Case: 21-1760 Document: 42 Page: 1 Filed: 04/18/2022
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Plaintiff-Appellant
v.
ZIPIT WIRELESS, INC.,
Defendant-Appellee
______________________
2021-1760
______________________
Appeal from the United States District Court for the
Northern District of California in No. 5:20-cv-04448-EJD,
Judge Edward J. Davila.
______________________
Decided: April 18, 2022
______________________
LAUREN ANN DEGNAN, Fish & Richardson PC, Wash-
ington, DC, argued for plaintiff-appellant. Also repre-
sented 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.
Case: 21-1760 Document: 42 Page: 2 Filed: 04/18/2022
2 APPLE INC. v. ZIPIT WIRELESS, INC.
STOLL, Circuit Judge.
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 ex-
ercise personal jurisdiction over Zipit based on the nature
of Zipit’s communications with Apple in the Northern Dis-
trict. 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 ba-
sis 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 dis-
missing Apple’s declaratory judgment complaint and re-
mand 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 di-
rected 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 ex-
changed several rounds of correspondence and met in
Case: 21-1760 Document: 42 Page: 3 Filed: 04/18/2022
APPLE INC. v. ZIPIT WIRELESS, INC. 3
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 pa-
tents-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). Ul-
timately, these discussions led to Zipit filing a patent in-
fringement action against Apple.
The record before the district court 1 indicates that Zipit
first traveled to Apple’s Cupertino headquarters on Decem-
ber 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 Au-
gust and September 2014 but ultimately did not reach any
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 in-
cludes a portion of a letter from Zipit’s outside counsel to
Apple’s general counsel that was not part of the record be-
fore the district court. In its briefing on the motion to sup-
plement, 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 let-
ter was not part of the district court record, we do not con-
sider the substance of this letter beyond this limited
purpose identified by Apple.
Case: 21-1760 Document: 42 Page: 4 Filed: 04/18/2022
4 APPLE INC. v. ZIPIT WIRELESS, INC.
agreement. Zipit traveled to Apple’s Cupertino offices for
a second in-person meeting to continue discussions on Jan-
uary 13, 2015. Id.
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 in-house counsel
(Mr. Rudhir Patel) sought a “definitive response” from Ap-
ple regarding the parties’ ongoing discussion of Apple’s
“purchase and/or license” of the patents-in-suit. Id. Refer-
encing a discussion that had taken place the day prior,
Mr. Risley also attached for Apple’s review Zipit’s opposi-
tion 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 de-
scribing 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
Case: 21-1760 Document: 42 Page: 5 Filed: 04/18/2022
APPLE INC. v. ZIPIT WIRELESS, INC. 5
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 neces-
sary a Court will view your September 25, 2015 [letter] as
nothing more than a transparent attempt by Apple to jus-
tify 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, re-
sponded in writing to Zipit’s latest letter. J.A. 150. Mr. Pa-
tel reiterated Apple’s belief that the patents-in-suit are
invalid notwithstanding the Board’s patentability determi-
nation in the IPR proceedings. In response to Zipit’s con-
tinued 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 Ap-
ple’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 Ap-
ple 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 preju-
dice two weeks later on June 24, 2020. J.A. 16 (Compl. ¶ 3).
Case: 21-1760 Document: 42 Page: 6 Filed: 04/18/2022
6 APPLE INC. v. ZIPIT WIRELESS, INC.
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.
Zipit moved to dismiss Apple’s complaint for lack of
personal jurisdiction under Federal Rule of Civil Proce-
dure 12(b)(2). On February 12, 2021, the district court
granted Zipit’s motion, holding that it lacked specific per-
sonal 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.).
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 per-
sonal 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 (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
Case: 21-1760 Document: 42 Page: 7 Filed: 04/18/2022
APPLE INC. v. ZIPIT WIRELESS, INC. 7
a binding obligation in the forum.’” Id. (alterations in orig-
inal) (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 de-
termined that the exercise of jurisdiction over Zipit would
be unreasonable because of “Zipit’s lack of binding obliga-
tions tying it to California and because Zipit’s contacts with
California all related to the attempted resolution of the sta-
tus of” the patents-in-suit, i.e., “for the purpose of warning
against infringement.” Id. at *4. Accordingly, despite de-
termining that Apple had established that minimum con-
tacts 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 dis-
trict 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
The sole issue in this case is whether the district 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. Ox-
ford 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 Marvix Photo, Inc. v. Brand
Techs., Inc.,
647 F.3d 1218, 1223 (9th Cir. 2011).
Determining whether jurisdiction exists over Zipit (an
out-of-state defendant) in the Northern District of
Case: 21-1760 Document: 42 Page: 8 Filed: 04/18/2022
8 APPLE INC. v. ZIPIT WIRELESS, INC.
California involves two inquiries: whether California’s
long-arm statute permits service of process and whether
assertion of personal jurisdiction comports with due pro-
cess. Xilinx, 848 F.3d at 1352–53. Because “California’s
long-arm statute permits service of process to the full ex-
tent 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)).
“[F]oreseeability . . . is critical to due process 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 antici-
pate being haled into court there.” Burger King,
471 U.S.
at 474 (quoting World-Wide Volkswagen Corp. v. Woodson,
444 U.S. 286, 297 (1980)). The Supreme Court has outlined
three factors relevant to specific personal jurisdiction. In
ascertaining whether the exercise of specific personal juris-
diction is appropriate in a given case, we con-
sider: (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 activi-
ties within the forum.
Id. at 472–73 (first quoting Keeton
v. Hustler Mag., Inc.,
465 U.S. 770, 774 (1984); and then
quoting Helicopteros Nacionales de Colombia, S.A. v. Hall,
466 U.S. 408, 414 (1984)); see also Jack Henry & 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; see also Burger King,
471 U.S. at 476–78; Jack Henry, 910 F.3d at 1204.
“The first two factors comprise the ‘minimum contacts’
portion of the jurisdictional framework . . . .” Jack Henry,
910 F.3d at 1204. The third factor assesses the reasonable-
ness and fairness of exercising jurisdiction over an out-of-
Case: 21-1760 Document: 42 Page: 9 Filed: 04/18/2022
APPLE INC. v. ZIPIT WIRELESS, INC. 9
state defendant with an eye toward ensuring that the ex-
ercise of jurisdiction does not offend the traditional notions
of “fair play and substantial justice.” Burger King,
471 U.S.
at 476–77 (quoting Int’l Shoe Co. v. Washington,
326 U.S.
310, 320 (1945)) (the Burger King factors, discussed below).
Where minimum contacts are satisfied, the exercise of ju-
risdiction is “presumptively reasonable.” See Xilinx,
848 F.3d at 1356. Thus, the burden is placed on the de-
fendant to present a “compelling case that the presence of
some other considerations would render jurisdiction unrea-
sonable.” Burger King,
471 U.S. at 477.
I
We begin by considering Zipit’s contacts with Califor-
nia. The district court succinctly summarized Zipit’s con-
tacts 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 ac-
tivities to California” further noting that “because Apple’s
declaratory judgment claim directly stems from these en-
forcement 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.
In Xilinx, the defendant-patentee sent two notice let-
ters 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 de-
fendant had “purposefully directed its activities to
2 Zipit does not dispute that Apple’s declaratory
judgment action arises out of Zipit’s contacts with Califor-
nia.
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10 APPLE INC. v. ZIPIT WIRELESS, INC.
California when it sent multiple notice letters to [the plain-
tiff] and traveled there to discuss the [plaintiff’s] alleged
patent infringement and potential licensing arrange-
ments.” Id. at 1354. We readily concluded that there was
“no question that [the defendant] ha[d] the required mini-
mum contacts with California.” Id.
So too here. Indeed, Xilinx is virtually indistinguisha-
ble from the facts of this case, where Zipit likewise sent
multiple communications to Apple in California and trav-
eled twice to California to discuss allegations of infringe-
ment 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 sim-
ilar 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 fo-
rum 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 To-
ronto 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 nego-
tiating a license agreement “constitute[d] sufficient mini-
mum contacts”); cf. Walden v. Fiore,
571 U.S. 277, 285
(2014) (“[P]hysical entry into the State—either by the de-
fendant 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 Autoge-
nomics. 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
Case: 21-1760 Document: 42 Page: 11 Filed: 04/18/2022
APPLE INC. v. ZIPIT WIRELESS, INC. 11
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 [mini-
mum contracts for] personal jurisdiction.” Appellee’s
Br. 15–16; 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
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 “sig-
nificant” 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. Trim-
ble Inc. v. PerDiemCo LLC,
997 F.3d 1147, 1156–57
(Fed. Cir. 2021) (considering amplified threats of infringe-
ment—e.g., the patentee identifying additional patents and
accusing more products of infringement, as well as identi-
fying 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.”).
Case: 21-1760 Document: 42 Page: 12 Filed: 04/18/2022
12 APPLE INC. v. ZIPIT WIRELESS, INC.
Autogenomics—acknowledged that “cease-and-desist let-
ters alone are often substantially related to the cause of ac-
tion (thus providing minimum contacts).”
148 F.3d 1355,
1360 (Fed. Cir. 1998).
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 unreasona-
ble.” Burger King,
471 U.S. at 477. For the reasons below,
we conclude that Zipit has not done so.
A
We begin by addressing an error in the district court’s
determination that the exercise of jurisdiction would be un-
reasonable. 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 unreasonable. It went on, however, to conclude that it
would be unreasonable to exercise jurisdiction over Zipit
under our court’s precedent solely 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.” Judgment Op.,
2021 WL
533754, at *4. This was error. As we explained most re-
cently in Trimble, “there is no general rule that demand
letters can never create specific personal jurisdiction.”
997 F.3d at 1156.
Zipit traces our court’s treatment of notice letters back
to Red Wing Shoe. There, we explained that “[p]rinciples
of fair play and substantial justice afford a patentee suffi-
cient latitude to inform others of its patent rights without
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APPLE INC. v. ZIPIT WIRELESS, INC. 13
subjecting itself to jurisdiction in a foreign forum.”
148 F.3d at 1360–61. The policy behind Red Wing Shoe is
simple: a right holder should be permitted to send a notice
letter to a party in a particular forum to try to settle dis-
putes without being haled into court in that forum. Under
our precedent (as well as that of our sister circuits), this
policy must be considered in determining whether the ex-
ercise of jurisdiction would be reasonable and fair.
This policy is no doubt relevant. As we explained in
Red Wing Shoe, the “policy favoring settlement is manifest
in . . . the Federal Rules of Evidence,”
id. at 1361 (citing
Fed. R. Evid. 408), as well as Supreme Court precedent di-
recting courts to consider “the interstate judicial system’s
interest in obtaining the most efficient resolution of contro-
versies,”
id. (quoting World-Wide Volkswagen,
444 U.S.
at 292). While Red Wing Shoe has been interpreted as rest-
ing on “policy considerations unique to the patent context,”
Silent Drive, Inc. v. Strong Indus., Inc.,
326 F.3d 1194, 1206
(Fed Cir. 2003), this settlement-promoting policy perme-
ates other areas of law as well, see Trimble, 997 F.3d
at 1155 (first citing Yahoo! Inc. v. La Ligue Contre le Rac-
isme et l’Antisemitisme,
433 F.3d 1199, 1208 (9th Cir. 2006)
(en banc); and then citing Oriental Trading Co. v. Firetti,
236 F.3d 938, 943 (8th Cir. 2001)). It is not a patent-spe-
cific consideration.
For example, an en banc majority of the Ninth Circuit
in Yahoo! considered a letter sent to Yahoo!’s headquarters
in California alleging that Yahoo! was violating French
law.
433 F.3d at 1202. The majority ultimately deter-
mined that this letter, by itself, was not a sufficient basis
for jurisdiction, explaining that
[t]here are strong policy reasons to encourage cease
and desist letters. They are normally used to warn
an alleged rights infringer that its conduct, if con-
tinued, will be challenged in a legal proceeding,
and to facilitate resolution of a dispute without
Case: 21-1760 Document: 42 Page: 14 Filed: 04/18/2022
14 APPLE INC. v. ZIPIT WIRELESS, INC.
resort to litigation. If the price of sending a cease
and desist letter is that the sender thereby subjects
itself to jurisdiction in the forum of the alleged
rights infringer, the rights holder will be strongly
encouraged to file suit in its home forum without
attempting first to resolve the dispute informally
by means of a letter.
Id. at 1208 (collecting cases); see also, e.g., Int’l Med. Grp.
v. Am. Arb. Ass’n,
312 F.3d 833, 846–47 (7th Cir. 2002)
(holding that exercise of specific personal jurisdiction over
defendant “would not comport with substantial justice and
fair play” where defendant sent a single letter threatening
to pursue arbitration if insurance company did not pay
claims, and only sending additional communications into
the forum at the declaratory-judgment plaintiff’s request);
cf. Halliburton Energy Servs., Inc. v. Ironshore Specialty
Ins. Co.,
921 F.3d 522, 528–29, 542 (5th Cir. 2019) (holding
that letter sent to plaintiff “demanding payment” to cover
damage incurred as the result of an explosion was “not
enough to show minimum contacts with Texas”);
id. at 542
n.18 (collecting cases).
But this policy cannot control the inquiry—it must be
considered together with the other Burger King factors,
consistent with the Supreme Court’s “directive to ‘consider
a variety of interests’ in assessing whether jurisdiction
would be fair.” Jack Henry, 910 F.3d at 1206 (quoting Bris-
tol-Myers Squibb Co. v. Superior Ct. of Cal.,
137 S. Ct.
1773, 1780 (2017)); Burger King,
471 U.S. at 478–79 (“The
Court long ago rejected the notion that personal jurisdic-
tion might turn on ‘mechanical’ tests.”). Indeed, we have
repeatedly rejected the notion that the sending of a notice
letter “can never provide specific jurisdiction.” Jack Henry,
910 F.3d at 1203; id. at 1206; Genetic Veterinary Scis., Inc.
v. LABOKLIN, GmbH & Co.,
933 F.3d 1302, 1312
(Fed. Cir. 2019); Trimble, 997 F.3d at 1156. So too have
our sister circuits. See, e.g., Yahoo!,
433 F.3d at 1208 (“This
is not to say that a cease and desist letter can never be the
Case: 21-1760 Document: 42 Page: 15 Filed: 04/18/2022
APPLE INC. v. ZIPIT WIRELESS, INC. 15
basis for personal jurisdiction.”); Def. Distributed
v. Grewal,
971 F.3d 485, 491, 496, 496 n.10 (5th Cir. 2020)
(holding minimum contacts satisfied where the totality of
contacts with the forum involved a cease-and-desist order
focused on activities occurring in the forum).
In this case, the district court, not having the benefit of
our recent decision in Trimble, erred by not considering the
settlement-promoting policy underlying Red Wing Shoe as
but one of many considerations in its overall analysis of the
Burger King factors. See Trimble, 997 F.3d at 1157–59
(considering this policy alongside the other Burger King
factors). Specifically, the district court erred in reading our
precedent as creating a bright-line rule that communica-
tions directed to “the attempted resolution” of the parties’
dispute regarding the patents-in-suit trumps all other con-
siderations of fairness and reasonableness. Although some
of our earlier precedent relying on Red Wing Shoe suggests
that there is such a bright-line rule, see, e.g., Avocent,
552 F.3d at 1340; Breckenridge,
444 F.3d at 1362; Silent
Drive,
326 F.3d at 1206, Supreme Court precedent (both
pre- and post-Red Wing Shoe) has made clear that jurisdic-
tional inquiries cannot rest on such bright-line rules—
there are no “talismanic jurisdictional formulas.” Burger
King,
471 U.S. at 485. Rather, “‘the facts of each case must
[always] be weighed’ in determining whether personal ju-
risdiction would comport with ‘fair play and substantial
justice.’”
Id. at 485–86 (alteration in original) (quoting
Kulko v. Superior Ct. of Cal.,
436 U.S. 84, 92 (1978)); Bris-
tol-Myers Squibb, 137 S. Ct. at 1780 (“In determining
whether personal jurisdiction is present, a court must con-
sider a variety of interests.”).
B
We now consider the “variety of interests” the Supreme
Court has directed us to consider in assessing whether the
exercise of jurisdiction would be unreasonable. Because we
agree with the district court that minimum contacts are
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16 APPLE INC. v. ZIPIT WIRELESS, INC.
satisfied, Zipit bears the burden to present a compelling
case that jurisdiction would be unreasonable. We conclude
that Zipit has not met this burden. The district court came
to this same conclusion initially, but erroneously treated
the settlement policy discussed above as controlling. In an-
alyzing these factors de novo, we consider Red Wing Shoe’s
settlement-promoting policy alongside each of the Burger
King factors:
[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 sys-
tem’s interest in obtaining the most efficient reso-
lution of controversies,” and [5] the “shared
interest of the several States in furthering funda-
mental substantive social policies.”
471 U.S. at 477 (quoting World-Wide Volkswagen,
444 U.S.
at 292).
First, we consider the burden on Zipit of litigating in
California, which is “always a primary concern.” World-
Wide Volkswagen,
444 U.S. at 292. Frank Greer, Zipit’s
President and CEO and one of the named inventors on the
patents-in-suit, stated in his declaration in support of
Zipit’s motion to dismiss that all of Zipit’s fourteen employ-
ees are located in South Carolina. These employees include
another of the named inventors, Ralph Heredia, Zipit’s
Vice President of Business Development. There is no real
dispute that both Mr. Greer and Mr. Heredia “have infor-
mation relevant to the patents-in-suit” and the underlying
litigation. J.A. 111 (Greer Decl. ¶ 8). Mr. Greer contends
that it “would be significantly more burdensome for” both
him and Mr. Heredia, “leaders of Zipit’s management
team, to litigate this case in California than in Zipit’s home
state of South Carolina due to the added expense of travel
and time away from work.” Id. ¶ 14.
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APPLE INC. v. ZIPIT WIRELESS, INC. 17
We agree with the district court that “adjudication in
California will create some burden for Zipit,” given its ties
to South Carolina. Judgment Op.,
2021 WL 533754, at *3.
But in view of the limited evidence Zipit presented—only
Mr. Greer’s declaration with general allegations of incon-
venience—we are not convinced that this would be so un-
reasonably burdensome as to be unconstitutional. It
merely shows inconvenience to Zipit, a concern that can be
addressed by challenging improper venue rather than ar-
guing, as it does here, that the exercise of jurisdiction is
unconstitutional. See Burger King,
471 U.S. at 477 (ex-
plaining that fairness considerations for litigating in a for-
eign forum “may be accommodated through means short of
finding jurisdiction unconstitutional,” such as “seek[ing] a
change of venue”). Moreover, Zipit’s evidence in support of
hardship is a single sentence in Mr. Greer’s declaration.
We view this “general assertion of hardship, without sup-
porting evidence”—beyond the single sentence—“as unper-
suasive.” Breckenridge,
444 F.3d at 1367.
Additionally, we note that “[r]epresentatives from
[Zipit] traveled to California to meet with [Apple] in person
to discuss [Zipit’s] infringement contentions and licensing
offer with respect to the patents-in-suit.” Xilinx, 848 F.3d
at 1357. As we explained in Xilinx, “territorial presence
frequently will enhance a potential defendant’s affiliation
with a State and reinforce the reasonable foreseeability of
suit there.” Id. (quoting Burger King,
471 U.S. at 476).
This “foreseeability . . . is critical to due process analysis.”
Burger King,
471 U.S. at 474 (quoting World-Wide
Volkswagen,
444 U.S. at 297).
Finally, Zipit suggests in its appeal brief that it could
not have foreseen being haled into court in California be-
cause four years lapsed between its last contact with Apple
in California (2016) and Apple’s filing of its declaratory
judgment action (2020). See Appellee’s Br. 2–3, 25–26. But
Zipit’s argument skips over an important point—it is Zipit
who reignited the parties’ contacts by filing suit for patent
Case: 21-1760 Document: 42 Page: 18 Filed: 04/18/2022
18 APPLE INC. v. ZIPIT WIRELESS, INC.
infringement in Georgia in 2020. After moving to dismiss
its action in Georgia without prejudice, Zipit cannot credi-
bly assert that it could not have reasonably foreseen that
Apple would respond in kind by filing a declaratory judg-
ment claim, and that it would do so in its home state of
California given Zipit’s earlier contacts with the forum
state. However stale Zipit’s contacts might have become
absent intervening action by Zipit, they were ripe when Ap-
ple filed its declaratory judgment action.
Turning to the second factor—California’s interest in
adjudicating the underlying patent infringement dispute—
we have previously recognized that California has “definite
and well-defined interests in commerce and scientific de-
velopment,” and that it has “a substantial interest in pro-
tecting its residents from unwarranted claims of patent
infringement.” Xilinx, 848 F.3d at 1356 (first quoting Viam
Corp. v. Iowa Exp.-Imp. Trading Co.,
84 F.3d 424, 430
(Fed. Cir. 1996); and then quoting Elecs. for Imaging,
340 F.3d at 1352)); accord Trimble, 997 F.3d at 1158; see
McGee v. Int’l Life Ins. Co.,
355 U.S. 220, 223 (1957) (ex-
plaining that states have “a manifest interest in providing
effective means of redress for [their] residents”). Zipit does
not dispute that California has such an interest. See Ap-
pellee’s Br. 34.
The third factor asks us to consider Apple’s interest in
obtaining convenient and effective relief. As the district
court correctly explained, “Apple, ‘which is headquartered
in California, indisputably has an interest in protecting it-
self from patent infringement by obtaining relief from a
nearby federal court in its home forum.’” Judgment Op.,
2021 WL 533754, at *4 (quoting Xilinx, 848 F.3d at 1356
(cleaned up)); accord Trimble, 997 F.3d at 1158. We agree
with the district court’s assessment of this factor.
Fourth, we consider “the interstate judicial system’s in-
terest in obtaining the most efficient resolution of contro-
versies.” Burger King,
471 U.S. at 477. Underlying this
Case: 21-1760 Document: 42 Page: 19 Filed: 04/18/2022
APPLE INC. v. ZIPIT WIRELESS, INC. 19
consideration is the settlement-promoting policy discussed
above (and which the district court treated as dispositive).
Indeed, as we explained in Red Wing Shoe, this important
settlement-promoting policy “squarely invokes” the fourth
Burger King factor.
148 F.3d at 1361; cf. Yahoo!,
433 F.3d
at 1208.
Here, we have no doubt that Zipit’s initial contacts with
California can be fairly viewed as attempting to settle its
dispute with Apple out of court, e.g., by way of a patent li-
cense. This is an important fact we consider and weigh in
Zipit’s favor. We note that Zipit’s communications with Ap-
ple arguably went further, extending over the course of sev-
eral years and reaching beyond license negotiations to
include the sale of its patents. After Apple told Zipit it
“d[id] not need a license to the” patents-in-suit in 2015,
J.A. 146, Zipit continued to assert that Apple was infring-
ing the patents-in-suit for many months thereafter. Over-
all, while we consider this important policy of promoting
settlement—as it is, of course, one of the most efficient
ways to resolve a controversy without court intervention—
we must balance the fourth Burger King factor against the
other factors.
Finally, regarding the fifth factor, Zipit has not argued
that there is “any conflict between the interests of Califor-
nia and any other state.” Trimble, 997 F.3d at 1159 (quot-
ing Xilinx, 848 F.3d at 1356); see also Judgment Op.,
2021 WL 533754, at *4 (“Neither Apple nor Zipit have as-
serted any potential clash of substantive social policies be-
tween competing fora.” (cleaned up)). Indeed, “the same
body of federal patent law would govern the patent [nonin-
fringement] claim irrespective of the forum.” Elecs. for Im-
aging,
340 F.3d at 1352. Rather, it argues that the
settlement-promoting policy underlies this factor as well
because “social interests of society are advanced when dis-
putes are settled out of court.” Appellee’s Br. 27–28. As-
suming (without deciding) that Zipit is correct, our
Case: 21-1760 Document: 42 Page: 20 Filed: 04/18/2022
20 APPLE INC. v. ZIPIT WIRELESS, INC.
conclusion as to the fourth Burger King factor would apply
with equal force to the fifth.
Having considered each of these factors, we conclude
that Zipit has not made a “compelling case that the pres-
ence of some other considerations would render jurisdiction
unreasonable.” Burger King,
471 U.S. at 477. As we
acknowledged above, there is of course some burden on
Zipit to litigate in California. But California and Apple
both have an interest in litigating this patent dispute in
California. And while we agree with Zipit that the settle-
ment-promoting policy is a relevant factor to consider in
assessing the reasonableness of jurisdiction, for the rea-
sons above, we cannot say on the facts of this case that Cal-
ifornia’s and Apple’s interest in litigating in California
“pale[] in comparison to the interest of the judicial system
and society at large.” Appellee’s Br. 34. Nor can we say
that this policy, combined with Zipit’s burden, would ren-
der the exercise of jurisdiction over Zipit compellingly and
constitutionally unreasonable given the nature and extent
of Zipit’s contacts. Zipit went beyond attempting to resolve
its dispute with Apple outside of court; it amplified its alle-
gations of infringement after Apple stated it did not need a
patent license, and Zipit, in the end, sued Apple for patent
infringement.
Ultimately, this is not “one of the ‘rare’ situations in
which sufficient minimum contacts exists but where the ex-
ercise of jurisdiction would be unreasonable.” Elecs. for Im-
aging,
340 F.3d at 1352 (quoting Beverly Hills Fan Co.
v. Royal Sovereign Corp.,
21 F.3d 1558, 1568 (Fed. Cir.
1994)). Zipit has not met its burden to present a compelling
case that these factors in the aggregate would render the
exercise of jurisdiction unreasonable.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the foregoing reasons, we
reverse the district court’s judgment dismissing Apple’s
Case: 21-1760 Document: 42 Page: 21 Filed: 04/18/2022
APPLE INC. v. ZIPIT WIRELESS, INC. 21
complaint for declaratory judgment of noninfringement for
lack of personal jurisdiction and remand for further pro-
ceedings.
REVERSED AND REMANDED
