Wednesday, May 13, 2020

All appellants lose in CAFC Arkwright case

Of legal background

When the district court entered the judgment at issue
in this appeal, it did not have the benefit of our recent precedential decision in Lone Star Silicon Innovations LLC v.
Nanya Tech. Corp., 925 F.3d 1225, 1299 (Fed. Cir. 2019).
Nor did the parties when they filed their appellate briefs.
In Lone Star, we made clear that whether one qualifies as
a patentee under 35 U.S.C. § 281 is a statutory prerequisite
to the right to relief in a patent infringement action, but
does not implicate the district court’s subject matter jurisdiction. There, we recognized that intervening Supreme
Court precedent made clear that our earlier decisions
treating the prerequisites of the Patent Act as jurisdictional were wrong. We expressly held that “[w]e therefore
firmly bring ourselves into accord with Lexmark [Int’l, Inc.
v. Static Control Components, Inc., 572 U.S. 118 (2014)]
and our sister circuits by concluding that whether a party
possesses all substantial rights in a patent does not implicate standing or subject-matter jurisdiction.” Lone Star,
925 F.3d at 1235–36. As long as a plaintiff alleges facts
that support an arguable case or controversy under the Patent Act, the court has both the statutory and
constitutional authority to adjudicate the matter. Id. at
1235 (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 128 n.4 (2014)). Because Ms.
Schwendimann’s Complaint contained such allegations—
that she is the owner by assignment of the ’845 patent and
Appellants infringed that patent—there is no “standing” issue to be decided in this appeal.6

The questions decided:

Thus, despite the way the parties have framed the issue in their briefing, the only questions we must decide are
whether Ms. Schwendimann was a patentee at the time her
action was filed and, if that status was conferred upon her
by assignment, whether that assignment is reflected in a
written instrument within the meaning of 35 U.S.C. § 261.
We answer both questions in the affirmative.

Of Arkwright's arguments

[Arkwright] argues that the District Court lacked the
authority to reform the writing after the fact to reflect the
parties’ understanding as of 2002 and that, if it did have
that authority, the assignment would not be effective until
the reformation actually occurred and the writing requirement was satisfied. We disagree on both points.


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