Historically, patentees needed not worry too much about whether their mere pre-suit communications sent from afar into a jurisdiction created personal jurisdiction for a declaratory judgment action. See e.g., Silent Drive, Inc. v. Strong Industries, Inc., 326 F.3d 1194, 1202 (Fed. Cir. 2003) (ruling that cease-and-desist letter sent by patentee into forum did not create personal jurisdiction for noninfringement declaratory judgment count). Patentees were free to send these communications to not only generate licensing revenue but also establish knowledge to support a later willful infringement claim without any declaratory-judgment risk. But recently, the Federal Circuit appears to have clarified its prior rulings, finding that such communications in certain circumstances do satisfy minimum contacts to establish personal jurisdiction. And a district court then leveraged this Federal Circuit ruling to find even less contacts sufficed to establish personal jurisdiction for a declaratory-judgment action.

In 2021, the Federal Circuit found that a patentee’s sending of pre-suit communications into the Northern District of California can and did provide the minimum contacts necessary to subject it to a declaratory judgment action. Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147, 1151 (Fed. Cir. 2021). In Trimble, the patentee communicated with the alleged infringer 22 times, including by letter, phone and email. Id. at *1151. Trimble set the stage one year later for the U.S. District Court for the District of Colorado to conclude that a patentee’s sending of a mere two cease-and-desist letters into the district combined with its previous litigation in the districtconstituted sufficient contacts for a declaratory judgement action. PopSockets LLC v. Flygrip, Inc., 2022 WL 17547954, *7–*12 (D. Colo. 2022), report and recommendation adopted, 2022 WL 17729705, *2–*4 (D. Colo. 2022).

It is unclear where the line in the sand is. Patentees may need to balance their potential exposure to a district’s jurisdiction against their desire to generate licensing revenue or establish the prerequisite knowledge to support a later willful-infringement claim. Only time will tell the minimum amount of cease-and-desist letter writing needed to establish the minimum contacts necessary for a declaratory judgment action.