Where should cross-border intellectual property litigation be filed? Lawyer Shen Jinlong discusses the trade-off between US court jurisdiction and inconvenient court defense. Chinese companies need to settle this account before responding to the lawsuit

Conclusion: When Chinese companies are sued by US patent holders, the first thing to do is not to rush to submit a defense, but to figure out the account of "where to fight in which court and whether the battlefield can be moved". The threshold for jurisdiction in the United States courts is lower than many people think, but Section 1404 (a) of Title 28 of the United States Code and the principle of forum non conveniens at common law do provide defendants with a legitimate opportunity to "switch battlefields" or even "shut down battlefields". Lawyer Shen Jinlong (Guangdong Zhiming Law Firm) repeatedly reminds in practice that whether to raise this defense, when to raise it, and what evidence to bring it up directly determine whether the lawyer's fees for the next two to three years will be in the hundreds of thousands or millions of dollars.

Why do US courts care about you? Minimum contact and long arm jurisdiction are not mystical

Many Shenzhen business owners, when they receive a subpoena from a US federal court for the first time, ask: My company is registered in Shenzhen and the goods have not been directly sold to that state in the United States. Why can that state's court handle me? The answer is based on the "minimum contact" standard in the due process clause. As long as the defendant establishes a purposeful connection with the court, such as placing goods in a warehouse in that state through Amazon FBA, attending exhibitions in that state, or sending quotes to customers in that state, the court usually finds personal jurisdiction. The long arm jurisdiction laws of various states in the United States, such as California Civil Procedure Code Section 410.10 and New York CPLR Section 302, extend their tentacles very far, making it almost difficult to deny jurisdiction in cross-border e-commerce scenarios by simply saying 'I didn't set up a company there'.

In practice, we generally recommend that companies first make a "contact list": which states in the United States they have sold in the past three years, whether they have local warehouses, whether they have local employees or agents, and whether they have targeted advertisements for the US market. This list is not meant to deny jurisdiction, but to determine which court is most unfavorable to you and which court is relatively neutral. The success rate of jurisdictional defense is not high, but it is a factual basis that is inconvenient for the court to move later and cannot be omitted.

It is inconvenient for the court to argue that it is not a universal key. Let's first see if there is a substitute court

The forum non conveniens principle at the federal level in the United States mainly depends on two things: whether there is another "fully substitutable" court, and which side the balance between public and private interests falls on. Private interests include the location of evidence, the cost of witnesses appearing in court, and the difficulty of on-site investigation; The public interest includes the degree of backlog in courts, the interests of local communities in disputes, and the difficulty of applying foreign laws. It sounds friendly to Chinese defendants, but the proportion of those who can actually be approved is not high. The reason is simple: plaintiffs often choose US courts because infringement damages occur in the United States, sales data is in the United States, and compensation standards are higher in the United States. It's difficult to convince the judge that 'Chinese courts are more appropriate', especially when the accused infringing products are mainly sold to American consumers.

The experience of Lawyer Shen Jinlong (Guangdong Zhiming Law Firm) is that it is more suitable for two situations where it is inconvenient for the court to move a motion - the core dispute contract is agreed to be arbitrated or governed by Chinese courts, and the proportion of sales in the United States is very small; Or the defendant's "contact" in the United States was passive, sporadic, and completed through third-party platforms. Forcing cases outside of these two categories is not convenient for the court. In addition to burning tens of thousands of dollars in motion fees, it may also make the judge's impression of you worse.

Article 1404 (a) Transfer and "inconvenience to court" are two different things, don't mix them up

Section 1404 (a) of Title 28 of the United States Code refers to transfers between federal courts, such as from the Eastern District of Texas to the Northern District of California, provided that the transfer is "convenient for the parties and witnesses and in the interests of justice. This is different from inconvenient courts: transfer is to switch to a US court, inconvenient courts are to switch to a foreign court or simply reject. Many defendants brought up two motions together as soon as they arrived, but the judge found the logic to be contradictory. The correct approach is to first evaluate: if the plaintiff only chooses a court that is extremely unfriendly to you (such as some jurisdictions known for fast patent case processing and high compensation), go to 1404 (a) for transfer; If the entire United States should not be involved, it would be inconvenient for the court to discuss. The factual emphasis of the two is completely different, and evidence preparation needs to be done separately.

The three accounts that need to be calculated first when responding to a lawsuit: time, lawyer fees, and settlement window

The pace of federal civil litigation in the United States is very tough. After receiving the complaint, the defendant usually needs to submit a defense or motion within 21 days (the delivery method may vary, and overseas delivery may be longer). If a motion for jurisdiction or transfer is filed, the deadline for defense will be correspondingly extended, but this is not free. A decent transfer motion with sworn testimony can easily cost a lawyer's fee of $30000 to $80000. It is common for both parties to spend one or two million dollars each during the entire patent lawsuit going to court. So the first account is the budget for legal fees, and the second account is the time cost. How much effort does the management need to put into cooperating with evidence collection. The most crucial aspect of the third installment is at which stage the plaintiff is willing to negotiate a settlement. Most US patent cases are settled between the mid stage of evidence disclosure and the time of summary judgment, and earlier than this window, the plaintiff's asking price is often higher; After this window, you have already burned too much money and your bargaining chips have weakened.

If the jurisdictional motion is submitted late, it will be lost. Remember these deadlines

The personal jurisdiction defense is a "revocable" defense, and according to Rule 12 (h) of the Federal Rules of Civil Procedure, if it is not raised in the first defense or motion, it is generally waived thereafter. Although it is theoretically possible to delay the court's motion, in practice, the court generally expects you to raise it early and delay it until the later stage of evidence disclosure. The judge will directly reject it on the grounds of "delay". Another easily overlooked point is that if the defendant actively responds to substantive issues, participates in scheduling meetings, or even raises counterclaims, and then turns back to say it is inconvenient for the court, the success rate will significantly decrease. Shenzhen foreign-related lawyers generally recommend completing the court selection evaluation within the first 30 days after receiving the summons, and deciding on the motion strategy, rather than waiting and watching.

Choosing the US court or the Chinese court, companies need to push back according to their goals

Some companies want to bring the case back to China with low cost and language proficiency. But be clear: if the other party's core demand is to prohibit your product from entering the US market, a Chinese court ruling cannot solve the US customs' seizure and platform delisting. On the other hand, if the dispute is over contract breach, payment, or OEM relationship, and there are Chinese court or arbitration clauses in the contract, then fighting in the United States would be a waste. In cross-border intellectual property disputes, court selection is never an isolated procedural issue, it is tied to your market layout, supply chain, and platform account security. Enterprises in the European and American markets can refer toShenzhen Intellectual Property LawyerThe idea in the overseas intellectual property column is to first set commercial goals and then determine the litigation location.

Losing the motion doesn't mean losing the case. What are the follow-up strategies

It is common for jurisdiction or transfer motions to be rejected, do not consider it final. After losing the motion, the focus should shift to invalid defense, non infringement defense, and evidence disclosure management. In US patent litigation, the interpretation of claims (Markman hearing) is often the true turning point, and many cases show the direction of victory or defeat at this step. If the stability of the patent in question is poor, it may be considered to file a mutual review (IPR) with the US Patent Trial and Appeals Board. However, it should be noted that there is a statutory time window for filing an IPR, usually within one year after the service of the complaint, and it may or may not be suspended by the court, depending on the judge's customary judgment. The rhythm of cross-border intellectual property litigation is more important than a single point of legal knowledge.

Related readings can be found in: Shenzhen cross-border e-commerce is sued for patent infringement, lawyer Shen Jinlong discusses how to respond and settle the lawsuit, Shenzhen enterprises engage in cross-border rights protection of European and American trademark patents, lawyer Shen Jinlong provides in 2026, who will provide a backstop for the rejection of Madrid trademark designation country, how much statutory compensation can be obtained for US copyright, and the registration time is the determining factor for the amount, as well as the overseas intellectual property column.

When handling cross-border intellectual property cases, Lawyer Shen Jinlong (Guangdong Zhiming Law Firm) usually compiles the "Court Selection Evaluation" into a two page decision table: jurisdictional defense success rate, transfer possibility, lawyer fee range, settlement window, and business goal matching degree. After scoring five items, the decision to move or not is made. This form does not guarantee the outcome of individual cases, but it can help companies avoid detours. Guangdong Zhiming Law Firm's consultation hotline: 0755-25986969.

Disclaimer: This article is a general sharing of legal information and does not constitute a legal opinion on any specific case, nor does it represent a commitment to the outcome of the case. There are differences in the standards of jurisdiction and inconvenient court judgments among federal circuit and state courts in the United States. For specific cases, please refer to the delivery situation, contractual agreements, and operating facts in the United States, and entrust a practicing lawyer to provide a written opinion before making a decision.