Monday, December 7, 2009

Tyco Healthcare v. Ethicon Endo-Surgery

The district court dismissed without prejudice this patent infringement case because the plaintiff failed to prove it had ownership of the patents and therefore standing to sue. The defendant cross-appealed, contending that the dismissal should have been without prejudice. The Federal Circuit affirmed.

The standing issue turned on a contractual provision in an agreement that assigned certain patents to the plaintiff, but excluded patents that were “related to pending litigation.” Because the plaintiff failed to provide evidence regarding any pending litigation, it failed to meet its burden regarding standing.

On the with/without prejudice issue, the court noted that dismissal for lack of standing is “ordinarily” without prejudice and found no abuse of discretion by the district court. It is also worth noting that this issue was not raised until trial, and the court noted that the work done for the case could be used in a subsequent proceeding.