CO-INVENTOR OF LESS THAN ALL CLAIMS IS STILL A NECESSARY PARTY TO AN INFRINGEMENT ACTION

Lucent Technologies, Inc. v. Gateway, Inc., [2007-1546, -1580] (September 25, 2008) [PROST, Lourie, Bryson] The Federal Circuit affirmed the court’s grant of JMOL based on lack of standing for one patent and based on non-infringement for the other patent.
DISCUSSION: The Federal Circuit followed its decision in Israel Bio-Engineering that an inventor of one or more claims of the patent is an owner of all claims of the patent, to conclude that the plaintiff lacked standing to enforce one of the patents because that patent was co-owned by a non-party. On the issue of infringement, Lucent attempted to rely on circumstantial evidence of infringement, but in the end the Federal Circuit agreed with the district court that the circumstantial evidence presented by Lucent established only uncertainty and speculation as to whether infringement occurred