
meeting, he presented the Wedgit and showed Mr. Ander-
son a product video. Mr. Anderson asked Mr. Sullivan to
leave Wedgit prototypes with Radio Systems for further
examination, but Mr. Sullivan declined, saying that he
planned to use the prototypes in a focus group presenta-
tion. Following the meeting, Mr. Sullivan sent several
more e-mails to Radio Systems, but as of July 2009 Radio
Systems had expressed no interest in his marketing
proposal. At that time, Mr. Sullivan advised Radio Sys-
tems that he would continue his efforts to commercialize
the Wedgit on his own.
In June 2009, the PTO issued a notice of allowance for
Radio Systems’ patent on the SmartDoor device. Mean-
RADIO SYSTEMS v. ACCESSION 4
while, Accession retained legal counsel in New Jersey.
On August 20, 2009, Accession’s counsel left a voice
message with the PTO examiner for the SmartDoor
application, alerting the examiner to the existence of
Accession’s ’141 patent. On the same day, Accession’s
counsel telephoned Radio Systems’ counsel and stated his
position that the SmartDoor infringed the ’141 patent and
that interference proceedings would be warranted be-
tween the ’141 patent and the SmartDoor application.
Later that day, Accession’s counsel left a voice message
with Radio Systems’ counsel indicating that Mr. Sullivan
should be named as a co-inventor on the SmartDoor
application. On August 25, 2009, Accession’s counsel sent
an e-mail to Radio Systems’ counsel asking whether Radio
Systems had brought the ’141 patent to the attention of
the PTO. The next day, the PTO examiner returned the
phone call of Accession’s counsel. As a result of that
conversation, the PTO withdrew the notice of allowance
previously issued for the SmartDoor application. On
August 28, 2009, Accession’s counsel sent an e-mail to
Radio Systems’ counsel informing him of the communica-
tion with the examiner. Finally, on September 1 and
September 23, 2009, Accession’s counsel sent letters to
Radio Systems outlining Accession’s infringement allega-
tions and suggesting that the dispute be settled through a
licensing agreement.
On November 5, 2009, Radio Systems filed a com-
plaint in the United States District Court for the Eastern
District of Tennessee seeking a declaratory judgment of
noninfringement and invalidity with respect to the ’141
patent. Accession moved to dismiss the action for lack of
personal jurisdiction or, in the alternative, to transfer the
case to the United States District Court for the District of
New Jersey. The Tennessee district court granted Acces-
sion’s motion to dismiss in May 2010, and Accession filed
5 RADIO SYSTEMS v. ACCESSION
an infringement action in the District of New Jersey
shortly thereafter. That action has been stayed pending
our decision in this appeal.
II
A United States district court may exercise personal
jurisdiction over a defendant if the defendant “is subject
to the jurisdiction of a court of general jurisdiction in the
state where the district court is located.” Fed. R. Civ. P.
4(k)(1)(A). The district court’s exercise of jurisdiction over
an out-of-state defendant must be consistent with both
the forum state’s long-arm statute and the requirements
of due process. See Avocent Huntsville Corp. v. Aten Int’l
Co., 552 F.3d 1324, 1329 (Fed. Cir. 2008). Because Ten-
nessee’s long-arm statute is coterminous with due process
limitations, Masada Inv. Corp. v. Allen, 697 S.W.2d 332,
334 (Tenn. 1985); see Tenn. Code Ann. § 20-2-214, the
jurisdictional issue in this case turns on whether the
court’s exercise of jurisdiction would be consistent with
the requirements of due process.
Radio Systems does not allege that the district court
has general jurisdiction over Accession, which has no
“continuous and systematic general business contacts”
with Tennessee, Helicopteros Nacionales de Colombia,
S.A. v. Hall, 466 U.S. 408, 416 (1984). Instead, Radio
Systems alleges that the district court has specific juris-
diction over Accession based on events related to the
instant dispute.
A
In order to satisfy due process requirements for estab-
lishing specific jurisdiction over a defendant, the plaintiff
must show that the defendant purposely directed its
RADIO SYSTEMS v. ACCESSION 6
activities at residents of the forum and that the plaintiff’s
claim arises from or relates to those activities. In addi-
tion, the plaintiff must satisfy the court that the assertion
of personal jurisdiction under the circumstances is rea-
sonable and fair. Breckenridge Pharm., Inc. v. Metabolite
Labs., Inc., 444 F.3d 1356, 1363 (Fed. Cir. 2006). In Red
Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d
1355 (Fed. Cir. 1998), we held that ordinary cease-and-
desist notices sent by a patentee to an alleged infringing
party in a different state are not sufficient to subject the
patentee to specific jurisdiction in that state. As a matter
of patent law policy, we held that “[p]rinciples of fair play
and substantial justice afford a patentee sufficient lati-
tude to inform others of its patent rights without subject-
ing itself to jurisdiction in a foreign forum.” 148 F.3d at
1360-61.
In subsequent cases, we have held that certain other
patent enforcement actions, taken in conjunction with the
issuance of cease-and-desist letters, are sufficient to
support specific jurisdiction over a patentee in a foreign
forum. See Autogenomics, Inc. v. Oxford Gene Tech. Ltd.,
566 F.3d 1012, 1019 (Fed. Cir. 2009) (collecting cases).
However, we have held that not all of a patentee’s activi-
ties in the forum state are sufficient to create a basis for
asserting personal jurisdiction. In Avocent Huntsville
Corp., we explained that an action for a declaratory
judgment “arises out of or relates to the activities of the
defendant patentee in enforcing the patent or patents in
suit,” and that the relevant inquiry for specific jurisdic-
tion is “to what extent . . . the defendant patentee pur-
posefully directed such enforcement activities at residents
of the forum and the extent to which the declaratory
judgment claim arises out of or relates to those activities.”
552 F.3d at 1332 (internal quotation marks and citations
omitted). Thus, only those activities of the patentee that
7 RADIO SYSTEMS v. ACCESSION
relate to the enforcement or defense of the patent can give
rise to specific personal jurisdiction for such an action.
Id. at 1336; accord Autogenomics, 566 F.3d at 1020.
The district court in this case concluded that Radio
Systems’ declaratory judgment action “does not result
from alleged injuries that arise out of or relate to” activi-
ties by Accession that were purposely directed at Tennes-
see. The court explained that the only activities relating
to the enforcement of Accession’s patent that were di-
rected at Tennessee consisted of Accession’s counsel’s
cease-and-desist correspondence with Radio Systems in
August and September 2009. All of Accession’s activities
prior to that point related to its attempts to commercial-
ize the Wedgit or license the ’141 patent. The district
court discounted Accession’s earlier contacts with Radio
Systems based on this court’s decisions holding that
attempts to sell a product or license a patent do not give
rise to personal jurisdiction in declaratory judgment
actions for non-infringement or invalidity. See Avocent,
552 F.3d at 1332.
Radio Systems argues that the district court erred in
refusing to consider Accession’s contacts with Tennessee
prior to the point in August 2009 at which the relation-
ship between the companies became adversarial. Those
early contacts included e-mails, phone calls, and letters
sent to Radio Systems, as well as Mr. Sullivan’s meeting
with Radio Systems in Tennessee to demonstrate the
Wedgit. Radio Systems distinguishes Avocent on the
ground that in that case the patentee did not directly
contact and visit the declaratory judgment plaintiff in the
forum state in an effort to market the patentee’s inven-
tion.
RADIO SYSTEMS v. ACCESSION 8
While the facts of this case differ from those in Avo-
cent, the principles of Avocent govern this case. We have
characterized the rule in Avocent as follows: that “only
enforcement or defense efforts related to the patent rather
than the patentee’s own commercialization efforts are to
be considered for establishing specific personal jurisdic-
tion in a declaratory judgment action against the pat-
entee.” Autogenomics, 566 F.3d at 1020, citing Avocent,
552 F.3d at 1336. Mr. Sullivan’s attempts to interest
Radio Systems in a business transaction relating to his
product were not “enforcement or defense efforts.” In-
stead, Mr. Sullivan’s correspondence with Radio Systems
was focused on generating a market for the Wedgit, not
on enforcing or defending the ’141 patent. Moreover,
Avocent did not distinguish between commercialization
efforts directed generally at residents of the forum state
and efforts directed specifically at the plaintiff. See also
Hildebrand v. Steck Mfg. Co., 279 F.3d 1351, 1356 (Fed.
Cir. 2006) (dismissing declaratory judgment action for
lack of personal jurisdiction despite patentee’s efforts to
license products to plaintiffs). The fact that Mr. Sullivan
focused on Radio Systems in his effort to commercialize
his invention therefore does not render his activities in
Tennessee sufficient for the exercise of specific personal
jurisdiction.
Radio Systems argues that in Electronics for Imaging,
Inc. v. Coyle, 340 F.3d 1344 (Fed. Cir. 2003), this court
“found specific personal jurisdiction to exist based solely
upon [forum state] contacts for marketing a patent.”
Electronics for Imaging, however, involved more than
marketing efforts. The patentee in Electronics for Imag-
ing hired a California attorney to communicate with the
California-based plaintiff on the patentee’s behalf. The
attorney corresponded with the plaintiffs on multiple
occasions “to report on the progress of the [patentee’s]
9 RADIO SYSTEMS v. ACCESSION
pending application.” 340 F.3d at 1351. The record in
Electronics for Imaging reveals that in the course of those
communications, the attorney advised the plaintiff’s
representatives that the patentee had a number of com-
mercially successful patents and that he had previously
sued several large companies for patent infringement and
won. In addition, according to the plaintiff’s vice-
president, the patentee referred him to a Los Angeles
attorney who prosecuted the patent and said that if his
Los Angeles attorney or his attorney in Nevada “could
work out a deal,” the “price would be lower” because he
would not have to pay his attorney to bring an infringe-
ment action.
In that context, the attorney-client relationship effec-
tively became an agency relationship in which the princi-
pal retained agents in the forum state to assist in the
enforcement of its patent rights. See Blanton v. Woman-
care, Inc., 696 P.2d 645, 649 (Cal. 1985); Fid. & Cas. Co.
v. Abraham, 161 P.2d 689, 693 (Cal. Dist. Ct. App. 1945).
Communications between a forum state attorney and the
declaratory judgment plaintiff relating to the enforcement
or defense of the patent therefore constitute in-state
contacts that are attributable to the patentee and rele-
vant to the exercise of personal jurisdiction. As we ex-
plained in Electronics for Imaging, such communications
“clearly arise out of or are related to” a subsequent de-
claratory judgment action when they relate to the patent-
in-suit. 340 F.3d at 1351.
In addition to hiring forum state attorneys, the defen-
dant in Electronics for Imaging engaged in other activity
relating to the enforcement or defense of its patent. The
defendant “threatened [the plaintiff] with litigation
unless [the plaintiff] paid $25 million for the technology,”
and later “requested $18 million be delivered to him” or
RADIO SYSTEMS v. ACCESSION 10
litigation would ensue. Elecs. for Imaging, Inc. v. Coyle,
No. C01-4853 (N.D. Cal. Mar. 27, 2002). The communica-
tion between Accession and Radio Systems prior to Au-
gust 2009 was focused on the creation of a cooperative
business arrangement to market the Wedgit and thus was
of an entirely different nature than the enforcement-
related activities in Electronics for Imaging.
B
Radio Systems next contends that the interactions be-
tween Accession’s counsel and the PTO give rise to per-
sonal jurisdiction over Accession in Tennessee. Radio
Systems asks us to view the two telephone calls with the
PTO as part of a more extensive enforcement effort di-
rected at Radio Systems’ business in Tennessee. The
other enforcement-related actions by Accession’s counsel
in New Jersey consisted of contacting Radio Systems by e-
mail and letter in August and September 2009. In those
communications, counsel outlined Accession’s claim that
Radio Systems’ SmartDoor was covered by Accession’s
patent and suggested settling the dispute through a
licensing agreement. As we have noted, the e-mails and
letters from Accession’s counsel to Radio Systems are
insufficient to give rise to personal jurisdiction in light of
the principles of Red Wing Shoe. Warnings and threats of
infringement suits are typical in such correspondence, as
are offers to license. Thus, if Accession’s contacts with
the PTO are to give rise to jurisdiction as extra-judicial
enforcement efforts, they must be sufficient by themselves
to do so.
In Campbell Pet Co. v. Miale, 542 F.3d 879 (Fed. Cir.
2008), we held that the district court had jurisdiction over
a patentee in a declaratory judgment action based on the
patentee’s conduct in interfering with the plaintiff’s
11 RADIO SYSTEMS v. ACCESSION
business at a trade convention in the forum state. 542
F.3d at 886-87. The patentee’s actions in that case, which
constituted a form of self-help patent enforcement, con-
sisted of “t[aking] steps to interfere with the plaintiff’s
business by enlisting a third party to take action against
the plaintiff.” Id. at 887. We held those extrajudicial
enforcement activities sufficient, in combination with the
defendant’s other enforcement efforts, to subject the
patentee to jurisdiction in a foreign forum.
In Avocent, we distinguished Campbell Pet on the
ground that in that case, the extrajudicial enforcement
activities occurred within the forum state. Here, the
district court held that Accession’s contacts with the PTO
did not support Radio Systems’ jurisdictional argument
because those contacts were directed at Virginia (the site
of the PTO) rather than Tennessee. In doing so, the
district court correctly followed our holding in Avocent.
Radio Systems relies on two cases from other circuits.
In Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514
F.3d 1063 (10th Cir. 2008), the Tenth Circuit found per-
sonal jurisdiction over a patentee appropriate in Colorado
where the patentee had contacted an Internet retailer
headquartered in California regarding the plaintiff’s
alleged infringement activities, resulting in the retailer’s
withdrawal of the plaintiff’s products from its website.
The court reasoned that the patentee’s extrajudicial
enforcement efforts, although they occurred in California,
were targeted at the plaintiff’s business interests in
Colorado. 514 F.3d at 1082. Radio Systems also points to
Bancroft & Masters, Inc. v. Augusta National, Inc., 223
F.3d 1082 (9th Cir. 2000), overruled on other grounds by
Yahoo! Inc. v. La Ligue Contre Le Racisme, 433 F.3d 1199
(9th Cir. 2006) (en banc). In that trademark case, a
Virginia-based registrar of Internet domain names sus-
RADIO SYSTEMS v. ACCESSION 12
pended the plaintiff’s domain name in the wake of corre-
spondence from the defendant, a company headquartered
in Georgia. Finding that the defendant’s correspondence
with the registrar was intended to affect the plaintiff in
California and went beyond cease-and-desist correspon-
dence, the Ninth Circuit held the defendant subject to
personal jurisdiction in California when the plaintiff
brought a declaratory judgment action there. 223 F.3d at
1088-89.
Radio Systems argues that Dudnikov and Bancroft &
Masters support its argument that Accession’s contacts
with the PTO support personal jurisdiction in the district
court in Tennessee, but that argument runs afoul of our
decision in Avocent. We made clear in Avocent that
enforcement activities taking place outside the forum
state do not give rise to personal jurisdiction in the forum,
and that decision is controlling here.
C
Finally, Radio Systems argues that Accession con-
sented to jurisdiction in Tennessee by entering into the
nondisclosure agreement in connection with the April
2009 meeting in Tennessee. That agreement contained a
forum selection clause, which according to Radio Systems
constitutes Accession’s consent to jurisdiction in the
Tennessee district court. The clause in question provides
that Accession
consents to the personal jurisdiction of, and
agrees that exclusive jurisdiction shall reside in,
all courts of the State of Tennessee and the U.S.
District Court for the Eastern District of Tennes-
see regarding any cause of action arising under
13 RADIO SYSTEMS v. ACCESSION
this Agreement or arising out of the subject mat-
ter relating to this Agreement.
Radio Systems concedes that its declaratory judgment
action does not arise under any of the provisions of the
disclosure agreement. It argues, however, that the action
arises out of “subject matter relating to” the agreement.
The stated purpose of the agreement was to facilitate
“discussions for the purpose of evaluating the interest of
Radio Systems to engage in a transaction or enter into a
relationship with [Accession] pertaining to the Confiden-
tial Information and, if desired, to pursue such relation-
ship or transaction.” The entire agreement addressed
confidential information that may be furnished by Acces-
sion to Radio Systems. “Confidential Information” was
defined as follows:
“Confidential Information” means information
that has been maintained in confidence by [Acces-
sion] and is identified as confidential . . . . Infor-
mation that (a) is or becomes a part of the public
domain through legitimate means; [or] (b) can be
shown to be in the possession of Radio Systems at
the time of the disclosure . . . shall not be consid-
ered Confidential Information.
At the time the agreement was signed in February 2009,
the contents of the ’141 patent, issued in April 2007, had
become “part of the public domain through legitimate
means.” In addition, the SmartDoor had been in the
marketplace since August 2007, meaning that it was
clearly “in the possession of Radio Systems” at all times
after the agreement was signed. Thus, by its terms, the
agreement did not pertain to the ’141 patent or the poten-
tially infringing device, the SmartDoor. The record does
RADIO SYSTEMS v. ACCESSION 14
not reveal that Accession made any disclosures relating to
matters other than the Wedgit, which is not directly at
issue in Radio Systems’ action. Because this action did
not arise out of the subject matter of the confidential
disclosure agreement, the forum selection clause of that
agreement has no effect on the question of personal
jurisdiction.
Accordingly, we sustain the district court’s determina-
tion that the contacts between Accession and the State of
Tennessee were insufficient to give the court personal
jurisdiction over Accession. We therefore uphold the
district court’s order dismissing this action.
AFFIRMED