United States Court of Appeals 

for the Federal Circuit ______________________ 

NEW WORLD INTERNATIONAL, INC., NATIONAL 

AUTO PARTS, INC.,

Plaintiffs-Appellants

v.

FORD GLOBAL TECHNOLOGIES, LLC,

Defendant-Appellee

______________________ 

2016-2097

______________________ 

Appeal from the United States District Court for the 

Northern District of Texas in No. 3:15-cv-01121-M, Judge 

Barbara M.G. Lynn.

______________________ 

Decided: June 8, 2017

______________________ 

ROBERT G. OAKE, JR., Oake Law Office, Allen, TX, argued for plaintiffs-appellants.

SEAN MAROTTA, Hogan Lovells US LLP, Washington, 

DC, argued for defendant-appellee. Also represented by 

JESSICA L. ELLSWORTH; FRANK A. ANGILERI, MARC 

LORELLI, LINDA D. METTES, Brooks Kushman P.C., Southfield, MI.

______________________ 
2 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

Before PROST, Chief Judge, BRYSON and WALLACH,

Circuit Judges.

BRYSON, Circuit Judge.

New World International, Inc., and National Auto 

Parts, Inc., (collectively, “New World”) appeal from a final 

decision by the United States District Court for the 

Northern District of Texas dismissing New World’s declaratory judgment complaint for lack of personal jurisdiction over defendant-appellee Ford Global Technologies, 

LLC (“FGTL”). We affirm.

I 

A 

FGTL is a wholly owned subsidiary of the automaker 

Ford Motor Company. Both FGTL and the Ford Motor 

Company are incorporated in Delaware and headquartered in Michigan. FGTL does no business in Texas and 

neither maintains an office nor has any employees in 

Texas.

FGTL does not make or sell automobiles or automotive products; it owns, manages, and licenses intellectual 

property for the Ford Motor Company. FGTL’S portfolio 

includes several design patents, including U.S. Design 

Patent No. D489,299 (“the ’299 patent”), which claims the 

design of a vehicle hood exterior, and Design Patent No. 

D501,685 (“the ’685 patent”), which claims the design of a 

vehicle head lamp.

FGTL licensed the ’299 and ’685 patents to LKQ Corp. 

(“LKQ”), an entity incorporated in Delaware and headquartered in Illinois. The license agreement between 

FGTL and LKQ designates LKQ as the exclusive licensee 

for the importation and sale of non-original equipment 
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 3

aftermarket products in the United States.1 LKQ does 

business in all 50 states, including Texas. 

The license agreement states that “LKQ has no right, 

title or interest in or to the FGTL Design Patents” beyond 

selling the aftermarket products as provided in the 

agreement, and that LKQ does not have the right to grant 

sublicenses. The agreement further provides that FGTL 

and LKQ each operate as “an independent contractor in 

the performance of each and every part of the license,” 

and that neither “has the power or authority to act as 

agent, employee or in any other capacity to represent, act 

for, bind or otherwise create or assume any obligation on 

behalf of the other party for any purpose whatsoever.” In 

addition, the agreement provides that LKQ may not 

reference its relationship to Ford or FGTL in any of LKQ’s

marketing materials regarding the royalty products, and 

that LKQ must attach to each of those products a label 

that reads “Non Original Equipment Aftermarket Part.” 

The agreement does not otherwise control LKQ’s marketing of the royalty products. 

The license agreement details the relationship between FGTL and LKQ regarding infringement claims 

against third parties. If LKQ learns of potentially infring-

 

1 The parties disputed below whether the license 

was exclusive, as the license expressly states that it does 

not “prohibit FGTL and Ford Associated Companies from 

making, having made, importing, exporting, selling, 

offering for sale[,] distributing or licensing any products.” 

On appeal, FGTL maintains that “Ford and its affiliates 

can compete—and do compete—with LKQ in the U.S. 

market for repair and aftermarket products.” FGTL Br. 

at 19. We do not resolve that dispute but conclude that 

personal jurisdiction is lacking even assuming, as the 

district court did, that the license is exclusive.
4 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

ing conduct by a third party, LKQ must notify FGTL in 

writing. The agreement then provides: 

FGTL will have the right to determine what action, if any, is to be taken in each such instance, 

but shall not unreasonably refuse a request by 

LKQ to enforce the Ford Design Patents against 

allegedly-infringing use in conflict with LKQ’s 

rights under th[e] [License] Agreement. If FGTL 

decides to take any action at LKQ’s request, LKQ 

agrees . . . to become a party to such action if necessary, and to cooperate with FGTL, in the prosecution of any such action or proceeding involving 

any alleged infringement respecting FGTL’s 

rights in the Ford Design Patents.

The license agreement also addresses potential thirdparty claims of design patent infringement against LKQ 

based on LKQ’s sales of the aftermarket products. For 

such claims, the agreement provides that FGTL will 

indemnify LKQ for any design patent suits against LKQ 

initiated by third parties.

B 

New World is a Texas company with headquarters in 

Texas. In September 2011, FGTL sent New World a cease 

and desist letter accusing New World of infringing the 

’299 and ’685 patents by selling various parts meant for 

use on Ford vehicles. The letter informed New World that 

LKQ had been granted an exclusive license to import and 

sell those products, and that New World had not obtained 

the accused products from LKQ in an authorized manner. 

On May 21, 2013, FGTL sent another letter to New 

World, providing New World with a “partial list” of Ford 

design patents and again requesting that New World 

cease and desist selling various parts for Ford vehicles. 

FGTL also informed New World that LKQ “may be able to 
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 5

assist” with New World’s “disposal” of the accused products, and stated that “LKQ will contact you directly.”

New World requested a license to sell the accused 

products. On June 11, 2013, FGTL responded that a 

license option was not available; that FGTL had contacted 

its litigation counsel, who would contact New World; and 

that FGTL had asked LKQ to contact New World about 

the disposal of the accused products in New World’s 

possession. 

In June 2013, LKQ contacted New World “regarding

the recent ‘cease and desist’ letter” from FGTL. LKQ 

asked that New World call LKQ “to review the details of 

[New World’s] inventory” in order to “determine the most 

prudent disposal method.” 

Litigation counsel for FGTL sent New World another 

cease and desist letter on November 13, 2013.

On January 29, 2015, FGTL sued New World and its 

Internet retailer, Auto Lighthouse Plus, LLC, in the 

United States District Court for the Eastern District of 

Michigan, charging them with willful infringement of nine 

patents, including the ’299 and ’685 design patents. Ford 

Global Techs., LLC v. New World Int’l, Inc., No. 2:15-cv10394 (E.D. Mich.). FGTL later filed an amended complaint that dropped the claims under the ’299 and ’685 

design patents.

C 

On April 14, 2015, New World filed the present suit in 

the Northern District of Texas seeking a declaratory 

judgment of noninfringement and invalidity with regard 

to the ’299 and ’685 design patents. FGTL moved to 

dismiss the complaint for lack of personal jurisdiction. 

Relevant to this appeal, New World asserted that the 

district court had specific personal jurisdiction over 

FGTL. 
6 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

As to that theory, the district court noted that, under 

controlling Federal Circuit law, FGTL’s cease and desist 

letters sent to New World in Texas were not sufficient to 

establish jurisdiction over FGTL. The court then assessed

FGTL’s license agreement with LKQ. The court determined that the license did “not impose continuing obligations on FGTL to enforce or defend the patents in Texas 

nor give LKQ an independent right to enforce those 

patents, and it does not give FGTL control over LKQ’s 

business operations.” Therefore, the court concluded, the 

license agreement did not provide the court with specific 

personal jurisdiction over FGTL in the declaratory judgment suit, and the court accordingly dismissed the complaint. 

After the dismissal, New World filed a motion for reconsideration and a motion for leave to file an amended 

complaint to add further allegations in support of specific 

jurisdiction. Regarding the motion for reconsideration, 

the court acknowledged a factual error in its previous 

dismissal order but concluded that, even with the error 

corrected, the court still lacked specific personal jurisdiction over FGTL. The court denied New World’s motion for 

leave to file an amended complaint as untimely. 

II

A 

“Personal jurisdiction is a question of law that we review de novo.” Autogenomics, Inc. v. Oxford Gene Tech. 

Ltd., 566 F.3d 1012, 1016 (Fed. Cir. 2009). We review the 

pleadings and other submitted evidence in the light most 

favorable to New World. Id. at 1017. Because the complaint involves issues of patent infringement and validity, 

we apply Federal Circuit law to the jurisdictional issue. 

Id. at 1016.

A court has personal jurisdiction over a nonresident

defendant if the forum state’s long-arm statute permits 
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 7

service of process and the assertion of personal jurisdiction comports with due process. Xilinx, Inc. v. Papst 

Licensing GmbH & Co. KG, 848 F.3d 1346, 1352 (Fed. Cir. 

2017). “Because Texas’s long-arm statute extends to the 

limits of federal constitutional due process, only [the 

latter] inquiry is required.” Companion Prop. & Cas. Ins. 

Co. v. Palermo, 723 F.3d 557, 559 (5th Cir. 2013).

For personal jurisdiction, the nonresident defendant 

must have “certain minimum contacts with [the forum] 

such that the maintenance of the suit does not offend 

‘traditional notions of fair play and substantial justice.’” 

Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). 

For minimum contacts in the context of specific jurisdiction, the plaintiff must show that the defendant “has 

purposefully directed his activities at residents of the 

forum, and [that] the litigation results from alleged 

injuries that arise out of or relate to those activities.” 

Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985); 

see also id. at 475 & n.18. If those minimum contacts are 

sufficient, the defendant may point to other factors “to 

determine whether the assertion of personal jurisdiction 

would comport with ‘fair play and substantial justice.’” 

Id. at 476. This court has articulated those requirements 

in the form of a three-part test: “(1) whether the defendant ‘purposefully directed’ its activities at residents of the 

forum; (2) whether the claim ‘arises out of or relates to’ 

the defendant’s activities with the forum; and (3) whether 

assertion of personal jurisdiction is ‘reasonable and fair.’” 

Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 

2001). 

Under the first two parts of the test, as applied in the 

patent context, the question is what minimum contacts 

are necessary to establish personal jurisdiction over a 

nonresident defendant for a declaratory judgment of 

noninfringement or invalidity of a patent. This court has 

acknowledged that the defendant purposefully directs his 

activities at residents of the forum when the defendant 
8 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

sends a cease and desist letter to a potential plaintiff in 

that particular forum. And a subsequent declaratory 

judgment action by that potential plaintiff “arises out of 

or relates to” the defendant’s activity—namely, the cease 

and desist letter. Under the third part of the test, however, this court has held that it is improper to predicate 

personal jurisdiction on the act of sending ordinary cease 

and desist letters into a forum, without more. Red Wing 

Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 

1360-61 (Fed. Cir. 1998) (concluding that “[p]rinciples of 

fair play and substantial justice afford a patentee sufficient latitude to inform others of its patent rights without 

subjecting itself to jurisdiction in a foreign forum”); see

also, e.g., Radio Sys. Corp. v. Accession, Inc., 638 F.3d 

785, 789 (Fed. Cir. 2011); Breckenridge Pharm., Inc. v. 

Metabolite Labs., Inc., 444 F.3d 1356, 1363 (Fed. Cir. 

2006); Genetic Implant Sys., Inc. v. Core-Vent Corp., 123 

F.3d 1455, 1458 (Fed. Cir. 1997). 

While the act of sending cease and desist letters is insufficient by itself to trigger a finding of personal jurisdiction, other activities by the defendant, in conjunction with 

cease and desist letters, may be sufficient. One such 

activity that this court has recognized may meet the 

minimum contacts requirement is the grant of an exclusive license to a licensee that resides or regularly does 

business in the forum. Avocent Huntsville Corp. v. Aten 

Int’l Co., 552 F.3d 1324, 1334 (Fed. Cir. 2008); see also, 

e.g., Breckenridge, 444 F.3d at 1366. 

To be sure, the mere existence of an exclusive license 

does not support a finding of specific jurisdiction. For 

example, a license that establishes no relationship between a patent holder and a licensee beyond the payment 

and receipt of royalty income is not sufficient, because a 

declaratory judgment action does not typically “arise from

or relate to” a patent holder’s efforts to license or commercialize its patent. Avocent, 552 F.3d at 1336; see also

Radio Sys. Corp., 638 F.3d at 789-90. 
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 9

On the other hand, a license that obligates the patent 

holder to defend or enforce the patent may be sufficient to 

establish specific personal jurisdiction, because a declaratory judgment action typically arises from the patent

holder’s actions to enforce or defend its patent in the 

forum. Avocent, 552 F.3d at 1336; see also Autogenomics, 

566 F.3d at 1020 (“[O]nly enforcement or defense efforts 

related to the patent rather than the patentee’s own 

commercialization efforts are to be considered for establishing specific personal jurisdiction in a declaratory 

judgment action against the patentee.”). 

Several earlier decisions of this court speak to what is 

necessary to establish specific jurisdiction over a nonresident patent holder that has sent a cease and desist letter 

into the forum and entered into an exclusive license 

agreement with a licensee that does business in the 

forum. In Akro Corp. v. Luker, 45 F.3d 1541 (Fed. Cir. 

1995), the nonresident patent holder (1) granted a resident licensee, an Ohio corporation, the right to sue alleged 

infringers on the patent holder’s behalf and (2) agreed to 

“defend and pursue any infringement against [the] patent.” Id. at 1543. The patent holder therefore incurred 

continuing obligations in the forum related to the enforcement or defense of the licensed patent: The resident 

licensee was free to sue third parties for infringement, 

which the patent holder was then obligated to “defend and 

pursue”; the patent holder assumed a complementary 

obligation to affirmatively pursue potential infringers of 

the patent; and the patent holder was obligated to defend 

any action challenging the patent. Even though the 

patent holder had “never been in Ohio and no one is or 

has ever been his agent or personal representative in 

Ohio,” id. at 1542, the patent holder’s continuing obligation to pursue any infringement clearly contemplated 

enforcement against any infringers in Ohio, where the 

licensee was based and competed with others. 
10 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

Subsequently, in Genetic Implant Systems, Inc. v. 

Core-Vent Corp., 123 F.3d 1455 (Fed. Cir. 1997), the court 

held that a nonresident patent holder was subject to 

personal jurisdiction based both on direct marketing and 

sales activities in the forum before the nonresident’s 

patent issued, and on the nonresident’s execution, after 

the patent issued, of an exclusive agreement with a 

distributor whose activities were directed at the forum 

state. Id. at 1458 (nonresident patent holder “engaged in 

substantial activities” in Washington through its “program to develop a market in Washington, including 

founding teaching centers in Seattle . . . , developing 

Washington customer lists through the teaching centers, 

and advertising in publications distributed to potential 

Washington customers”; it then entered a worldwide 

exclusive distributorship agreement with a distributor 

that maintained sales representatives in Washington and 

continued to make “substantial sales” of the patent holder’s product there). The court detailed the particulars of 

the distributorship agreement—e.g., granting the distributor the exclusive right to distribute the patented products, the authority to use the patent holder’s trademark, 

and indemnification for liability arising from third-party

infringement actions—and determined that the distributorship agreement was effectively an exclusive license. 

Id. at 1458-59. The court held that the patent holder’s 

execution of such an exclusive arrangement, in conjunction with the cease and desist letters and the patent 

holder’s previous activities in the forum, satisfied the 

requirements of due process as applied to the issue of 

personal jurisdiction. Id. at 1459.

A decade later, in Breckenridge Pharmaceutical, Inc. 

v. Metabolite Laboratories, Inc., 444 F.3d 1356 (Fed. Cir. 

2006), the court clarified that the question of specific 

jurisdiction over a nonresident patent holder in a case 

involving an exclusive license “requires close examination 

of the license agreement.” Id. at 1366. Under the exclu-
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 11

sive license agreement in Breckenridge, the patent holder 

gave the licensee significant rights regarding the enforcement and defense of the patents. Specifically, the 

patent holder “granted [the licensee] the right to sue for 

patent infringement with [the patent holder’s] written 

consent, and the parties agreed to ‘discuss in good faith 

the appropriate action, if any, with respect to third-party

infringers . . . and to cooperate reasonably in any enforcement actions.’” Id. at 1366-67. Despite retaining

some discretion regarding enforcement, the patent holder

assumed a continuing obligation to at least discuss any 

enforcement action with its licensee in good faith—

including upon the licensee’s request for written permission to bring a suit on behalf of the patent holder—and 

then to cooperate in any subsequent action. 

Those were not empty obligations; as the court explained, the “exclusive license agreement not only contemplated an ongoing relationship . . . beyond royalty 

payments but has actually resulted in such a relationship” 

to enforce the patent. Id. at 1367. As seen in practice, 

both parties coordinated “in sending cease and desist 

letters and in litigating infringement claims in Florida 

[the forum] and elsewhere,” and both “are often represented jointly by counsel.” Id. 

What matters, then, is whether the agreement between the patent holder and the exclusive licensee imposes an obligation on the patent holder to enforce or defend 

the patent on behalf of the licensee that is engaged in 

exploiting the patent rights in the forum state. That 

question is important because a patent holder’s undertaking of such continuing enforcement obligations to a party 

that does business in the forum may qualify as purposeful 

availment by the defendant of the privilege of conducting 

activities within the forum state. See Burger King, 471 

U.S. at 479-80; Perdue Foods LLC v. BRF S.A., 814 F.3d 

185, 191 (4th Cir. 2016) (“[I]mplicit in the Supreme 

Court’s distinction between a contract—which cannot, by 
12 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

itself, establish purposeful availment—and a contract 

with continuing obligations—which ‘manifestly’ constitutes purposeful availment—is the assumption that the 

continuing obligations strengthen a defendant’s contacts 

with the plaintiff’s forum.”) (quoting Burger King, 471 

U.S. at 476).

This court made that point clear in Avocent Huntsville 

Corp. v. Aten International Co., 552 F.3d 1324 (Fed. Cir. 

2008). The court explained that in a declaratory judgment action against a nonresident patent holder, “we 

have consistently required the defendant to have engaged 

in ‘other activities’ that relate to the enforcement or the 

defense of the validity of the relevant patents.” Id. at 

1334. One example of such an “other activity” is “entering 

into an exclusive license agreement or other undertaking 

which imposes enforcement obligations with a party 

residing or regularly doing business in the forum.” Id. 

Exclusive license agreements and other undertakings that 

impose enforcement obligations on a patentee or its 

licensee “reflect the kind of ‘other activities’ that support 

specific personal jurisdiction in a declaratory judgment 

action.” Id. at 1335. Summarizing this court’s precedents, the Avocent court noted that “if the defendant 

patentee purposefully directs activities at the forum 

which relate in some material way to the enforcement or 

the defense of the patent, those activities may suffice to 

support specific jurisdiction.” Id. at 1336. In particular, 

the court concluded (id.):

[W]hen the patentee enters into an exclusive license or other obligation relating to the exploitation of the patent by such licensee or contracting 

party in the forum, the patentee’s contractual undertaking may impose certain obligations to enforce the patent against infringers. By such 

conduct, the patentee may be said to purposefully 

avail itself of the forum and to engage in activity 
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 13

that relates to the validity and enforceability of 

the patent.

B 

New World argues that under the precedents discussed above, FGTL’s license with LKQ creates the basis 

for a finding of specific personal jurisdiction because it 

imposes continuing obligations on FGTL by virtue of its 

character as an exclusive license—i.e., by preventing 

FGTL from granting a license to New World. New World 

also points to the indemnification and enforcement provisions as independently sufficient bases for specific jurisdiction. Those arguments are not persuasive. 

1. We have already rejected the idea that the mere 

existence of an exclusive license, regardless of its content, 

establishes specific jurisdiction over the licensor. Instead, 

“the inquiry requires close examination of the [exclusive] 

license agreement,” because “our case law requires that 

the license agreement contemplate a relationship beyond 

royalty or cross-licensing payment, such as granting both 

parties the right to litigate infringement cases.” Breckenridge, 444 F.3d at 1366.

2. Contrary to New World’s contention, we have not 

held that an indemnity provision is a sufficient basis for 

specific jurisdiction. New World points to Genetic Implant, where the court noted that the exclusive distributorship agreement contained a provision that required the 

patent holder to indemnify the distributor “for liability 

arising from any third-party infringement action related 

to [the distributor’s] sale, use, or making of the [patented] 

products.” 123 F.3d at 1459. That language appears in 

the court’s discussion of why the exclusive distributorship 

agreement is, in effect, an exclusive license. The discussion begins with the statement that “[t]he appointment of 

a distributor to sell a product covered by a patent is 

analogous to a grant of a patent license” because “[s]uch 

an action conveys an implied license to the distributor, 
14 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

thereby surrendering the [patent holder’s] right to exclude 

the distributor under the patent.” Id. at 1458. The court 

supported its conclusion by noting that “[t]he agreement 

contained other provisions similar to those typically found 

in a patent license agreement,” including the indemnity 

clause. Id. at 1459. But nothing in the opinion indicates 

that it was the indemnity clause that established jurisdiction over the nonresident patent holder. Instead, the 

court expressly stated that it was the nonresident’s direct 

“program to develop a market in Washington” before the 

patent issued, plus the execution of what was in effect an 

exclusive license agreement, that satisfied the due process

component of specific personal jurisdiction. Id. at 1458. 

New World has not alleged any comparable activity by 

FGTL in Texas.2

Nor would it make sense to hold that an indemnity 

provision like the one in the FGTL-LKQ license agreement independently satisfies due process. That provision

requires FGTL to indemnify LKQ for design patent suits 

 

2 New World notes that the court in Breckenridge

referred to the indemnity agreement in Genetic Implant

when discussing that case. See Breckenridge, 444 F.3d at 

1365 (citing Genetic Implant, 123 F.3d at 1459). The 

Breckenridge court made clear, however, that it did not 

regard the decision in Genetic Implant as turning on the 

indemnity clause, as the court also referred to the fact 

that the patentee in that case authorized the distributor 

to use its trademarks and the fact that the defendant had 

conducted business in the forum state prior to entering 

into the exclusive distributorship agreement, “and had 

developed a valuable customer base and generated goodwill through advertising and educational initiatives that 

potentially enhanced the future sales of its exclusive

distributor.” Breckenridge, 444 F.3d at 1365 (citing 

Genetic Implant, 123 F.3d at 1458).
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 15

initiated by third parties—e.g., a suit alleging infringement of a third party’s patent by LKQ’s products. But 

insuring LKQ against those third-party claims of infringement does not arise out of or relate to the “enforcement or the defense of the [Ford design] patent[s],” as 

required for specific jurisdiction in a declaratory judgment 

action. Avocent, 552 F.3d at 1336; see also id. (patent 

holder’s efforts to license or commercialize its patent does 

not “relate in any material way to the patent right that is 

at the center of any declaratory judgment claim for noninfringement, invalidity, and/or unenforceability”). Thus, 

while other indemnity clauses could involve the enforcement or defense of the licensor’s patents, the clause at 

issue in this case does not.

3. New World also has not demonstrated that FGTL 

has assumed a meaningful obligation to enforce or defend 

the Ford design patents under the license provisions 

regarding infringement suits brought against third parties. FGTL retains “the right to determine what action, if 

any, is to be taken in each such instance, but shall not 

unreasonably refuse a request by LKQ to enforce the Ford 

Design Patents against allegedly-infringing use in conflict 

with LKQ’s rights under th[e] Agreement.” There is no 

question that FGTL retains control over how to handle 

enforcement of the patent against infringing third parties. 

New World’s argument turns on whether FGTL has ceded 

control over whether to initiate enforcement actions, 

given its obligation to “not unreasonably refuse a request 

by LKQ to enforce the Ford Design Patents.” 

We must therefore determine the nature and scope of 

that obligation. New World points to the “reasonableness” language in the license in Breckenridge, in which 

the parties agreed to “discuss in good faith the appropriate action, if any, with respect to third party infringers of

the Licensed Patents, and to cooperate reasonably in any 

enforcement actions.” 444 F.3d at 1366-67. But the court 

in Breckenridge did not base its decision merely on the
16 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

text of the agreement in that case; rather, the court 

determined that the patent holder recognized that provision as a binding obligation in practice. Id. at 1367 (The 

“exclusive license agreement not only contemplated an 

ongoing relationship . . . beyond royalty payments but has 

actually resulted in such a relationship” to enforce the 

patent.). The court pointed out that the parties coordinated “in sending cease and desist letters and in litigating 

infringement claims in Florida [the forum] and elsewhere,” and that both “are often represented jointly by 

counsel.” Id.

New World has not alleged anything close to the facts 

in Breckenbridge in its effort to show that FGTL’s obligation operates similarly. FGTL sent the cease and desist 

letters on its own behalf or through its own litigation 

counsel. While FGTL copied LKQ on two of the cease and 

desist letters—those of May 21 and June 11, 2013—those 

were letters that advised New World that it could dispose 

of its allegedly infringing products by turning those 

products over to LKQ. LKQ’s role was that of another

recipient of the letters, not a co-sender requesting that 

New World cease and desist infringing the Ford design 

patents. LKQ’s follow-up letter to New World makes that 

clear, as the only topic of that letter was the potential 

disposal of New World’s infringing products. In addition,

the related infringement litigation brought by FGTL in 

Michigan concerning New World’s activities in Texas 

involves only FGTL, not LKQ. 

That is not to say that a plaintiff must always provide 

evidence of how an obligation operates in practice. But

according to FGTL, the text imposes only a minimal

obligation, as FGTL has “the ability to decline enforcement on any commercially reasonable basis,” which 

includes “any reasonable business, practical, or legal 

reason,” such as “a desire not to subject itself to jurisdiction in a particular forum.” FGTL Br. at 22-23 & n.4.
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 17

New World has not provided a persuasive reason to 

interpret the provision differently. Its only argument, 

made in a footnote, is that “reasonableness” is an enforceable standard under Michigan law, which governs the 

interpretation of the license agreement. But New World

does not explain how the interpretation of the agreement 

under Michigan law would conflict with FGTL’s interpretation. 

The only pertinent Michigan case cited by New World 

is Lichnovsky v. Ziebart International Corp., 324 N.W.2d 

732 (Mich. 1982), in which the court construed a contract 

as not permitting termination at will and addressed, as 

further support, a clause that barred the licensee from 

assigning or transferring the agreement without the 

written consent of the licensor, who could not “unreasonably refuse to consent to the sale or transfer of the license 

agreement by the licensee.” Id. at 737-38. That case 

supports the proposition that a prohibition on “unreasonable” conduct bars rejections that are wholly arbitrary or

lack any justification whatsoever. That proposition, 

however, is not inconsistent with FGTL’s argument that 

the “shall not unreasonably refuse” clause in the license 

agreement imposes only the most minimal restriction on 

FGTL’s freedom of action with respect to its patent enforcement decisions, allowing it to pursue any course of 

action that it regards as being to its commercial advantage. 

FGTL’s reading is also supported by the language in 

the license agreement regarding enforcement against 

third parties. The license states that FGTL has “the right

to determine what action, if any, is to be taken in each 

such instance.” FGTL therefore is free to decide how to 

enforce the patent, or whether to enforce it at all. If LKQ 

requests enforcement and FGTL has no reason to refuse, 

then “LKQ agrees . . . to become a party to such action if 

necessary, and to cooperate with FGTL, in the prosecution 

of any such action or proceeding involving any alleged 
18 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

infringement respecting FGTL’s rights in the Ford Design 

Patents.” Therefore, in the event that FGTL grants 

LKQ’s request to enforce FGTL’s patent rights, FGTL still 

has control over the action and can require LKQ to cooperate. And because the license is silent about the situation in which LKQ does not request enforcement, it is 

clear that FGTL retains total discretion whether to pursue enforcement in that setting.3

In sum, under the license agreement, FGTL retains 

nearly complete control over the patent enforcement 

decision. New World has not shown that the obligations 

contemplated in the license have resulted in an undertaking by FGTL to enforce or defend the patents with LKQ. 

Therefore, although the license to the licensee doing 

business in the forum is exclusive, the license does not 

impose a sufficient obligation on the patent holder regarding the enforcement of the patent rights to subject the 

patent holder to specific jurisdiction there. Nor has New 

World pointed to any additional activities in the forum 

beyond the license that would give rise to specific jurisdiction. See Burger King, 471 U.S. at 480 (finding specific 

jurisdiction in Florida because “the ‘quality and nature’ of 

[the defendant’s] relationship to the company in Florida 

can in no sense be viewed as ‘random,’ ‘fortuitous,’ or 

‘attenuated’”). Accordingly, FGTL’s pertinent contacts 

 

3 New World points to two other provisions of the 

license as “evidenc[e] [of] continuing obligations between 

FGTL and LKQ regarding patent enforcement.” New 

World is incorrect as to both. The first requires FGTL to 

notify LKQ of relevant pending and issued Ford design 

patents. That provision is directed to LKQ’s awareness of 

what patented products it may produce, not to the enforcement or defense of the patents. The second deals 

with the source of LKQ’s products and imposes an obligation on LKQ, not FGTL.
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 19

with Texas are limited to the cease and desist letters. 

While those letters may be sufficient to constitute minimum contacts with the forum, they are not sufficient to 

satisfy the fairness part of the test for specific personal 

jurisdiction. See Xilinx, 848 F.3d at 1357.

III 

New World argues that the district court’s denial of 

its motion to amend the complaint to add new allegations 

in support of personal jurisdiction was an abuse of discretion under Rule 15(a), Fed. R. Civ. P. In response, FGTL 

argues that the court’s earlier dismissal of the case was 

effectively an entry of judgment, see Whitaker v. City of 

Hous., 963 F.2d 831, 833 (5th Cir. 1992) (order dismissing 

all claims is a final judgment in the absence of an objection, even if the order does not expressly state as much 

and the court does not enter judgment on a separate 

document), and that the district court’s discretion to allow 

the amended complaint was therefore restricted, see 

Vielma v. Eureka Co., 218 F.3d 458, 468 (5th Cir. 2000) 

(although court has “virtually unlimited discretion to 

allow amendments before the entry of judgment, that 

discretion narrows considerably after entry of judgment”).

Without addressing whether the district court’s 

dismissal order constituted the entry of a final judgment, 

we conclude that the court did not abuse its discretion by 

denying the motion as untimely. New World’s explanation for seeking leave to amend was not the discovery of 

new evidence or anything similar. Rather, it believed its 

initial complaint was sufficient to establish jurisdiction, 

but that following the dismissal it wanted an opportunity 

to buttress its jurisdictional presentation.

That rationale does not provide a basis for concluding 

that the district court abused its discretion. The amendment was untimely, and New World offered no good 

reason for its untimeliness. See Vielma, 218 F.3d at 468 

(“[W]e have consistently upheld the denial of leave to 
20 NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC

amend where the party seeking to amend has not clearly 

established that [it] could not reasonably have raised the 

new matter prior to the trial court’s merits ruling.”). 

New World relies exclusively on Dussouy v. Gulf Coast 

Investment Corp., 660 F.2d 594 (5th Cir. 1981), in which 

the Fifth Circuit held that a trial court abused its discretion by denying leave to amend, which was requested 

after dismissal of the case. But the court’s rationale in 

that case is not applicable here. In Dussouy, discovery 

revealed that the plaintiff’s theory of the case—conspiracy 

between an insurance company and an investment company to restrain trade—was incorrect because the insurance company was not involved. Id. at 596-97. Upon 

learning that the insurance company was not involved, 

the plaintiff dismissed the insurance company and moved 

to amend the complaint to add different co-conspirators, a 

motion that the district court denied. Id. at 597. Thus, in 

Dussouy there was good reason for the belated motion to 

amend, in light of evidence that was revealed during 

discovery. Here, New World has not alleged the discovery 

of any new evidence that requires leave to amend.

After a case has been dismissed, a district court’s denial of a motion to amend is not an abuse of discretion

where the motion is based on the plaintiff’s assertion that 

it thought it had done enough previously to avoid dismissal. As the district court astutely observed: “The only 

explanation [New World] offer[s] [in support of its motion 

for leave to amend] is that [it] thought [it] had adequately 

demonstrated jurisdiction. If this were sufficient, matters 

would never be final.”4 

 

4 New World also complains that the district court 

should have granted its motion for reconsideration of the 

dismissal order. The district court, however, explained in 

its corrected opinion that the material in the motion 
NEW WORLD INT’L, INC. v. FORD GLOBAL TECHS., LLC 21

AFFIRMED

 

would not have affected the dismissal. We find no error in 

that ruling and therefore uphold the district court’s denial 

of the motion.