• Exclusive Licensee Doesn’t Have Standing, No Matter Who Claims It Does

    by  • July 15, 2008 • patent

    Iris Corp. Berhard v. U.S. is a fairly routine analysis of an exclusive licensee’s standing to sue for patent infringement. Of course, an exclusive licensee only has standing if the patentee has conveyed all substantial rights in the patent to the licensee. There’s a bit of a twist here, though; the patent owner had indeed filed suit, but the defendant United States claimed that the U.S. exclusive licensee was the proper plaintiff. A fairly easy decision for the court:

    Under the express terms of this agreement, [patentee] IRIS Malaysia was acknowledged to be the owner of, as well as the party responsible for maintaining, the ‘412 patent and retained a right to develop, market, and sell the invention claimed by the ‘412 patent. Further, [licensee] Williams’ license was set to expire seven years before the ‘412 patent’s expiration date, reverting all rights in the patent to IRIS Malaysia for that time period. So too, IRIS Malaysia had the right to terminate the agreement if Williams failed to pay royalties or achieve certain production milestones in specified timeframes. Finally, both IRIS Malaysia and Williams had the right to sue to enforce the patent on the date this suit was filed.

    Thus, the plaintiff had standing. Partial victory for the United States, though; exclusive licensee Williams was joined as a plaintiff.

    Iris Corp. Berhard v. U.S. available here.