Property, intangible

Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1368 (Fed. Cir. 2008). Note that this license is limited to “exploiting” and apparently without right to sublicense. Perhaps the distinction is that the US subsidiary’s claim in Mars was of an implied license, a situation where one is rightfully skeptical of the terms.

So I think this is a significant change in the law of standing, but one I’m in favor of. It was overly technical to put licenses in buckets of “exclusive” or “nonexclusive” when, actually, the world isn’t so simple. Complex corporate structures nowadays require intracompany licenses, which will generally be nonexclusive so other sister companies may also practice a patent.  The license terms may also be expansive, in contemplation of a variety of ways that a subsidiary might need to exploit the patent rights and out of reasonable caution over relying on implied rights, such as exhaustion. But those licenses do not necessarily mean that the corporate family as a whole will tolerate infringement.  This test is simple and fundamental – whether the accused could otherwise obtain the rights elsewhere.  Combined with the prudential considerations that ensure that a defendant will not be subject to more than one suit for infringement of the same patent, the court has struck the appropriate balance of all interests.

As an aside – WiAV named patent owner Mindspeed as “defendant patent owner” to satisfy prudential standing. Can anyone fill me in on why Mindspeed would be one the defendant’s side of the caption? Is this a clever way to solve the prudential standing problem when one has an unwilling patent owner?

WiAV Solutions LLC v. Motorola, Inc., No. 2010-1266 (Fed. Cir. Dec. 22, 2010).