Supreme Court leaves in place CAFC's ruling on inability to compel co-owner to join suit (posted 03/31/15)

The Supreme Court denied certiorari in STC.UNM v. Intel Corp., in which the Federal Circuit upheld the lower court lack of standing dismissal for failure to join a necessary party. The factual background is interesting:

  • An initial patent 5,705,321 ('321 patent) resulted from contributions of four people: Brueck, Saidi, and Chu, employed by the University of New Mexico (UNM), and Draper, employed by Sandia. The '321 patent claims technology similar to that of the asserted patent 6,042,998 ('998 patent).
  • In mid-1996, the four inventors executed a joint assignment to UNM of the invention that issued as the '321 patent, but in October of 1996, UNM executed an assignment to Sandia to correct Draper's prior assignment to UNM which “was made in error.” This assignment explicitly transferred to Sandia “those rights and interests previously assigned to [UNM] by Bruce Draper . . . and to any and all Patents which may be issued thereon . . . and to any and all divisions, reissues, continuations, and extensions.”
  • While '321 was pending Brueck and Saidi continued their research and filed an application leading to the instant '998 patent, which incorporated the '321 patent by reference but did not claim priority to any earlier-filed application.
  • During prosecution of the '998 patent the PTO rejected the claims for double patenting over the '321 patent, and the rejection was overcome by UNM filing a terminal disclaimer, which stated that it was “the owner of record of a 100 percent interest in the instant application.”
  • In 2002, UNM assigned its own interest in the '321 and '998 patents to STC, a wholly-owned licensing arm of UNM.
  • In 2008, STC successfully petitioned the PTO to correct the inventorship of the '998 patent to include two more named inventors, Hersee and Malloy, who were employees of UNM at the time of the invention, and assigned their interests in the '998 patent to UNM. In addition, STC successfully sought a certificate of correction to indicate that the '998 patent is a continuation-in-part of the '321 patent.
  • Although Sandia has an ownership interest in the '321 patent since October 1996, Sandia had never claimed any interest in the '998 patent. (In 2009, STC and Sandia entered into a royalty sharing agreement for the '321 patent that does not mention the '998 patent.)

At the district court, Intel argued in a motion for summary judgment that the '998 patent was unenforceable for failing to comply with the common-ownership requirement of the terminal disclaimer. In response, STC contends that Sandia did in fact co-own the '998 patent since it issued by operation of the assignment, or alternatively, that Sandia obtained ownership of the '998 patent when it formally became a continuation-in-part of the '321 patent. Nevertheless, STC confirmed the prior assignment and assigned an undivided interest in each of the '321 and '998 patents to Sandia in 2011. The district court rejected STC's theories and granted partial summary judgment for Intel, reasoning that ownership rights must derive from inventorship and because Draper did not co-invent any claims of the '998 patent, he had no interest in the '998 patent to assign. Thus the court held that Sandia did not co-own the '998 patent with UNM or STC at any point prior to the 2011 assignment. The parties then cross moved on the issue of standing, given Sandia's co-ownership, which was granted by the district court.

STC argued before the Federal Circuit that Rule 19(that requires the court to compel joinder of co-inventor or co-owner of a patent “to bring before the court all persons deemed necessary to the suit.” However, the Federal Circuit held that the holding in Ethicon v. United States Surgical Corp 1) requires co-owners (ordinarily) to consent to the suit, and that this requirement was not dictum, but essential to the disposition of the case. In this case, Sandia did not affirmatively give up its right to refuse to join the suit (e.g., by signing an exclusive license arrangement or otherwise agreeing to join). Unless STC can secure Sandia's voluntary joinder, obtain the '998 and '321 patents outright, or become the exclusive licensee of Sandia's interest, STC cannot enforce the '998 patent in court.

Judge Newman's Dissent:

Judge Newman holds that the present ruling is contrary to Rule 19 as well as precedent. Stating in part:

By statute, “A patentee shall have remedy by civil action for infringement of his patent.” 35 U.S.C. §281. . . . Precedent establishes that all entities with the right to enforce the patent are necessary parties to an action for enforcement; the purpose is to shield the accused infringer from mulitple suits, as well as to resolve all potential claims efficiently and fairly. Entities with enforcement rights who do not voluntarily join in such suit “must” be joined involuntarily, as provided by FRCP 19(a) (“Required Joinder of Parties”).

Departing from this clear and compulsory procedure, the panel majority holds that co-owner Sandia cannot be involuntarily joined with the University in this infringement suit, thus preventing the University from enforcing the patent, for Sandia is a necessary party. That holding is not correct. When a party declines . . . to join . . . involuntary joinder is provided by Federal Rule 19. The panel majority's ruling . . . is contrary to law.

On March 30, 2015, the Supreme Court denied certiorari, leaving the Federal Circuit's panel decision in tact.

135 F.3d 1456 (Fed. Cir. 1998)

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