Does using patents as loan collateral still create standing issues? | Farella Braun + Martel LLP
Traditionally, the Federal Circuit had been very strict that a plaintiff must own all the rights to a patent to have standing to bring a lawsuit. But in a few recent cases, the Federal Circuit has become more generous in its view that companies can still sue for patent infringement even if patents are used as loan collaterals or when a lender has an option to take over the patents in case of a default. It certainly seems like the Federal Circuit has recognized the business reality that companies may often use their IP as collateral for funding, and that such an arrangement should not automatically deprive the original owners/borrowers of their rights to enforce the patents.
The court explained that a plaintiff must have at least one exclusionary right against the defendant to establish an injury in fact. It then focused on whether IT had an exclusionary right in patents at issue.[15] The court explained that the district court incorrectly concluded that the bank’s option to assign or license the patents divested IT of its legal interest in the patents. Even if Main Street had a nonexclusive ability to license the patents upon default, IT retained its exclusionary rights because it shared the ability to license the patents. As the Federal Circuit explained, “a patent owner has exclusionary rights sufficient to meet the injury-in-fact requirement even where, without more, it grants another party the ability to license.”
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