Legal Journals

Does an Exclusive Licensee Have Standing?

Atmel Corp. v. Authentec, Inc. (PDF) 490 F. Supp. 2d 1952 Decided June 11, 2007 Judge Wilken Judge Wilken was faced with Defendant Authentecââ?¬â?¢s motion to dismiss for lack of standing pursuant to FRCP 12(h)(3). Atmel sued Authentec for patent infringement of the ââ?¬Ë?114 patent. The ââ?¬Ë?114 patent was issued and assigned to Thomson-CSF. Thereafter, Thomson-CSF assigned the patent to a third party along with the majority shares in its subsidiary, TCS. At some point after the assignment, TCS became known at Atmel Gernoble. Atmel Gernoble is a subsidiary of Atmel Paris, which is in turn a subsidiary of Atmel Corp. Later Atmel Gernoble assigned the rights in the ââ?¬Ë?114 patent to Atmel Switzerland. In the United States, Atmel Corp. has alone practiced the ââ?¬Ë?114 patent. Defendant argued that at the time the original complaint was filed, Atmel Corp. did not own the patent and was not an exclusive licensee. At the time the complaint was filed, Atmel Corp. was the only plaintiff and the ââ?¬â?¢114 patent was the only patent in suit. Plaintiff counters that Atmel Corp. has exclusive rights to the ââ?¬Ë?114 patent and that, as the parent company, it acts as an exclusive licensee to the patent. Judge Wilken cites Propat Intââ?¬â?¢l Corp. v. RPost US, Inc., 473 F.3d 1187, 1189 (Fed. Cir. 2007) to state

the court held that an exclusive licensee with less than all substantial rights in the patent also has constitutional standing but ââ?¬Å?must normally join the patent owner in any suit on the patent.ââ?¬Â?

Contrast this with the recent case about appellate standing discussed by Patently-O earlier this week. Judge Wilken relied heavily upon a case from the Western District of Michigan in holding that

Atmel Corporation had constitutional standing as an exclusive licensee at the inception of the case and cured the defect in prudential standing when it joined Atmel Switzerland, the patent owner.

Being a parent company of the patent owner, and the fact that Atmel Corp. controlled the patent were key factors in this holding.

Full post as published by Tech Law Forum on October 15, 2015 (boomark / email).