Mentor v. Medical Device Alliance

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Citation: 57 USPQ2d 1819,240 F.3d 1016
• Parties: (Fed. Cir. 2001) MENTOR H/S, INC., Plaintiff-Appellant, v. MEDICAL DEVICE ALLIANCE, INC., LYSONIX, INC. and MISONIX, INC., Defendants-Appellees/Cross-Appellants. 99-1532, 00-1165
• Decision Date: 12 February 2001

Page 1016

240 F.3d 1016 (Fed. Cir. 2001) MENTOR H/S, INC., Plaintiff-Appellant,
v.
MEDICAL DEVICE ALLIANCE, INC., LYSONIX, INC. and MISONIX, INC.,
Defendants-Appellees/Cross-Appellants. 99-1532, 00-1165 United States Court of Appeals for the Federal Circuit February 12, 2001

Appealed from: United States District Court for the Central District of California

Judge William D. Keller

Frank E. Scherkenbach, Fish & Richardson, P.C., of Menlo Park, California, argued for plaintiff-appellant. Of counsel on the brief were Robert E. Hillman, Fish & Richardson, P.C., of Boston, Massachusetts; and Richard J. Anderson, and John A. Dragseth, Fish & Richardson, P.C., P.A., of Minneapolis, Minnesota.

Matthew D. Powers, Weil, Gotshal & Manges LLP, of Menlo Park, California, argued for defendants-cross appellants. With him on the brief were Steven S. Cherensky, Christopher J. Cox, and Nancy K. Raber.

Before MAYER, Chief Judge, LOURIE, and SCHALL, Circuit Judges.

Page 1017

ORDER

PER CURIAM.

The court, on its own motion, determines as follows:

This case comes to us on appeal from the decisions of the United States District Court for the Central District of California, following a jury trial, on the infringement, validity, and enforceability of U.S. Patent No. 4,886,491 (the " '491 patent"). Mentor H/S, Inc. v. Med. Device Alliance, Inc., No. CV 97-2431-WDK (C.D. Cal. June 10, 1999) (granting certain of defendants' motions for JMOL); Mentor H/S, Inc. v. Med. Device Alliance, Inc., No. CV 97-2431-WDK (C.D. Cal. Nov. 19, 1999) (conditionally granting certain of defendants' motions for a new trial). In an order issued December 20, 2000, we invited the parties to submit supplemental briefs on the issue of whether Mentor H/S, Inc. ("Mentor") had standing to bring suit without joining Sonique Surgical Systems, Inc. ("Sonique"), the apparent legal owner of the patent. Mentor H/S, Inc. v. Med. Device Alliance, Inc., Nos. 99-1532, 00-1165 (Fed. Cir. Dec. 20, 2000). Prior to our order, neither Mentor nor defendants-appellees, Medical Device Alliance, Inc., Lysonix, Inc., and Misonix, Inc. (collectively, "Medical Device"), had raised the standing issue, either before us or in the district court. The court, having considered the submissions of the parties, determines that Mentor did not have standing to bring the patent infringement suit without joining the patent owner.

Only a "patentee" can bring an action for patent infringement. 35 U.S.C. § 281 (1994); Textile Prods., Inc. v. Mead Corp., 134 F.3d 1481, 1483, 45 USPQ2d 1633, 1635 (Fed. Cir. 1998). The term "patentee" is defined as including "not only the patentee to whom the patent was issued but also the successors in title to the patentee." 35 U.S.C. § 100(d)(1994). However, we have permitted an exclusive licensee to bring suit in its own name if the exclusive licensee holds "all substantial rights" in the patent. Textile Prods., 134 F.3d at 1484, 45 USPQ2d at 1635; Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875, 20 USPQ2d 1045, 1048-49 (Fed. Cir. 1991). Under such circumstances, the licensee is, in effect, an assignee and, therefore, a "patentee" within the meaning of § 281. Textile Prods., 134 F.3d at 1484, 45 USPQ2d at 1635; Vaupel, 944 F.2d at 874-75, 20 USPQ2d at 1048. Ordinarily, "[a]n exclusive licensee that does not have all substantial rights has standing to sue third parties only as a co-plaintiff with the patentee." Textile Prods., 134 F.3d at 1484, 45 USPQ2d at 1635. "Without the patentee as plaintiff, the remedies provided in the patent statute are unavailable except in extraordinary circumstances 'as where the patentee is the infringer, and cannot sue himself.'" Ortho Pharm. Corp. v. Genetics Inst., Inc., 52 F.3d 1026, 1030, 34 USPQ2d 1444, 1446 (Fed. Cir. 1995) (quoting Waterman v. Mackenzie, 138 U.S. 252, 255 (1891)).

To determine whether an agreement constitutes just an exclusive license or instead also transfers "all substantial rights" in a patent, we must ascertain the intention of the parties and examine the substance of what was granted by the agreement. Vaupel, 944 F.2d at 874, 20 USPQ2d at 1048. The party asserting that it has all substantial rights in the patent "must produce . . . written instrument[s] documenting the transfer of proprietary rights." Speedplay, Inc....