Intellectual Property Law

Judge Farnan: Motion to Dismissed Granted Because Due To Plaintiff's Lack of Standing

By Karen E. Keller, Andrew A. Lundgren et al.

On Tuesday, Judge Farnan issued an opinion in Enhanced Security Research, LLC v. Juniper Networks, Inc., C.A. No. 09-871-JJF (D. Del. July 20, 2010), dismissing Plaintiff's claims for lack of standing.

The question was whether the plaintiff held enough of the rights under the patent to allow it to bring a claim at all. The patent-in-suit had been transferred several times, and was subject to a 2007 "Purchase Agreement" in which Plaintiff had sold several exclusive rights under the patent to a third party, but had retained title. The Federal Circuit requires that a plaintiff or plaintiffs hold "all substantial rights" to a patent in order to bring a claim. Id. at 7-8.

Here, the Court determined that Plaintiff had transferred "all substantial rights" to the third party, including the exclusive right, as stated in the contract, to "initiate, maintain, manage, resolve, conclude and settle all arrangements and activities in connection with any and all licensing or litigation or enforcement efforts and/or Proceedings . . . relating to any of [Plaintiff]'s rights in and to any of the Patents." Id. at 8-9. Because the third party possessed "all substantial rights" relating to the patent, Plaintiff could not bring an action without the involvement of that party. Id. at 9-11. Thus, the Court granted Defendant's Motion to Dismiss.

Enhanced Security Research, LLC v. Juniper Networks, Inc., C.A. No. 09-871-JJF (D. Del. July 20, 2010)

Full post as published by Delaware IP Law Blog on July 22, 2010 (boomark / email).