Transfer Of All Substantial Rights In The Patent Results In Transferee Becoming The Effective Owner For Purposes Of Standing

In Azure Networks, LLC v. CSR PLC, No. 13-1459 (Fed. Cir. Nov. 6, 2014), the Federal Circuit affirmed the district court's finding that Tri-County Excelsior Foundation ("Tri-County") be dismissed from the suit for lack of standing because Tri-County had effectively assigned Azure Networks, LLC ("Azure") U.S. Patent No. 7,756,129 ("the '129 patent"). The Federal Circuit also vacated the district court's judgment of noninfringement due to the district court's construction of the term "MAC address," and remanded to the district court for further proceedings.

Plaintiffs Azure and Tri-County filed suit against CSR PLC, Cambridge Silicon Radio International, LLC, Atheros Communications, Inc., Qualcomm Inc., Broadcom Corp., Marvell Semiconductor, Inc., Ralink Technology Corp. (Taiwan), and Ralink Technology Corp. (USA) (collectively "Appellees") for alleged infringement of the '129 patent. The '129 patent describes a wireless communication personal area network between a central hub device and surrounding peripheral devices that are in close proximity to the hub device. Relying on the specification, the district court concluded that the patentee acted as his own lexicographer and redefined the term "MAC address." The district court construed the term in the '129 patent as "a device identifier generated by the hub device." Slip op. at 5 (citation omitted). For purposes of appeal, Azure stipulated to a judgment of noninfringement under the district court's construction. The district court also granted the Appellees' motion to dismiss Tri-County from the suit for lack of standing. The district court concluded that Tri-County's title in the '129 patent and financial and reversionary interests were insufficient to confer standing upon Tri-County. Azure and Tri-County appealed Tri-County's dismissal.

"As the district court recognized, nothing about this relationship structure indicates that Tri-County has control over any aspect of litigation involving the '129 patent. Rather, it is clear that Azure is holding all the strings. In sum, Azure's exclusive right to sue, exclusive license, and freedom to sublicense are factors that strongly suggest that the Agreement constitutes an effective assignment." Slip op. at 11-12.

On appeal, the Federal Circuit held that the district court correctly granted the Appellees' motion to dismiss Tri-County due to lack of standing. The Court explained that "[e]ven if a patentee does not transfer legal title, it may...