The Federal Circuit, in an opinion by Judge O’Malley, did not hold back in expressing its displeasure in being asked to resolve a claim construction dispute in AntennaSys, Inc., v. AQYR Technologies, Inc. and Windmill International, Inc., which it found could not be resolved before various threshold issues were addressed, including a determination of whether the patent’s co-owner, Windmill, needed to have been joined as a plaintiff to the lawsuit, and whether Windmill previously authorized co-defendant and Windmill subsidiary, AQYR, to use the patent-in-suit.i Expressing that there was “little more frustrating for a district court judge than to have the parties jointly lead you down a wrong, and possibly unnecessary, path,” the Court remanded the unresolved, non-patent issues, back to the district court.ii
U.S. Patent No. 7,432,868 (“the patent-in-suit”), directed to portable antenna positioners, named two inventors, each of whom assigned their interests to their respective employers, AntennaSys (the plaintiff) and Windmill (one of the defendants).iii AntennaSys and Windmill then entered into a license agreement in which AntennaSys granted Windmill an exclusive license to its half-interest in the patent-in-suit.iv Under the agreement, Windmill was also required to form an LLC that would own both its one-half interest in the patent and its license to AntennaSys’s interest in the patent.v Windmill satisfied this obligation by creating the LLC “GBS Positioner.”vi
Subsequently, AntennaSys sued Windmill and a wholly owned subsidiary of Windmill, AQYR Technologies, in the District of New Hampshire.vii The suit contained five state law counts against Windmill and AQYR, and a count of patent infringement against only AQYR. After losing on claim construction, AntennaSys asked for summary judgment of non-infringement, and the district court entered judgment for Windmill and AQYR. AntennaSys appealed, challenging the lower court’s claim construction.viii Defendants responded that the merits need not be considered because AntennaSys lacked standing to bring its patent infringement claim without joining Windmill as a co-plaintiff, with AQYR separately raising the affirmative defense that it was authorized by Windmill, a co-owner, to practice the patent-in-suit.ix
Under 35 U.S.C. § 262, “each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.”x The two exceptions to this statutory requirement are 1) when a patent owner has granted an exclusive license...
