Generally, parties looking to pull a patent infringement defendant into their forum of choice under a specific jurisdiction theory need to show that the defendant has made, used, offered to sell, sold or imported the allegedly infringing item in that forum. As was noted in this space, the District Court of Minnesota only months ago held that this means specific jurisdiction can flow from a sending a single, allegedly infringing Kickstarter reward into a forum state—with Judge Tunheim recognizing the crowdfunding giveaway as a sale within the meaning of 35 U.S.C. § 271(a). More recently, Judge Ericksen examined the boundaries of what constitutes an “offer to sell” under § 271(a) when assessing a specific jurisdiction fight in Sorna Corp. v. PACS-Exchange, LLC. She dismissed the case, finding business solicitation email and a forum-nonspecific promotional website insufficient to establish personal jurisdiction.
The Sorna dispute centered on allegations that PACS Exchange’s software and devices infringed a series of Sorna’s patents pertaining to the recordation of medical data. Sorna’s complaint alleged that PACS Exchange had offered to sell and sold the infringing products in Minnesota. PACS Exchange moved to dismiss for lack of personal jurisdiction, relying on a declaration from its sole employee indicating that the company does not transact business in Minnesota, has no contractual relationships with anyone in Minnesota, never targeted customers in Minnesota, and has never offered for sale or sold the allegedly infringing products in Minnesota (or anywhere in the United States, for that matter). Sorna, in response, maintained that its claims arose out of sales activities that PACS Exchange had purposefully directed toward Minnesota—namely, a website that allowed users to reserve the allegedly infringing software by submitting contact information, and an email marketing campaign relating to the allegedly infringing software that had been sent to at least one Minnesota business.
The Court rejected Sorna’s arguments. First, Judge Ericksen noted that the PACS Exchange website was not specifically directed to Minnesota and that the record lacked any indication that Minnesotans other than Sorna’s counsel had used the website to contact PACS Exchange. Second, although Sorna could establish that the PACS Exchange email had gone to at least one Minnesotan entity, the Court held that the email alone was insufficient to establish specific jurisdiction. The email’s invitation to recipients to learn more about the PACS Exchange system and how affordable it is was held to fall short of an ‘offer to sell’ within the meaning of 35 U.S.C. § 271(a). Because the email lacked a specific price quotation and was not directed at any particular prospective customer, it was simple an ‘invitation for offers’ and insufficient to give rise to jurisdiction for a patent infringement claim.
The takeaway? While a single sale (even as a ‘thank you’ for a Kickstarter donation) of an allegedly infringing device can establish personal jurisdiction over an alleged infringer, an email or website touting the allegedly infringing device and inviting a potential sales discussion may not. For entities looking to assert patents in Minnesota: do not rely on a sales communication to establish personal jurisdiction over a defendant entering the market—look for an actual sale (or at least a concrete purchase order) before filing suit.