In such a case, the "exclusive licensee" is effectively an assignee. Id. (citing 35 U.S.C. § 261; Waterman v. Mackenzie, 138 U.S. 252, 255, 11 S.Ct. 334, 34 L.Ed. 923 (1891); Enzo APA Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir.1998); Vaupel, 944 F.2d at 875). In certifying the question now before this court, the district court presupposed the standing of both exclusive territorial licensees and exclusive field of use licensees to sue in their own names without joining the patent owner.
Section 261 recognizes, and courts have long held, that an exclusive, territorial license is equivalent to an assignment and may therefore confer standing upon the licensee to sue for patent infringement. See, e.g., Waterman v. Mackenzie, 138 U.S. 252, 255 (1891); Enzo, 134 F.3d at 1093, 45 USPQ2d at 1370; Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.p.A., 944 F.2d 870, 875, 20 USPQ2d 1045, 1049 (Fed. Cir. 1991). Conversely, a "bare licensee" — one who enjoys only a nonexclusive license — has no standing to sue for infringement under the Patent Act.
Switzer v. Commissioner, supra, 226 F.2d 330. While it is true that in Waterman v. Mackenzie, 138 U.S. 252, 11 S.Ct. 334, 335, 34 L.Ed. 923, the Supreme Court held that a transfer of the exclusive right under the patent is an assignment, it also declared that any assignment or transfer short of the assignment described in that case "is a mere license, giving the licensee no title in the patent, and no right to sue at law in his own name for an infringement." Appellant maintains that there is no evidence in the record to the effect that on the date the complaint was filed the wives of the record title owners owned as tenants in common an outstanding undivided ¼ of the entire right, title, and interest in and to the patents in suit.
If the licensee is granted not only leave to make, use, and vend the invention, but also the right to exclude from the licensed field every one else, including the patent owner himself, the grant may amount to an assignment of an interest in the patent, entitling the licensee (assignee) to sue an infringer in his own name; if it is less inclusive, it remains a license. Waterman v. Mackenzie, 138 U.S. 252, 256, 11 S. Ct. 334, 34 L. Ed. 923. In that event, the licensee may restrain an infringement only by joinder with the patent owner, or by use of the latter's name if he refuses to join as plaintiff and cannot be made a party defendant.
A patent "assignment" referred to a transaction that transferred specific rights in the patent, all involving the patent's title. E.g., Oliver v. Rumford Chem. Works, 109 U.S. 75, 82-83, 3 S.Ct. 61, 27 L.Ed. 862 (1883) (noting that an "assignment" involves a transfer of a patent's title); Waterman v. Mackenzie, 138 U.S. 252, 255, 11 S.Ct. 334, 34 L.Ed. 923 (1891) (explaining that an "assignment" vests in the assignee "title in so much of the patent itself"); 2 William C. Robinson, The Law of Patents § 762, at 517 (1890) ("An assignment is a transfer of the entire interest in a patented invention, or of an undivided portion of such entire interest, as to every section of the United States."); 48 C.J. Patents § 390, at 253 (1929) ("Generally an assignment of a patent vests in the assignee a title to so much of the patent itself, and transfers to the assignee an exclusive right to do everything under the patent which the patentee himself could do." (footnote omitted)).
I defy opposing counsel to produce a single adjudicated case establishing such a principle. But inasmuch as the court is at pains not to place its decision upon this ground, but upon the ground that the moving party is really the codefendant infringing licensor, it is unnecessary to further discuss that dictum here to show that had the court found the T.-H. Company to be an infringing stranger,-- like the defendant improvement company,-- instead of virtually an infringing licensor, identified in interest with and controlling the moving party, the question of the prima facie right of the Brush-Swan Company to drag the Brush Company into that litigation, by using its name, as attempted by the California and San Jose Companies, must have been decided by Judge SHIPMAN adversely to the contention of the California Company here, and on the authority of the very case cited in that opinion, Waterman v. Mackenzie, 138 U.S. 252, 11 S.Ct. 334, which says: 'That any rights of the licensee must be enforced through or in the name of the owner of the patent, and perhaps, if necessary to protect the rights of all parties, joining the licensee with him as a plaintiff.'
Moreover, a mere licensee does not have standing to sue for patent infringement in its own name. See Waterman v. Mackenzie, 138 U.S. 252, 255, 11 S.Ct. 334, 335, 34 L.Ed. 923 (1891). While Arachnid was a case in which the plaintiff sought to recover monetary damages for patent infringement, i.e., an action "at law," Pfizer does not argue that the general rules for standing to sue for patent infringement differ in the instant action.
Although no cases in this jurisdiction discuss in the context of a bankruptcy case the effect of a transferor's retention of rights under a patent assignment, the Supreme Court's decision in Waterman v. Mackenzie discusses the issue in the context of standing, which is instructive in the instant case. See generally Waterman v. Mackenzie, 138 U.S. 252, 11 S.Ct. 334, 34 L.Ed. 923 (1891). In Waterman, the Court held that a transferor did not have standing to sue under the patent where the transferor had assigned the entire patent right and retained only insignificant rights to the patent.
The following passages from the district court's order of November 27, 1974, reflect the basis for its reluctant conclusion that DMRC could not participate as a co-plaintiff in prosecuting the infringement claims. Although upon reflection of the practicalities involved, it appears just that an exclusive use-licensee should be allowed to join as a co-plaintiff with the patent owner in asserting claims for infringement of the userights, this court finds that it is without power to do so after interpreting the applicable statutes, 35 U.S.C. § 100(d), § 154, and § 281, and after re-examining the pertinent judicial decisions, Waterman v. Mackenzie, 29 F. 316 (C.C.S.D.N.Y. 1886) (complainant, exclusive licensee of rights to make and sell but not to use, cannot sue alone for infringement because it did not have title), affirmed, 138 U.S. 252, 11 S.Ct. 334, 34 L.Ed. 923 (1891) (exclusive licensee of all rights may force patent owner to join involuntarily in action for infringement); Independent Wireless Telegraph Co. v. Radio Corporation of America, 269 U.S. 459, 46 S.Ct. 166, 70 L.Ed. 357 (1926) (only patent owner and/or exclusive licensee may sue for infringement), modified, 270 U.S. 84, 46 S.Ct. 224, 70 L.Ed. 481 (accused infringer may contest in trial court whether plaintiff is exclusive licensee of all rights or only mere licensee); Innis, Speiden Co. v. Food Machinery Corp., 2 F.R.D. 261 (D.Del. 1942) (per District Judge, later Chief Third Circuit Judge, Biggs) (exclusive licensee of all rights allowed to intervene as co-plaintiff with patent [owner] in infringement suit); and Holliday v. Long Mfg. Co., 18 F.R.D. 45 (E.D.N.C. 1955) (per District Judge Gilliam) (exclusive licensee of all rights given 30 days to join in infringement suit brought by patent owner). Any change in the law is a matter for Congress and not for the courts.
In Waterman v. Mackenzie, 1891, 138 U.S. 252, 11 S.Ct. 334, 336, 34 L.Ed. 923, the plaintiff, claiming to be sole and exclusive owner of a patent, filed a bill in equity, alleging infringement by defendants and praying for varied relief. The defendants alleged that the plaintiff, at the time of filing the bill, was not possessed of the patent or of an exclusive right under it because of certain assignments.