Can Patent Co-Owners Get Relief?


Can patent co-owners get some relief?  That is the question the University of New Mexico is hoping that the U.S. Supreme Court can answer.  The research arm of the University of New Mexico, known as STC.UNM, is asking the Supreme Court for some relief, after the Federal Circuit ruled against it.  The case dates back to 2013, when STC-University of New Mexico filed a complaint in federal court in New Mexico against Intel Corporation, alleging that Intel was infringing on its patents for semiconductor technology.


The only problem with the lawsuit was that the patent’s co-owner, Sandia Corporation, refused to participate willingly.  The district court ruled that a patent co-owner could not bring a lawsuit without the support of the other co-owner, and dismissed the university’s suit.   The Federal Circuit agreed with the district court, holding that because Sandia refused to join the suit, as a patent co-owner, the university could not bring a claim.


Federal Circuit Judge Randall R. Rader wrote in the majority opinion that, “Because co-owner Sandia did no consent to join this infringement suit against Intel and cannot otherwise be involuntarily joined on these facts, STC cannot maintain its suit.”


After disappointment at the Federal Circuit, the University of New Mexico is hoping to have better luck with the highest court in the country.  It is asking the U.S. Supreme Court to grant a certiorari to hear the case.  It remains to be seen if the high court will take the case.


Thus far in the University of New Mexico case, Intel has successfully maintained a brilliant strategy—attacking the university’s standing to bring the case in the first place, regardless of whether or not the university has a case on the substantive merits.  This type of procedural knowledge and command of the ins and outs of litigation is crucial to success in intellectual property litigation.


If you are an Atlanta-area intellectual property holder and have questions your rights, you need an experienced Georgia business litigator who understands both litigation and intellectual property law on your side.  Attorney James J. (“Jim”) Thomas II has more than 35 years of courtroom experience in the Atlanta area, and has represented professional athletes, individuals and businesses of all sizes. Jim is a business litigation expert who can handle complex business and intellectual property litigation as well as analysis, evaluation, and resolution of existing and potential litigation.  Give Jim a call at 404-869-5248 or visit online.

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