676 F. App'x 967
Fed. Cir.2017Background
- NOV sued Omron for infringement of U.S. Patent No. 5,474,142 (’142 Patent). Omron challenged NOV’s standing to sue.
- USPTO records showed the ’142 Patent had been assigned from inventor Bobbie Bowden to Wildcat Services, L.P., then to MD/Totco (a Varco, L.P. division); no assignment to NOV appeared in USPTO records.
- NOV initially relied on an Assistant Secretary’s Certificate and refused to produce the underlying Asset Contribution Agreement (ACA); after motions, NOV produced the ACA.
- The ACA purports to transfer Varco, L.P.’s “physical assets” to National Oilwell, L.P. and includes an Exhibit A spreadsheet; the spreadsheet shows a “0” entry where MD/Totco’s patents would appear, and only Varco LP Brandt had a nonzero patents entry.
- The district court held NOV lacked standing because the ACA did not transfer the ’142 Patent from MD/Totco to NOV, dismissed the case with prejudice, and awarded attorney fees to Omron for NOV’s withholding of the ACA and litigation conduct.
- The district court also granted Omron summary judgment on invalidity and noninfringement; the Federal Circuit affirmed the standing dismissal and fee award but vacated the merits ruling for lack of jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Did NOV have standing under §281 to sue for infringement of the ’142 Patent? | NOV argued the ACA (and related documents) transferred the patent rights to NOV, and the Assistant Secretary’s Certificate confirmed the transfer. | Omron argued the ACA did not effect a present assignment, limited transfers to “physical assets,” and Exhibit A shows MD/Totco’s patents were not transferred (entry = 0). | NOV lacked standing: the ACA’s plain reading did not transfer the ’142 Patent from MD/Totco to NOV. |
| Was dismissal for lack of standing properly entered with prejudice? | NOV asserted it could cure any standing defects and that dismissal without prejudice was appropriate. | Omron pointed to inconsistent ownership positions in prior litigations and NOV’s conduct as showing dismissal with prejudice was warranted. | Dismissal with prejudice was not an abuse of discretion given NOV’s inconsistent representations and prior notice of standing issues. |
| Were attorney fees warranted under Octane Fitness? | NOV argued fees were excessive and should be limited to the narrow period it withheld the ACA. | Omron argued fees were warranted for the period NOV withheld the ACA and for litigation conduct after notice of lack of standing. | Fee award was appropriate and not an abuse of discretion; fees were limited to the period starting when NOV withheld the ACA. |
| Could the district court decide Omron’s summary judgment on invalidity and noninfringement after dismissing for lack of standing? | NOV did not oppose merits adjudication as necessary. | Omron had the merits ruling in its favor. | Merits ruling vacated: without jurisdiction (no standing), the district court could not adjudicate validity or infringement. |
Key Cases Cited
- Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283 (Fed. Cir. 2016) (standing to sue for patent infringement reviewed de novo; §281 successor-in-title principles)
- Sicom Sys., Ltd. v. Agilent Techs., Inc., 427 F.3d 971 (Fed. Cir. 2005) (standing must exist when suit is brought; plaintiff bears burden)
- Sky Techs. LLC v. SAP AG, 576 F.3d 1374 (Fed. Cir. 2009) (assignments of patent interests must be in writing under 35 U.S.C. §261)
- Fieldturf, Inc. v. Sw. Recreational Indus., Inc., 357 F.3d 1266 (Fed. Cir. 2004) (dismissal for lack of standing ordinarily without prejudice; dismissal with prejudice appropriate when plaintiff unlikely to cure defect)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) (exceptional-case standard for awarding fees; totality of circumstances)
- Steel Co. v. Citizens for a Better Environment, 523 U.S. 83 (1998) (court must resolve jurisdictional issues before reaching merits)
- Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832 (Fed. Cir. 2009) (vacating merits decision when plaintiff lacked standing)
- Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014) (abuse-of-discretion review for fee awards)
- DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284 (Fed. Cir. 2008) (state law governs contract interpretation generally)
- Alps S., LLC v. Ohio Willow Wood Co., 787 F.3d 1379 (Fed. Cir. 2015) (patentee/successor-in-title standing principles)
- H.R. Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378 (Fed. Cir. 2002) (applying regional circuit law to whether dismissal should be with prejudice)
- Club Retro, L.L.C. v. Hilton, 568 F.3d 181 (5th Cir. 2009) (abuse-of-discretion standard for dismissal with or without prejudice)
- BLGH Holdings LLC v. enXco LFG Holding, LLC, 41 A.3d 410 (Del. 2012) (contract interpretation under Delaware law; unambiguous terms given plain meaning)