Plaintiff Had Standing To Pursue Patent Infringement Action Against AOL And Google Where It Had Acquired All Substantial Rights To The Patent-In-Suit

Plaintiff Suffolk Technologies, LLC ("Suffolk") brought a patent infringement action against AOL and Google. Suffolk's complaint alleged that "AOL and Google have infringed U.S. Patent No. 6,082,835 (135 patent) entitled "Internet Server and Method of Controlling an Internet Server." The '835 patent claims a method of controlling an internet server whereby the server receives a hypertext transfer protocol file request from a web browser with an identification signal and then compares the identification signal with one or more predetermined identification signals, and based on the results of the comparison, a file may be transmitted from the server back to the requesting web browser."

AOL and Google filed a motion to dismiss the action based on lack of standing. As explained by the district court, "[t]his patent infringement suit presents the increasingly common, but always vexing jurisdictional question whether plaintiff, the assignee of the patent in issue, possesses ''all substantial rights' to the patent, such that it has standing to sue putative infringers."

The district court addressed the requirements for standing to bring a patent infringement action. "It is well settled that in order to determine whether a party holds title in a patent, a court must look beyond the name of the transfer, as '[w]hether a transfer of a particular right or interest under a patent is an assignment or a license does not depend upon the name by which it calls itself, but upon the legal effect of its provisions.' Waterman v. Mackenzie, 138 U.S. 252, 256 (1891). It is only 'if the patentee transfers all substantial rights under the patent, [that the transfer] amounts to an assignment and the assignee may be deemed the effective patentee . . . for purposes of [standing.]' Sicom Sys., Ltd., 427 F.3d at 976 (emphasis added). Put simply, for a successor in interest to have standing to sue, the patentee must have conveyed 'all substantial rights in the patent to the transferee.' Propat Int'l Corp, 473 F.3d at 1189; see Morrow v. Microsoft Corp., 499 F.3d 1332,1341 (Fed. Cir. 2007)."

The district court also noted that the "Federal Circuit has identified two rights as 'vitally important' to...