The Federal Circuit reversed a decision from the Western District of Texas dismissing claims for lack of constitutional standing where a loan agreement did not automatically deprive the patentee of all of its rights in the patents. More specifically, the court held the patent-owner retained at least one exclusionary right in the patent even though it granted a security holder an exercisable right to sell, assign and enforce the patent in the event of a default, and did in fact default.
In that case, plaintiff's parent company granted an interest in the patent-in-suit to a security holder as part of a loan agreement. Per the agreement's terms, the security holder received an option to license, assign or enforce the patent in the event of a default. The parent company ultimately defaulted on the agreement, but the security holder never took any action to exercise its option. Years later, the parent company assigned the patent to plaintiff, who executed the same loan agreement and also ultimately defaulted. But again, the security holder declined to exercise its option.
Following its default, plaintiff asserted the patent-in-suit. The defendant moved to dismiss the complaint for lack of standing—that motion was denied. The defendant then moved for summary judgment for lack of subject-matter jurisdiction on the grounds that plaintiff's default effectively transferred all exclusionary rights in the patent to the security holder, and as a result, had no exclusive right and no standing to bring suit. This time, the district court agreed with the defendant. Treating the motion for summary judgment as a renewed motion to dismiss, the district court held that plaintiff's default deprived it of its exclusionary rights. According to the district court, "a patent title holder can deprive itself of its exclusionary rights by vesting a third party with a right to assign or sublicense the patent (even if a third party never exercises those rights)."
On appeal, the Federal Circuit disagreed. Applying Texas contract law, the court noted that the language of the loan agreement required the security holder to exercise its option in the patent upon default, but it had never actually done so. Thus, although the security holder gained the option to license, assign and enforce the patent upon plaintiff's default, the option alone did not divest plaintiff of its rights in the patent as the patent owner. And because the security holder did not exercise its option to enforce the patent, the plaintiff still held at lease one exclusionary right. As the court explained, "[a] patent owner has exclusionary rights sufficient to meet the injury-in-fact requirement even where, without more, it grants another party the ability to license." The fact that the plaintiff and the security holder had a shared ability to license while a default existed did not divest the plaintiff of all of its exclusionary rights.
In reaching this conclusion, the court distinguished between a licensee who obtains rights in a patent and a patent owner who possesses exclusionary rights as a baseline matter. In the case of a licensee, questions about whether other parties have the ability to license a patent can be a proxy to understand whether the licensee received an exclusionary right. "Those same questions[, however,] do not provide a reasonable proxy for understanding whether a patent owner retains at least one exclusionary right." The court thus held that the plaintiff had constitutional standing to bring suit, explaining that a patent owner may still have exclusionary rights to satisfy standing requirements even where it grants another party the ability to license the patent.
Practice Tip: Patent owners using patents as collateral must understand whether an agreement operates to transfer all rights in a patent and under what conditions. Agreements that include a conditional transfer or option to exercise rights in a patent may secure a patent owner's constitutional standing in future suits, but the devil is in the details. In the context of litigation, both sides should scrutinize the terms of an agreement because Article III standing is incurable if absent at the initiation of suit.
Intellectual Tech LLC v. Zebra Technologies Corporation, Case No. 22-2207 (Fed. Cir. May 1, 2024).
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