655 F.3d 1266
Fed. Cir.2011Background
- TPMS patents at issue: '496 and '966 are divisionals of the Parent Application; '516 is a separate invention not related to the Parent Application.
- Animatronics assigned the Parent Application rights to ME via August 5, 1993 Patent Assignment; carve-out excludes Animatronics Proprietary Inventions.
- Animatronics and ME entered into Development Agreement; disputes over ownership of TPMS patents arose in 1997.
- Inventors executed June–July 2007 assignments purporting to transfer patents to MHL Tek; district court later addressed standing for '496, '966, and '516.
- District court held no standing for '496 and '966; it held '516 was outside the assignment, granting summary judgment of non-infringement; this appeal concerns standing and infringement for the ’516 patent.
- The Federal Circuit ultimately affirmed the district court on standing for '496 and '966, reversed on standing for '516, and vacated the summary-judgment ruling for '516.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether MHL Tek has standing to sue for infringement of the '496 patent | MHL Tek argues the '496 is within the Parent Application and not subject to carve-out | Defendants contend '496 was carved out and never assigned to ME/MHL Tek | MHL Tek lacks standing for the '496 patent |
| Whether MHL Tek has standing to sue for infringement of the '966 patent | ‘966 is within the carved-out scope or not properly assigned | '966 claims fall under carve-out; not assigned to ME/MHL Tek | MHL Tek lacks standing for the '966 patent |
| Whether MHL Tek has standing to sue for infringement of the '516 patent | '516 is within the Parent Application inventions | '516 not within the Parent Application; not assigned to Animatronics/ME | MHL Tek lacks standing; district court’s non-infringement ruling vacated for '516 |
Key Cases Cited
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (standing requires injury, causation, and redressability)
- Morrow v. Microsoft Corp., 499 F.3d 1332 (Fed. Cir. 2007) (injury in fact for patent infringement exists in exclusionary rights holder)
- Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305 (Fed. Cir. 2010) (standing burden on patent infringement plaintiff)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims define the invention; specification informs scope)
- Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc: written description sufficiency; required for broad claims)