Constitutional Standing And “Patentee” Statutory Requirement (fka “Statutory” or “Prudential” Standing)

  • Party With Any Exclusionary Right In Patent Is Exclusive Licensee And Has Constitutional Standing If The Accused Is Alleged To Violate That Right: “The touchstone of constitutional standing . . . is whether a party can establish that it has an exclusionary right in a patent that, if violated by another, would cause the party holding the exclusionary right to suffer legal injury.” One qualifies as an exclusive licensee if “it holds any of the exclusionary rights that accompany a patent.” Exclusive licensee has constitutional standing even if its license is subject to pre-existing licenses (not to the accused) “but also to future licenses that may be granted only to parties other than the accused.” WiAV Solutions (Fed. Cir. 12/22/10) (long background discussion of “constitutional standing” (vs. “prudential standing”) fundamentals); Intellectual Tech (Fed. Cir. 05/01/24) (rev’g dismissal for lack of Constitutional standing, because plaintiff had “an exclusionary right” when filed Complaint); Univ. of S. Fla. (Fed. Cir. 10/22/21) (vacating dismissal based on lack of Constitutional standing; “constitutional standing is satisfied when a party holds at least one exclusionary right”). See generally Bank of Am. (U.S. 05/01/2017) (to “demonstrate constitutional standing …, the plaintiff must show an ‘injury in fact’ that is ‘fairly traceable’ to the defendant’s conduct and ‘that is likely to be redressed by a favorable judicial decision’”); Brooklyn Brewery (Fed. Cir. 10/27/21) (discussion of Art. III standing requirements on appeal from decision of TTAB).
  • Under Lexmark, Whether Plaintiff Qualifies As “Patentee” Having Right To Sue For Infringement (“Statutory Standing” or “Cause Of Action” Requirement) May Not Present Art. III (Constitutional) Standing Issue: Statutory standing” (or “cause of action” requirement or “statutory requirement,” Univ. of S. Fla. (Fed. Cir. 10/22/21)) (fka “prudential standing”) is a question of “whether a legislatively conferred cause of action encompasses a particular plaintiff’s claim.” A cause of action “extends only to plaintiffs whose interests fall within the zone of interests protected by the law invoked.” “A direct application of the zone-of-interests test and the proximate-cause requirement supplies the relevant limits on who may sue.” “[T]he breadth of the zone of interests varies according to the provisions of law at issue.” Lexmark (Static Control) (U.S. 03/25/2014). Under Lexmark (Static Control) (U.S. 03/25/2014), “whether a party possesses all substantial rights in a patent does not implicate standing or subject-matter jurisdiction.” Lone Star (Fed. Cir. 05/30/19) (aff’g that plaintiff lacked “all substantial rights” but remanding to determine if patent owner can be joined under Fed. R. Civ. P. 19; the district court “confuses the requirements of Article III—which establish when a plaintiff may invoke the judicial power—and the requirements of § 281—which establish when a party may obtain relief under the patent laws.”  Under Lexmark, “so-called ‘statutory standing’ defects do not implicate a court’s subject-matter jurisdiction”); Schwendimann (Fed. Cir. 05/13/20) (2-1) (aff’g plaintiff had right to sue for infringement despite initial defect in assignment transferring patent to wrong party, later reformed by trial court per state law. This is not a standing issue: “whether one qualifies as a patentee under 35 U.S.C. § 281 is a statutory prerequisite to the right to relief in a patent infringement action, but does not implicate the district court’s subject matter jurisdiction”); but see Schwendimann (Fed. Cir. 05/13/20) (Reyna, J., dissenting op.) (Art. III standing (that the plaintiff owns some exclusionary rights in the patent) is not jurisdictional but is separate and apart from statutory standing (that the plaintiff owns substantially all exclusionary rights in the patent), and cannot be cured after the complaint is filed.); See In re Cirba (Fed. Cir. 09/22/21) (non-precedential) (“It is not clear … that Lexmark and Lone Star also require us to alter our precedent holding (as the district court summarized it) that ‘the touchstone of constitutional standing in a patent infringement case is whether a party can establish that it has an exclusionary right in a patent that, if violated by another, would cause the party holding the exclusionary right to suffer legal injury.’” “These cases do not answer the question of whether an injury must be both “legally cognizable” and “concrete” or simply “concrete” for Article III standing.”).
  • “Patentee” Statutory Requirement (aka Prudential (Statutory) Standing Or “Cause Of Action” Requirement) Objection May Be Waived: June Medical (U.S. 06/29/2020) (State waived prudential third party “representational” standing argument against abortion providers by expressly conceding standing in trial court.); Brooklyn Brewery (Fed. Cir. 10/27/21) (Court need not address statutory standing if not raised by parties.)
  • Patent Owner That Granted Exclusive License May Sue On Patent, Without Joining Exclusive Licensee, If Retained Substantial Rights: For purposes of standing, there can only be one patent owner (which may be a group). “The question is whether the license agreement transferred sufficient rights to the exclusive licensee to make the licensee the owner of the patents in question. If so, the licensee may sue but the licensor may not. If not, the licensor may sue, but the licensee alone may not. When there is an exclusive license agreement, as opposed to a nonexclusive license agreement, but the exclusive license does not transfer enough rights to make the licensee the patent owner, either the licensee or the licensor may sue, but both of them generally must be joined as parties to the litigation.” Alfred E. Mann Found. For Sci. Research (Fed. Cir. 05/14/10) (patent owner has standing to sue on its own, despite having granted exclusive license; where it retained secondary right to sue if exclusive licensee declined to sue, right to significant portion of proceeds from infringement suit filed by licensee, right to terminate license if payments missed, and some others.); Aspex Eyewear (Fed. Cir. 05/24/10). Some of the rights to be considered: “transfer of the exclusive right to make, use, and sell products or services under the patent is vitally important to an assignment;” “the scope of the licensee’s right to sublicense, the nature of license provisions regarding the reversion of rights to the licensor following breaches of the license agreement, the right of the licensor to receive a portion of the recovery in infringement suits brought by the licensee, the duration of the license rights granted to the licensee, the ability of the licensor to supervise and control the licensee’s activities, the obligation of the licensor to continue paying patent maintenance fees, and the nature of any limits on the licensee’s right to assign its interests in the patent. Frequently, though, the nature and scope of the exclusive licensee’s purported right to bring suit, together with the nature and scope of any right to sue purportedly retained by the licensor, is the most important consideration.” Alfred E. Mann Found. For Sci. Research (Fed. Cir. 05/14/10).
  • Exclusive License: Owner’s Retained, Non-Illusory Right To Sue Infringers Decisive: “The nature and scope of the licensor’s retained right to sue accused infringers is the most important factor in determining whether an exclusive license transfers sufficient rights to render the licensee the owner of the patent.” Alfred E. Mann Found. For Sci. Research (Fed. Cir. 05/14/10) (patent owner has standing even though right to sue is secondary to exclusive licensee’s and exclusive licensee has a right to grant restricted sub-licenses); accord Luminara (Fed. Cir. 02/29/16) (Licensor’s retained right to practice patents and share in proceeds of litigation or licensing are not “individually or cumulatively … substantial enough to preclude [exclusive licensee] from bringing suit in its name alone.” Also finding title, maintenance fee responsibility, and right to notice of litigation and licensing insufficiently substantial retained rights to make patent owner indispensable party or deny exclusive licensee of standing); Alps South (Fed. Cir. 06/05/15) (no standing to sue without patent owner where exclusive license limited to a field of use, and licensee could not settle without patent owner consent, and patent owner retained right to sue if licensee did not within six months); Delano Farms (Fed. Cir. 08/24/11). “To be an exclusive licensee for standing purposes, a party must have received, not only the right to practice the invention within a given territory, but also the patentee’s express or implied promise that others shall be excluded from practicing the invention within that territory as well.” Rite-Hite (Fed. Cir. 06/15/95) (en banc).
  • “Exclusive Licensee” Without “All Substantial Rights” To Patent Is Not “Patentee” And Must Join Patent Owner: “If an exclusive licensee does not hold all substantial rights to the patent, … it lacks standing to maintain an infringement suit” without joining the patent owner. Keranos (Fed. Cir. 08/13/15) (aff’g proper standing of exclusive licensee where all substantial rights assigned post patent expiration); Univ. of S. Fla. (Fed. Cir. 10/22/21) (licensee not “patentee” and thus cannot sue w/o patent owner in part because right to sue not expressly transferred despite licensee’s right to sublicense (in cooperation with patent owner); “the exclusive right to make, use, and sell, as well as the nature and scope of the patentee’s retained right to sue accused infringers are the most important considerations in determining whether a license agreement transfers sufficient rights to render the licensee the owner of the patent,” but did have Constitutional standing so vacating dismissal of lawsuit); Lone Star (Fed. Cir. 05/30/19) (aff’g that plaintiff lacked “all substantial rights” (but remanding to determine if patent owner could be joined): “in considering this question, we have often focused on two salient rights: enforcement and alienation.”); Alfred E. Mann Found. For Sci. Research (Fed. Cir. 05/14/10) (“A patent owner may transfer all substantial rights in the patents-in-suit, in which case the transfer is tantamount to an assignment of those patents to the exclusive licensee, conferring standing to sue solely on the licensee.” “[W]here an exclusive license transfers less than ‘all substantial rights’ in the patents to the exclusive licensee, the exclusive licensee may still be permitted to bring suit against infringers, but the patent owner is an indispensable party who must be joined.”); Sicom (Fed. Cir. 10/18/05) (grant that transferred exclusive right to sue for commercial infringement did not transfer all substantial rights); Abbott Labs. (Fed. Cir. 02/07/95) (patent owner “retained substantial interests” under the patents and therefore exclusive licensee “does not have an independent right to sue for infringement”); Immunex (Fed. Cir. 07/01/20) (2-1) (in context of determining common ownership for an obviousness-type double patenting context; aff’g judgment that not all substantial rights were transferred because owner retained non-illusory secondary right to sue (and retain proceeds) and any assignment of rights by the “exclusive licensee” is subject to consent by owner, and exclusive licensee cannot license any defendant sued by the owner).
  • Non-Exclusive Licensee With No Right To Exclude Others Cannot Join The Lawsuit: “If the party has not received an express or implied promise of exclusivity under the patent, i.e., the right to exclude others from making, using, or selling the patented invention, the party has a “bare license,” and has received only the patentee’s promise that that party will not be sued for infringement…. The grant of a bare license to sell an invention in a specified territory, even if it is the only license granted by the patentee, does not provide standing without the grant of a right to exclude others.” Rite-Hite (Fed. Cir. 06/15/95) (en banc) (reversing for lack of standing damages awarded to patent owner’s independent sales organizations with exclusive sales territories); Alfred E. Mann Found. For Sci. Research (Fed. Cir. 05/14/10); In re Cirba (Fed. Cir. 09/22/21) (non-precedential) (denying mandamus; parent assigned patents for tax purposes; assignee-subsidiary’s “exclusive” license back to assignor-parent was license to use only, and license to exclude was bare license only, where agreement provided that assignee was “exclusive owner of all proprietary rights,” so no standing, justifying dismissal of parent and new trial after $236 MM jury verdict).
  • Patent Owner Granting Non-Exclusive License With Right To Sublicense May Not Defeat Patent Owner’s Standing: Intellectual Tech (Fed. Cir. 05/01/24) (rev’g dismissal for lack of Constitutional standing, patent owner still suffers an injury in fact from infringement even where both it and another entity can both license the patent and the other party can assign the patent). “Patent owners arguably do not lack standing simply because they granted a license that gave another party the right to sublicense the patent to an alleged infringer.” Uniloc (Motorola) (Fed. Cir. 11/04/22) (dictum, here Uniloc lacked standing by application of issue preclusion); Alfred E. Mann Found. For Sci. Research (Fed. Cir. 05/14/10) (plaintiff is patent owner with standing despite having granted license with right to sub-license where sublicense grants must include specified pass-through royalties, such that plaintiff’s right to sue accused infringers is not rendered illusory).
  • Exclusive License Limited To Particular Field Insufficient To Convey Standing To Sue Without Patent Owner: “Clear rule” that an exclusive licensee does not have standing to sue without patent owner if exclusive license limited to a particular field. Alps South (Fed. Cir. 06/05/15). Patent owner is a necessary party to a DJ action against exclusive licensee in a restricted field of use. A123 Sys. (Fed. Cir. 11/10/10).
  • Party Retaining Any Right To Sue Normally Is Indispensable Party: “As a prudential principle, an exclusive licensee having fewer than all substantial patent rights possesses standing under the Patent Act as long as it sues in the name of, and jointly with, the patent owner and meets the Lujan This principle holds true except in extraordinary circumstances, such as where the infringer is the patentee and cannot sue itself.” Intellectual Prop. Dev. (Fed. Cir. 05/07/01). Exclusive licensee did not qualify as “patentee” with power to sue without joining the patent owner where patent owner retained right to file infringement suit if licensee refused, and retained other rights. AsymmetRx (Fed. Cir. 09/18/09).

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