Summary: Lack of standing affirmed because patent co-owner refused to join suit.

Case: STC.UNM v. Intel Co., No. 2013-1241 (Fed. Cir. June 6, 2014) (precedential). On appeal from D.N.M. Before Newman, Rader and Dyk.

Procedural Posture: Plaintiff appealed district court’s dismissal of patent infringement suit due to lack of standing. CAFC affirmed.

  • Standing: Because patent co-owner refused to join the suit, the CAFC affirmed the district court’s dismissal for lack of standing. Despite Fed. R. Civ. P. 19(a), which allows for involuntary joinder, patent co-owners have a substantive right to refuse to join infringement suits that trumps procedural rules. Involuntary joinder is permissible only when the unwilling co-owner in some way affirmatively gives up that right.

Newman dissenting:

  • Standing: The patent co-owner should be involuntarily joined under Fed. R. Civ. P. 19(a) because otherwise the plaintiff is denied access to judicial relief. No precedent supports the theory that Fed. R. Civ. P. 19(a) is overruled by a substantive right to refuse joinder in patent cases.

Aryn Conrad