Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 1 of 13
`
`Exhibit A
`
`

`

`Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 2 of 13
`Apple Inc. v. Zipit Wireless, Inc., --- F.4th ---- (2022)
`2022 WL 1132169
`
`2022 WL 1132169
`Only the Westlaw citation is currently available.
`United States Court of Appeals, Federal Circuit.
`
`APPLE INC., Plaintiff-Appellant
`v.
`ZIPIT WIRELESS, INC., Defendant-Appellee
`
`2021-1760
`|
`Decided: April 18, 2022
`
`Synopsis
`Background: Alleged infringer filed suit seeking declaratory
`judgment of noninfringement of assignee's patents directed to
`wireless instant messaging device. The United States District
`Court for the Northern District of California, Edward J.
`Davila, J., 2021 WL 533754, granted assignee's motion to
`dismiss for lack of personal jurisdiction. Alleged infringer
`appealed.
`
`lack of
`for
`reviewing a dismissal
`In
`personal jurisdiction, Court of Appeals accepts
`uncontroverted allegations in the complaint as
`true and resolves any factual conflicts in the
`affidavits in plaintiff's favor. Fed. R. Civ. P. 12(b)
`(2).
`
`[3]
`
`Non-residents in
`
`Constitutional Law
`general
`Federal Courts
`Actions by or Against
`Nonresidents;  "Long-Arm" Jurisdiction
`Federal Courts
`Personal jurisdiction
`Determining whether personal jurisdiction exists
`over an out-of-state defendant in the Northern
`District of California involves two inquiries:
`whether California's long-arm statute permits
`service of process, and whether assertion of
`personal jurisdiction comports with due process.
`U.S. Const. Amend. 14; Cal. Civ. Proc. Code §
`410.10.
`
`Holdings: The Court of Appeals, Stoll, Circuit Judge, held
`that:
`
`[4]
`
`[1] assignee was subject to specific personal jurisdiction, and
`
`[2] exercise of personal jurisdiction over assignee would not
`be unreasonable.
`
`Reversed and remanded.
`
`Procedural Posture(s): On Appeal; Motion to Dismiss for
`Lack of Personal Jurisdiction.
`
`West Headnotes (22)
`
`[1]
`
`Federal Courts
`Personal jurisdiction
`Personal jurisdiction is question of law that Court
`of Appeals reviews de novo.
`
`[2]
`
`Federal Courts
`jurisdiction
`
`Dismissal for lack of
`
`Courts
`Actions by or Against
`Nonresidents, Personal Jurisdiction In;  "Long-
`Arm" Jurisdiction
`California's long-arm statute permits service of
`process to the full extent allowed by the Due
`Process Clause of the United States Constitution,
`so the two inquiries to determine whether
`personal jurisdiction can be exercised over an
`out-of-state defendant become one; that is, Court
`of Appeals only needs to consider whether
`jurisdiction comports with due process. U.S.
`Const. Amend. 14; Cal. Civ. Proc. Code §
`410.10.
`
`[5]
`
`Non-residents in
`
`Constitutional Law
`general
`Foreseeability is critical to the due process
`analysis
`in determining whether personal
`jurisdiction may be exercised over an out-of-
`state defendant, and the focus is on whether
`a given defendant's conduct and connection
`with the forum state are such that he should
`reasonably anticipate being haled into court
`there. U.S. Const. Amend. 14.
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`

`

`Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 3 of 13
`Apple Inc. v. Zipit Wireless, Inc., --- F.4th ---- (2022)
`2022 WL 1132169
`
`[6]
`
`[7]
`
`[8]
`
`[9]
`
`Federal Courts
`Related contacts and
`activities;  specific jurisdiction
`In ascertaining whether exercise of specific
`personal jurisdiction is appropriate in a given
`case, a court considers: (1) whether defendant
`purposefully directed its activities at residents
`of the forum, (2) whether the claim arises out
`of or relates to the defendant's activities within
`the forum, and (3) whether assertion of personal
`jurisdiction is reasonable and fair.
`
`Federal Courts
`Related contacts and
`activities;  specific jurisdiction
`The
`first
`two
`factors
`for determining
`whether specific personal
`jurisdiction may
`be exercised over an out-of-state defendant
`comprise the minimum contacts portion of
`the jurisdictional framework, namely, whether
`defendant purposefully directed its activities at
`residents of the forum and whether the claim
`arises out of or relates to the defendant's activities
`within the forum.
`
`Federal Courts
`Related contacts and
`activities;  specific jurisdiction
`The
`third factor for determining whether
`specific personal jurisdiction may be exercised
`over an out-of-state defendant assesses the
`reasonableness and
`fairness of exercising
`jurisdiction with an eye toward ensuring that
`the exercise of jurisdiction does not offend the
`traditional notions of fair play and substantial
`justice.
`
`Presumptions and burden
`
`Federal Courts
`of proof
`Federal Courts
`Weight and sufficiency
`Where minimum contacts are satisfied, the
`exercise of specific personal jurisdiction over
`an out-of-state defendant
`is presumptively
`reasonable; thus, the burden is placed on the
`defendant to present a compelling case that the
`
`[10]
`
`[11]
`
`[12]
`
`[13]
`
`presence of some other considerations would
`render jurisdiction unreasonable.
`
`Patents
`Tortious act, conduct, or injury
`Out-of-state assignee of patents directed to
`wireless instant messaging device was subject
`to exercise of specific personal jurisdiction, in
`alleged infringer's action seeking declaratory
`judgment of noninfringement, since assignee
`had minimum contacts with forum state of
`California sufficient to satisfy due process, as
`assignee purposefully directed its activities at
`forum, and claim arose out of or related to
`assignee's activities within forum, including
`sending multiple
`letters and claim charts
`accusing alleged infringer of patent infringement
`and also traveling to alleged infringer's offices
`in forum state to discuss those accusations. U.S.
`Const. Amend. 14.
`
`Federal Courts
`Related contacts and
`activities;  specific jurisdiction
`There is no general rule that demand letters can
`never create specific personal jurisdiction over
`an out-of-state defendant.
`
`Patents
`Residence and Place of
`Infringement;  Long-Arm Jurisdiction
`Principles of fair play and substantial justice
`afford a patentee sufficient latitude to inform
`others of its patent rights without subjecting itself
`to personal jurisdiction in a foreign forum.
`
`Federal Courts
`Contacts with Forum
`A right holder should be permitted to send a
`notice letter to a party in a particular forum
`to try to settle disputes without being haled
`into court in that forum; this policy must be
`considered in determining whether the exercise
`of personal jurisdiction over the out-of-state
`defendant would be reasonable and fair.
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`

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`Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 4 of 13
`Apple Inc. v. Zipit Wireless, Inc., --- F.4th ---- (2022)
`2022 WL 1132169
`
`[14] Compromise, Settlement, and
`Release
`Status as favored or disfavored;
`public policy
`The policy favoring settlement of cases is
`manifest in the Federal Rules of Evidence,
`as well as Supreme Court precedent directing
`courts to consider the interstate judicial system's
`interest in obtaining the most efficient resolution
`of controversies.
`
`[15]
`
`[16]
`
`[17]
`
`[18]
`
`[19]
`
`Federal Courts
`Related contacts and
`activities;  specific jurisdiction
`The sending of a notice letter can provide
`specific personal jurisdiction over an out-of-state
`defendant.
`
`Patents
`Residence and Place of
`Infringement;  Long-Arm Jurisdiction
`attempted
`Communications
`directed
`to
`resolution of patent dispute do not trump all other
`considerations of fairness and reasonableness
`of exercise of personal jurisdiction over a
`nonresident defendant. U.S. Const. Amend. 14.
`
`Federal Courts
`Personal Jurisdiction
`Inquiries into personal jurisdiction cannot rest
`on bright-line rules; there are no talismanic
`jurisdictional formulas.
`
`Factors Considered in
`
`Federal Courts
`General
`The facts of each case must always be weighed
`in determining whether exercise of personal
`jurisdiction would comport with fair play and
`substantial justice.
`
`Factors Considered in
`
`Federal Courts
`General
`In determining whether exercise of personal
`jurisdiction over an out-of-state defendant would
`be unreasonable, the following factors are
`
`considered: (1) the burden on the defendant,
`(2) the forum state's interest in adjudicating the
`dispute, (3) the plaintiff's interest in obtaining
`convenient and effective relief, (4) the interstate
`judicial system's interest in obtaining the most
`efficient resolution of controversies, and (5) the
`shared interest of the several states in furthering
`fundamental substantive social policies.
`
`[20] Constitutional Law
`Business, business
`organizations, and corporations in general
`Patents
`Personal jurisdiction in general
`Exercise of specific personal jurisdiction over
`out-of-state assignee of patents directed to
`wireless instant messaging devices was not
`unreasonable under due process requirements,
`in
`alleged
`infringer's
`action
`seeking
`declaratory
`judgment of noninfringement;
`general allegations of inconvenience of litigating
`in
`forum
`state of California did not
`demonstrate unreasonable burden to assignee
`whose headquarters and employees were in
`South Carolina but could have foreseen being
`haled into court in California, both California
`and alleged infringer that was headquartered in
`California had substantial interest in litigating
`in California, those interests did not pale in
`comparison to interest of judicial system and
`society at large, and interests of California and
`South Carolina did not conflict. U.S. Const.
`Amend. 14.
`
`Non-residents in
`
`[21] Constitutional Law
`general
`Federal Courts
`Contacts with Forum
`In determining whether personal jurisdiction
`may be exercised over an out-of-state defendant,
`territorial presence frequently will enhance a
`potential defendant's affiliation with a state and
`reinforce the reasonable foreseeability of suit
`there; this foreseeability is critical to the due
`process analysis. U.S. Const. Amend. 14.
`
`[22]
`
`Patents
`
`In general;  utility
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`

`

`Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 5 of 13
`Apple Inc. v. Zipit Wireless, Inc., --- F.4th ---- (2022)
`2022 WL 1132169
`
`US Patent 7,292,870, US Patent 7,894,837.
`Cited.
`
`Appeal from the United States District Court for the Northern
`District of California in No. 5:20-cv-04448-EJD, Judge
`Edward J. Davila.
`
`Attorneys and Law Firms
`
`Lauren Ann Degnan, Fish & Richardson PC, Washington,
`DC, argued for plaintiff-appellant. Also represented by
`Ashley Bolt, Eda Stark, Benjamin Thompson, Atlanta, GA;
`Benjamin Elacqua, Houston, TX.
`
`Cortney Alexander, Kent & Risley LLC, Alpharetta, GA,
`argued for defendant-appellee. Also represented by Stephen
`Robert Risley.
`
`Before Hughes, Mayer, and Stoll, Circuit Judges.
`
`Opinion
`
`Stoll, Circuit Judge.
`
`*1 Apple Inc. appeals from a judgment of the U.S. District
`Court for the Northern District of California dismissing
`its complaint for declaratory judgment of noninfringement
`against Zipit Wireless, Inc. for lack of personal jurisdiction.
`The district court held that it would be unreasonable to
`exercise personal jurisdiction over Zipit based on the nature of
`Zipit's communications with Apple in the Northern District.
`Specifically, the district court read our precedent as applying
`a bright-line rule that patent infringement notice letters and
`related communications can never form the basis for personal
`jurisdiction. We agree with Apple that the district court erred
`in this regard.
`
`Guided by the Supreme Court and our own precedent, we
`conclude, as the district court likely would have absent its
`erroneous interpretation of our precedent, that Zipit is subject
`to specific personal jurisdiction in the Northern District
`of California for purposes of Apple's declaratory judgment
`action. We therefore reverse the judgment dismissing Apple's
`declaratory judgment complaint and remand for further
`proceedings.
`
`BACKGROUND
`
`I
`
`Zipit is a Delaware corporation with a principal place of
`business in Greenville, South Carolina, and with each of
`its fourteen employees located in South Carolina. Zipit is
`the assignee of U.S. Patent Nos. 7,292,870 and 7,894,837
`(collectively, the “patents-in-suit”), which are generally
`directed to wireless instant messaging devices that use Wi-Fi
`to send and receive instant messages.
`
`The parties' communications regarding the patents-in-suit and
`the instant lawsuit date back to at least 2013, when Zipit
`first contacted Apple in the Northern District of California.
`Over the course of three years, the parties exchanged several
`rounds of correspondence and met in person at Apple's
`Cupertino headquarters located in the Northern District. The
`parties discussed, among other things, the possibility of
`Apple buying or licensing the patents-in-suit from Zipit; the
`status and perceived strength of ongoing inter partes review
`proceedings involving the patents-in-suit; and technical
`details regarding potential infringement (and allegations of
`willful infringement). Ultimately, these discussions led to
`Zipit filing a patent infringement action against Apple.
`
`The record before the district court 1 indicates that Zipit
`first traveled to Apple's Cupertino headquarters on December
`3, 2013. J.A. 146. Following this in-person meeting, the
`parties had “at least” four “detailed calls” in December 2013,
`February 2014, and March 2014. Id. During these meetings
`and calls, Apple and Zipit discussed licensing the patents-
`in-suit and Apple's contentions that it “does not practice
`any Zipit patent claims” and that the “patents[-in-suit] are
`invalid.” Id. Indeed, the parties went so far as to exchange
`competing drafts of a license agreement in August and
`September 2014 but ultimately did not reach any agreement.
`Zipit traveled to Apple's Cupertino offices for a second in-
`person meeting to continue discussions on January 13, 2015.
`Id.
`
`1
`
`On January 25, 2022, we granted Apple's opposed
`motion to file a supplemental appendix. See Order,
`Apple Inc. v. Zipit Wireless, Inc., No. 21-1760, ECF
`No. 38 (Fed. Cir. Jan. 25, 2022). The supplemental
`appendix includes a portion of a letter from Zipit's
`outside counsel to Apple's general counsel that was
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
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`Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 6 of 13
`Apple Inc. v. Zipit Wireless, Inc., --- F.4th ---- (2022)
`2022 WL 1132169
`
`not part of the record before the district court. In
`its briefing on the motion to supplement, Apple
`informed the court that the limited purpose of this
`non-record letter was to demonstrate that it was not
`misleading the court in its opening brief on appeal
`when it stated that Zipit initiated the contacts, an
`allegation that Zipit had implied in its responsive
`brief. Because this letter was not part of the district
`court record, we do not consider the substance of
`this letter beyond this limited purpose identified by
`Apple.
`*2 Following the January 2015 meeting, Apple and Zipit
`exchanged numerous letters and emails throughout 2015 and
`2016. The first email, dated July 18, 2015, was sent by Mr.
`Stephen Risley (Zipit's outside counsel) regarding “Apple's
`Ongoing Infringement” of the patents-in-suit. J.A. 144. This
`email, directed to Apple's inhouse counsel (Mr. Rudhir
`Patel) sought a “definitive response” from Apple regarding
`the parties' ongoing discussion of Apple's “purchase and/or
`license” of the patents-in-suit. Id. Referencing a discussion
`that had taken place the day prior, Mr. Risley also attached
`for Apple's review Zipit's opposition brief to a petition for
`IPR of the '837 patent. He also noted that additional briefs
`as to other patents were forth-coming. Mr. Risley concluded:
`“I understand that Apple will review Zipit's IPR briefs and
`respond to Zipit in 1-2 weeks.” Id.
`
`Apple responded two months later. On September 25, 2015,
`Mr. Patel sent Mr. Risley a letter reiterating Apple's view that
`it “does not need a license” to the patents-in-suit “because
`Apple does not practice any” claims of the pa-tents-in-suit and
`the claims are invalid. J.A. 146. In describing its grounds for
`noninfringement, Apple referred specifically to deficiencies
`in claim charts it had received from Zipit. See id. Apple
`also stated that its view that the claims were invalid was
`“confirmed by [its] review of the materials before the [Patent
`Trial and Appeal Board], and additional prior art not being
`considered” in the pending IPRs. J.A. 147.
`
`The discussions escalated. On October 14, 2015, Mr. Risley
`sent a responsive letter addressed to Mr. Patel (with Apple's
`Cupertino office listed on the address line) regarding “Apple's
`Ongoing Willful Infringement” of the patents-in-suit. J.A.
`141. In the letter, Mr. Risley conveyed Zipit's “continue[d]”
`belief that “Apple has and continues to willfully infringe”
`the patents-in-suit. Id. He concluded the letter by referencing
`willful infringement a second time: “Zipit is confident that
`if it becomes necessary a Court will view your September
`25, 2015 [letter] as nothing more than a transparent attempt
`
`by Apple to justify Apple's past, present, and future willful
`infringement of Zipit's patents.” Id. Apple responded to this
`letter on December 8, 2015. J.A. 151.
`
`Mr. Risley sent another email to Mr. Patel five months later on
`April 7, 2016. In this email, Mr. Risley informed Apple that
`the Board had “confirmed the patentability of all claims” of
`the patents-in-suit. J.A. 139. He concluded the letter by once
`again stating Zipit's belief “that Apple has and continues to
`infringe” the patents-in-suit. Id.
`
`The parties thereafter had another phone call on April 26,
`2016, after which Mr. Patel, on May 2, 2016, responded
`in writing to Zipit's latest letter. J.A. 150. Mr. Patel
`reiterated Apple's belief that the patents-in-suit are invalid
`notwithstanding the Board's patentability determination in the
`IPR proceedings. In response to Zipit's continued allegations
`of infringement, Apple explained that it had “repeatedly
`refuted those allegations” and that Zipit had failed to
`substantively respond to Apple's positions in this regard.
`J.A. 151. The letter concluded: “Should Zipit substantively
`respond to Apple's explanation of why Apple's products do
`not fall within the scope of [the patents-in-suit], Apple will
`further consider Zipit's positions.” Id.
`
`II
`
`Over four years later, on June 11, 2020, Zipit sued Apple in
`the Northern District of Georgia, accusing Apple of infringing
`the patents-in-suit. J.A. 16 (Compl. ¶ 2) (citing Compl.,
`Zipit Wireless, Inc. v. Apple Inc., Civil Action No. 1:20-
`cv-02488-ELR (N.D. Ga. June 11, 2020), ECF No. 1). Zipit
`voluntarily dismissed the case without prejudice two weeks
`later on June 24, 2020. J.A. 16 (Compl. ¶ 3). Nine days later,
`on July 3, 2020, Apple filed a complaint in the Northern
`District of California seeking a declaratory judgment of
`noninfringement of the patents-in-suit.
`
`*3 Zipit moved to dismiss Apple's complaint for lack of
`personal jurisdiction under Federal Rule of Civil Procedure
`12(b)(2). On February 12, 2021, the district court granted
`Zipit's motion, holding that it lacked specific personal
`jurisdiction over Zipit (general jurisdiction was not asserted).
`Apple Inc. v. Zipit Wireless, Inc., Case No. 5:20-cv-04448-
`EJD, 2021 WL 533754 (N.D. Cal. Feb. 12, 2021) (Judgment
`Op.).
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
`
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`Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 7 of 13
`Apple Inc. v. Zipit Wireless, Inc., --- F.4th ---- (2022)
`2022 WL 1132169
`
`The court concluded that Apple had established the
`requisite minimum contacts, highlighting that Zipit sent
`“multiple letters and claim charts accusing Apple of patent
`infringement” and in fact had “travel[ed] to Apple's offices
`in California to discuss these accusations.” Id. at *3.
`This, the court determined, made the exercise of specific
`personal jurisdiction over Zipit “presumptively reasonable.”
`Id. (quoting Xilinx, Inc. v. Papst Licensing GmbH & Co., 848
`F.3d 1346, 1356 (Fed. Cir. 2017)).
`
`The court then analyzed whether Zipit had established a
`“compelling case” that the exercise of jurisdiction would be
`unreasonable. After analyzing each of the factors set forth
`in Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475–77,
`105 S.Ct. 2174, 85 L.Ed.2d 528 (1985), the court concluded
`that Zipit had not done so. Judgment Op., 2021 WL 533754,
`at *3–4. Specifically, the court found that “the majority of
`[the] reasonableness factors weigh in favor of adjudicating in
`California or, at the least, do not weigh significantly in favor
`of either party,” and therefore jurisdiction over Zipit would
`not be unreasonable. Id. at *4.
`
`The court went on to explain, however, that the Federal
`Circuit has held that “the exercise of personal jurisdiction ...
`would be unconstitutional when ‘[a]ll of the contacts were for
`the purpose of warning against infringement or negotiating
`license agreements, and [the defendant] lacked a binding
`obligation in the forum.’ ” Id. (alterations in original) (quoting
`Levita Magnetics Int'l Corp. v. Attractive Surgical, LLC, Case
`No. 19-cv-04065-JSW, 2020 WL 4580504, at *6 (N.D. Cal.
`Apr. 1, 2020), which in turn quotes Breckenridge Pharm.,
`Inc. v. Metabolite Lab'ys, Inc., 444 F.3d 1356, 1364 (Fed.
`Cir. 2006)). The court thus determined that the exercise of
`jurisdiction over Zipit would be unreasonable because of
`“Zipit's lack of binding obligations tying it to California and
`because Zipit's contacts with California all related to the
`attempted resolution of the status of” the patents-in-suit, i.e.,
`“for the purpose of warning against infringement.” Id. at *4.
`Accordingly, despite determining that Apple had established
`that minimum contacts existed with the Northern District
`of California and that Zipit had not shown the exercise of
`jurisdiction would be unreasonable under Supreme Court
`precedent, the district court dismissed Apple's declaratory
`judgment action for lack of jurisdiction.
`
`Apple appeals. We have jurisdiction under 28 U.S.C. §
`1295(a)(1).
`
`DISCUSSION
`
` [2] The sole issue in this case is whether the district
`[1]
`court erred in dismissing Apple's declaratory judgment
`action for lack of specific personal jurisdiction over Zipit.
`“Personal jurisdiction is a question of law that we review
`de novo.” Xilinx, 848 F.3d at 1352 (quoting Autogenomics,
`Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016 (Fed.
`Cir. 2009)). In reviewing a Rule 12(b)(2) dismissal for
`lack of personal jurisdiction, we “accept the uncontroverted
`allegations in [Apple's] complaint as true and resolve any
`factual conflicts in the affidavits in [Apple's] favor.” Id.
`(quoting Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d
`1324, 1329 (Fed. Cir. 2008)); see also Mavrix Photo, Inc. v.
`Brand Techs., Inc., 647 F.3d 1218, 1223 (9th Cir. 2011).
`
` [4] Determining whether jurisdiction exists over
`*4 [3]
`Zipit (an out-of-state defendant) in the Northern District of
`California involves two inquiries: whether California's long-
`arm statute permits service of process and whether assertion
`of personal jurisdiction comports with due process. Xilinx,
`848 F.3d at 1352–53. Because “California's long-arm statute
`permits service of process to the full extent allowed by the due
`process clauses of the United States Constitution,” the two
`inquiries become one. Id. at 1353 (citing Cal. Civ. Proc. Code
`§ 410.10 (West)). That is, we need only consider “whether
`jurisdiction comports with due process.” Id. (quoting Inamed
`Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2001)).
`
`[6] “[F]oreseeability ... is critical to due process
`[5]
`
`analysis,” and the Supreme Court has made clear that
`the focus is on whether a given defendant's “conduct and
`connection with the forum State are such that he should
`reasonably anticipate being haled into court there.” Burger
`King, 471 U.S. at 474, 105 S.Ct. 2174 (quoting World-
`Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297,
`100 S.Ct. 559, 62 L.Ed.2d 490 (1980)). The Supreme
`Court has outlined three factors relevant to specific personal
`jurisdiction. In ascertaining whether the exercise of specific
`personal jurisdiction is appropriate in a given case, we
`consider: (1) whether the defendant “purposefully directed”
`its activities at residents of the forum; and (2) whether the
`claim “arise[s] out of or relate[s] to” the defendant's activities
`within the forum. Id. at 472–73, 105 S.Ct. 2174 (first quoting
`Keeton v. Hustler Mag., Inc., 465 U.S. 770, 774, 104 S.Ct.
`1473, 79 L.Ed.2d 790 (1984); and then quoting Helicopteros
`Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414, 104
`S.Ct. 1868, 80 L.Ed.2d 404 (1984)); see also Jack Henry &
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
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`Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 8 of 13
`Apple Inc. v. Zipit Wireless, Inc., --- F.4th ---- (2022)
`2022 WL 1132169
`
`Assocs., Inc. v. Plano Encryption Techs. LLC, 910 F.3d 1199,
`1204 (Fed. Cir. 2018). We also consider (3) whether assertion
`of personal jurisdiction is reasonable and fair. World-Wide
`Volkswagen, 444 U.S. at 291–92, 100 S.Ct. 559; see also
`Burger King, 471 U.S. at 476–78, 105 S.Ct. 2174; Jack Henry,
`910 F.3d at 1204.
`
` [9] “The first two factors comprise the ‘minimum
` [8]
`[7]
`contacts’ portion of the jurisdictional framework ....” Jack
`Henry, 910 F.3d at 1204. The third factor assesses the
`reasonableness and fairness of exercising jurisdiction over
`an out-of-state defendant with an eye toward ensuring that
`the exercise of jurisdiction does not offend the traditional
`notions of “fair play and substantial justice.” Burger King,
`471 U.S. at 476–77, 105 S.Ct. 2174 (quoting Int'l Shoe
`Co. v. Washington, 326 U.S. 310, 320, 66 S.Ct. 154, 90
`L.Ed. 95 (1945)) (the Burger King factors, discussed below).
`Where minimum contacts are satisfied, the exercise of
`jurisdiction is “presumptively reasonable.” See Xilinx, 848
`F.3d at 1356. Thus, the burden is placed on the defendant
`to present a “compelling case that the presence of some
`other considerations would render jurisdiction unreasonable.”
`Burger King, 471 U.S. at 477, 105 S.Ct. 2174.
`
`I
`
`[10] We begin by considering Zipit's contacts with
`California. The district court succinctly summarized Zipit's
`contacts as follows: Zipit “sen[t] multiple letters and claim
`charts accusing Apple of patent infringement and also
`travel[ed] to Apple's offices in California to discuss these
`accusations.” Judgment Op., 2021 WL 533754, at *3.
`The court explained that “[b]y doing so, Zipit ... directed
`its activities to California” further noting that “because
`Apple's declaratory judgment claim directly stems from these
`enforcement efforts, Apple's claim also arises out of Zipit's
`contacts with California.” 2 Id. The court, relying largely on
`our decision in Xilinx, thus determined that minimum contacts
`were satisfied. We agree.
`
`2
`
`Zipit does not dispute that Apple's declaratory
`judgment action arises out of Zipit's contacts with
`California.
`*5 In Xilinx, the defendant-patentee sent two notice letters to
`the declaratory-judgment plaintiff and eventually traveled to
`California to meet with the plaintiff to discuss allegations of
`infringement and potential licensing of the patents. 848 F.3d at
`
`1350–51. We explained that the defendant had “purposefully
`directed its activities to California when it sent multiple
`notice letters to [the plaintiff] and traveled there to discuss
`the [plaintiff's] alleged patent infringement and potential
`licensing arrangements.” Id. at 1354. We readily concluded
`that there was “no question that [the defendant] ha[d] the
`required minimum contacts with California.” Id.
`
`So too here. Indeed, Xilinx is virtually indistinguishable from
`the facts of this case, where Zipit likewise sent multiple
`communications to Apple in California and traveled twice
`to California to discuss allegations of infringement and the
`prospect of Apple licensing or purchasing the patents-in-
`suit. And our decision in Xilinx is not alone in determining
`that minimum contacts were satisfied on similar facts. See,
`e.g., Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344, 1350–
`51 (Fed. Cir. 2003) (determining that telephone calls as
`well as an in-person meeting in the forum state “for the
`purpose of demonstrating the technology underlying” the
`asserted patents made a “prima facie case that defendants ...
`purposefully directed their activities to California”); Deprenyl
`Animal Health, Inc. v. Univ. of Toronto Innovations Found.,
`297 F.3d 1343, 1352 (Fed. Cir. 2002) (determining that
`telephone calls, letters, and two in-person meetings in the
`forum state for purposes of negotiating a license agreement
`“constitute[d] sufficient minimum contacts”); cf. Walden v.
`Fiore, 571 U.S. 277, 285, 134 S.Ct. 1115, 188 L.Ed.2d
`12 (2014) (“[P]hysical entry into the State—either by the
`defendant in person or through an agent, goods, mail, or some
`other means—is certainly a relevant contact.”).
`
`Zipit argues that minimum contacts are not satisfied here,
`relying principally on this court's decision in Autogenomics.
`In Autogenomics, the defendant-patentee sent a notice letter
`to the declaratory-judgment plaintiff, the plaintiff “expressed
`interest in taking a license,” and two of the patentee's
`representatives flew to California (the forum state) to meet
`with the plaintiff's representatives. 566 F.3d at 1014–15.
`Based on the facts of the case and the nature of the specific
`communications at hand, we determined that the plaintiff
`“failed to allege sufficient activities ‘relat[ing] to the validity
`and enforceability of the patent’ in addition to the cease-and-
`desist communications” to demonstrate minimum contacts.
`Id. (alteration in original) (quoting Avocent, 552 F.3d at 1336).
`
`Zipit argues (and Apple suggested) that Autogenomics
`created a “bright-line rule ... that cease-and-desist letters
`and related in-person discussions cannot support [minimum
`contracts for] personal jurisdiction.” Appellee's Br. 15–
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
`
`

`

`Case 5:21-cv-04653-BLF Document 114-1 Filed 04/28/22 Page 9 of 13
`Apple Inc. v. Zipit Wireless, Inc., --- F.4th ---- (2022)
`2022 WL 1132169
`
`16; Appellant's Br. 26 n.6. As an initial matter, we
`note that there are material factual distinctions between
`Autogenomics and this case. 3 More importantly though,
`our precedent as a whole—including decisions both before
`and after Autogenomics—supports our determination that
`minimum contacts are satisfied here. See, e.g., Elecs. for
`Imaging, 340 F.3d at 1350–51; Deprenyl, 297 F.3d at 1352;
`Xilinx, 848 F.3d at 1354. Indeed, this court in Red Wing
`Shoe Co. v. Hockerson-Halberstadt, Inc.—decided prior to
`Autogenomics—acknowledged that “cease-and-desist letters
`alone are often substantially related to the cause of action
`(thus providing minimum contacts).” 148 F.3d 1355, 1360
`(Fed. Cir. 1998).
`
`3
`
`For example, unlike in Autogenomics, here Zipit:
`(1) kept Apple apprised of the status of ongoing
`IPRs of the patents-in-suit, cf. Deprenyl, 297
`F.3d at 1352 (finding “significant” to purposeful
`availment the fact that the patentee kept the
`plaintiff “apprised of the prosecution status of
`the application that matured into” the asserted
`patent); and (2) escalated its allegations of
`infringement, going so far as twice describing
`Apple's infringement as willful, cf. Trimble Inc.
`v. PerDiemCo LLC, 997 F.3d 1147, 1156–57
`(Fed. Cir. 2021) (considering amplified threats
`of infringement—e.g., the patentee identifying
`additional patents and accusing more products of
`infringement, as well as identifying counsel it
`had retained, naming venue, and providing a draft
`complaint to the plaintiff—relevant to purposeful
`availment); Inamed, 249 F.3d at 1361 (“The fact
`that [the patentee] chose to use the term ‘willful’ in
`conjunction with ‘infringement’ [in its notice letter]
`is significant.”).
`*6 Thus, in view of at least Xilinx, Electronics for Imaging,
`Deprenyl, and Red Wing Shoe, we agree with the district court
`that Zipit has the requisite minimum contacts with California.
`
`II
`
`Having determined that Zipit purposefully directed its
`activities at California, we now consider whether Zipit has
`“present[ed] a compelling case that the presence of some
`other considerations would render jurisdiction unreasonable.”
`Burger King, 471 U.S. at 477, 105 S.Ct. 2174. For the reasons
`below, we conclude that Zipit has not done so.
`
`A
`
`[11] We begin by addressing an error in the district court's
`determination that the exercise of jurisdiction would be
`unreasonable. After analyzing and weighing each of the
`Burger King factors, the court initially determined that Zipit
`had not shown that the exercise of jurisdiction would be
`unreas