is squarely focused on and that's what it says it says a cease and desist letters are enough for minimum contacts but when you switch to the second prong to so that that would lead you to say you can win here because you've got some stuff arguably other cease  desist letters yes we have quite a bit of stuff but a lot of the stuff has to do with the subsequent cases which arguably come on broader than rent we shew particularly the cases that say that you need some defens places i just as i do think that makes a difference particularly when you're looking at the way the second prong of the analysis is supposed to track which is looking at all the facts and circumstances would it be unreasonable and unfair to subject the pap's to jurisdiction in california but don't we have a precedent that says that whether or not the patents commercialized is irrelevant to the analysis i don't think so i think what this court's precedent says is that when you come into s are almost immune from jurisdiction because of the fact that they're only business is to as pop says in page six of its brief to monetize and license intellectual property now if you read some of the language in this court's opinions which talks about licensing negotiations mere licensing attempts not being sufficient for personal jurisdiction that really does seem to provide this blanket insulation for patton assertion and very totally no jurisdiction in california that you need to take a license this pop patent or we're going to sue you so that that's the form we think that's absolutely appropriate form for suit to be brought that's why we brought suit in california and that's why i believe that the district court erred in several ways in concluding that there was not personal jurisdiction over pabst in california and i think that you know the first part where the court really erred does go to this burden shifting issue the court never addressed the court might be the right answer but that's not what arc president what i think that's fine impressing the supreme court where the supreme court in cases like cheating in cases like burger king when you look at the reason this problem of this then you are looking at things beyond just these case specific facts just beyond enforcement of a patent in this context and you know that because the very first of the five asahi factors on reason this is a burden on the defendant and what better way to show whether there is a burden on the defendant then whether the defendant repeatedly enters the forum to file suit in other cases that speaks to burton and that doesn't necessarily have to enforcement of the patents in suit as here that's something that i think supreme court precedent tells us we have to look at that's something that i think at this court's decision a court that recent a court in a session shows that you can look at the litigation activities of the defendant in that same form even if it's not on the on the exact same infringement which we clearly hear that the second major flaw in the district court's decision was that it seemed to announce this bright line rule that any licensing efforts even in person threats and liason to go she ations simply cannot be considered under this court's precedent even though perhaps old business is as it says a pace if it's brief to monetise and license intellectual property there's just no way that there can be a bright lin that are engaged in a settled negotiations or licensing negotiations when you have a foreign entity however the interstate judicial system to be interested in promoting the official resolution of disputes does not require xilinx the american companies have to travel across the country to the eastern district of virginia to clear the air of infringement allegations that were levied against it in california and that's the only place that letting those those infringe melanesians particularly here were perhaps to acquire these speculative but if we look at burger king and the other cases that deal with contracts all you're looking at is a continuing obligation or a continuing relationship there is plainly continuing relationship here i see i'm going to my  litigation they've got numerous licenses they've got the relationship with rambus they've traveled there what why does it make sense under fear and reasonable interpretation to say yes you have to go to the virginia were no contest rather than  california it makes sense because part of the consent of being a foreign patente is subjecting yourself to jurisdiction in virginia that's the contract that you make by becoming a foreign patente by the stat where as passed knew by statute that becoming informed patente and continuing with that patent it would be subjected to jurisdiction in virginia that they can sue the other side and takes to the the other side anywhere where they were subjected to jurisdiction also and in fact that's exactly what happened in this case is that pabst filed a patent infringement action against xilinx in delaware and that action was ultimately i believe that it does under the supreme court's jurisdictional analysis it has said that you must consider fairness factors it has outlined five factors but those are not exhaustive exclusive factors and as a result we are  situation where under this court's precedent exercising jurisdiction based on a lot of licensing offer is deemed unfair or not reasonable the supreme court has not addressed what you do once you were in that situation and thus it was within this court's ability to decide that in order to make the exercise of jurisdiction fair the other activities must meet the minimum contacts requirement exercising jurisdiction would be fair it didn't do so because it decided that there wasn't a nother better form it decided that jurisdiction existed because deprenyl had entered into an exclusive license with regard to the patte of virginia or in delaware as infringement was taken you know we are seeing the first part of that which is that the other activities alleged by silence aren't nickel sense than what existed here in terms of the most insecure actively negotiation the origins of these inventions the again the inventor ship the potential witnesses or the fact that it's a foreign i'm talking about the other activities they're alleged here the other activities alleged here are candidate license list it's licensing offers actual offers aren't sufficient to make sure stic reasonable than a potential list of licensees shouldn't make it fair or reasonable if they offer in a letter to license it doesn't make sure stiction fair or reasonable then merely traveling to meet with and it's home for on should it make jurisdiction fair or reasonable person doesn't go that far and i'm trying to understand to be clear as to the position as to how for precedent can go because again it's hard to imagine room contracts on both sides in terms of the logical form when in california for the convenience of subsequent litigation and morals that normally could transpire to touch on that the meaning portion of it and then i'll do it as a more global perspective no this court has not yet specifically stated that in person in the licensing offers are insufficient but i think that conclusion is directed by this court's case law and by the policies underlying that case law and the reason for that is that there have been a number of cases within this jurisprudence in which the declaratory judgment defendant same endeavor no in campbell they travelled to the form but jurisdiction was found fair and reasonable because campbell engaged in extrajudicial enforcement activities but everything you say ought to persuade us that you started off by talking as if they're hard and fast and rigid rules that govern our president and what you're saying here sounds more reasonable because every case stands on its own and judge newman called out a few of the specific instances here that don't necessarily appear or they don't all appear in the same time in the same way and so every case stands on its own bright viewing viernes and reasonable most of it i think we do need to consider that factors the other activities that are listed here i think that's correct and if i overstated it originally i didn't mean to be and we also consider is judged like many have suggested whether or not this is not practicing and to duty because there is no the availability of other forms the number of other forms and the ability of other forms is that a fear factor to continue to consider is that something that clued in from a christian and i don't think it should be considered and the reason for that is that state that is correct but the issue about not having it in business elsewhere in the united states is a concern that this court addressed in cases like outage an homage where it was worried that you wouldn't be able to subject or at least raised the concern that yes redwing shoe main mean that a foreign entity that offers a license to a us resident is not subject to jurisdiction anywhere except the eastern district of virginia and that's ok because the declaratory judgment act doesn't give the declaratory judgment plaintiffs a paramount right to choose the form it gives them a from this court's jurisprudence the court has gone beyond simply saying that letters jurisdiction based on letters would be unfair the court has a very clearly stated that jurisdiction based on unsuccessful licensing attempts is unfair and reasonable and the reason for that is because a patent holder whether that patent holder holds some patents exclusively to license them or to commercialize th before this case only vendors are in california or the potential licensees appear to be in california the concentration of activity california this is really where i'm interested in your  reasons for analysis you say that there is really never a point which suffices to support the fora jury judgement jurisdiction when these offers are refuse unsuccessful licensing offers aren't sufficient that's what the court specifically set forward in breckenridge that's what the court set forth in hildebrand and it's also what was set forwarded redwing hsu which did address licensing offers not merely cease and desist or notice letters readily shews entire conversation about the policy to incentivise settlement was brought up with regard to a patent t that provides notice of its patent and in doing so may also include an offer to license and that offer to license does not somehow make the letter a fairly reasonable basis for jurisdiction and so the other  that they may not be another us center of activity but that doesn't insulate pap's from jurisdiction so this is the situation where if if you don't find jurisdiction in the northern district of california then there may be no court that can exercise jurisdiction over xilinx claims that's not this case can i ask you one of the the aspects of our precedent redwing but it was one of the pro seemed to limit the consideration of defense and enforcement actions of their connection with the patents and is that the way you read a precedent absolutely why why is that different patents than the patents and soup why doesn't that establish that california has an interest and there is no you have no fear and reasonable argument why you should be called in to defend another set of patents that you have one does not make any sense i think if we accept the premise from this court's jurisprudence that a licensing offer doesn't make jurisdiction fair or reasonable then it is an extension to say that once you have decided that that jurisdiction would be  reasonable on that basis if you have built yourself of the legal the traditional machinery in california and all of their local rules and regulations you have voluntarily availed yourself of that in connection with against defendants in california i think the reason is because if it's unreasonable to base it on a licensing offer you've already determined that jurisdiction would be an reasonable in order to make it reasonable we were speak speeding about  jurisdiction it makes sense to go back to the requirement that the other activities and this is from china and that the other activities satisfied in minimum contacts requirements of international  this is not a general jurisdiction where we are talking about under the new test where somebody is at home here we are they are asserting jurisdiction in or alleging jurisdiction under specific jurisdiction the minimum contacts that exist here are the letters in the licensing offers and this court has determined that those are not a fair or reasonable basis on their own to exercise jurisdiction it may be sent by using both steps right i mean this is the requirement of international shoe that is this court specific holding in i named at two forty nine f there are thirteen sixty one and it's been repeated by this court in at least silent drive and a basic premise in order to exercise to restriction in light of letters and licensing offers there must be other activities and the other activities must satisfy the minimum context requirement litigated all sorts of and the suits in delaware which was the case there so i mean we have to look at that otherwise we have an inconsistency in this court's precedent i think my own version of yours that there does need to be some clarity brought to this court's precedent particularly in the declar judgment personal jurisdiction context you know i heard opposing counsel refer to unsuccessful liason offers just can't be considered that's completely out of the analysis a recommendation doesn't say that right and shoot dealt with three cease and desist letter statute and then as to breckenridge record ridge wasn't about licensing offers he didn't address licensing officers breckenridge was all about exclusive licensee in the forum and there was some language in breckenridge but it was not language that was any way  consistent with the facts or required by the facts of that case to move to another point i kept hearing opposing counsel referred to once when when there are licensing offers  desist letters then the plaintiff has to make it reasonable has to has to identify other activities that make it reasonable to exercise jurisdiction that shows that that reading of this court's precedent just is completely supreme court where it focuses on the concept of you know it isn't reasonable to expect to be held into that jurisdiction and for perhaps to stand up and say it's not reasonable for us to be to expect to be held into california when we flew to california multiple times to enforce these patents against targets we had in mind when we acquired the patents from california it just beggars belief and the only answer that opposing counsel had for that was under this