The Federal Circuit Court of Appeals’ recent decision in STC.UNM v. Intel Corp. provides important guidance regarding involuntary joinder of patent co-owners in the university context. The Federal Circuit held that “the right of a patent co-owner to impede an infringement suit brought by another co-owner is a substantive right that trumps the procedural rule for involuntary joinder” under Rule 19. As a result, the court dismissed the University of New Mexico’s patent infringement suit against Intel Corp. because Sandia Corp., the co-owner of the patent at issue, refused to join the suit as co-plaintiff. Through this decision, the Federal Circuit stressed the importance of obtaining the express or implied agreement of all co-owners to join a suit as plaintiff. STC.UNM v. Intel Corp., 754 F.3d 940, 946 (Fed. Cir. 2014), petition for rehearing en banc denied, 767 F.3d 1351 (Fed. Cir. 2014).
If you have questions or need more information, please contact info@mckoolsmith.com.
