How Exclusive Must an "Exclusive Licensee" Be to Sue for Patent Infringement?

How Exclusive Must an "Exclusive Licensee" Be to Sue for Patent Infringement?

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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