Following the summary judgment ruling, STC and Intel crossmoved on the issue of standing concerning Sandia’s post2011 Assignment ownership of the ’998 patent. Unfortunately for STC, Sandia’s refusal to join the lawsuit resulted in dismissal for lack of standing under the holding in Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998) (“as a matter of substantive patent law, all coowners must ordinarily consent to join as plaintiffs in an infringement suit” and “one coowner has the right to impede the other coowner’s ability to sue infringers by refusing to voluntarily join in such a suit”). On appeal, STC argued that it should have been allowed to join Sandia involuntarily under Federal Rule of Civil Procedure 19(a) because the holding in Ethicon does not address or preclude Rule 19(a) joinder. The Federal Circuit emphatically disagreed stating: “To remove any doubt, this court holds that the right of a patent coowner to impede an infringement suit brought by another coowner is a substantive right that trumps the procedural rule of involuntary joinder under Rule 19(a).”
STC.UNM v. Intel Corp., 20131241 (Fed Cir. June 6, 2014) [Rader (opinion), Newman (dissenting), Dyk]