A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Personal Jurisdiction

There are many things to love about Delaware. There's the majestic beauty of the Brandywine. The excitement of tax-free shopping. The award-winning mollusk collection at the natural history museum. The easy train access to other cities with more than 6 restaurants. It is truly a special place.

Living the dream, baby
Living the dream, baby AI-Generated, displayed with permission

All this is to say that, if I was to sue someone, I'd want to do it in Delaware. Sadly, that's not always possible.

Such is the lesson of ACCO Brands USA LLC v. Performance Designed Products LLC, C.A. No 23-437-GBW, D.I. 18 (D. Del. Jan. 17, 2024). ACCO was a downhome Delaware company (*cough* headquartered in Illinois *cough* …

As a lawyer, I am used to reaching into my stocking on Christmas eve to find yet another lump of sumptuous coal. Hard and black as my own cynical heart, it is but fuel for engine of my enemies' destruction.

Season's Greetings!
Season's Greetings! AI-Generated, displayed with permission

This year, however, I was presently surprised to return to the office after spending the entire holiday sick in bed to find a new opinion to discuss on the blog. Everyone wins today.

IBM Corp. v. Rakuten, Inc., C.A. No. 21-461 (D. Del. Dec. 22, 2022) presents an interesting issue of personal Jurisdiction I hadn't seen before. The plaintiff, IBM, sued Rakuten a Japanese corporation (and seller of cool Japanese goods) along with its U.S. subsidiary Ebates. After suit was filed, Rakuten transferred several patents in its portfolio to Ebates, who then asserted them against IBM as permissive counterclaims. All the while, Rakuten maintained that the Court lacked personal Jurisdiction (Ebates conceded jurisdiction).

Judge Williams, however, found the maneuver of shuffling the patents off to Ebates sufficient to confer ...