The Federal Circuit has declined to re-visit an earlier ruling that a patent co-owner can choose to abstain from a patent infringement suit, thereby preventing a fellow owner from pursuing the suit. STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. Sept. 17, 2014). In STC.UNM, Sandia and STC.UNM jointly owned the patent-in-suit. STC.UNM filed suit against Intel, but Sandia did not join the suit. Because an infringement suit requires the participation of all owners of the asserted patent, STC.UNM sought to join Sandia as an involuntary plaintiff. Federal Rule of Civil Procedure 19(a) provides that a person “must be joined as a party if  in that person’s absence, the court cannot accord complete relief among existing parties.” If the person does not join the suit, “the court must order that the person be made a party.”
The original Federal Circuit panel affirmed the denial of STC.UNM’s request to join Sandia as a plaintiff. STC.UNM then requested re-consideration by the entire Federal Circuit (i.e., a rehearing en banc), but the Federal Circuit rejected the request. The concurring opinion supporting this decision stated that, even though STC.UNM could not pursue its infringement suit without Sandia’s presence as a party, Rule 19 did not compel Sandia’s joinder. Rather, the concurrence reasoned that the court must first determine whether STC.UNM had an underlying right to relief that would trigger application of Rule 19. The concurrence found in Federal Circuit precedent a “substantive right” of a patent owner to refrain from a patent suit, such that STC.UNM had no right to join Sandia.
There were two opinions dissenting from the court’s decision. The dissenting opinions emphasized that the plain language of Rule 19 requires joinder where relief cannot be granted absent the party to be joined. Here, STC.UNM had a right to relief from alleged infringement by virtue of its co-ownership of the patent. Thus, the district court should have been required to join Sandia as a plaintiff. The dissenters believed that Rule 19 trumps any Federal Circuit precedent to the contrary. They further stated that the Federal Circuit’s approach places patent infringement suits at odds with other types of suits, which follow the dictates of Rule 19.
The disagreement among the Federal Circuit judges regarding the application of Rule 19, and the potential inconsistency between patent suits and non-patent suits resulting from the Federal Circuit’s decision, may prompt the Supreme Court to review the Federal Circuit’s ruling.