CASE OF THE WEEK

Lone Star Silicon Innovations LLC v. Nanya Technology Corporation, Appeal No. 2018-1581, -1582 (Fed. Cir. May 30, 2019)

In the only precedential patent case this week, the Federal Circuit addressed whether a party who is not a patentee or an exclusive licensee has standing to sue for patent infringement.

Advanced Micro Devices, Inc. (“AMD”), the original assignee of the patents-in-suit, entered into an agreement with Lone Star that purported to transfer “all right, title and interest” in the patents to Lone Star. However, the agreement limited Lone Star’s rights in several ways, including allowing AMD to control how Lone Star asserts or transfers the patents, prohibiting Lone Star from practicing the patents, and allowing AMD to share in monetization efforts. Based on these limitations, the district court concluded that Lone Star did not obtain all rights in the patents, and therefore could not sue in its own name. As such, the district court dismissed the cases, even though Lone Star had asked to join AMD as a necessary party under FRCP 19. As to the joinder request, the district court concluded that allowing Lone Star to join AMD so that it could continue its lawsuit would unfairly prejudice defendants

Written by: Scott Eads and Nika Aldrich, Schwabe, Williamson & Wyatt

Contributors: Erin Forbes