Fed. Circ.’s Latest Patent-Specific Rule May Rile Justices

September 18, 2014 – In The News

Gerard Norton was quoted in the Law360 article “Fed. Circ.’s Latest Patent-Specific Rule May Rile Justices.” While the full text can be found in the September 18, 2014, issue of Law360, a synopsis is noted below.

A split Federal Circuit decision that patent co-owners cannot be forced to join an infringement suit may be ripe for U.S. Supreme Court review since it appears to set a rule that applies only in patent law, a practice by the appeals court that the justices have repeatedly criticized.

The full Federal Circuit voted not to conduct an en banc review of a decision dismissing a semiconductor patent suit by the University of New Mexico’s licensing arm against Intel Corp. because the co-owner of the patent, Sandia Corp., decided to “take a neutral position” and not join the case.

Norton said that he believed the Federal Circuit majority reached the right conclusion, but that the dissent’s suggestion that it set a different rule for patent cases means “there’s a good chance the Supreme Court would take it.”

“They have not been afraid to speak their mind on patents and tell the Federal Circuit that they’re wrong,” he said.

Norton said that the approach taken by the majority gets it right because it recognizes that all co-owners have an undivided interest in the patent. To establish standing, they all have to consent to an infringement suite, he said, because otherwise the defendant could be sued more than once by different co-owners.

The dissent calling for involuntary joinder “doesn’t recognize the unique attributes of patents,” he said, and ignores case law going back decades requiring the consent of all co-owners.