Licensee lacked standing where patentee, not a party, retained rights to sue
Robinson, J. Court conditionally grants motion to dismiss where plaintiff licensee lacked standing unless patentee is joined by date certain.
Where plaintiff licensee did not have standing to sue in its own name alone as it did not hold all substantial rights to patent-in-suit, the Court granted defendant’s motion to dismiss pending plaintiff’s failure to join patent holder by date certain. The license at issue gives the licensor STC the exclusive right to sue during the first 90-day period after the licensee Siemens gives STC notice of the infringement, and Siemens the exclusive right after that time. Moreover, the license is a field of use license, apportioning the subject matter of the patent between STC and Siemens. Accordingly, the license did not transfer “all substantial rights” to the licensee, and Siemens does not have standing to sue in its own name alone.
A full copy of this opinion is available here.
