IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Standing
Subscribe to Standing's Posts

Patentee that retains exclusionary rights has constitutional standing notwithstanding broad license grant

by | May 28, 2026 |

The US Court of Appeals for the Federal Circuit reversed a district court decision dismissing a patent infringement suit for lack of constitutional standing, concluding that patentees that retain exclusionary rights, even after granting a broad license, maintain Article III standing. A.L.M Holding Company v. Zydex Industries Private Ltd., Case No. 25-1317 (Fed. Cir. May 19, 2026) (Chen, Cunningham, Stark, JJ.)

A.L.M. and Ergon co-own six patents directed to warm-mix asphalt technology. Prior to filing suit, the patentees entered into a licensing agreement with Ingevity Corporation, granting Ingevity an exclusive, worldwide, royalty-bearing license to manufacture, import, use, and sell products covered by the patents. The agreement also provided for shared control of infringement actions and an equal split of any resulting recoveries and costs. Despite the breadth of the license, the patentees retained certain rights, including the ability to make, import, and use the licensed products.

A.L.M. filed suit against Zydex. The district court dismissed the action, concluding that the patentees lacked constitutional standing because the license transferred away sufficient exclusionary rights, leaving A.L.M. without a cognizable injury under Article III.

Reviewing the issue de novo, the Federal Circuit reversed. The Court framed the proper inquiry for constitutional standing as whether the plaintiff retains an exclusionary interest in the asserted patents. The Court explained that, absent a transfer of all exclusionary rights, a patentee generally maintains the concrete injury necessary to satisfy Article III.

The Federal Circuit emphasized that the constitutional standing inquiry is distinct from the question of statutory standing under 35 U.S.C. § 281. While statutory standing concerns whether a party is entitled to bring suit under the Patent Act and may be cured by joinder of necessary parties, constitutional standing requires a threshold showing of injury in fact and cannot be remedied after the fact.

Applying that framework, the Federal Circuit found that the plaintiffs retained sufficient exclusionary interests. In particular, the patentees preserved rights to royalties and maintained a degree of control over sublicensing, including a veto right. These retained interests demonstrated that the patentees had not transferred all substantial rights in the patents and therefore continued to suffer a legally cognizable injury from alleged infringement.

Accordingly, the Federal Circuit concluded that the plaintiffs satisfied Article III standing requirements and reversed the district court’s dismissal.

Practice note: On the same day that the Federal Circuit issued its decision in A.L.M. Holdings, the same panel also issued a nonprecedential decision in Recor Medical, Inc. v. Medtronic Ireland Manufacturing Unlimited Co., in which it stated, “[i]n a precedential opinion we issued today in a different appeal addressing constitutional standing, A.L.M. Holding Co. v. Zydex Industries Private Ltd., No. 25-1317 (Fed. Cir. May 18, 2026), we held that the patent owner in that case had constitutional standing because it retained a right to sue for patent infringement that was not rendered illusory by the rights it granted to its licensee. Because Medtronic Ireland’s retained rights are materially the same as the patent owner’s in A.L.M., we hold that Medtronic [...]

Continue Reading



read more

It’s not a trap: A shared copyright license can still be exclusive

by | May 14, 2026 |

Addressing statutory standing under the Copyright Act, the US Court of Appeals for the Eleventh Circuit affirmed in part, vacated in part, and remanded, holding that a license is not rendered nonexclusive merely because the copyright owner retained certain rights or previously granted nonexclusive licenses. Great Bowery Inc. v. Consequence Sound LLC, Case No. 24-12482 (11th Cir. May 5, 2026) (Jordan, Newsom, Corrigan, JJ.)

In 2014, a photographer entered into an artist agreement granting Great Bowery the exclusive right to license and market certain photographs. The photographer retained the ability to provide those works to select third parties for limited projects. Around the same time, Condé Nast invited the photographer to shoot the cast and crew of new Star Wars films and obtained a nonexclusive license to publish the photographs in Vanity Fair magazine.

When photographs from Vanity Fair’s Star Wars feature later appeared on Consequence Sound’s website, Great Bowery sued Consequence Sound for copyright infringement.

During discovery, Great Bowery relied on a 2018 authorization letter from the photographer permitting Great Bowery to enforce her copyrights on her behalf. The district court denied Great Bowery’s untimely motion to amend the complaint to add the photographer as a coplaintiff and granted summary judgment for Consequence Sound. The district court concluded that Great Bowery lacked statutory standing under 17 U.S.C. § 501(b) because it did not hold an exclusive copyright interest. Great Bowery appealed.

The Eleventh Circuit affirmed the denial of leave to amend, explaining that while third party infringers generally may not challenge technical deficiencies in a copyright transfer, they are permitted to dispute whether a purported transfer actually conveyed any exclusive rights. Because Consequence Sound challenged the substance of Great Bowery’s alleged ownership rather than the adequacy of the writing, Great Bowery bore the burden of establishing standing, and Consequence Sound was entitled to contest it.

On the merits, however, the Eleventh Circuit vacated the grant of summary judgment, holding that the district court misapplied governing law on exclusive licenses. The district court had concluded that Great Bowery’s license was necessarily nonexclusive because the photographer retained certain usage rights and had previously granted Condé Nast a nonexclusive publication license. According to the Eleventh Circuit, that reasoning misunderstood the divisibility of copyright interests.

The Eleventh Circuit explained that copyright rights enumerated in 17 U.S.C. § 106, such as reproduction, distribution, and public display, are divisible and independently transferable. As a result, a copyright owner may retain or grant some rights while conveying others exclusively. The presence of retained rights or prior nonexclusive licenses does not categorically defeat exclusivity as long as the licensee possesses at least one exclusive § 106 right sufficient to confer standing under § 501(b).

Applying that principle, the Eleventh Circuit rejected the argument that Condé Nast’s preexisting nonexclusive license necessarily precluded Great Bowery’s exclusive rights. A nonexclusive license grants only permission to use copyrighted material and does not transfer ownership of any portion of the copyright. Thus, the photographer remained free to transfer exclusive ownership interests to [...]

Continue Reading



read more

Power outage: Assignment doesn’t include future improvements

by | Oct 23, 2025 |

In a pair of related rulings, the US Court of Appeals for the Federal Circuit reviewed two decisions from two different agencies involving the same patent. The Court ultimately found that the International Trade Commission (ITC) correctly identified the owner of the asserted patent, and that the Patent Trial & Appeal Board correctly determined that the asserted patent was unpatentable. Causam Enterprises, Inc. v. Int’l Trade Comm’n, Case No. 23-1769 (Fed. Cir. Oct. 15, 2025) (Taranto, Chen, Stoll, JJ.); Causam Enterprises, Inc. v. ecobee Techs. ULC, Case No. 24-1958 (Fed. Cir. Oct. 15, 2025) (Taranto, Chen, Stoll, JJ.)

Causam initiated a complaint before the ITC, alleging that certain importers infringed its patent directed to technology for reducing electrical utilities power demands. The asserted patent claims priority as a continuation-in-part of a parent patent application. Although the face of the asserted patent lists Causam as the assignee, the parent application was assigned to another entity a decade earlier, along with “all patents which may be granted therefor” and “all divisions, reissues, continuations, and extensions thereof.” The assignment did not expressly include continuations-in-part.

The chief administrative law judge (ALJ) issued an initial determination that Causam was not the owner of the asserted patent and that no infringement had occurred. Causam subsequently requested a review of the initial determination by the full Commission. The Commission adopted the ALJ’s findings of noninfringement but declined to adopt the findings regarding ownership. Causam appealed.

Ownership of a patent is a threshold requirement for asserting Article III standing, and the complainant bears the burden of establishing standing in the pleadings. On appeal, the Commission and the ITC respondents argued that ownership of the asserted patent did not need to be decided for standing purposes as Causam had pleaded ownership in its complaint. The Federal Circuit disagreed, emphasizing that, as an Article III court, it is required to consider Article III’s standing requirements, even if the ITC is not. Because the issue turned on contract interpretation and did not require underlying factual findings, the Federal Circuit reviewed the standing issue de novo.

The Federal Circuit ultimately determined that the omission of the term “continuation-in-part” from the assignment agreement meant that the asserted patent was not included in the assignment and thus Causam had ownership of the asserted patent. The ITC respondents argued that the inclusion of “continuation” language was sufficient to encompass both continuations and continuations-in-part. The Court rejected this argument, noting that adopting such a position would effectively “insert words into the contract that the parties never agreed to,” particularly because continuations and continuations-in-part (which by definition include new matter not found in the priority application) are widely understood to be distinct concepts within patent law.

The Federal Circuit noted that such a distinction is especially significant in the context of patent assignments. In the case of continuations, recordation of the assignment of the parent patent or application is effective as to a child patent. In contrast, the same is not true for a continuation-in-part, meaning that [...]

Continue Reading



read more

Standing: Don’t get owned by incorrect trademark ownership

by | Sep 4, 2025 |

The US Court of Appeals for the Second Circuit affirmed a district court’s dismissal of a trademark and unfair competition suit, ruling that the plaintiff did not own the asserted trademark. The Court also held that the owner of the trademark failed to ratify the action and therefore the plaintiff did not have standing to assert unfair competition claims. Ripple Analytics Inc. v. People Ctr., Inc., Case No. 24-490 (2d Cir. Aug. 26, 2025) (Park, Nathan, Perez, JJ.)

In March 2018, the US Patent & Trademark Office granted Ripple Analytics a federal trademark for RIPPLE in connection with human resources software. The following month, Ripple assigned all rights to its intellectual property to co-founder Noah Pusey via an assignment agreement. Around the same time, People Center applied to register RIPPLING for similar software. It later abandoned the application but continued to operate under the Rippling name.

Ripple sued People Center in 2020 for trademark infringement and unfair competition. During discovery, Ripple produced the assignment agreement. People Center responded by moving to amend its answer, seeking dismissal for failure to prosecute in the name of the real party in interest and requesting summary judgment.

The district court found that Pusey, not Ripple, was the real party in interest and dismissed the case because Pusey had not ratified the action under Federal Rule of Civil Procedure 17. It also dismissed the unfair competition claims for lack of standing and denied Ripple’s motion to amend the complaint as futile. Ripple appealed.

The Second Circuit affirmed the dismissal, finding that Ripple had “unambiguously” assigned all intellectual property rights, including the trademark at issue, to Pusey, making him the real party in interest. The Court emphasized that the assignment agreement transferred all of Ripple’s “claims, causes of action, and rights to sue,” regardless of when those claims arose. Ripple argued that Pusey satisfied Rule 17 by ratifying the pleadings and agreeing to be a plaintiff. The Court rejected this argument, noting that Pusey’s declaration stating his involvement in the case and strong interest in its outcome did not amount to an agreement to be bound by the suit, a requirement for ratification.

The Second Circuit determined that Ripple’s Lanham Act unfair competition claims failed because they were based on the inaccurate assertion that Ripple owned the RIPPLE mark. The Second Circuit also upheld the district court’s denial of Ripple’s motion to amend its complaint, explaining that the assignment agreement expressly barred Ripple from bringing suit.

Practice note: Before initiating trademark litigation, practitioners should conduct thorough due diligence on ownership to avoid standing issues. Defendants should consider initiating early discovery on ownership of the rights being asserted.



read more

Speculation of Harm Isn’t Standing: Not Every Adverse Board Decision Is Ticket to Appeal

by | Jun 12, 2025 | ,

After assessing whether a patent owner had standing to appeal the Patent Trial & Appeal Board’s final written decision, the US Court of Appeals for the Federal Circuit found no injury in fact to support Article III jurisdiction and dismissed the appeal. Dolby Labs. Licensing Corp. v. Unified Patents, LLC, Case No. 23-2110 (Fed. Cir. June 5, 2025) (Moore, Clevenger, Chen, JJ.)

Dolby owns a patent covering a prediction method involving an in-loop filter. Unified Patents, claiming to be the sole real party in interest (RPI), filed an inter partes review (IPR) challenging several patent claims as anticipated and obvious. Dolby contested the challenge, identifying nine additional entities it argued should have been named as RPIs (alleged RPIs). The Board declined to rule on Dolby’s inclusion, however, and proceeded with Unified as the sole RPI.

In its final written decision, the Board found that Unified failed to establish the unpatentability of any challenged claims. Consistent with the US Patent & Trademark Office’s practice, it also declined to address the RPI dispute, finding it immaterial – there was no evidence the alleged RPIs were estopped from filing their own IPRs later or that Unified had advantageously or strategically omitted them. Dolby appealed.

The Federal Circuit explained that when it reviews final Board decisions, its jurisdiction is constrained by Article III’s “Cases” and “Controversies” requirement. To establish standing, an appellant must demonstrate:

  • A concrete and particularized injury in fact that is actual or imminent, not speculative.
  • A causal link between the injury and the appellee’s challenged conduct.
  • A likelihood that the injury will be redressed by a favorable ruling.

Dolby asserted standing to appeal the Board’s refusal to address the RPI dispute based on three grounds:

Its statutory right to appeal as a “dissatisfied” party under 35 U.S.C. § 319.

  • The denial of its right to information under 35 U.S.C. § 312(a)(2).
  • An injury in fact arising from potential breaches of license agreements by the alleged RPIs and possible conflicts of interest involving the Board’s administrative patent judges.

The Federal Circuit rejected Dolby’s argument that it had a right to appeal based solely on dissatisfaction with the Board’s decision. The Court explained that the right to appeal a Board decision under the America Invents Act (AIA) requires Article III standing. The Court also dismissed Dolby’s argument for a statutory right to RPI information, finding that the AIA does not create an informational right. The Court explained that unlike statutes such as the Federal Advisory Committee Act or the Federal Election Campaign Act, which expressly grant public access to information, the AIA lacks a public access provision and explicitly limits judicial review of IPR-related determinations, including RPI disclosures.

As to Dolby’s right to appeal the Board decision, the Federal Circuit found Dolby’s argument too speculative to establish standing, citing four key deficiencies:

Dolby failed to assert that any alleged RPIs were party to license agreements, undermining its claim of potential breach.



read more

No Fairytale Ending for Consumer Opposition: RAPUNZEL Reinforces Lexmark Standing Limits

by | May 29, 2025 |

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s dismissal of a trademark opposition brought by a consumer, holding that mere consumer interest is insufficient to establish standing under Section 13 of the Lanham Act (15 U.S.C. § 1063). The ruling reinforced the application of the Supreme Court’s Lexmark (2014) framework to administrative trademark proceedings and clarified that only parties with commercial interest fall within the “zone of interests” protected by the statute when challenging a mark. Curtin v. United Trademark Holdings, Inc., Case No. 23-2140 (Fed. Cir. May 22, 2025) (Taranto, Hughes, JJ.; Barnett, Distr. J., sitting by designation.)

United Trademark Holdings (UTH) applied to register the mark RAPUNZEL for dolls and toy figures. Rebecca Curtin, a law professor, doll collector, and mother, opposed the registration, arguing that “Rapunzel” is a generic or descriptive term and its registration would harm consumers by reducing competition and increasing prices for fairytale-themed dolls.

The Board dismissed Curtin’s opposition, concluding she lacked standing to oppose under § 1063. The Board applied the Lexmark framework, which requires a showing that the opposer’s interests fall within the zone of interests protected by the statute and that the alleged injury is proximately caused by the registration. The Board found that Curtin, as a consumer, failed both prongs. Curtin appealed.

Curtin argued she had statutory entitlement under the 1999 Federal Circuit decision in Ritchie v. Simpson, “a case that addressed a section of the Trademark Act barring registration of ‘immoral’ or ‘scandalous’ matter.”

The Federal Circuit affirmed the Board, holding that the Lexmark framework applied rather than Ritchie. The Court explained that while the Lanham Act may indirectly benefit consumers, the statutory cause of action is reserved for those with commercial interest. Since Curtin’s opposition was based on claims that the mark was generic, descriptive, or failed to function as a mark, her interest as a consumer did not fall within the zone of interests protected by the statute.

The Federal Circuit also found that Curtin’s alleged injuries, namely reduced marketplace competition, increased prices, and diminished access to diverse interpretations of the Rapunzel character, were too speculative and derivative of harm that might be suffered by commercial competitors. The Court reiterated that injuries must be direct and not merely downstream effects of harm to others. Curtin’s submission of a petition with more than 400 signatures from like-minded consumers did not alter the Court’s conclusion that her alleged harm was too remote to satisfy the proximate cause requirement.

Practice Note: The Federal Circuit’s decision reinforces that only parties with direct commercial stakes, such as competitors or potential market entrants, have standing to oppose trademark registrations on grounds such as genericness, descriptiveness, or fraudulence.



read more

Blurred Vision: Appeal Dismissed for Lack of Standing

by | Aug 29, 2024 |

The US Court of Appeals for the Federal Circuit dismissed a patent challenger’s appeal in an inter partes review (IPR) because the challenger could not meet the injury-in-fact requirement for Article III standing. Platinum Optics Tech. Inc. v. Viavi Solutions Inc., Case No. 23-1227 (Fed. Cir. Aug. 16, 2024) (Moore, Taranto, JJ.; Checchi, Dist. J, sitting by designation).

Viavi Solutions owns a patent directed to optical filters that include layers of hydrogenated silicon and to sensor systems comprising such optical filters. Platinum Optics Technology (PTOT) petitioned for IPR. The Patent Trial & Appeal Board found that PTOT had failed to establish that the challenged claims were unpatentable. PTOT appealed.

The Federal Circuit dismissed the appeal, finding that PTOT did not have Article III standing. The Court explained that while Article III standing is not required to appear before an administrative agency (such as the US Patent & Trademark Office), such standing is required once a party seeks judicial review in an Article III federal court. PTOT argued it had standing because of potential infringement liability due to its continued distribution of a product previously accused of infringing the patent and its development of new models of the previously accused product. The Court rejected both arguments.

First, PTOT asserted that it suffered an injury in fact because there was a likelihood that Viavi would sue again. PTOT relied on a letter from Viavi stating that it did not believe PTOT could fulfill its supply agreements with noninfringing products. The Federal Circuit disagreed with PTOT’s assertion, concluding that mere speculation about the possibility of suit, without more, is insufficient to confer Article III standing. Moreover, the Court noted that Viavi’s letter was sent prior to the patent infringement suits, which were dismissed with prejudice. Thus, the Court found that PTOT had not established an injury in fact based on potential infringement liability due to its continued distribution of a previously accused product.

Second, PTOT asserted that it suffered an injury in fact based on its development of new models of the previously accused product. PTOT’s argument was supported by a declaration from a Deputy Director of Operation Management at PTOT and the same letter from Viavi threatening future suit. The Federal Circuit did not find the declaration testimony compelling. It explained that the declaration, which generally alleged that PTOT continued to develop new models of the previously accused product, did not identify any specific concrete plans for PTOT to develop a product that might implicate the patent. The declaration did not explain the particulars of these new models or how the models might relate to the patent. The Court found that the declaration was insufficient to establish that PTOT’s development activities created a substantial risk of infringement or were likely to cause Viavi to assert infringement. The Court noted that the letter from Viavi did not specifically address models in development or foreclose PTOT’s ability to develop a noninfringing product.

Thus, the Federal Circuit concluded that PTOT failed to establish an injury [...]

Continue Reading



read more

Getting to the Core of It: Assignment Clause Is Ambiguous

by | May 30, 2024 |

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s grant of summary judgment, finding that the language used in an invention assignment clause was subject to more than one reasonable interpretation (i.e., ambiguous) and thus remand was necessary for further fact finding. Core Optical Tech., LLC v. Nokia Corp., Case Nos. 23-1001; -1002; -1003 (Fed. Cir. May 21, 2024) (Dyk, Taranto, JJ.) (Meyer, J., dissenting).

Core Optical filed complaints against three groups of defendants alleging patent infringement. The lead defendant, Nokia, moved for summary judgment, arguing that Core Optical did not have standing to bring the patent infringement suit. Nokia argued that by virtue of an invention assignment clause in an employment-related agreement signed in 1990, the inventor, Dr. Core, had assigned the patent rights to TRW, his employer at the time of the invention. In the agreement, Dr. Core “agreed to disclose to TRW and automatically assign to TRW all of his inventions that ‘relate to the business or activities of TRW’ and were ‘conceived, developed, or reduced to practice’ during his employment with TRW.” Nokia argued that by virtue of that earlier assignment, the subsequent assignment to Core Optical was ineffective. The agreement had a carveout from the assignment for inventions “developed entirely on [Dr. Core’s] own time” that was unrelated to his work for TRW. According to Nokia, based on the assignment, Core Optical did not have standing to assert the patent. The district court agreed and granted Nokia’s motion for summary judgment. Core Optical appealed.

The Federal Circuit reviewed the district court’s grant of summary judgment de novo, following Ninth Circuit and California law relating to the underlying contract dispute and related factual determinations. Under California law, the “fundamental goal of contractual interpretation is to give effect to the mutual intention of the parties” (citing City of Atascadero v. MLPF&S (1998)). In granting summary judgment, the district court had held that the 1990 invention assignment agreement’s carveout did not encompass Dr. Core’s PhD research, which undisputedly led to the invention claimed in the patent. That finding was based in part on the TRW fellowship program that supported and enabled Dr. Core’s PhD work. However, Core Optical presented evidence that “Dr. Core was careful not to work on his PhD research while ‘on the clock’ at TRW and not to use TRW equipment, facilities, or supplies when working on his PhD research.”

The Federal Circuit disagreed with the district court that the matter was subject to resolution on summary judgment. The Court agreed with Core Optical that the “entirely-own-time” phrase did not unambiguously express a mutual intent to designate all the time Dr. Core spent performing his PhD research as his own time or, as Nokia argued, to indicate that some of the time Dr. Core spent performing his PhD research was partly TRW’s time (as the district court held). The Federal Circuit walked through the undisputed facts, including that Dr. Core sought funding from TRW for his PhD research and [...]

Continue Reading



read more

Standing Ovation…Denied!

by | May 9, 2024 |

The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing. Intellectual Tech LLC v. Zebra Technologies Corporation, Case No. 22-2207 (Fed. Cir. May 1, 2024) (Prost, Taranto, Hughes, JJ.)

In 2011, OnAsset granted Main Street Capital a security interest in a patent owned by OnAsset. In 2013, Main Street notified OnAsset that it was in default and, in 2017, OnAsset and Main Street entered into a forbearance agreement. Around the same time, Intellectual Tech was formed as a subsidiary of OnAsset and was assigned the patent in which Main Street had security interest. Intellectual Tech entered into its own patent security interest agreement with Main Street. Later, like OnAssett, Intellectual Tech defaulted.

Intellectual Tech sued Zebra Technologies for patent infringement, asserting the patent that was the subject to the security interest. Zebra moved to dismiss for lack of standing since Intellectual Tech had defaulted with respect to the Main Street security interest agreement. The district court denied Zebra’s motion, affirming Intellectual Tech’s ownership over the patent and its right to enforce it against Zebra. Zebra argued that Main Street gained exclusive rights over the patent when OnAsset defaulted back in 2013. The district court disagreed but nevertheless granted Zebra’s motion regarding constitutional standing, concluding that Main Street still had a right to grant a license to the patent to Zebra. Despite Intellectual Tech’s efforts to cure the standing defect by joining Main Street to the lawsuit, the district court deemed it incurable and dismissed Intellectual Tech’s claims without prejudice. Intellectual Tech appealed.

The Federal Circuit reversed, determining that Intellectual Tech had an exclusionary right in the patent when it filed a complaint against Zebra. Zebra contended that Main Street’s authority to license the patent, as per the forbearance agreement, stripped Intellectual Tech of all exclusionary rights. Zebra presented two licensing-related arguments: Main Street’s exclusive licensing ability upon default nullified Intellectual Tech’s exclusionary rights, and even if both Main Street and Intellectual Tech could license upon default, Main Street’s nonexclusive capability still deprived Intellectual Tech of its rights.

The Federal Circuit disagreed, finding that the forbearance agreement did not suggest that, without further action from Main Street, the mere activation of Main Street’s options automatically divested Intellectual Tech of its rights. By rejecting this exclusive-rights contention, the Court did not evaluate whether Intellectual Tech would maintain constitutional standing under the interpretation.

The Federal Circuit distinguished exclusive and nonexclusive licensing contexts in explaining why the jurisprudence cited by Zebra (the Federal Circuit’s 2010 decision in WiAV Sols. LLC v. Motorola, Inc.) did not control. According to the Court, this differentiation underscored the importance of distinguishing between patent owners and licensees, as ownership typically entails baseline exclusionary rights, contrasting with a licensee’s limited freedom from suit.

Moreover, the Federal Circuit’s analysis also underscored the necessity to assess patent agreements thoroughly, particularly regarding assignment clauses. Zebra argued that Main Street’s option [...]

Continue Reading



read more

R&D Expenditures Need Only Relate to Subset of Domestic Industry Product

by | Feb 1, 2024 |

Addressing a decision by the US International Trade Commission finding a violation of Section 337 based on importation of certain TV products, the US Court of Appeals for the Federal Circuit agreed that the patent holder had established a domestic industry based on research and development (R&D) relating to only a subset of the domestic industry products. Roku, Inc. v. ITC, Case No. 22-1386 (Fed. Cir. Jan. 19, 2024) (Dyk, Hughes, Stoll, JJ.)

In 2020, Universal Electronics filed a complaint at the Commission seeking a Section 337 investigation of certain streaming devices, TVs, set top boxes and remote controls sold by Roku and others that allegedly infringed six of Universal Electronics’ patents. During the investigation, the administrative law judge (ALJ) granted Roku’s summary determination motion that Universal Electronics lacked ownership of one of the patents, but the Commission promptly reversed that decision. Prior to the hearing, Universal Electronics terminated the investigation as to the three other patents and all respondents other than Roku. The ALJ subsequently issued an initial determination finding infringement and domestic industry for all three patents but held that two of the patents were invalid. The Commission agreed and issued a limited exclusion order barring Roku’s importation. Roku appealed.

Roku raised three challenges to the Commission’s decision on appeal. Roku renewed its ownership argument, disputed the domestic industry finding, and contested the holding of nonobviousness. The Federal Circuit affirmed on all issues.

On ownership, the Federal Circuit faced the question of whether an inventor had executed an automatic assignment or merely a promise to assign. The Court noted that Roku only addressed a 2004 agreement cited by the ALJ and disregarded a later 2012 agreement relied on by the Commission where the inventor agreed to “hereby sell and assign” the patent.

The Federal Circuit rebuffed Roku’s argument that the domestic industry prong was not satisfied on the basis that Universal Electronics failed to allocate expenses to specific domestic industry products. Instead, the Court noted that Section 337 requires investment in the exploitation of the intellectual property and explained that the expenditures can relate to only a subset of a product if the patent only involves that subset.

Finally, regarding obviousness, the Federal Circuit noted that Roku’s arguments regarding secondary considerations ignored the Commission’s finding that the prior art combination failed to satisfy the key claim limitation. As to secondary considerations, the Court dismissed Roku’s lack of nexus argument by finding that it did not matter that the news articles showing a long-felt but unmet need also discussed features other than what was claimed by the patent.



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

Jodi Benassi

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES