August 2017

Patent Licensor May Not Be Sued in Texas Merely Because It Has an Exclusive Licensee in Texas
by John C. Paul, D. Brian Kacedon, and Ryan V. McDonnell
The Federal Circuit held that a Texas court did not have personal jurisdiction over a Delaware patent licensor who sent cease and desist letters to a Texas company, and that the Delaware licensor may not be sued in Texas merely because it has an exclusive licensee in Texas. For an exclusive license to establish personal jurisdiction, the license must contain additional provisions showing sufficient minimum contacts within the forum, such as a continuing obligation to enforce or defend the patent.

Activity in a State Prior to a Patent Grant Does Not Create Jurisdiction for an Infringement Suit in That State
by John C. Paul, D. Brian Kacedon, and Christopher B. Anderson
In determining that a Kansas court did not have personal jurisdiction over an accused patent infringer, the Federal Circuit found that the accused infringer's activities prior to the date the patent was granted were irrelevant to the question of whether the infringer had sufficient activity in Kansas such that the Kansas court had personal jurisdiction over the accused infringer. The court also found a forum selection clause in an end user license agreement accepted by the accused infringer did not apply and could not be used in the patent infringement suit to dictate the court in which the case would be heard.

Damages Expert May Compute Reasonable Royalty on Infringing Product without Apportioning the Value Between Patented and Unpatented Technologies
by John C. Paul, D. Brian Kacedon, and Robert C. MacKichan III
In declining to exclude a damages expert’s opinion that Intel should pay patent infringement damages of $6.16 billion, a Delaware court permitted a damages expert to compute a reasonable royalty rate for infringing computer chip products without requiring him to apportion the entire market value of the products between patented and unpatented technologies in those products.

Resources
Standard-Essential Patents and Pooling Update
April - July 2017 Update

Events
Webinar: Post-Sales Restrictions After Impression Products v. Lexmark
October 15-20, 2017
Register by September 13, 2017

LES Annual Meeting
October 22-25, 2017

Patent App[eals]® includes PDFs of all patent-related Federal Circuit decisions dating back to 2001. A user can search on keywords, judges, dates of decisions, lower court from which the case was appealed, case name, case number, and whether or not a case was heard en banc. In addition, if the decision was summarized for Federal Circuit IP blog, the Finnegan case summary is included.