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Federal Circuit again dismisses patent case for lack of standing
January 30, 2007

The Federal Circuit has once again found the plaintiff in a patent infringement lawsuit did not have standing to bring its infringement claim. In order for a single plaintiff to have standing to assert infringement of a patent, that plaintiff must be the owner of the entire interest in the patent.

As succinctly stated by the court: "Absent the voluntary joinder of all co-owners of the patent, a co-owner acting alone will lack standing." As a result, the court affirmed the the lower court's decision disposing of the case for lack of standing.

More details of the case after the jump.

The case involved a series of agreements between several parties regarding research and development funding. The plaintiff, Israel Bio-Engineering Project (IBEP), agreed with Inter-Yeda, a joint venture between Yeda Research and Development and Inter-Lab, Limited, to provide funding for an approximately five-year research project. The agreements provided that any patents resulting from the research would be assigned to IBEP. The agreements expired in December, 1987. In April 1987, three scientists working on the project discovered and partially purified Tumor Necrosis Factor Binding Protein (TBP) from human urine. This protein binds to another protein in the body, Tumor Necrosis Factor (TNF), and can be used to treat rheumatoid arthritis.

In January 1988, after expiration of the R&D contract, another scientist began working with the group, and with his assistance, the TBP was purified to the extent its amino acid sequence could be determined. The patent that finally issued had three claims, one based on the April 1987 discovery, and two based on the work in 1988 on purification and sequencing. IBEP claimed it had the right to the full patent based on its prior agreements.

The court disagreed, finding that because the 1988 work with the new scientist was embodied in two of the claims, and that this work took place after the agreement expired, IBEP did not own the patent in full. IBEP did own an undivided share of the patent, however, as stated by the court, all co-owners must be voluntarily joined as plaintiffs in order for there to be standing to bring an infringement suit. This is a way for a co-owner to regulate who the patent is enforced against. Because the other co-owners did not voluntarily join as co-plaintiffs (in fact, they intervened and sought to have the case dismissed), IBEP could not bring its infringement claim.

This case illustrates the importance of not only having clear title to a patent before bringing an infringement suit, but also the need for clarity and accuracy in drafting intellectual property provisions in agreements. This whole matter could likely have been avoided had the initial agreement between the parties explicitly stated who owned the rights to work derived from work performed during the term of the R&D agreement.

To read the full decision in Israel Bio-Engineering Project v. Amgen Inc., click here.

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