June 2017

Litigation Agent's Lack of Standing to Sue for Infringement Cannot Be Cured by Joining Patent Owner
by John C. Paul, D. Brian Kacedon, and Paula E. Miller
A California court ruled that a patent licensee lacked standing to sue on its own for infringement because the licensor had not transferred all substantial rights in the patents to the licensee. The license agreement between the parties and their actions in settling a related litigation demonstrated that the licensee was simply acting as the licensor’s litigation agent in the U.S. The court also ruled that adding the patent owner would not cure the standing deficiency because despite being characterized as an exclusive licensee, the licensee had no proprietary interest or exclusive license in the patents and therefore did not suffer any injury in fact traceable to infringement of the patents.

Patent Marking Requirements Cannot Be Avoided by Retroactive Disclaimer
by John C. Paul, D. Brian Kacedon, and Paula E. Miller
The U.S. Court of Appeals for the Federal Circuit recently held that a patentee could not use disclaimer to avoid the patent marking statute. Even when a licensee is selling the patented product, it must mark the patent number on the product for the patent owner to receive damages for the time period before filing the complaint or providing actual notice of infringement. The intent of the marking statute is to protect the public; although disclaimer surrenders any rights the patent owner may have, the rights of the public are preserved.

Activities by an Infringer Occurring After It Is Sued for Patent Infringement May Not Support a Finding of Willful Infringement
by John C. Paul, D. Brian Kacedon, and Rhianna L. Lindop, Ph.D
A Georgia court did not allow a patent owner to amend its complaint to allege willful infringement based solely on knowledge and conduct of the accused infringer occurring after the original complaint was filed.

Licensing Patents to Competitors Could Weigh Against Granting an Injunction
by John C. Paul, D. Brian Kacedon, and Lauren J. Dowty
After finding an LED manufacturer’s patents were infringed, one district court refused to grant a permanent injunction to prevent the infringing party from selling its LEDs. The Federal Circuit affirmed the district court’s denial of the injunction, reasoning that the injunction was not necessary to protect the patent holder from irreparable harm, in part because the LED manufacturer had previously licensed several of its competitors.

Supreme Court Restricts Where Patent Owners May Sue for Patent Infringement
by John C. Paul, D. Brian Kacedon, and Andrew E. Renison
The United States Supreme Court recently restricted where patent owners may file suits for patent infringement against domestic corporations, reversing the Federal Circuit by finding that domestic corporations reside only in their State of incorporation. The Court’s decision, however, leaves open the question of what constitutes a defendant’s "regular and established place of business" for purposes of venue in patent suits.