Troutman Sanders: “Exclusive License” Not Exclusive Enough to Support Standing

Troutman Sanders: “Exclusive License” Not Exclusive Enough to Support Standing

by Robert Angle

Plaintiffs Porto Technology Co., Ltd.. and Porto Technology, LLC (collectively, "Porto"), recently learned that their "Exclusive Patent License Agreement" from the patent owner is NOT sufficient to give them standing to pursue patent infringement claims against Cellco Partnership d/b/a Verizon Wireless ("Verizon").  As Judge Henry E. Hudson found in Porto Technology,  Co., Ltd. v. Cellco Partnership, Civil Action No. 3:12cv678 (March 19, 2013 E.D. Va.) [an enhanced version of this opinion is available to subscribers], the "Exclusive License" required Porto to obtain the patent owner's consent before granting any sublicense and gave the patent owner the right to direct Porto to grant a sublicense to any third party identified by the patent owner.  Further, the "Exclusive License" lacked any provision giving Porto the exclusive right to bring suit to enforce the patent, and was silent on Porto's right to practice the invention under the patent.  Judge Hudson ruled that these defects in Porto's license defeated Porto's standing to assert the patent against Verizon.  Judge Hudson's opinion can be found here: PortoVerizon

Unfortunately for Verizon, this may only be a temporary setback for Porto - Judge Hudson granted Porto 21 days to join the patent owners as Plaintiffs in the case.

Read more at Virginia IP Law by Troutman Sanders LLP.

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