Friday, September 18, 2009

Asymmetrx v. Biocare Medical

The Federal Circuit determined that the plaintiff in this matter did not have standing to sue since it did not have “all substantial rights” to the patent at issue. The parties and the district court had not addressed this concern, but the court noted that “an appellate court must satisfy itself that it has standing and jurisdiction whether or not the parties have raised them.” (p. 6.)

The court provided background on when a licensee can have standing to sue in its own name and concluded by stating that “the critical determination regarding a party’s ability to sue in its own name is whether an agreement transferring patent rights to that party is, in effect, an assignment or a mere license.” (p. 8.) The difference hinges on the extent of the rights retained by the patentee. In this case, the patentee retained several substantial interests, including:

  • the right to sue for infringement;
  • the right to make and use the patented product, p63 antibodies, for its own academic research purposes;
  • the right to provide the p63 antibodies to non-profit or governmental institutions for academic research purposes;
  • a great deal of control over aspects of the licensed products within the commercial diagnostic field;
  • specifying that manufacture had to take place in the United States during the period of exclusivity; and
  • maintaining input on sublicensing and receiving a share of those royalties. (p. 10-11.)

In addition, the licensee had “to cooperate with [the patentee] to maintain the patent rights, so as to enable [it] to apply for, to prosecute, and to maintain patent applications and patents in [its] name.” (p. 11.) The patentee, under the agreement, also had a right to join any suit, approve settlements, and brings its own infringement action. The court found that “[w]hile any of these restrictions alone might not have been destructive of the transfer of all substantial rights, their totality is sufficient to do so.” (p. 12.) The complete opinion is here.