1. Home
  2. |Insights
  3. |Exclusive Licensor Subject To Personal Jurisdiction

Exclusive Licensor Subject To Personal Jurisdiction

Client Alert | 1 min read | 04.14.06

In Breckenridge Pharmaceuticals v. Metabolite Labs. (No. 05-1121, -1428; April 7, 2006), a Federal Circuit panel reverses a trial court's holding that it lacked personal jurisdiction over a non-resident patent holder/ licensor who was sued along with its exclusive licensee in a declaratory judgment action. The Federal Circuit also determines there are genuine disputes of material fact and vacates the trial court's summary judgment in favor of the exclusive licensee. Summarizing its own cases, the Federal Circuit explains that personal jurisdiction over a nonresident licensor is proper where a license agreement contemplates “a relationship beyond royalty or cross-licensing payment, such as granting both parties the right to litigate infringement cases or granting the licensor the right to exercise control over the licensee's sales or marketing activities.”

Because the non-patent issues in the case are intimately linked with the patent issues, the panel determines the personal jurisdiction law of the Federal Circuit, not regional circuit law, applies. In this case, the exclusive license granted the licensee the right to sue for patent infringement. Working with that exclusive licensee, the patent owner also sent letters to Florida businesses informing them of the patents. The panel holds these activities, coupled with the licensee's business in the state, adequate to provide the district court there with personal jurisdiction over the patent owner.

Insights

Client Alert | 5 min read | 12.12.25

Eleventh Circuit Hears Argument on False Claims Act Qui Tam Constitutionality

On the morning of December 12, 2025, the Eleventh Circuit heard argument in United States ex rel. Zafirov v. Florida Medical Associates, LLC, et al., No. 24-13581 (11th Cir. 2025). This case concerns the constitutionality of the False Claims Act (FCA) qui tam provisions and a groundbreaking September 2024 opinion in which the United States District Court for the Middle District of Florida held that the FCA’s qui tam provisions were unconstitutional under Article II. See United States ex rel. Zafirov v. Fla. Med. Assocs., LLC, 751 F. Supp. 3d 1293 (M.D. Fla. 2024). That decision, penned by District Judge Kathryn Kimball Mizelle, was the first success story for a legal theory that has been gaining steam ever since Justices Thomas, Barrett, and Kavanaugh indicated they would be willing to consider arguments about the constitutionality of the qui tam provisions in U.S. ex rel. Polansky v. Exec. Health Res., 599 U.S. 419 (2023). In her opinion, Judge Mizelle held (1) qui tam relators are officers of the U.S. who must be appointed under the Appointments Clause; and (2) historical practice treating qui tam and similar relators as less than “officers” for constitutional purposes was not enough to save the qui tam provisions from the fundamental Article II infirmity the court identified. That ruling was appealed and, after full briefing, including by the government and a bevy of amici, the litigants stepped up to the plate this morning for oral argument....

View All Insights