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Judge Stark grants motion to dismiss for lack of prudential standing

Chief Judge Leonard P. Stark recently considered defendants’ motion to dismiss based on lack of prudential standing of plaintiff when it filed the original complaint in 2012.  Intellectual Ventures I LLC v. AT&T Mobility, LLC, et al., C.A. No. 12-193-LPS, 13-1632-LPS, 15-799-LPS, 15-800-LPS (D. Del. Aug. 25, 2016).  Judge Stark previously granted a motion to dismiss for lack of standing because the licensor of the patent-in-suit retained certain rights over the patent.  Id. at 2.  Judge Stark gave plaintiff leave to amend to add the licensor as a plaintiff, but instead, in 2013 plaintiff purchased the patent from the licensor and amended its complaint re-adding the patent.  Id. at 3-4.  The defendants again moved to dismiss because the court already held plaintiff lacked prudential standing to assert the patent and cannot retroactively cure the standing defect by executing a nunc pro tunc agreement.  Judge Stark agreed, finding that after the Federal Circuit’s decision in Alps South, LLC v. Ohio Willow Wood Co., 787 F.3d 1379 (Fed. Cir. 2015) the “post-filing agreement between . . . a patent infringement plaintiff who lacked all substantial rights in the patent on which it was suing at the time it filed suit and . . . the owner of the patent-in-suit, and holder of substantial rights in the patent-in-suit, as of the date of the filing of the suit – cannot retroactively cure the prudential standing defect.”  Id. at 10.

Intellectual Ventures I LLC v. AT&T Mobility, No. 12-193-LPS

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