First published in LES Insights
A Minnesota court recently rejected a challenge to a licensee's right to sue for infringement without joining the patent owner. The court found that the licensee obtained from the patent-owner "all substantial rights" in the licensed patents, because the licensee received an exclusive license to practice the patented inventions, to enforce the patent rights, and to sublicense and assign its rights. In addition, the retention by the patent owner of a non-exclusive right to practice the invention did not prevent the licensee from receiving all substantial rights. The court also found that the licensee's merger during the litigation with its sublicensee necessarily conveyed the right to enforce the patents to the post-merger entity.