'114 was granted to Thomson-CSF, which at the end of 1999 assigned most of its shares, and its interest in several patents, from its subsidiary TCS, to a third party. TCS later became known as Atmel Grenoble. Until being sold in May 2006, Atmel Grenoble was a wholly owned subsidiary of Atmel Paris, which is a wholly owned subsidiary of Atmel Corporation.

Plaintiffs provide evidence that, in the United States, Atmel Corporation alone has practiced the patent and been responsible for its enforcement.

In other words, Atmel Corporation had control of the patent as its exclusive licensee.

On March 22, 2006, Atmel Corporation filed this suit, alleging infringement of the '114 patent. On May 1, 2006, Atmel Grenoble assigned its interest in its patents, including the '114 patent, to Atmel Switzerland. On November 1, 2006, Atmel Corporation filed an amended complaint joining Atmel Switzerland, Atmel France and Atmel SARL as Plaintiffs...

AuthenTec requested dismissal of the suit pursuant to Federal Rule of Civil Procedure 12(h)(3), that Atmel Corporation lacked standing to bring suit.

FRCP 12(h)(3) - Whenever it appears by suggestion of the parties or otherwise that the court lacks jurisdiction of the subject matter, the court shall dismiss the action.

The court ruled Atmel had standing: "the Federal Circuit has held that where an exclusive licensee has constitutional standing but lacks prudential standing, the litigation may be maintained if the licensee joins the patent owner."

In addition to constitutional standing, the Patent Act limits standing to sue for patent infringement. Title 35 U.S.C. § 281 provides, "A patentee shall have remedy by civil action for infringement of his patent." The Patent Act defines patentee as including "not only the patentee to whom the patent was issued but also the successors in title to the patentee." Id. at § 100(d). The Federal Circuit notes that these provisions "have been interpreted to require that a suit for infringement of patent rights ordinarily be brought by a party holding legal title." Popat Int'l Corp. v. Rpost, Inc., 473 F.3d 1187, 1189 (Fed. Cir. 2007). Nonetheless, the court also held,

Even if the patentee does not transfer formal legal title, the patentee may effect a transfer of ownership for standing purposes if it conveys all substantial rights in the patent to the transferee. In that event, the transferee is treated as the patentee and has standing to sue in its own name.

Id. Further, the court held that an exclusive licensee with less than all substantial rights in the patent also has constitutional standing but "must normally join the patent owner in any suit on the patent." Id. at 1193. The court made clear that the joinder of the patent owner "is a 'prudential' requirement, not a constitutional requirement based on Article III limitations, and that an action brought by the exclusive licensee alone may be maintained as long as the licensee joins the patent owner in the course of the litigation." Id. (citing Intellectual Prop. Dev., Inc. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333, 1348 (Fed. Cir. 2001), Mentor H/S, Inc. v. Med. Device Alliance, Inc., 240 F.3d 1016, 1019 (Fed. Cir. 2001)).