Enzo APA & Son, Inc., Aero Precision Products, Inc., Cappuccino Foam, Inc., Do-menico APA, Giuseppe APA, Vincenzo APA, and Victoria Arduino L’Originale, (Enzo) appeal the judgment of the United States District Court for the Southern District of Florida in favor of Geapag A.G. and Nuova Faema, S.p.A. (Geapag). Specifically, Enzo appeals the court’s grant of the motions for partial summary judgment holding (1) that Patent No. 4,715,274 was not invalid and was infringed by Enzo, (2) that a permanent injunction should issue against Enzo, and (3) that Geapag had standing to sue. Geapag cross appeals the court’s judgment that infringement was not willful. We reverse the court’s grant of the motion for partial summary judgment on the issue of standing and vacate the court’s entry of judgments on the merits.
BACKGROUND
This controversy began on January 27, 1993, when Enzo brought an action for declaratоry judgment against Geapag, seeking a judgment of patent invalidity and nonin-fringement of Patent No. 4,715,274 (the ’274 patent). Shortly thereafter, Geapag brought a separate action against Enzo for patent infringement and sought injunctive relief and damages. The cases were consolidated in Florida district court at the parties’ request.
In October 1993, Enzo filed a request for reexamination of the ’274 patеnt before the United States Patent and Trademark Office
In April 1995, the court granted the motion for partial summary judgment on the issue of standing, holding that Geapag had standing, and ordered a hearing on the issue of invalidity and infringement. After the hearing, the court held the `274 patent not invalid and infringed. On Geapag's motion in April 1996, the court issued a permanent injunction against Enzo and granted Nuova Faema S.p.A.'s motion for judgment of dismissal with prejudice and entry of a protective order. The court denied Nuova Faema S.p.A.'s motion for sanсtions against Enzo. Finally, the court found, sua sponte, that infringement was not willful. This appeal followed.
DISCUSSION
On appeal, En~o objects, inter alia, that Geapag lacked standing to bring an action under U.S. Patent No. 4,715,274 (the `274 patent), because Geapag was a nonexclusive licensee at the time the claims and counterclaims were filed on May 14, 1993 and February 26, 1993. We review standing de novo. See Ritе-Hite Corp. v. Kelley Co.,
In order to adjudicate Enzo's appeal on the standing issue, we must trace the chain of title to the patent. Application for the `274 patеnt was filed on January 31, 1986, claiming priority from two Italian patent applications-19311 A/85 and 22947/85[U} (the Italian applications). The `274 patent issued on December 29, 1987, with Luciano Paoletti named as the inventor and Spidem, S.r.L. (Spidem) named as the assignee of record.
On December 4, 1987, Spidem allegedly granted an exclusive license to Joplin and Knox Ltd. (J & K) under the Italian applications (the Spidem-J & K License). As there is no copy of the Spidem-J & K License in the record, we do not know whether this licеnse extended to the `274 patent. However, this is of no moment. Even if the Spi-dem-J & K License extended to the `274 patent, the subsequent license granted by J & K to Geapag did not. J & K granted an exclusive sublicense to Geapag tо make and sell product under the Italian applications (the J & K-Geapag License). By its terms, the J & K-Geapag License does not extend, either implicitly or explicitly, to related or corresponding foreign patent applications or any patents maturing therefrom. In fact, it is specifically limited to the Italian applications and two other Italian patent applications listed on the face оf the agreement.
It follows that on February 3, 1988, when Geapag granted Nuova Faema S.p.A., M. Schaerer AG, and Cafag Kaffeemaschinen AG, nonexciusive sublicenses to use product, and a limited right to sell product under a number of related patents including the `274 patent, it did not actually have the power to convey those rights.
It was not until well after the various actions and counteractions of bоth Enzo and Geapag were filed in district court, that Geapag and Spidem sought to clear the chain of title to the `274 patent retroactively. On October 15, 1993, Geapag and Spidem entered intо an agreement through which the Spidem-J & K and the J & K-Geapag Licenses were canceled and an exclusive licensing arrangement was entered into between Spidem and Geapag (the Spidem-Gеapag License).
By its terms, the Spidem-Geapag License is retroactive, effective as of December 4, 1992, thus predating the first filed action. It grants Geapag the exclusive right to make, distribute, usе and sell the products and methods under the originally identified Italian applications and "related and corresponding Italian and foreign patent applications and all patents maturing thеrefrom and extensions thereof', inter alia, the `274 patent. Geapag alleges that the Spidem-Geapag License was a memorialization of the pre-suit oral agreement of the рarties. The Spidem-Geapag License is the only asserted written transfer of rights to Geapag of record with respect to the `274 patent.
Accordingly, an assignee is the paten-tee and has standing to bring suit for infringement in its own name. See 35 U.S.C. § 100(d) (1994). The assignment of legal title in a patent can be conveyed in the form of the entire patent, an undivided part or share of the entire patent, or all rights under thе patent in a specified geographical region of the United States (a so called “grant”). See Waterman v. Mackenzie,
We have accorded standing, in certain limited circumstances, where аll substantial rights under the patent have been transferred in the form of an exclusive license, rendering the licensee the virtual assignee. Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.p.A.,
It is clear from the record that there was no writing transferring all substantial rights under the ’274 patent to Geapag at the time it brought suit. Thus, we must then determine whether an oral exclusive license or a nunc pro tunc license executed after suit is brought, or some combination of the two, can confer standing. We сonclude that under any of these circumstances the holder of title must be joined in order to confer standing.
First, Geapag argues that it should be of no consequence that the rights were not memorialized in writing prior to entering into the Spidem-Geapag License. It points out that a license may be written, verbal, or implied. While we acknowledge that a license may be written, verbal, or implied, if the license is to be considered a virtual assignment to assert standing, it must be in writing. The limited exception we have provided conferring standing on licensees is restricted to virtual assignees. As such, the licensing arrangement conferring such must, logically, resemble an assignment in both form and substance. Under the 35 U.S.C. § 261 (1994), “[ajpplications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.” If we were to expand the exception to include verbal licenses, the exception would swallow the rule. Parties would be free to engage in revisionist history, circumventing the certainty provided by the writing requirеment of section 261 by claiming to be patentee by virtue of a verbal licensing arrangement.
Second, Geapag argues that the nunc pro tunc Spidem-Geapag License, which was entered into October 15, 1993, and made effective December 4, 1992, renders it a virtual assignee for the purposes of standing. However, as has been aptly stated, nunc pro tunc assignments are not sufficient to confer retroactive standing on the basis that:
As a general matter, parties should possess rights before seeking to have them vindicated in court. Allowing a subsequent assignment to automatically cure a standing defect would unjustifiably expand the number of people who are statutorily authorized to sue. Parties could justify the premature initiation of an action by averring to the court that their standing through аssignment is imminent. Permitting non-owners and licensees the right to sue, so long as they eventually obtain the rights they seek to have redressed, would enmesh the judiciary in abstract disputes,*1094 risk multiple litigation, and provide incеntives for parties to obtain assignment in order to expand their arsenal and the scope of litigation. Inevitably, delay and expense would be the order of the day.
Procter & Gamble Co. v. Paragon Trade Brands, Inc.,
Accordingly, we reverse the court’s grant of the motion for partial summary judgment on the issue of standing. Having found Geapag to be without standing for failing to join the patentee, it follows that the court lacks jurisdiction over Enzo’s declaratory judgment claims under Fed.R.Civ.P. 19 for nonjoinder. Thus, we vacate the court’s entry of judgments on the merits.
REVERSED AND VACATED.