IGT v. Aristocrat Technologies Inc.
2:15-cv-00473
D. Nev.Jun 29, 2015Background
- Plaintiff IGT sued Aristocrat Technologies, Inc. (ATI) alleging patent-related claims; two Aristocrat affiliates — Aristocrat Technologies Australia Pty. Ltd. (ATA) and Aristocrat International Pty. Ltd. (AI) — moved to intervene.
- ATA holds legal title to several patents at issue; AI holds an exclusive license from ATA and in turn exclusively licensed the patents to ATI.
- ATA and AI contend they retain certain enforcement rights and did not transfer all substantial patent rights to ATI.
- Intervention was sought under Fed. R. Civ. P. 24 to protect ATA/AI’s proprietary interests and to ensure their ability to enforce patent rights.
- The Court considered timeliness, protectable interest, potential impairment of interests, and adequacy of existing representation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether intervention is timely | IGT did not oppose intervention; timing not disputed | ATI did not oppose timing; no prejudice shown | Motion timely; granted |
| Whether ATA/AI have a significant protectable interest | ATA/AI claim legal title/license rights in patents and interest in preserving patent validity | ATI contends it is exclusive licensee and represents the defense | Court found ATA/AI have significant protectable interests as patent holders/owners |
| Whether disposition may impair intervenors’ ability to protect interests | ATA/AI argued a judgment could bind them and harm patent reputation/rights | ATI argued it represents the patent interests as licensee | Court held disposition could impair ATA/AI and intervention appropriate to avoid that risk |
| Adequacy of existing parties’ representation | ATA/AI argued ATI may not adequately represent owners because ATI lacks all substantial rights | ATI argued alignment of interests with ATA/AI | Court found representation may be inadequate because ATI is not full patentee and retained rights justify joinder; intervention necessary |
Key Cases Cited
- Citizens for Balanced Use v. Montana Wilderness Ass'n, 647 F.3d 893 (9th Cir. 2011) (sets four-part test for intervention as of right)
- Prete v. Bradbury, 438 F.3d 949 (9th Cir. 2006) (articulates intervention factors)
- Wilderness Society v. U.S. Forest Service, 647 F.3d 1173 (9th Cir. 2011) (Ninth Circuit policy favors intervention)
- Abbott Labs v. Diamedix Corp., 47 F.3d 1128 (Fed. Cir. 1995) (privity can bind nonparty patent owners)
- A.L. Smith Iron Co. v. Dickson, 141 F.2d 3 (2d Cir. 1944) (patentee’s interest in preserving patent reputation from invalidity findings)
- Arakaki v. Cayetano, 324 F.3d 1078 (9th Cir. 2003) (minimal burden to show potential inadequacy of representation)
- Trbovich v. United Mine Workers, 404 U.S. 528 (Sup. Ct.) (standing and representation principles for intervenors)
- Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp., 604 F.3d 1354 (Fed. Cir. 2010) (distinguishing exclusive licensees lacking all substantial rights)
- Morrow v. Microsoft Corp., 499 F.3d 1332 (Fed. Cir. 2007) (patentee typically joined when licensee lacks full exclusionary rights)