Alfred E. Mann Found. For Scientific Research v. Cochlear Corp.

• Decision Date: 14 May 2010
• Docket Number: No. 2009-1447.,2009-1447.
• Parties: ALFRED E. MANN FOUNDATION FOR SCIENTIFIC RESEARCH, Plaintiff-Appellant,v.COCHLEAR CORPORATION and Cochlear Ltd., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

604 F.3d 1354

ALFRED E. MANN FOUNDATION FOR SCIENTIFIC RESEARCH, Plaintiff-Appellant,v.COCHLEAR CORPORATION and Cochlear Ltd., Defendants-Appellees.

No. 2009-1447.

United States Court of Appeals, Federal Circuit.

May 14, 2010.

COPYRIGHT MATERIAL OMITTED

Brian G. Bodine, Lane Powell PC, of Seattle, WA, argued for plaintiff-appellant. With him on the brief were Peter Gergely, Merchant & Gould P.C. of Denver, CO; and Malcolm J. Romano, Alfred E. Mann Foundation for Scientific Research, of Santa Clarita, CA.

Bruce G. Chapman, Connolly Bove Lodge & Hutz LLP, of Los Angeles, CA, argued for defendants-appellees. With him on the brief were Manuel C. Nelson and Keith D. Fraser.

Before MICHEL, Chief Judge, NEWMAN, and DYK, Circuit Judges.

MICHEL, Chief Judge.

The Alfred E. Mann Foundation for Scientific Research (“AMF”) is a research organization interested in developing new medical technologies, including cochlear implants. Cochlear Corporation and Cochlear Ltd. (collectively, “Cochlear”) are companies that build cochlear implants for use in human patients. AMF sued Cochlear for patent infringement, and the district court dismissed the case for lack of standing to sue. At issue is a 2004 agreement between AMF and Advanced Bionics (“AB”), another company that builds cochlear implants, granting AB an exclusive license to the patents that AMF later accused Cochlear of infringing. Cochlear contends, and the district court held, that this agreement was a virtual assignment of the patents-in-suit to AB, giving AB the sole right to sue for infringement of those patents. We find that AMF is the owner of the patents-in-suit because it retained substantial rights in the patents, including the right to sue for infringement if AB declines to do so. Accordingly, we reverse the district court's holding that AMF lacked standing to sue, and we remand for proceedings consistent with this opinion.

I. BACKGROUND

In the mid-1980s, Alfred E. Mann, an inventor of medical devices, founded AMF to develop new medical technologies. AMF conducts research aimed at developing implantable medical devices that can improve health, safety, and quality of life. Among these technologies are cochlear implants, devices that are placed in the inner ear to allow profoundly deaf or severely hard-of-hearing patients to regain their ability to hear. Cochlear implants are sometimes referred to as “bionic ears.” The patents-in-suit, U.S. Patent No. 5,609,616 (“the '616 patent”) and U.S. Patent No. 5,938,691 (“the '691 patent”), disclose and claim cochlear implants and related technologies used to improve hearing. These patents were issued to researchers at AMF, and those researchers assigned the patents to AMF.

As a source of funding for its research work, AMF licenses its patents to for-profit companies that build medical devices. Here, the '616 patent and the '691 patent were licensed to AB under a license agreement entered into in 2004. The license agreement granted AB the following rights:

• The exclusive, worldwide right to make, have made, use, lease, offer to lease, sell, offer to sell, and otherwise commercially exploit the '616 and ' 691 patents for the full term of those patents.

• The first right to sue to enforce the patents when either AMF or AB learns of any alleged, actual, suspected, potential, or threatened infringement, misappropriation, or unauthorized use. This right to choose whether to sue includes the right to control any litigation commenced by AB, including the right to choose counsel and the right to make unilateral decisions about litigation and settlement strategy and tactics.

• The right to settle any AB-controlled litigation on any terms (with or without payment of money) without any prior authorization by AMF. Exercise of this right does require first consulting with AMF.

• The right to grant sublicenses,¹ as long as the sublicenses include specified confidentiality requirements; particular reporting, inspection, and audit rights; provisions terminating the sublicense if the license is terminated; and the payment of specified pass-through royalties to AMF.

In addition, AMF retained several rights and obligations under the license agreement:

• The secondary right to sue to enforce the patents when either AMF or AB finds out about any alleged, actual, suspected, potential, or threatened infringement, misappropriation, or unauthorized use and when AB declines to exercise its right to sue, described above. This secondary right to sue includes the right to control any litigation commenced by AMF, including the right to choose counsel and the right to make unilateral decisions about litigation and settlement strategy and tactics.

• The apparent obligation to pay maintenance fees on the patents-in-suit.

• The right to some significant portion of the recovery in infringement suits, whether initiated by AB or by AMF.

• The apparent right to grant licenses to settle litigation initiated by AMF.

• The right to prevent AB from assigning its rights to anyone else except under certain specified conditions. AMF's consent to AB's assignment of its rights cannot be unreasonably withheld.

• The right to terminate the license agreement and any sublicenses if AB misses payments to AMF.

In litigation commenced by either party, the other party to the agreement maintained the right (but not the obligation) to participate in the litigation by hiring its own counsel and by requiring the litigation-commencing party to keep it informed about the status of the litigation, but the non-commencing party was not permitted to interfere with the commencing party's control of the litigation in any way.

After this license agreement was entered into, AMF notified AB of Cochlear's allegedly infringing activity and sought to determine AB's decision regarding whether to sue Cochlear for infringement of the '616 patent. Having received assurance that AB did not plan to sue over this alleged infringement, AMF filed suit in December 2007. Eventually, the pleadings were amended to allege infringement of both the '616 patent and the '691 patent.

During discovery in the district court, Cochlear learned of the 2004 license agreement between AMF and AB. On March 3, 2009, Cochlear filed a motion to dismiss AMF's infringement claims for lack of standing to sue. On May 29, 2009, the district court granted the motion, finding that, because AMF had transferred to AB “all substantial rights under the patents,” AB should be “considered the owner of those patents.” On June 19, 2009, the district court entered judgment dismissing the case, and AMF appealed to this court on June 23, 2009.

II. DISCUSSION

We review de novo the district court's decisions regarding standing to sue. Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1551 (Fed.Cir.1995) (en banc). A patent owner may transfer all substantial rights in the patents-in-suit, in which case the transfer is tantamount to an assignment of those patents to the exclusive licensee, conferring standing to sue solely on the licensee. Vaupel Textilmaschinen KG v. Meccanica Euro Italia SpA, 944 F.2d 870, 873-74 (Fed.Cir.1991). To determine whether an exclusive license is tantamount to an assignment, we “must ascertain the intention of the parties [to the license agreement] and examine the substance of what was granted.” Mentor H/S, Inc. v. Medical Device Alliance, Inc., 240 F.3d 1016, 1017 (Fed.Cir.2001). Here, the license agreement is to be interpreted under California law, under which the district court's interpretation of a contract presents a question of law that we review de novo. DVD Copy Control Ass'n v. Kaleidescape, Inc., 176 Cal.App.4th 697, 713, 97 Cal.Rptr.3d 856, 869 (Cal.App. 6th Dist.2009). To the extent that determining the intention of the parties to the license agreement requires evaluation of parol evidence, the district court's evaluation presents a question of fact that we review deferentially. Id.

As noted above, a patent owner may grant an exclusive license to his patents under such terms that the license is tantamount to an assignment of the patents to the exclusive licensee. This happens when the exclusive license transfers “all substantial rights” in the patents. Vaupel Textilmaschinen, 944 F.2d at 873-74. When this happens, the exclusive licensee has sole standing to sue those suspected of infringing the patents' claims. Id. In addition, we have held that, where an exclusive license transfers less than “all substantial rights” in the patents to the exclusive licensee, the exclusive licensee may still be permitted to bring suit against infringers, but the patent owner is an indispensable party who must be joined. Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377 (Fed.Cir.2000). Typically, we are confronted with cases in which an exclusive licensee sues an accused infringer, and we must decide whether the licensee has been granted rights sufficient to confer standing. This case presents a converse scenario in which the patent owner seeks to bring suit, requiring us to determine whether the patent owner transferred away sufficient rights to divest it of any right to sue.

We were faced with a similar set of facts in Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336 (Fed.Cir.2006). There, the patent owner, Contour Optik, Inc., had granted an exclusive license to Chic Optic, Inc., which was not a party to the infringement litigation. Id. at 1338. In turn, Chic Optic assigned its rights to Aspex Eyewear. Id. Shortly before the grant of rights from Chic Optic to Aspex Eyewear, Contour Optik and Aspex Eyewear jointly sued Miracle Optics for infringement. Id. We held that, because the grant from Contour Optik to Chic Optic was a grant of less than all substantial rights, Contour remained the owner of the patents-in-suit and retained standing to sue for infringement. Id. at 1343.

Under Aspex Eyewear, a patent may not have multiple separate owners for purposes of determining standing to sue.² Either the licensor did not...