Judge Richard G. Andrews recently considered defendants’ motion to dismiss for lack of standing. Acceleration Bay LLC v. Activision Blizzard, Inc., et al., Nos. 15-228-RGA, 15-282-RGA, 15-311-RGA (D. Del. Jun. 3, 2016). Plaintiff claimed it owned the patents-in-suit after purchasing them from Boeing Intellectual Property Licensing Company. Id. at 2. Defendants filed the motion to dismiss after acquiring the purchase agreement between plaintiff and Boeing, pursuant to which Boeing assigned “all right, title and interest” to the patents, subject to certain of Boeing’s “pre-existing licenses.” Id. at 4. Judge Andrews found that, since Boeing conditioned the assignment on the terms of the licenses Boeing retained, Boeing “did not convey ‘entire patent[s], an undivided part or share of [any] patent, or all rights under the patents[s] in a specified geographical region of the United States.'” Id. at 5 (quoting Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1551 (Fed. Cir. 1995)). Further, Judge Andrews found that the purchase agreement could not convey standing because “Boeing retained the right to sue within its field of use.” Id. at 6. “The Federal Circuit has concluded that an exclusive field of use licensee does ‘not hold all substantial rights in the full scope of the … patent,’ and therefore lacks standing.” Id. at 6-7 (quoting Int’l Gamco, Inc. v. Multimedia Games, Inc., 504 F.3d 1273, 1280 (Fed. Cir. 2007)). Boeing also retained, among other things, the right to practice the patented methods, which also “weigh[ed] against a finding that Boeing transferred all substantial rights.” Id. at 7-8 (citing Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1132-33 (Fed. Cir. 1995)).
In sum, having found that plaintiff lacked prudential standing, the Court held that the actions must be dismissed unless Boeing was joined as a plaintiff. Id. at 10. Judge Andrews gave plaintiff 14 days to join Boeing or the cases would be dismissed. Id. at 10-11.