AsymmetRx sued Biocare Medical (CAFC 2009-1094) precedential

The district court booted the case in summary judgment because of Biocare's license. AsymmetRx appealed.

The parties to this appeal have focused on whether the district court properly interpreted the language of the Biocare License in finding that Biocare did not infringe any patent rights of AsymmetRx. We believe, however, that this appeal must be resolved by addressing an antecedent question: whether AsymmetRx had the statutory right to bring an action for infringement without joining the patent owner, Harvard. Because we find that AsymmetRx may pursue its infringement action against Biocare only if Harvard also participates in that action, we conclude that the district court's decision must be vacated.

The issue of AsymmetRx's standing to bring suit without Harvard joining as a plaintiff was not raised by either party or by the district court. However, an appellate court must satisfy itself that it has standing and jurisdiction whether or not the parties have raised them. See Mentor H/S, Inc. v. Med. Device Alliance, Inc., 240 F.3d 1016, 1018 (Fed. Cir. 2001). If standing and jurisdiction of a trial court are lacking, an appellate court may vacate a decision that was rendered on the merits at the trial level or, in rare instances, order joinder of a necessary party at the appellate level. See Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1381 (Fed. Cir. 2000) (reversing and vacating a decision on the merits for lack of standing and stating that the exercise of this court's authority to join a party at the appellate level should be used "sparingly"). Here, because neither party asserts that Harvard should be joined in this action at this point in the case, we vacate and remand.

A civil action for infringement may be brought by "a patentee." 35 U.S.C. § 281. A "patentee" is defined by statute to include the party to whom the patent was issued and the successors in title to the patent. 35 U.S.C. § 100(d). Accordingly, a suit for infringement ordinarily must be brought by a party holding legal title to the patent. See Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1130 (Fed. Cir. 1995). Parties not holding title to the patent have been accorded the right to sue, or "standing," only in certain limited circumstances.

From there, the panel analyzed this case in light of prior case law, and concluded that the next step is for the court to hear from Harvard, if AsymmetRx wants another bite at the apple.

That is not to say that if Harvard declines to participate voluntarily, the action cannot go forward. "A patentee that does not voluntarily join an action prosecuted by its exclusive licensee can be joined as a defendant or, in a proper case, made an involuntary plaintiff if it is not subject to service of process." Abbott, 47 F.3d at 1133 (citing Fed. R. Civ. P. 19(a); Indep. Wireless Tel. Co., 269 U.S. at 268-74; Phila. Brief Case Co. v. Specialty Leather Prods. Co., 145 F. Supp. 425 (D.N.J. 1956), aff'd, 242 F.2d 511 (3d Cir. 1957)). For the purposes of this case, we need not decide the nature of Harvard's participation, as it is unclear whether Harvard was ever given the opportunity to join the action at the district court. We thus conclude that Harvard did not convey all substantial rights under the '256 and '227 patents to AsymmetRx in the AsymmetRx License, and, as a result, AsymmetRx lacks statutory standing, on its own, to bring an infringement suit against Biocare.

Vacated and remanded.