Standing is an important concept in American law. It requires a plaintiff to have a minimum legal interest so that it can bring a lawsuit in court. Section 281 of the patent code provides a patentee the right to sue others for infringement. But not all parties who sue for infringement own those patents outright. Some are exclusive licensees, some are co-owners, and some may take title to those patents through assignment from another entity. Whether a party (other than a sole owner) is a “patentee” for purposes of Section 281 is often a subject of dispute. Prior to 2019, disputes under Section 281 were litigated as a matter of standing and subject matter jurisdiction. This changed in 2019 with Lone Star Silicon Innovations LLC v. Nanya Technology Corp., 925 F.3d 1225 (Fed. Cir. 2019). There, the Federal Circuit clarified that Section 281 was not a jurisdictional requirement. Two important consequences followed from that change in the law. First, it is possible for a plaintiff to meet the constitutional requirements for standing but to fall short of the statutory requirements to bring a lawsuit under Section 281. Indeed, that was the position that plaintiff Lone Star Silicon was in. Second, if a plaintiff does not qualify as a “patentee” for purposes of Section 281, that plaintiff still has Federal Rule of Civil Procedure 19 at its disposal. By that rule, the district court can then (1) order a “holdout” party to join the case, or (2) decide whether the case can proceed in that party’s absence. Following Lone Star Silicon, three recent Federal Circuit decisions have furthered the law. First, in Schwendimann v. Arkwright Advanced Coating, Inc., 959 F.3d 1065 (Fed. Cir. 2020), the Federal Circuit applied Minnesota state contract law and allowed the plaintiff to “re-form” a contract that had initially failed to convey patent rights to it. Second, in AntennaSys, Inc. v. AQYR Technologies, Inc., 976 F.3d 1374 (Fed. Cir. 2020), the Federal Circuit resolved Section 281 issues in a tangled dispute between parties to contract. Finally, in Genestix, Inc. v. Board of Regents of University of Texas System, 966 F.3d 1316 (Fed. Cir. 2020), the Federal Circuit ruled that plaintiff and exclusive licensee Genestix could proceed with its lawsuit against Baylor in the absence of the University of Texas, the patent owner. This talk will cover these developments and also practical tips for litigating these issues.

You might want to sit down for this: Standing in patent cases after Lexmark and Lone Star Silicon

ACS Fall 2021

The official archive and repository for all ACS Meetings & Expositions abstracts and select posters or presentations.