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Articles

Rule 19 Does Not Permit A Patent Co-Owner to Involuntarily Join Other Patent Co-Owners Without Their Consent

October 21, 2014

Articles

Rule 19 Does Not Permit A Patent Co-Owner to Involuntarily Join Other Patent Co-Owners Without Their Consent

October 21, 2014

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STC.UNM v. Intel Corp., __ F.3d __ (Fed. Cir. Sept. 17, 2014) (en banc) (D.N.M.: Brack) (2 of 5 stars)

Fed Cir denies rehearing en banc where a split panel had affirmed dismissal of a suit in which a patent’s co-owner had not been voluntarily joined.  The panel held that Rule 19 did not permit involuntarily joining the co-owner.

Concurrence (Judges Dyk, Moore, and Taranto):  Agreeing with the panel’s decision, Judge Dyk explained that “Rule 19 by its terms presupposes the existing parties’ substantive entitlement to ‘relief’ from another source of law.  It therefore does not authorize compulsory joinder when the plaintiff has no substantive right to relief without the consent of that person, i.e., where the right can be asserted only jointly, not unilaterally by the plaintiff.”  Concurrence at 2.  The “right to enforce the patent does not belong unilaterally to each co-owner, but requires all of the co-owners’ agreement, so that each co-owner has a substantive right not to be involuntarily joined in a patent infringement suit without such agreement.”  Id. at 3 (citing Ethicon, Schering, DDB Techs., Taylor, and Israel Bio-Eng’g Project).  Moreover, section 262, which permits co-owners to unilaterally practice the patent or grant licenses, underscores why a co-owner cannot be forced to join a suit absent its consent.

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