In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership.  The inventor of the patent died intestate as the only owner of the patent.  While his two daughters executed transfers of ownership to the inventor's widow, the district court held that under 35 U.S.C. § 261, the executor of the estate had to first transfer the patent rights to the heirs, and without such a transfer, there was no standing to bring suit.

The Federal Circuit vacated, noting that while § 261 states that patents are assignable only in writing, previous decisions have held that state law controls the issue of patent ownership.  Further, ownership may transfer by operation of law, and when a patent owner dies, it is state probate law that determines to whom ownership passes.

The court held that this concept applied in this case, even though it would be Japanese law that would determine ownership rather than a state's law.  Because it was unclear from the record whether an administrator is required under Japanese law when a person dies intestate, the court remanded the case to make that determination, which would resolve the standing issue.

More detail of Akazawa v. Link New Tech. Int'l, Inc. after the jump.

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In a decision last week, the Ninth Circuit affirmed a district court's dismissal of a copyright infringement claim for lack of standing, as well as several related claims.  The plaintiff obtained an "exclusive" license for one of the exclusive rights from a single co-owner of several copyrighted works.  However, because the plaintiff only obtained the license from one co-owner, and not from all co-owners, the license could not be exclusive, as one co-owner does not have the right to exclude other co-owners from exploiting the work.  Accordingly, as a nonexclusive licensee, the plaintiff did not have standing to assert the copyright infringement claims. 

More detail of Sybersound Records, Inc. v. UAV Corp. after the jump.

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In a decision yesterday, the Federal Circuit remanded a case for further discovery, finding that the district court abused its discretion by denying jurisdictional discovery regarding patent ownership due to the "central relevance" of the information.  The patent ownership dispute arose from an employment contract between one of the two inventors and his employer that purportedly assigned all inventions "which relate in any way to" the business of the employer.  The infringement defendant seized upon this, and obtained an assignment and retroactive license from the employer of any rights it had in the inventions, and then moved to dismiss the case after the close of discovery on the grounds that it was now properly a co-owner of the patent.  Jurisdiction therefore depended on whether or not the inventor or the employer owned the patents in question.  

The district court, after allowing extremely limited discovery on the issue, found that the employer owned an interest the patents and dismissed the case for lack of subject matter jurisdiction.  The Federal Circuit held that the district court had abused its discretion as further discovery was required to fully evaluate the ownership issue, and remanded the case for jurisdictional discovery.  However, the court held that because it characterized the issue as jurisdictional, there was no right to a jury trial on the issue.

Judge Newman dissented in part, finding errors in several aspects of the majority's reasoning, including the conclusion that no jury trial on the underlying jurisdictional issues was necessary, what law applied to whether the contract at issue produced a duty to assign or resulted in an automatic assignment, and the availability of equitable defenses.

More detail of DDB Techs., L.L.C. v. MLB Advanced Media, L.P. after the jump.

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In a decision today, the Federal Circuit reversed a decision by a district court declining to dismiss a patent infringement case brought by a party possessing an "exclusive enterprise license" in the patent-in-suit.  The trial court certified the question of licensee standing to the court for interlocutory appeal.  
In reversing the district court's denial of the defendant's motion to dismiss, the Federal Circuit concluded that an exclusive enterprise licensee, like a field of use licensee, does not hold all substantial rights in the licensed patent within the licensed territory.  As a result, in order to have standing, the patent owner must also be joined in the suit, and the court reversed the denial of the motion to dismiss finding the licensee did not have standing to bring suit alone.

More detail of Int'l Gamco, Inc. v. Multimedia Games, Inc. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court decision that prosecution history estoppel barred application of the doctrine of equivalents, and accordingly affirmed the district court's summary judgment of no infringement.

The court also held, as a matter of first impression, that when joinder of the patent owner is required before the district court for an exclusive licensee to have prudential standing to bring suit, the exclusive licensee may appeal an adverse decision even if the patent owner chooses not to join the appeal.  The court noted the purpose of requiring the patent owner to be joined at the district court is to avoid subjecting the alleged infringer to multiple lawsuits based on the same conduct.  However, when the patent owner was joined at the district court, it is bound by the district court's decision if it chooses not to appeal.  As a result, the exclusive licensee appealing without the patent owner does not subject the defendant to the possibility of duplicative suits.

More detail of Schwarz Pharma, Inc. v. Paddock Labs., Inc. after the jump.

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In a decision released late Friday, the Federal Circuit vacated and remanded a district court's decision that a plaintiff did not have standing to sue for patent infringement.  At issue was whether a joint inventor of the patent had assigned his interest in the patent to a third party, thereby making the third party a necessary party to the case.  

The court concluded that the employment agreement signed by the joint inventor did not immediately assign all inventions made by that inventor when they were made, but instead only created an obligation to assign.  Because the assignment was never completed, and the third party subsequently disclaimed having any interest in the patent, the court held the plaintiff had standing to sue for infringement alone.  

More detail of IpVenture, Inc. v. ProStar Computer, Inc. after the jump.

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Yesterday, the Federal Circuit clarified the requirements for a party to attain standing to bring a patent infringement suit when the party does not hold all substantial rights in the patent.  In defining what constitutes an "injury in fact" under the constitutional standing requirement, the court held that, when a party does not have all substantial rights to a patent, injury in fact would only exist when that party has exclusionary rights like those held by an exclusive licensee and the parties with all substantial rights in the patent join in the suit.

This was a problem in this case.  As the result of a bankruptcy proceeding, one entity was granted the right to sue under certain patents, but another entity was granted ownership of the patents, and had the right to license the patents.  The court held that the party with the right to sue did not suffer an "injury in fact," and so could not properly be a plaintiff to the suit.  This, of course, leads to a problem:  If the party with the right to sue cannot, under the law, actually bring suit, who can enforce the patent?  Based on this decision, it appears the only way to cure this problem is to transfer the right to sue back to a party who would suffer an "injury in fact," and until that is done, the patent is unenforceable because neither the owner nor the party with the "right to sue" can actually bring suit.  This is an issue that should be kept in mind not only in bankruptcy proceedings, but also in patent licenses and assignments.

More detail of Morrow v. Microsoft Corp. after the jump.

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In a recent decision, the Federal Circuit affirmed-in part a district court's grant of summary judgment of infringement of a patent, finding that the claims were properly held to include measuring devices that either directly or indirectly compare two signals to determine the proper measurement.  The court reversed-in part the district court's damages award.  The district court properly determined the reasonable royalty rate, but improperly included sales from a company with no corporate relationship to the defendant in the royalty base.  

Additionally, the Federal Circuit reversed the district court's dismissal of the plaintiffs' willful infringement claim, finding the dismissal for failure to prosecute improper, as the district court's grounds for the dismissal was just that the plaintiff did not move for summary judgment on the issue.  Finally, the court affirmed the dismissal of a licensee of the patent as a party, as it did not have standing.

More details of Mitutoyo Corp. v. Cent. Purchasing, L.L.C. after the jump.

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In another nonprecediential ruling today, the Federal Circuit affirmed the TTAB's dismissal of an opposition filed against registration of the Dykes on Bikes mark.

There are two requirements to have standing to file an opposition with the TTAB.  The would-be opposer must have "both a real interest in the proceedings and a reasonable basis for a belief that he would be damaged by its registration."  Here, the parties did not dispute that the opposer, Michael McDermott, had a "real interest," what was lacking was reasonable belief he would be damaged by the registration.

In this case, there were two relevant ways to show the necessary belief of damage.  First, the opposer could show "he possesses a trait or characteristic that is clearly and directly implicated in the proposed mark," or second, that "others also share the same belief of harm from the proposed mark," "demonstrated through surveys, petitions, or affidavits from public interest groups."

McDermott did not meet either test.  Specifically, the court agreed with the TTAB "that the registration of the proposed mark would have no 'implications' for a man," and that "McDermott's opposition papers contain no allegations that his belief is shared by others and no reference to supporting evidence demonstrating such a shared belief."

As a result, the dismissal of the opposition for lack of standing was affirmed.

To read the full decision in McDermott v. San Francisco Women's Motorcycle Contingent, click here.

Coverage of earlier decisions regarding the Dykes on Bikes mark can be found at the TTABlog here (reporting on the TTAB's order dismissing McDermott's opposition for lack of standing), here (withdrawing § 2(a) disparagement refusal), and here (explaining the basis of, and predicting the withdrawal of, the § 2(a) refusal). 

In yet another case, the Federal Circuit has dealt with whether a party asserting a patent infringement claim had title to the patent, and thus standing to bring the claim against the defendant. Here, once the standing issue was raised at the district court, the Plaintiff opted to fix the chain of title, voluntarily dismiss its claim, and refile a new case against the defendant. The court granted the dismissal (including the defendant's counterclaims) rather than addressing the standing issue.

The Federal Circuit ultimately affirmed, finding that while the court should not have dismissed at least some of the counterclaims as they were not related to the asserted patent, this error was harmless. This is further motivation for parties to ensure that the chain of title to an asserted patent is clear before bringing suit, as many of the issues in this case could have been avoided by a clear chain of title.

More details of the case after the jump.

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