When Licensing Undermines Standing: Patent Owners Relinquished Right to Sue by Granting Exclusive License
Edited by: Scott Forman, Cara Regan, and Brian Kacedon
Abstract: In A.L.M. Holding Company v. Zydex Industries Private Limited, the U.S. District Court for the District of Delaware found the patent owners had relinquished the ability to sue for patent infringement by granting an exclusive license without retaining any exclusionary rights. The court therefore held the patent owners lacked constitutional standing to enforce the patents and dismissed the patent infringement claims they brought against the defendants.
Background
Plaintiffs A.L.M. Holding Company and Ergon Asphalt & Emulsions, Inc. owned patents covering asphalt paving compositions and methods. The plaintiffs granted an exclusive license to MeadWestvaco Corporation. Later, the plaintiffs sued Zydex alleging that Zydex’s asphalt additive products infringed the licensed patents. However, the licensee did not join the plaintiffs in bringing the lawsuit. Zydex asked the court to dismiss the case on the ground that the plaintiffs lacked constitutional standing to sue for infringement.
Standing is a fundamental requirement for any lawsuit brought in U.S. court. To assert a patent, a plaintiff must demonstrate that it has “exclusionary rights” (i.e., the right to exclude others from making, using, selling, offering to sell, or importing the patented invention) to show standing under Article III of the U.S. Constitution.
Key Findings of the Court
The court found that the plaintiffs relinquished their exclusionary rights in the licensed patents via the license agreement. The license recited that the plaintiffs could use and sublicense the patented invention and could receive royalties, but the court determined that while the plaintiffs were licensed to use the invention, they had no ability to exclude others from doing so. Notably, the agreement specifically recited that the plaintiffs had the right to participate in deciding whether to sue and could enforce the patents alone in some circumstances. But the court ruled that in the absence of a retained exclusionary right, the plaintiffs lacked the constitutional standing necessary to sue. Because none of the plaintiffs’ retained rights “involve[d] the exclusive right to make, use, or sell the inventions,” the court determined that the agreement had separated the exclusionary rights from the plaintiffs’ right to sue for infringement.
The Court accordingly held that the plaintiffs lacked the requisite standing to sue, and therefore granted Zydex’s motion to dismiss the case without addressing the merits of the infringement claims. The plaintiffs have appealed.
Strategy and Conclusion
The decision highlights the critical importance of carefully structuring patent licensing agreements. Companies involved in technology-intensive industries must ensure that their rights are clearly delineated to avoid jurisdictional challenges in enforcement actions. The case also underscores the need for rights holders to involve all parties with a direct interest in a patent’s exclusionary rights when pursuing infringement claims and accused infringers to carefully evaluate standing when considering defenses.
Further Information
The A.L.M. decision can be found here.
Editors and Authors
The editors and authors are attorneys at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
This article is for informational purposes and does not constitute legal advice.
The views expressed do not necessarily reflect the views of LES or Finnegan.
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