The Federal Circuit
recently decided that in order to bring an infringement action, an exclusive
licensee need not have the right to exclude all others from practicing a
patent. In this Commentary, Kimberly Seluga discusses infringement standing in
the context of exclusive licensees and examines the case of Wiav Solutions
LLC v. Motorola, Inc., 2010 U.S. App. LEXIS 25966 (Fed. Cir. Dec. 22, 2010)
[enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]. She writes:
[A]s clarified in WiAV Solutions LLC v. Motorola, Inc., 2010
U.S. App. LEXIS 25966 (Fed. Cir. Dec. 22, 2010), capacity to sue, or
"standing," depends on whether the exclusive licensee's rights are at
least exclusive as to the particular parties he wishes to sue for infringement.
If so, that licensee can show legal injury from the infringement, a necessary
condition for standing.
As it happens, an exclusive
licensee may be able to sue some parties and not others. The court's decision
provides more certainty for exclusive licensees and potential accused
defendants as to who may sue whom, a question not always easily answered.
The standing of an exclusive
licensee - whether he has demonstrated sufficient injury to be entitled to
bring a suit for infringement - has long been the subject of Federal Circuit
jurisprudence. Despite its name, an "exclusive licensee" does not
have to be the only party with exclusive rights to a particular patent. A
patent can have more than one exclusive licensee, with each licensee having
exclusive rights to a portion of the patent rights.
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