The Enduring Patent Owner/Licensee Standing Distinction

by Dennis Crouch

In Zebra Technologies Corporation v. Intellectual Tech LLC, No. 24-114, IT has filed its brief in opposition to Zebra's petition for writ of certiorari. The case focuses on patent-owner standing in situations where multiple entities share patent rights — particularly whether a patent owner loses Article III standing when because of a patentee default that provides a third party (here, a security interest holder) the right to license the patent.

• Petition for a Writ of Certiorari
• Response to Petition for Writ of Certiorari
• Dennis Crouch, Zebra's Stripes: Just So Stories about Patent Standing, Patently-O (Aug. 11, 2024)
• Dennis Crouch, Post-Default Creditor's Right to Assign, License and Enforce Patent does not Disturb Patentee's Separate Right to Sue Infringers, Patently-O (May 1, 2024)

This portion of the case stems from a 2011 loan agreement where OnAsset Intelligence (IT's parent company) pledged the asserted patent (US7233247) as collateral to Main Street Capital. After OnAsset defaulted in 2013, the security agreement gave Main Street significant rights, including the ability to "sell, assign, transfer, pledge, encumber or otherwise dispose of the Patents." OnAsset later assigned the patent to its subsidiary IT, who then sued Zebra for infringement. The key question is whether Main Street's post-default rights stripped IT of the exclusionary rights necessary for Article III standing. The Federal Circuit sided with the patentee - finding that IT retained sufficient rights as the patent owner even though Main Street had the concurrent ability to license the patent. That outcome is now being challenged at the Supreme Court, with Zebra arguing that the ability to obtain a license from Main Street negates IT's standing to sue for infringement.