Intellectual Property > IP Newsflash > Post-Complaint Events or Transactions Cannot Cure Prudential Standing Defects
01 Feb '16

The U.S. Supreme Court denied Alps South’s writ to review the Federal Circuit’s decision that the company lacked standing to assert its patent covering prosthetic liners against The Ohio Willow Wood Company. The district court initially found that the patent was valid and willfully infringed, and denied Ohio Willow’s motion to dismiss for lack of standing. On appeal, Ohio Willow argued that Alps South did not possess all substantial rights to the asserted patent. Alps South obtained the asserted patent via a license agreement in which the original licensor retained the rights to make and sell products outside the field of prosthetic liners. Because the license agreement had a field-of-use restriction and Alps South did not join the original assignee as a co-plaintiff, Ohio Willow argued that Alps South lacked standing to sue.

Alps South countered that it had prudential standing because the license agreement was amended after the complaint was filed, which retroactively granted Alps South all substantial rights effective as of the date of the original license agreement. Alps South also argued that the complaint was amended to reflect this amended license agreement, which cured Alps South’s prudential standing defect existed at the time the complaint was filed.

The Federal Circuit rejected Alps South’s arguments, holding that a jurisdictional defect that existed at the time the complaint was filed cannot be cured by post-filing activities or retroactive license agreements. It also held that a supplemental complaint does not become the operative complaint for determining jurisdictional and standing issues.

Alps South then filed a petition for a writ of certiorari challenging the Federal Circuit’s holdings, but the Supreme Court denied it without explanation, leaving the Federal Circuit’s holdings intact.

Alps South, LLC v. The Ohio Willow Wood Company, No. 15-567 (U.S. Supreme Court, Jan. 19, 2016).