Can a non-exclusive patent licensee sue?

Recently, the Court of Appeals for the Federal District clarified this question in its ruling regarding the 2009 WiAV v. Motorola, et al case.

In that case, the United States District Court for the Eastern District of Virginia had dismissed the counts of WiAV’s complaint concerning the Mindspeed Patents for lack of constitutional standing.  The Defendants’ position, with which the District Court agreed, was that WiAV (which owns 2  US Patents and is the exclusive licensee in a specific field of use of seven patents owned by Mindspeed Technologies) lacked constitutional standing to assert the Mindspeed Patents because WiAV was not an exclusive licensee of the patents.  Their argument pointed to the fact that some of the other defendants in the overall lawsuit had limited rights to the same patents.

The Federal Circuit found that, on the question of standing, the analysis should be focused on whether WiAV has shown that it has the right under the patents to exclude the Defendants from engaging in the alleged infringing activity.  If that is the case, then its patent rights under the license  are infringed and, consequently, the Defendants’ conduct causes damages.  The court concluded that WiAV situation satisfies this condition.

As Speedy Federal Circuit Briefs blogger C. Allen Black, Jr. points out in his recent post on the matter, “The ability to sue comes from the ability of the licensee to prevent the infringement and subsequent injury, not the label attached to [the] contract that controls the license.”


Case: WIAV SOLUTIONS LLC, Plaintiff-Appellant, v. MOTOROLA, INC., et al. Defendant-Appellee, 2010-1266, Appeal from the the Eastern District of Virginia in case No. 09-CV-0447, Senior Judge Robert E. Payne. (Decided: December 22, 2010), Before RADER, LINN and DYK.

2 Responses to “Can a non-exclusive patent licensee sue?”

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