A federal court in Massachusetts has dismissed a suit seeking a declaration of non-infringement filed by a Massachusetts company against a Texasbased company, finding that the defendant lacked sufficient contacts with Massachusetts to allow the court to exercise jurisdiction over it. TomTom, Inc. v. Norman IP Holdings, LLC, No. 12-10348-FDS (U.S. Dist. Ct., D. Mass., decided September 4, 2012). So ruling, the court rejected the plaintiff’s argument that the Texas company established sufficient contacts with Massachusetts by retaining a Massachusetts-based law firm to represent it in patent enforcement actions filed in other states.
TomTom had filed the declaratory judgment action against Norman after Norman brought a patent infringement action against TomTom in Texas. Among other matters, TomTom claimed that Norman was a non-practicing entity created solely to enforce patent licenses through litigation and that its business-related activity in Massachusetts consisted of initiating infringement litigation against TomTom. TomTom further contended that Norman’s retention of Massachusetts-based counsel also gave it sufficient business contacts with the Commonwealth.
According to the court, “[t]he cases TomTom cites in its objection to the [magistrate’s] Report and Recommendation stand only for the proposition that a patentee may establish minimum contacts in a state when it hires counsel for the enforcement or defense of the patent in that state’s courts. … Here, all of Norman’s enforcement actions have been commenced elsewhere. Those actions do not constitute sufficient minimum contacts with Massachusetts to support the exercise of personal jurisdiction.”