The Coinco strategy is an attack on standing because the company has shuffled patent ownership around between corporate family members. If the plaintiff is not the family member that owns the patent, then it can’t bring the suit.
In Advanced Micro Devices, Inc. v. Samsung Electronics Co., Ltd., the patent-in-suit was owned by a wholly-owned subsidiary, not the plaintiff, at the time of the operative complaint:
|WHEREAS, upon the filing of AMD’s First Amended Complaint on May 1, 2008, which added claims of infringement against Samsung relating to the Purcell ’434 patent, AMD did not own the Purcell ’434 patent and instead the Purcell ’434 patent was owned by a wholly owned subsidiary of plaintiff ATI Technologies, ULC known as ATI International SRL.|
Companies can try to argue around it with claims of exclusive licensing:
|WHEREAS, the parties disagree whether ATI International SRL’s ownership of the Purcell ’434 patent at the time AMD filed its First Amended Complaint impacted AMD’s standing to assert the Purcell ’434 patent in this action, in that AMD maintains ATI Technologies, ULC was an implied exclusive licensee of the Purcell ’434 patent that possessed standing to sue for infringement of the Purcell ’434 patent when the First Amended Complaint was filed and Samsung maintains that plaintiffs AMD and ATI Technologies, ULC lacked standing to assert the Purcell ’434 patent on May 1, 2008.|
But it can be a tough go. Here, in a rare litigation tactic called “cooperation,” the parties stipulated to dismissing the count for infringement of the ‘434 patent and refiling it, with AMD conceding all damages for infringement of the patent before the refiling:
|IT IS HEREBY STIPULATED AND AGREED, by and between AMD and Samsung that:
1. Samsung consents, pursuant to Federal Rule of Civil Procedure 15(a)(2), to AMD’s filing a Second Amended Complaint that voluntarily dismisses the infringement claims relating to the Purcell ’434 patent without prejudice. The Second Amended Complaint is attached hereto as Exhibit A.
2. Samsung consents, pursuant to Federal Rule of Civil Procedure 15(a)(2), to AMD’s filing, immediately after the filing of the Second Amended Complaint, of a Third Amended Complaint that asserts infringement claims against Samsung relating to the Purcell ’434 patent. The Third Amended Complaint is attached hereto as Exhibit B.
3. AMD will not seek damages for infringement of the Purcell ’434 patent occurring prior to the date of filing its Third Amended Complaint.
4. The parties agree that all patents asserted in this action by plaintiffs AMD and ATI Technologies, ULC will proceed on the same track and no dates in the Court’s schedule will be altered as a result of this stipulation.
Advanced Micro Devices, Inc. v. Samsung Electronics Co., Ltd., No. CV-08-0986-SI (N.D. Cal. March 3, 2010).
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