Morrow v. Microsoft (Fed. Cir. 2007)
In bankruptcy, AHC’s title to its patent transferred to a liquidating trust, AHLT. A second trust, GUCLT, was given the right to several causes of action, including patent infringement litigation (generally called Estate Litigation). GUCLT was not granted a license to make or use the patent.
Through its trustee, GUCLT sued Microsoft for infringing Patent No. 6,122,647 – a patent relating to dynamic generation of hypertext links. Microsoft was awarded summary judgment on the merits. On appeal, GUCLT had trouble even getting a hearing.
Standing: To have standing, a party must show injury:
- The patent title holder has standing to sue because infringement injures the patent holder’s right to exclude.
- An exclusive licensee usually has standing to sue because the infringement injures the licensee’s ‘exclusivity.’ When the exclusive licensee sues, the patent title holder must be joined as a co-plaintiff.
- A non-exclusive licensee usually does not have standing because they have no right to stop others from making or using the invention.
- A non-licensee also has no standing to sue.
GUCLT holds the contractual right to sue, but is not a licensee. Ergo, GUCLT does not have standing. (Under the bankruptcy plan, AHLT likewise has no right to bring litigation…)
Rule of Practice: A non-title-holder must be granted an exclusive license as well as full litigation rights in order to have standing to sue for patent infringement.