Cobra International, Inc. ("Cobra") filed a patent infringement action against Defendants for infringement of U.S. Patent No. 5,821,858 ("the '858 patent"). Cobra alleged that the '858 patent was issued to Allan J. Stone, who became "the owner" of the patent, and that Stone assigned the patent to Cobra. 

The district court had previously granted Defendants' Renewed Motion for Summary Judgment of Patent Invalidity for Lack of Inventorship on the ground that Stone was not the sole inventor of the '858 patent, but the district court also held that Cobra "must be allowed to correct inventorship pursuant to 35 U.S.C. § 256 in order to avoid a finding of patent invalidity." Defendants subsequently moved to dismiss the on the ground that Cobra does not have complete ownership of the '858 patent and failed to join its co-owners as plaintiffs.

The district court began the analysis by explaining that "Though the identity of the other co-owners is unclear, what is clear is that Cobra is not the sole owner of the '858 patent. In the context of joint inventorship, each co-inventor is a presumptive co-owner of a patent. Ethicon,135 F.3d at 1465. The Court has already held that Stone is not the sole inventor of the'858 patent. (DE 533.) Because he was only a co-inventor, Stone owned 'a pro rata undivided interest in the entire patent' rather than a complete ownership interest. Ethicon,135 F.3d at 1465. Thus, when he assigned the patent to Cobra, he assigned only a co-ownership interest in the patent.See Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1382 (Fed. Cir. 2000) ('[A]n owner or licensee of a patent cannot convey that which it does not possess.'). Due to Cobra's failure to join its co-owners as plaintiffs, Cobra's patent infringement claim must be dismissed."

However, the district court disagreed with the Defendants' contentions that the failure to join all of the owners was a jurisdictional defect that could not be cured. "Though Defendants are correct that Cobra's complaint must be dismissed, they incorrectly contend that the requirement of joining all co-owners applies 'at the inception of the lawsuit,' and such a 'jurisdictional defect cannot be cured' after inception of the lawsuit. (DE 555 at 7) (quoting Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1364 (Fed. Cir. 2010))."

The district court pointed out that "when the Abraxis court stated that the lack of Article III initial standing cannot be cured after the inception of the lawsuit, it quoted Schreiber Foods. In Schreiber Foods, the Federal Circuit stated that '[i]n the area of patent infringement . . . if the original plaintiff lacked Article III initial standing, the suit must be dismissed, and the jurisdictional defect cannot be cured by the addition of a party with standing, nor by the subsequent purchase of an interest in the patent in suit.' 402 F.3d at 1203 (emphasis added) (citations omitted). But in a footnote to this statement, the court added, 'If the original plaintiff had Article III standing, any prudential standing concerns may be overcome by adding a plaintiff with proper standing.' Id. at 1203 n.4. In no uncertain terms, the Federal Circuit has repeatedly stated that the requirement of joining all co-owners in a patent infringement suit is a prudential, not constitutional, requirement. See Israel Bio-Eng'g Project v. Amgen, Inc., 475 F.3d at 1265; Mentor H/S, Inc. v. Med. Device Alliance, Inc., 240 F.3d 1016, 1018 (Fed. Cir. 2001) (per curiam); Prima Tek II, 222 F.3d at 1377."

The district court further explained that "though it may lack a right to sue without meeting other requirements, a co-owner of a patent suffers a cognizable injury for the purpose of constitutional standing when the patent is infringed. Therefore, the failure to join all co-owners at the inception of a patent infringement suit is curable. The Federal Circuit's holdings regarding the inability to cure a lack of constitutional standing are inapposite."

Accordingly, the district court determined that "the failure to join all co-owners at the inception of a patent infringement suit is curable, Defendants may have other objections to allowing Cobra to file a third amended complaint in this decade-old suit. Therefore, Cobra is not automatically granted leave to file an amended complaint. Instead, Cobra must move for such leave. The Court will rule on the motion after Defendants have an opportunity to raise their objections in response."

Cobra International, Inc. v. BCNY International, Inc., Case No. 05-cv-61225-KAM (D. Fl. Nov. 9, 2015)