Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

IP LitigationFederal Circuit

Right of patent co-owner to impede suit brought by another co-owner is a substantive right that trumps involuntary joinder under Rule 19(a)

June 12, 2014

IP LitigationFederal Circuit

Right of patent co-owner to impede suit brought by another co-owner is a substantive right that trumps involuntary joinder under Rule 19(a)

June 12, 2014

Back to Fish's Litigation Blog

 

STC.UNM v. Intel Corp., ___F.3d___ (Fed. Cir. June 6, 2014) (RADER, Newman, Dyk) (D.N.M.) (2 of 5 stars)

Federal Circuit affirms district court’s dismissal for lack of standing made after the court refused to involuntarily join Plaintiff’s co-assignee.  Per the majority, even though Rule 19(a) requires joinder of a party if the court cannot accord the existing parties complete relief absent the other party, that party’s right to impede the suit is a substantive right that trumps the procedural rule for involuntary joinder.  Slip op. at 11.  This limit protects, inter alia, a co-owner’s right to not risk expense and potential invalidation, and “safeguards against the possibility that each co-owner would subject an accused infringer to a different infringement suit on the same patent.”  Id. at 12.  But Rule 19 does still play a role, at least when:  (1) a patent owners who have granted exclusive licenses can be forced to join because they have a relationship of trust with their licensees; and (2) a co-owner previously waived his right to refuse joinder (e.g., by contract).  Id. at 11.

Dissent (Newman):  Judge Newman felt that Rule 19 is important and not trumped.

Related Tags

appellate
CAFC Summary
Federal Circuit

Leave a Reply

Your email address will not be published. Required fields are marked *