Patent Infringement

By LandMark Publications

THIS CASEBOOK contains a selection of decisions by the U. S. Court of Appeals for the Federal Circuit that analyze and discuss issues surrounding claims of patent infringement. The selection of decisions spans from 2015 to the date of publication.Only parties with exclusionary rights to a patent may bring suit for patent infringement. See Morrow v. Microsoft Corp., 499 F.3d 1332, 1339 (Fed.Cir.2007); WiAV Sols. LLC v. Motorola, Inc., 631 F.3d 1257, 1264-65 (Fed.Cir.2010). Luminara Worldwide v. Liown Electronics Co. Ltd., 814 F. 3d 1343 (Fed. Cir. 2016).If a party (exclusive licensee) has "all substantial rights" to a patent, it "may be deemed the effective 'patentee' under 35 U.S.C. ? 281," and thus may maintain an infringement suit in its own name, without joining the patentee. Prima Tek II, LLC v. A-Roo Co., 222 F.3d 1372, 1377 (Fed.Cir.2000). If not, however, an exclusive licensee must join the patentee to bring suit. [Footnote omitted.] This joinder requirement exists for two reasons. First, joinder protects the alleged infringer from facing multiple lawsuits on the same patent. Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336, 1343 (Fed.Cir.2006). Second, joinder protects the patentee from losing substantial rights if its patent claims are invalidated or the patent rendered unenforceable in an action in which it did not participate. Id. Luminara Worldwide v. Liown Electronics Co. Ltd., ibid.Because one purpose of the joinder requirement is to protect the alleged infringer from multiple lawsuits, the transfer of the right to sue for infringement is critical. See Alfred E. Mann Found. for Sci. Research v. Cochlear Corp., 604 F.3d 1354, 1361 (Fed.Cir.2010) (explaining that the right to sue is frequently "the most important consideration"); Aspex Eyewear, 434 F.3d at 1342 (describing the right to sue as "[a] key factor"). If the patentee retains the right to sue, the infringer could face multiple suits for the same alleged infringement--in one suit defending itself against the patentee, and in another defending itself against the exclusive licensee. To prevent this, we require joinder of the patentee if it has retained the right to sue for infringement. Luminara Worldwide v. Liown Electronics Co. Ltd., ibid.The second purpose of joinder is to protect the patentee from losing substantial rights if its claims are invalidated or the patent is rendered unenforceable in an action in which it did not participate. Aspex Eyewear, 434 F.3d at 1343. Thus, an exclusive licensee that does not have "all substantial rights" to a patent must join the patentee to bring suit. For example, if the patentee has retained the right to freely license the patent, it stands to lose substantial rights if the claims are held invalid or the patent held unenforceable. . . .

• Format: Paperback
• Language: English
• ISBN: 1520626185
• ISBN13: 9781520626185
• Release Date: February 2017
• Publisher: Independently published
• Length: 578 Pages
• Weight: 2.11 lbs.
• Dimensions: 9.0" x 1.3" x 6.0"