Exclusive Field of Use Licensee Can't Sue in Its Own Name

International Gamco, Inc. v. Multimedia Games, Inc., [2007-1034](October 15, 2007)[RADER, Friedman, Moore] The Federal Circuit reversed the district court's denial of defendant's motion to dismiss, finding that an enterprise licensee did not have standing to bring an infringement action.
SIGNIFICANCE: An exclusive field of use licensee does not have standing to sue alone.
BRIEF: The district court concluded that Gamco held an "exclusive enterprise" license – a hybrid between a territorial license and a field of use license: "Rather than being restricted only to a geographic area or only to specific kinds of conduct Gamco’s rights are restricted to the operations of the New York State Lottery, an enterprise of the State of New York." With that characterization, the district court concluded that an exclusive enterprise licensee has standing to file suit in its own name. The Federal Circuit said that an exclusive licensee has standing to sue in its own name, without joining the patent holder, where “all substantial rights” in the patent are transferred. In such a case, the “exclusive licensee” is effectively an assignee. A territorial exclusive licensee does have standing to sue. The Federal Circuit then considered whether a field of use licensee had standing to sue. The Federal Circuit considered in Pope Manufacturing Co. v. Jeffery Manufacturing Co., 144 U.S. 248 (1892), as indicating that an exclusive field-of-use licensee did not have standing to sue. In Pope, the Supreme Court focused on conflicting claims against accused infringers and among the licensees. To alleviate this risk, the Federal Circuits’s prudential standing requirement compels an exclusive licensee with less than all substantial rights, such as a field of use licensee, to join the patentee before initiating suit. The Federal Circuit reversed the denial of defendant's motion to dismiss.