October 24, 2021

Volume XI, Number 297

Advertisement
Advertisement

October 22, 2021

Subscribe to Latest Legal News and Analysis

NEXLEARN, LLC, v. ALLEN INTERACTIONS, INC.: Contacts with a Forum State that Occurred Prior to the Issuance of a Patent are Not Sufficient to Confer Personal Jurisdiction for a Patent Infringement Case

NEXLEARN, LLC, v. ALLEN INTERACTIONS, INC.: June 19, 2017.  Before Moore, Schall, and Hughes

Takeaway:

  • A defendant’s contacts with a forum state that occurred prior to the issuance of a patent are not sufficient to confer specific personal jurisdiction for a patent infringement case after the patent issues.

  • Absent any other evidence, a website alone is insufficient to show minimum contacts to confer personal jurisdiction with a forum state.

  • Mass-email advertisements are not sufficiently targeted to support purposeful availment in the forum state.

Procedural Posture:

NexLearn appealed from a district court decision dismissing a case for lack of personal jurisdiction over the defendant.  The CAFC affirmed the district court’s decision.

Synopsis:

  • Personal jurisdiction: The CAFC affirmed a district court’s decision dismissing a case for lack of personal jurisdiction over the defendant. According to the CAFC, a district court can exercise personal jurisdiction over an out-of-state defendant based on either general or specific jurisdiction.  NexLearn did not argue that Kansas had general jurisdiction over Allen, and as such  the CAFC only considered whether Kansas had specific jurisdiction over Allen.  To  determine whether specific jurisdiction existed, the CAFC applied a three-part test:  whether (1) the defendant purposefully directed its activities into the forum state; (2) the claims arose out of, or relate to, those activities (collectively, the minimum contacts prong); and (3) the assertion of jurisdiction was reasonable and fair. See NexLearn, No. 2016-2170 at 6.  According to the CAFC, Allen’s prior contacts with the forum state, which included emails, presentations, and advertisements, were not related to Allen’s allegedly infringing activity, because they occurred before the patent issued.  Examples of the pre-patent issuance contacts included a nondisclosure agreement (“NDA”) that Allen and NexLearn entered into to allow Allen to learn about NexLearn’s software, and an End-User License Agreement (“EULA”) that specified that any dispute arising out the EULA must be brought exclusively in a court sitting in Wichita, Kansas.  Regarding Allen’s contacts post-issuance, the CAFC confirmed the district court’s finding that Allen’s website alone, even considering Allen’s two contacts with NexLearn employees, was insufficient to confer specific personal jurisdiction over Allen.  The CAFC added that Allen’s inclusion of Kansas in a drop down menu on its website was also not enough to subject Allen to personal jurisdiction in Kansas.

  • Subject Matter Jurisdiction: The CAFC analyzed whether the dismissal of the patent infringement claim for lack of personal jurisdiction left any remaining claim over which the district court could exercise original subject matter jurisdiction. Plaintiff NexLearn also asserted a breach of contract claim based on Allen allegedly developing a simulation software in violation of the NDA.  The CAFC ruled that the district court could not exercise supplemental subject matter jurisdiction over the claim for breach of contract because original subject matter jurisdiction no longer existed due to the dismissal of the patent infringement claim.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 250
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Tonya Gray, Intellectual Property Attorney, Andrews Kurth Law Firm
Partner

Tonya's practice encompasses complex civil and commercial litigation matters at both the trial and appellate levels and in both federal and state court. She has significant experience in intellectual property litigation defending patent infringement suits (particularly in the Eastern District of Texas) and trade secret misappropriation claims. Tonya's intellectual property experience includes cases about battery technology, video games, electronic gift cards, internet advertising, check imaging, online banking and e-commerce. Her practice also includes contract disputes, fiduciary claims, ...

214-659-4545
Gregory Miller, Andrews Kurth, IP, Intellectual Property, patent
Associate

Gregory is an Associate in the Intellectual Property section of Andrews Kurth. He concentrates his practice on the preparation and prosecution of patents, patent appeals, patent opinions, patent litigation, intellectual property licensing and acquisitions, transactions, agreements and due diligence. He works with companies in all stages of growth, and has extensive experience in a variety of matters, from the development of initial patent strategies for start-ups, to the maintenance of cost-effective quality in the management of high volume filings for Fortune 500...

+1.212.850.2892
Dragan Plavsic, Andrews Kurth, fuel cell systems lawyer, hybrid vehicles attorney
Associate

Dragan represents firm clients in patent litigation matters and in the Patent Trial and Appeal Board proceedings. In addition, he prepares and prosecutes patent applications and provides IP counseling to clients. The range of services that he provides further includes validity opinions, freedom to operate opinions and due diligence. Dragan provides his clients with services in a wide variety of technologies, including automotive safety systems, telematics systems, and fuel cell systems, hybrid vehicles, oil and gas exploration and production, oil and gas processing and...

202-662-2733
Advertisement
Advertisement
Advertisement