In ALPS SOUTH, LLC v. OHIO WILLOW WOOD CO., Appeal Nos. 2013-1452, 2013-1488, 2014-1147, and 2014-1426, the Federal Circuit reversed the denial of a motion to dismiss for lack of standing because Alps’s license, at the time it filed the complaint, included a field of use restriction and Alps could not cure this standing defect by executing a retroactive, nunc pro tunc amended license agreement.

Alps entered an agreement to license the patent-in-suit and the agreement restricted Alps’s rights in the patent to the field of prosthetic products.  Alps then sued Ohio Willow Wood (OWW) for patent infringement, and did not name the patent owner as a co-plaintiff.  OWW filed an unsuccessful motion to dismiss for lack of standing.  While the motion was pending, Alps executed an amended license agreement eliminating the field of use restrictions and including an effective date prior to the lawsuit.  The case proceeded to trial, and the jury found the patent was valid and OWW had willfully infringed.  OWW appealed the denial of its motion to dismiss for lack of standing, among other things. 

The Federal Circuit reversed the denial of OWW’s motion to dismiss, vacated the judgment against OWW, and remanded with instructions to dismiss the case. The Federal Circuit concluded that Alps’s license at the time the complaint was filed included a field of use restriction, and such a restriction on rights resulted in a lack of standing to pursue litigation without naming the patent owner as co-plaintiff. Regarding Alp’s retroactive amended license, the Federal Circuit looked to its previous decisions confirming that nunc pro tuncassignments are insufficient to confer retroactive standing.  The Federal Circuit concluded Alps was required to have all substantial rights to the patent on the day it filed the complaint and that requirement cannot be met retroactively.