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CAFC Mann case interprets "exclusive licensee with all substantial rights"

By Lawrence B. Ebert, Esq.

In Mann v. Cochlear, the CAFC addressed the issue of whether a licensor retained enough rights under an exclusive license agreement to have standing to sue an infringer. The CAFC found the licensor (AMF) did have standing:

As discussed above, the district court should have held that, although the
agreement between AMF and AB was an exclusive license agreement, it was not a
virtual assignment of the patents-in-suit. Accordingly, AMF retained standing to sue
accused infringers, and the district court therefore erred by dismissing AMF?s claims
against Cochlear for lack of standing. We therefore reverse the district court?s dismissal
of AMF?s claims and remand to the district court. On remand, the district court should
consider whether, under Aspex Eyewear, 434 F.3d at 1344, and Independent Wireless,
269 U.S. at 466, AB is an indispensable party to this litigation. If the district court finds
that AB is indispensable, then the district court should consider whether, under Rule 19
of the Federal Rules of Civil Procedure, AB or its successor must be joined as a party,
or whether dismissal of this case is warranted. We express no opinion as to the proper
disposal of this issue. If all standing issues are resolved favorably to AMF, the district
court should address the merits of AMF?s claims.

Full post as published by IPBiz on May 15, 2010 (boomark / email).