Patent owners have to tread carefully when they send cease-and-desist letters for patent infringement.  In a 2003 case, Imaging, Inc. v. Coyle, 340 F.3d 1344 (Fed. Cir. 2003), the court found that the patent owner was subject to the jurisdiction of the state of the recipient of the cease-and-desist letter. In other words, even though the patent owner had no ties or contacts to the state where the infringer was located, the “nasty lawyer’s letter” was enough to establish those contacts to that particular state. Jurisdiction is critical in patent enforcement strategy, since the patent owner typically makes a careful choice about the court in which it will pursue an infringement claim – for example, to obtain a home-field advantage in its own state. 

However, in a recent US decision (Radio Systems Corp. v. Accession, Inc., No. 10-1390 (Fed. Cir. Apr. 25, 2011), the Federal Circuit decided that the cease-and-desist letter was not sufficient to establish jurisdiction over the patent owner, even in a situation where the patent owner had engaged in marketing the patented article in that state.  This is good news for Canadian patent owners who can take strategic enforcement steps against infringers in another state – if these steps are taken carefully – without fearing that they will become subject to the jurisdiction of the courts in that state.

Calgary – 07:00 MDT