Almost every company has, at one time or another, sent or received a cease and desist letter asserting a violation of some intellectual property right. One common response to such letters is for the accused infringer to bring suit for a declaratory judgment to resolve any outstanding infringement allegations. To avoid this, patent owners typically will phrase cease and desist letters carefully so as not to create the “case or controversy” necessary for subject matter jurisdiction in declaratory judgment actions. A letter sent by a patentee to a suspected infringer can create a “case or controversy” if it contains even the slightest hint of an accusation of infringement. As we discussed in our October 22, 2012 article, “Creating Consequence-Free Cease and Desist Letters,” parties that have sent or received cease and desist letters often are so focused on this case or controversy requirement that they overlook the unique legal requirements for establishing personal jurisdiction over a patentee that sends a cease and desist letter.

While an accused infringer’s sale of an allegedly infringing product in a state subject the accused infringer to personal jurisdiction in that state, the sale of products that embody a patent in a state do not subject the patent owner to personal jurisdiction. Moreover, sending a cease and desist letter does not, by itself, subject the sender to personal jurisdiction in the accused infringer’s home state, even when coupled with sales of the patentee’s product in that state. Avocent Huntsville Corp. v. Aten Int’l. Co. To establish specific personal jurisdiction over a patentee in a state to which a cease and desist letter was sent, there must be some additional “enforcement or defense effort” related to the patent in that state.

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