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IP News

By Jeffrey S. Ginsberg and Ian Moore
July 02, 2014

Patent Co-Owners Cannot Be Involuntarily Joined as Parties

On June 6, 2014, a panel of the Federal Circuit, made up of Judges Newman, Rader, and Dyk, issued a divided opinion in STC.UNM v. Intel Corp., Case No. 2013-1241. The opinion was authored by Judge Rader. In it, the Federal Circuit affirmed the District Court of New Mexico's dismissal of STC.UNM's (STC) patent infringement suit for lack of standing because non-party Sandia Corp., a co-owner of the patent, had not voluntarily joined as co-plaintiff. Judge Newman authored a dissent.

STC, a non-profit arm of the University of Mexico (UNM), was assigned UNM's interests in U.S. Patent No. 5,705,321 (the '321 patent) in 2002 and U.S. Patent No. 6,042,998 (the '998 patent) in 2007. STC co-owned the '321 patent with Sandia Corp., and STC owned the '998 patent outright. During the prosecution of the '998 patent, a terminal disclaimer was filed stating that the '998 patent would only be enforceable during the period in which the '321 and '998 patents were commonly owned.

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