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United States Court of Appeals for the Federal Circuit
December 22, 2010, Decided
[***1486] [*1259] Linn, Circuit Judge.
WiAV Solutions LLC ("WiAV") is the owner of United States Patent No. 6,539,205 ("the '205 Patent") and No. 6,680,920 ("the '920 Patent") and the purported exclusive licensee in a specific field of use of the following seven patents owned by Mindspeed Technologies, Inc. ("Mind-speed"): United States Patent No. 6,104,992; No. 6,256,606; No. 6,385,573 ("the '573 Patent"); No. 6,507,814; No. 6,633,841; No. 7,120,578; and No. 7,266,493 ("the '493 Patent") (collectively, "the Mindspeed Patents"). WiAV filed a complaint alleging that defendants Motorola, Inc.; Nokia Corporation; Nokia Inc.; Palm, Inc.; Sony Ericsson Mobile Communications (USA), Inc.; Personal Communications [*1260] Devices LLC; Personal Communications Devices Holdings, LLC; and UTStarcom, Inc. (collectively, [**3] "the Defendants") and Sony Ericsson Mobile Communications AB had infringed all nine patents. At the urging of the Defendants, the United States District Court for the Eastern District of Virginia dismissed the counts of WiAV's complaint concerning the Mindspeed Patents for lack of constitutional standing. WiAV Solutions LLC v. Motorola, Inc., 679 F. Supp. 2d 639 (E.D. Va. 2009) ("Dismissal Order"). The district court concluded that WiAV lacked constitutional standing to assert the Mindspeed Patents against the Defendants because several third parties have a limited right to license the patents in WiAV's alleged exclusive field of use. Id. at 648.
Because the district court erred when it concluded that the third-party licensing rights at issue deprived WiAV of constitutional standing to assert the Mindspeed Patents against the Defendants, this court reverses the judgment of the district court and remands for further proceedings consistent with this opinion.
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631 F.3d 1257 *; 2010 U.S. App. LEXIS 25966 **; 97 U.S.P.Q.2D (BNA) 1484 ***
WIAV SOLUTIONS LLC, Plaintiff-Appellant, v. MOTOROLA, INC., Defendant-Appellee, AND NOKIA CORPORATION AND NOKIA INC., Defendants-Appellees, AND PALM, INC., Defendant-Appellee, AND MINDSPEED TECHNOLOGIES, INC., Defendant-Appellee, AND SONY ERICSSON MOBILE COMMUNICATIONS AB AND SONY ERICSSON MOBILE COMMUNICATIONS (USA), INC., Defendants-Appellees, AND PERSONAL COMMUNICATIONS DEVICES LLC AND PERSONAL COMMUNICATIONS DEVICES HOLDINGS, LLC, AND UTSTARCOM, INC., Defendants.
Subsequent History: As Amended February 4, 2011.
Rehearing denied by, Rehearing, en banc, denied by Wiav Solutions LLC v. Motorola Mobility, Inc., 2011 U.S. App. LEXIS 4442 (Fed. Cir., Feb. 24, 2011)
Prior History: [**1] Appeal from the United States District Court for the Eastern District of Virginia in case No. 09-CV-0447, Senior Judge Robert E. Payne.
WiAV Solutions LLC v. Motorola, Inc., 679 F. Supp. 2d 639, 2009 U.S. Dist. LEXIS 118042 (E.D. Va., 2009)
Disposition: REVERSED AND REMANDED.
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