Univ. of S. Fla. Research Found., Inc. v. Fujifilm Med. Sys. U.S.A., Inc.
| Decision Date | 22 October 2021 |
| Docket Number | 2020-1872 |
| Citation | 19 F.4th 1315 |
| Parties | UNIVERSITY OF SOUTH FLORIDA RESEARCH FOUNDATION, INC., Plaintiff-Appellant v. FUJIFILM MEDICAL SYSTEMS U.S.A., INC., Defendant-Appellee |
| Court | U.S. Court of Appeals — Federal Circuit |
John S. Artz, Dickinson Wright PLLC, Ann Arbor, MI, argued for plaintiff-appellant. Also represented by Steven A. Caloiaro, Reno, NV.
David W. Marston, Jr., Morgan, Lewis & Bockius LLP, Miami, FL, argued for defendant-appellee. Also represented by Jitsuro Morishita, Tokyo, Japan; Jacob Snodgrass, Washington, DC.
Before Moore, Chief Judge, Reyna, and Stoll, Circuit Judges.
The University of South Florida Research Foundation, Inc. appeals the United States District Court for the District of Connecticut's order dismissing its patent infringement suit against Fujifilm Medical Systems U.S.A., Inc. for lack of statutory and constitutional standing. For the reasons stated below, we vacate the court's dismissal and remand for further proceedings consistent with this opinion.
BACKGROUND
At some point, the Revenue Allocation Agreement between the inventors, USF, and USFRF was followed by a nunc pro tunc license agreement, which lists an effective date of July 4, 1997. J.A. 265–66. The nunc pro tunc agreement defines the "Subject Invention" as:
[redacted]
J.A. 265 ¶ 1. This nunc pro tunc license agreement also [redacted] Id. ¶ 2. In addition, the agreement states that [redacted] J.A. 266 ¶ 3.
In May 2016, USFRF filed a patent infringement complaint asserting that medical imaging products and systems made by Fujifilm Medical Systems USA, Inc. infringed all claims of the '937 patent. Compl., Univ. of S. Fla. Rsch. Found., Inc. v. Fujifilm Med. Sys. USA, Inc. , No. 3:18-cv-00215 (D. Conn. May 12, 2016), ECF No. 1. The complaint, amended complaint, and second amended complaint all included the following ownership assertion:
The inventors of the '937 patent assigned their rights to the University of South Florida in Tampa, Florida. The University of South Florida in turn assigned their rights to the '937 patent to the Plaintiff in this lawsuit, namely the University of South Florida Research Foundation, Inc. ("USFRF"). USFRF is currently the owner of the entire right, title and interest in United States Patent No. 6,630,937.
See Ruling on Motions at 3, Univ. of S. Fla. Rsch. Found., Inc. , No. 3:18-cv-00215 (D. Conn. May 11, 2020), ECF No. 267 ("Motions Ruling").
On June 6, 2019, Fujifilm moved for summary judgment, arguing that USFRF lacked so-called statutory standing to sue Fujifilm for patent infringement because the license agreement did not transfer all substantial rights to USFRF that would permit USFRF to bring suit by itself. Mot. for Summ. J., Univ. of S. Fla. Rsch. Found., Inc. , No. 3:18-cv-00215 (D. Conn. June 6, 2019), ECF No. 229, at 2 n.1. Five days later, on June 11, 2019, USFRF moved for leave to amend its Second Amended Complaint to "correct an inadvertent error" concerning its ownership of the '937 patent because "[USF] did not assign its rights to the '937 Patent to USFRF" but instead granted USFRF an exclusive license. J.A. 476–79.
On May 11, 2020, the district court dismissed the case under Federal Rule of Civil Procedure 12(h)(3) for lack of both statutory and constitutional standing, without prejudice. Motions Ruling at 34–35.
The district court analyzed USFRF's statutory standing1 based on the rights conveyed in the nunc pro tunc USF-USFRF license agreement. The agreement states that "USF and USFRF desire to cooperate in the development, protection, and commercial exploitation of the said invention," which the court concluded "implies a cooperative effort in the protection of the patent, rather than an exclusive granting of the right to protect the patent to USFRF." Id. at 20. The district court determined that the "licensing agreement is silent on the transference of the right to sue," id. at 6, and "does not limit USF's ability to bring suit for alleged infringement," id. at 6, 17. The court also concluded that "USF did not exclusively license to USFRF all substantial rights" because "USF reserved to itself ... the right to make, have made, develop, import and use the ‘Subject Invention’ for their internal research, clinical and educational purposes." Id. at 15–16. Thus, the court determined that USFRF's rights to the '937 patent were "limited by [USF's] retention." Id. at 16. The district court then held that USFRF did not meet the statutory requirement of being a patentee under 35 U.S.C. § 281 because USFRF is not an exclusive licensee with all substantial rights in the '937 patent. Therefore, the court held that USFRF could not bring the action in its own name without joining USF.
As to constitutional standing, the district court reasoned that because the "licensing agreement does not refer to the '937 patent and specifically references the 97A105 invention disclosure form ... the 97A105 invention disclosure form appears to be a necessary document." Id. at 31. USFRF had refused to produce this document based on attorney-client privilege and the work-product doctrine. Instead, it relied on deposition testimony and several documents to show the relationship between the 97A105 invention disclosure form and the '937 patent. The court also found that USFRF "failed to show when the [nunc pro tunc] document was signed." Id. at 32. The district court then concluded that USFRF lacked Article III constitutional standing because it failed to establish that (1) the license agreement related to the '937 patent ; and (2) USFRF held an exclusionary right when it filed its complaint because it did not establish that the license agreement was signed before the complaint was filed. Id. at 33–34.
USFRF appeals the district court's dismissal for lack of standing. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
Only a "patentee" may bring a civil action for patent infringement. 35 U.S.C. § 281. Title 35 defines a "patentee" as the party to whom the patent was issued and the successors in title to the patentee, but it does not include mere licensees. 35 U.S.C. § 100(d). "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," who may then maintain an infringement suit in its own name. Alfred E. Mann Found. for Sci. Rsch. v. Cochlear Corp. , 604 F.3d 1354, 1358–59 (Fed. Cir. 2010). "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.’ " Id. at 1359 (alteration in original) (quoting Mentor H/S, Inc. v. Med. Device All., Inc. , 240 F.3d 1016, 1017 (Fed. Cir. 2001) ).
Our court has listed several rights that should be examined "to determine whether a licensor has transferred away sufficient rights to render an exclusive licensee the owner of a patent," including:
the scope of the licensee's right to sublicense, the nature of license provisions regarding the reversion of rights to the licensor following breaches of the license agreement, the right of the licensor to receive a portion of the recovery in infringement suits brought by the licensee, the duration of the license rights granted to the licensee, the ability of the licensor to supervise and control the licensee's activities, the obligation of the licensor to continue paying patent maintenance fees, and the nature of any limits on the licensee's right to assign its interests in the patent.
We have never, however, established a complete list of the rights that must be examined to determine whether a patentee has transferred away sufficient rights to render another party the owner of a patent. Diamond Coating Techs., LLC v. Hyundai Motor Am. , 823 F.3d 615, 619 (Fed. Cir. 2016) (quoting Alfred E. Mann , 604 F.3d at 1360 ). Instead, "we examine the ‘totality’ of the agreement to determine whether a party other than the original patentee has established that it obtained all substantial rights in the patent." Lone Star , 925 F.3d at 1229 (quoting AsymmetRx, Inc. v. Biocare Med., LLC , 582 F.3d 1314, 1321 (Fed. Cir. 2009) ). Among the factors that we consider, the exclusive right to make, use, and sell, as well as the nature and scope of the patentee's retained right to sue accused infringers are the most important considerations in determining whether a license agreement transfers sufficient rights to render the licensee the owner of the patent. Diamond Coating , 823 F.3d at 619 (quoting Alfred E. Mann , 604 F.3d at 1360–61 ).
In determining whether the district court erred in concluding that USFRF was not the patentee under § 281, we find instructive our cases reviewing the transference of all substantial patent rights to the exclusive licensee.
For example, in Alfred E. Mann , we reversed and remanded the district court's...
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