995 F.3d 969
Fed. Cir.2021Background
- Crocs owns U.S. Design Patent No. D517,789 (foam-molded clog design) and sued U.S.A. Dawgs for infringement; U.S.A. Dawgs requested an inter partes reexamination at the USPTO.
- The PTO examiner rejected the patent claim; the Patent Trial and Appeal Board reversed the rejection, and U.S.A. Dawgs appealed to the Federal Circuit.
- While the Board appeal was pending, U.S.A. Dawgs filed Chapter 11 in Nevada and sold all assets to Dawgs Holdings; the sale agreement broadly transferred "all right, title and interest" and preserved Crocs’s retained rights for post-closing infringement claims.
- Dawgs Holdings assigned the asserted claims and expressly the inter partes reexamination requester role to Mojave; U.S.A. Dawgs dissolved but retained limited winding-up powers under Nevada law.
- Mojave sought to be substituted as the real party-in-interest before the Board; the Board dismissed the request as insufficient and untimely under 37 C.F.R. § 41.8(a). On appeal, U.S.A. Dawgs and Mojave moved under Fed. R. App. P. 43(b) to substitute Mojave as successor-in-interest.
- The Federal Circuit held Mojave is the successor-in-interest with Article III standing, concluded the Board erred in denying substitution, and granted substitution on appeal rather than remanding.
Issues
| Issue | Crocs' Argument | U.S.A. Dawgs / Mojave Argument | Held |
|---|---|---|---|
| Whether Mojave is successor-in-interest to U.S.A. Dawgs re: requester rights | Sale did not transfer requester interest; Agilent controls (unclear transfer) | Assignments (bankruptcy sale + express reassignment) transferred all assets and expressly included PTO proceedings | Mojave is successor-in-interest; assignments conveyed requester rights |
| Whether Board properly denied substitution as untimely under 37 C.F.R. § 41.8(a) | Mojave delayed nearly a year; Board correctly dismissed as untimely | § 41.8(a) addresses conflicts/estoppel, not substitution; no rigid time bar to substitution on appeal | Board erred; § 41.8(a) does not preclude substitution here |
| Whether requester’s right to appeal is assignable | Statutory structure disfavors mere privies; appeal right nonassignable | Federal common-law rule permits assignment of causes of action, especially when whole business/assets transferred | Right to appeal may be transferred when part of transfer of entire business/assets; statute does not prohibit it |
| Whether Mojave has Article III standing | Mojave lacks standing because it faces no potential infringement liability | Bankruptcy sale preserved retained rights and assets remain potentially liable; thus Mojave faces possible suits | Mojave has standing: potential infringement exposure is traceable and redressable |
| Whether a notice of appeal was required from Mojave | Mojave failed to file notice and cannot appeal | U.S.A. Dawgs filed a protective notice of appeal while it retained winding-up authority | Protective notice filed by U.S.A. Dawgs sufficed to confer jurisdiction |
Key Cases Cited
- Agilent Techs., Inc. v. Waters Techs. Corp., 811 F.3d 1326 (Fed. Cir. 2016) (discussing successor-in-interest and ambiguity when assignments are unclear)
- Sprint Commc'ns Co. v. APCC Servs., Inc., 554 U.S. 269 (2008) (recognizing general assignability of federal causes of action)
- Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24 (1923) (holding assignment of past-infringement suit alone may not permit assignee to sue without joining patent owner)
- Vaillancourt v. Becton Dickinson & Co., 749 F.3d 1368 (Fed. Cir. 2014) (patent owner who transferred patent cannot appeal when transferee holds all rights; substitution not requested there)
- Mullaney v. Anderson, 342 U.S. 415 (1952) (permitting appellate substitution under special circumstances without remand)
- Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826 (1989) (reaffirming principles allowing party changes for effective judicial administration)