Licensee Lacked Standing to Pursue Patent Infringement Claims Where It Had Not Been Granted Sufficient Rights Under the Patent

Case: Sicom Sys. v. Agilent Technologies, Inc., No. 05-1066 (Fed Cir. 10/18/05)

The One Sentence Summary: A licensee was not an "effective patentee" and lacked standing to pursue patent infringement claims when it had not been granted "all substantial rights" under the patent.


Federal Circuit Holdings:

• Plaintiff lacked standing to sue for infringement of the patent where it was only a licensee, and it did not have sufficient rights to be an "effective patentee."
• A patentee and its successors have the right to sue for infringment under 35 U.S.C. § 281. A licensee can sue for infringement only when it holds "all substantial rights" in the patent.
• Plaintiff did not have all substantial rights under this patent when the licensor retained substantial rights including the right to sue for non-commercial infringement, the right to veto sublicenses, and the right to approve litigation settlements.