Alps South, LLC v. Ohio Willow Wood Co., 787 F.3d 1379

Alps South (Alps) sued Ohio Willow Wood (OWW) for infringement of U.S. Patent No. 6,552,109; jury later found validity and willful infringement.
The patent originally was assigned to Applied Elastomerics, Inc. (AEI); Alps obtained an exclusive license from AEI on August 31, 2008 covering multiple patents including the ’109 patent.
The original license limited Alps to a field-of-use (prosthetic products) and reserved substantial rights to AEI (e.g., AEI could sue if Alps did not; Alps could not settle without AEI’s consent).
Alps sued in its own name without joining AEI; OWW moved to dismiss for lack of statutory standing under 35 U.S.C. § 281. The district court denied dismissal.
While the motion was pending the parties executed a nunc pro tunc amended license (dated January 28, 2010, effective August 31, 2008) removing the field-of-use restriction; Alps later relied on that amendment and a supplemental complaint.
The Federal Circuit held Alps lacked statutory standing at the time suit was filed and that the post-filing nunc pro tunc amendment could not retroactively cure that jurisdictional defect; it reversed, vacated the judgment, and remanded with instructions to dismiss without prejudice.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether an exclusive field-of-use licensee has §281 standing to sue alone	Alps: had the right to exclude and to litigate under its control and expense, so it was a “patentee”	OWW: field-of-use reservation leaves AEI with substantial rights; Alps lacked all substantial rights	Alps lacked statutory standing; field-of-use license insufficient to be treated as assignee
Whether a nunc pro tunc post-filing amendment can cure a pre-filing standing defect	Alps: the amended license is retroactive to the original date and thus cures the defect	OWW: jurisdictional facts must exist at filing; post-filing retroactive assignments can’t confer standing	Nunc pro tunc amendment cannot retroactively cure standing; Enzo controls
Whether a supplemental complaint (after reexamination) or amendment under 28 U.S.C. § 1653 cures standing	Alps: supplemental complaint and reference to retroactive license cures the defect	OWW: §1653 allows correction of allegations, not defective jurisdictional facts; rights must exist at filing	Supplemental complaint/§1653 do not cure defective jurisdictional facts; standing still lacking
Appropriate remedy (dismissal vs allowing joinder or proceeding)	Alps: could proceed under amended license or via joinder	OWW: case must be dismissed for lack of jurisdiction	Court reversed, vacated judgment, remanded with instructions to dismiss Alps’s complaint without prejudice

Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir.) (standing is a jurisdictional question reviewed de novo)
International Gamco, Inc. v. Multimedia Games, Inc., 504 F.3d 1273 (Fed. Cir.) (field-of-use licensees with less than all substantial rights must join patentee)
Propat Int’l Corp. v. Rpost, Inc., 473 F.3d 1187 (Fed. Cir.) (transferee with all substantial rights treated as patentee)
Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245 (Fed. Cir.) (entity granted all substantial rights is considered owner regardless of label)
Mentor H/S, Inc. v. Medical Device Alliance, Inc., 240 F.3d 1016 (Fed. Cir.) (licensee without all substantial rights must sue with patentee)
Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090 (Fed. Cir.) (nunc pro tunc assignments insufficient to confer retroactive standing)
Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359 (Fed. Cir.) (party cannot obtain retroactive title to cure lack of title at filing)
Waterman v. Mackenzie, 138 U.S. 252 (U.S.) (early articulation that a licensee receiving only part of exclusive rights cannot sue alone)
Pope Mfg. Co. v. Gormully & Jeffery Mfg. Co., 144 U.S. 248 (U.S.) (licensee may not sue alone when owner retains part of exclusive rights)
Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826 (U.S.) (28 U.S.C. § 1653 permits amendment of allegations, not defective jurisdictional facts)