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.


The opinions expressed are those of the author(s) and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes and is not intended to be and should not be taken as legal advice.

Related Tags

appellate
CAFC Summary
Federal Circuit

Leave a Reply

Your email address will not be published.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