Get the Facts About Patent Infringement

UNMPatent Co-Owner’s Refusal to Join Lawsuit Results in Dismissal

The US Court of Appeals for the Federal Circuit recently affirmed the dismissal of a patent infringement suit for lack of standing due to the failure to join a patent co-owner as plaintiff.

The case involves a US patent for a “Method for Manufacture of Quantum Sized Periodic Structures in Si Materials.”  The invention is intended for use in connection with manufacturing semiconductors and was derived from the contributions of four people, three of whom were employed by the University of New Mexico at the time of the invention. The fourth inventor, Draper, was employed by Sandia Corp.

In 1996, the four inventors executed a joint assignment of the invention to UNM.  In 2002, UNM assigned its own interest in the initial patent, US Patent S/N 5705321 (or the ‘321 patent) and a related patent, US Patent S/N 6042998 (or the ‘998 patent) to its wholly-owned licensing arm, STC.UNM.

In 2010, STC filed suit against Intel for infringement of the ‘998 patent. Intel asserted that STC could not enforce the ‘998 patent under the terms of the terminal disclaimer, which required identical ownership of both the ‘321 and ‘998 patents. STC contended that Sandia owned the ‘998 patent by reason of an assignment by Draper. Sandia refused to join the case, preferring “to take a neutral position with respect to this matter,” and the district court granted Intel’s motion to dismiss for lack of standing.

According to patent attorney, Laura Lloyd:

Researching all the inventors and owners of a patent before an infringement case is filed can prevent dismissals which are costly for the Plaintiff.

The district court reasoned that ownership rights must derive from inventorship, and because Draper did not co-invent any claims of the ‘998 patent (as distinct from the ‘321 patent) he had no interest in that patent to assign.

The district court explained that when a patent is co-owned, a co-owner seeking to enforce that patent must join all other co-owners as plaintiffs to establish standing. Without this joinder, a plaintiff cannot pursue a patent infringement suit. Accordingly, the Federal Circuit affirmed the district court’s dismissal for lack of standing.

If you have questions about patent ownership, please call today for a free initial consultation: 1 (855) UR-IDEAS or (626) 796-4000.

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
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Photo Attribution: “The campus of the University of New Mexico, Los Alamos branch in Los Alamos, New Mexico” by Danski14 is licensed under CC A 3.0.

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