Opinion
No. C 01-04204 CRB
June 3, 2003
ORDER DENYING DEFENDANT'S MOTION TO DISMISS AND GRANTING DEFENDANT'S MOTIONS TO FILE THIRD AMENDED ANSWER AND AMEND SCHEDULING ORDER
Now before the Court is defendant's motion to dismiss this action, which has been pending in this Court since November 2001, for lack of subject matter jurisdiction. Defendant's motion is based on its contention that plaintiff lacks standing to prosecute an action for infringement of the patents-in-suit.
Only the owner of a patent or a party to whom "all substantial rights" under the paten have been assigned has standing to sue for infringement.See 35 U.S.C. § 281: Prima Tek II LLC v. A-Roo Co. 222 F.3d 1372, 1377 (Fed. Cir. 2000). Whether sufficient rights have bee transferred to permit the transferee to sue is a matter for the Court to determine by examining the parties' intentions and the substance of the transfer. See id. at 1378; Textile Prods. Inc. Mead Corp. 134 F.3d 1481, 1484 (Fed. Cir. 1998).
Plaintiff asserted in its complaint that it had standing to sue because the patent's inventor, J. Carl Cooper, "assigned the entire right, title, and interest" in the patents-in-suit b way of an agreement executed on March 14, 1997. See Compl. ¶ 17. Defendant argues that this assertion is false because, among other reasons, Cooper remained the owner of the paten even after the March 1997 license agreement took effect.
Plaintiff does not deny that Cooper remained the nominal owner of the patents-in-suit This does not dispose of the standing issue, however, because a non-owner may sue for infringement if it possesses "all substantial rights" in the patent. The March 1997 license agreement between Cooper and TLC contained the following language:
Licensor [Cooper] hereby grants unto Licensee [TLC] an exclusive license under the Licensed Patents, including but not limited to the worldwide, exclusive rights to the inventions of the Licensed Patents, including the right to make, have made, sell, use, lease, or otherwise deal in Licensed Products on which a royalty has been paid as provided hereunder; to license, sub-license, develop, perfect, enhance, protect and enforce the Licensed Patents; to prevent unauthorized activity relating to the inventions protected by the Licensed Patents, including specifically the right to litigate or bring any action in any forum, in Licensor's or Licensee's name, to enforce the Licensed Patents and to recover damages, monies and/or other relief for present, past or future infringement or other wrongful activity relating to the Licensed Patents and to take over, maintain, pursue or settle existing negotiations and/or litigation (if any) pertaining to the above and to benefit therefrom.
Licensee shall also have the right to further assign, transfer or sublicense or otherwise provide any or all of the above rights to any other entities, providing however that such other entity agrees to be bound by this agreement with respect to the considerations granted Licensor.
Gambino Decl. Ex. G, at 3-4.
This agreement remains in effect. Although defendant points to documents created subsequent to this license agreement that arguably suggest that other parties may possess limited interests in the patents-in-suit, none of these agreements abrogates or recognizes an abrogation of the Cooper-TLC license or the assignment of all substantial rights to TLC that accomplished. Considering "the intent of the parties to the license as manifested by the tern of their agreement and examining the substance of the grant," Textile Prods. 134 F.3d at 14 3 the Court is persuaded that plaintiff is the holder of all substantial rights in the patents-in-suit and can sue for their alleged infringement on that basis.
Because plaintiff has standing to sue in its own right and possesses under the terms o; its license the right "to enforce the Licensed Patents and to recover damages, monies and/or other relief for present, past or future infringement," joinder of Mr. Cooper as a plaintiff in this litigation is not required. Cf. Intellectual Prop. Dev. Inc. v. TCI Cablevision of Califon Inc., 248 F.3d 1333, 1347-48 (Fed. Cir. 2001).
For these reasons, plaintiffs motion is hereby DENIED. Plaintiff is directed to file an amended complaint within fifteen days of the issuance of this order that pleads the proper bas for plaintiffs standing to sue.
Defendant's motion for leave to file a third amended answer is hereby GRANTED. Defendant's motion to amend the scheduling order is hereby GRANTED as follows: Rebutta expert reports shall be due on or before August 8, 2003; expert discovery shall close on September 12, 2003; motions for summary judgment shall be filed on or before October 10, 2003.
IT IS SO ORDERED.