from the United States District Court for the Northern
District of California in No. 3:17-cv-04032-WHA,
3:17-cv-04033-WHA, Judge William H. Alsup.
Timothy P. Maloney, Fitch, Even, Tabin & Flannery,
Chicago, IL, argued for plaintiff-appellant. Also represented
by David Allen Gosse, Nicole L. Little, Joseph F. Marinelli.
James Wied, Nixon Peabody LLP, Los Angeles, CA, argued for
all defendants-appellees. Defendants-appellees Nanya
Technology Corporation, Nanya Technology Corporation U.S.A.,
Nanya Technology Corporation Delaware also represented by
Vincent K. Yip.
Christopher Kao, Pillsbury Winthrop Shaw Pittman LLP, San
Francisco, CA, for defendants-appellees United
Microelectronics Corporation, UMC Group (USA). Also
represented by Brock Steven Weber.
O'Malley, Reyna, and Chen, Circuit Judges.
O'Malley, Circuit Judge
Star Silicon Innovations LLC ("Lone Star") sued
Appellees for infringing various
patents. The district court concluded that Lone
Star does not own these patents and therefore lacks the
ability to assert them. In re Lone Star Silicon
Innovations LLC, No. 3:17-cv-03980-WHA, 2018 WL 500258,
at *1 (N.D. Cal. Jan. 20, 2018). We agree with the district
court that Lone Star cannot assert these patents on its own.
But the district court should not have dismissed this case
without considering whether Advanced Micro Devices, Inc.
("AMD"), the relevant patentee, should have been
joined. Its failure to address this issue was legally
erroneous in view of Federal Rule of Civil Procedure 19 and
our case law. We therefore vacate the district court's
dismissal and remand for further proceedings consistent with
Patent Transfer Agreement
asserted patents were originally assigned to AMD, which later
executed an agreement purporting to transfer "all right,
title and interest" in the patents to Lone Star. The
transfer agreement, however, imposes several limits on Lone
Star. For example, Lone Star agreed to only assert the
covered patents against "Unlicensed Third Party
En-tit[ies]" specifically listed in the agreement. J.A.
2025; J.A. 2032. New entities can only be added if Lone Star
and AMD both agree to add them. J.A. 2025; J.A.
2048. If Lone Star sues an unlisted entity, AMD has the
right-without Lone Star's approval-to sublicense the
covered patents to the unlisted target. J.A. 2028; J.A. 2032.
AMD can also prevent Lone Star from assigning the patents or
allowing them to enter the public domain. J.A. 2026
("Any assignment of an Assigned Patent in violation of
this Section 2.6 shall be void ab initio."); J.A. 2027
(explaining that if Lone Star intends to stop paying
maintenance fees for a covered patent it must "notify
AMD of its decision" and "assign the Abandoned
Patent to AMD or to a Person selected by AMD in AMD's
sole discretion if requested by AMD . . . ."). AMD and
its customers can also continue to practice the patents, J.A.
2027, and AMD shares in any revenue Lone Star generates from
the patents through "monetization efforts." J.A.
District Court Litigation
Star sued Appellees, who are all listed as Unlicensed Third
Party Entities in the transfer agreement, in successive
infringement actions filed between October 2016 and December
2016. In each case, Lone Star alleged, among other things,
that AMD transferred "all right, title, and
interest" in the asserted patents to Lone Star. See,
e.g., J.A. 2621. But it took Lone Star nearly a year
after filing suit to produce the transfer agreement. Once it
did, Appellees filed motions to dismiss their respective
suits under Federal Rule of Civil Procedure 12(b)(1). J.A.
3913 (Nanya); J.A. 351 (UMC).
district court granted Appellees' motions. As the district
court correctly explained, we have recognized three
categories of plaintiffs in patent infringement cases. In
re Lone Star, 2018 WL 500258, at *3. First, a patentee,
i.e., one with "all rights or all substantial
rights" in a patent, can sue in its own name.
Id. Second, a licensee with "exclusionary
rights" can sue along with the patentee. Id.
And, finally, a licensee who lacks exclusionary rights has no
authority to assert a patent (even along with the patentee).
Id. The district court concluded that it only needed
to address this first category "since Lone Star claims
to be an 'assignee' and 'sole owner' of the
patents-in-suit." Id. As the district court
acknowledged, however, Lone Star had asked to join AMD so
that, if Lone Star could not proceed alone, it could proceed
along with AMD. Id. at *6.
determining whether the agreement between AMD and Lone Star
transferred "all substantial rights" to the
asserted patents, the district court examined the rights
transferred to Lone Star and those retained by AMD.
Id. at *3 ("Whether an agreement constitutes an
assignment or license depends not on the 'labels' or
'bare formalities' of title transfer but on the
'substance of what was granted.'"). The district
court focused on three aspects of the transfer agreement in
particular: (1) AMD's ability to control how Lone Star
asserts or transfers the patents, (2) Lone Star's
inability to practice the patents, and (3) AMD's right to
share in "monetization efforts." Id. at
*3-5. The district court then compared the balance of rights
here to previous cases where we have said agreements did or
did not transfer all substantial rights. Id.
Ultimately, the district court concluded that AMD did not
transfer all substantial rights in the patents to Lone Star.
Id. at *6.
it concluded that Lone Star could not sue in its own name,
the district court dismissed the case. Id. And
although it acknowledged that Lone Star had asked to join
AMD, the district court concluded that doing so would
"reward Lone Star for its litigation gimmick and
unfairly prejudice defendants." Id. In
particular, the district court emphasized that if AMD were
joined it "would enjoy earlier filing dates for [its]
claims than defendants would for any counterclaims for
purposes of recovering damages." Id. (citing 35
U.S.C. § 286).
Star timely appealed. We have jurisdiction under 28 U.S.C.
Star argues that it possesses all substantial rights in the
asserted patents and therefore can assert them in its own
name. And, if it cannot, Lone Star maintains that it must be
given an opportunity to join AMD as a plaintiff before this
case is dismissed. Appellees argue that Lone Star does not
possess all substantial rights and therefore lacks standing
to bring suit and that the district court did not err in
refusing to consider Lone Star's request to join AMD. We
address these arguments below.
35 allows a "patentee" to bring a civil action for
patent infringement. 35 U.S.C. § 281. The term patentee
includes the original patentee (whether the inventor or
original assignee) and "successors in title." 35
U.S.C. § 100(d). But it does not include mere licensees.
See Asym-metRx, Inc. v. Biocare Med., LLC,
582 F.3d 1314, 1318-19 (Fed. Cir. 2009) (citing Indep.
Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459
party asserting infringement is not the patent's original
patentee, "the critical determination regarding a
party's ability to sue in its own name is whether an
agreement transferring patent rights to that party is, in
effect, an assignment or a mere license." Id.
at 1319. In distinguishing between "an assignment"
and a "mere license," we "examine whether the
agreement transferred all substantial rights to the
patents." Id. (internal quotation marks
omitted). This inquiry depends on the substance of what was
granted rather than formalities or magic words. See
Waterman v. Mackenzie, 138 U.S. 252, 256 (1891)
("Whether a transfer of a particular right or interest
under a patent is an assignment or a license does not depend
upon the name by which it calls itself, but upon the legal
effect of its provisions."). For example, in previous
cases we have reviewed how an agreement affected who could
use, assert, license, or transfer the covered patents.
Alfred E. Mann Found. For Sci. Research v. Cochlear
Corp., 604 F.3d 1354, 1359 (Fed. Cir. 2010) (collecting
cases). We have also considered whether the transferor
retained reversionary rights in or ongoing control over the
patents. Id. at 1360- 61. But our ultimate task is
not to tally the number of rights retained against those
transferred. See AsymmetRx, 582 F.3d at 1321.
Instead, we examine the "totality" of the agreement
to determine whether a party other than the original patentee
has established that it obtained all substantial rights in
the patent. Id.
party cannot bring suit in its own name, it may still bring
suit along with the patentee so long as it possesses
"exclusionary rights." Morrow v. Microsoft
Corp., 499 F.3d 1332, 1340 (Fed. Cir. 2007). In such a
case, "the patentee who transferred these exclusionary
rights is ...