Patent Co-Owner’s Right to Refuse Lawsuit Upheld by Federal Circuit

• The Federal Circuit denied an en banc review of its earlier decision in STC.UNM v. Intel Corp. regarding a patent infringement lawsuit.
• The case was dismissed because one co-owner of the patent refused to join the lawsuit, and the court ruled it could not force the co-owner to participate.

Background of the Case

• The patent concerned lithographic patterning techniques used in semiconductor manufacturing.
• The district court granted summary judgment for the defendant (Intel).

District Court Findings

• The patent was unenforceable for most of its life because it failed to comply with a terminal disclaimer.
• The rest of the case was dismissed due to lack of standing, since the plaintiff did not include the patent’s co-owner in the lawsuit.

Federal Circuit Decision

• The Federal Circuit affirmed the district court’s ruling.
• It rejected the plaintiff’s claim that the co-owner could be forced to join under Rule 19(a) of the Federal Rules of Civil Procedure.
• The court refused to rehear the case en banc, with a 6–4 vote.

Legal Principle Applied

• In patent infringement cases, all patent co-owners must join the lawsuit to establish standing.

Two Recognized Exceptions

1. If a patent owner grants an exclusive license and then refuses to join a suit brought by the licensee.
2. If a co-owner previously waived the right to refuse participation, allowing other co-owners to force them into the suit.

• The court determined neither exception applied in this case.

Dissenting Opinion

• Judge Newman argued that the co-owner was a necessary party and should be joined under Rule 19(a).

Majority Holding

• The majority ruled that a patent co-owner’s right to block an infringement suit is a substantive right, which overrides the procedural rule allowing involuntary joinder under Rule 19(a).