• INTELLECTUAL PROPERTY LAWS

United States Court of Appeals for the Federal Circuit

Wiav Solutions LLC Vs. Motorola, Inc. and Ors. (Decided on 22.12.2010)

Infringement of patents - Licensing rights in the Mindspeed Patents - The rights stem from a series of spin offs and licensing agreements - Grant of motion to dismiss by the district Court - Whether Plaintiff-Appellant has constitutional standing to assert the Mind-speed Patents against the Defendants

Held, an exclusive licensee derives its standing from the exclusionary rights it holds, it follows that its standing will ordinarily be coterminous with those rights. But if an exclusive licensee has the right to exclude others from practicing a patent, and a party accused of infringement does not possess, and is incapable of obtaining, a license of those rights from any other party, the exclusive licensee's exclusionary right is violated.

Therefore, an exclusive licensee does not lack constitutional standing to assert its rights under the licensed patent merely because its license is subject not only to rights in existence at the time of the license but also to future licenses that may be granted only to parties other than the accused. If the accused neither possesses nor can obtain such a license, the exclu-sive licensee's exclusionary rights with respect to that accused party are violated by any acts of infringement that such party is alleged to have committed, and the injury predicate to constitutional standing is met. The ability of Mindspeed and Conexant to extend their licenses is limited to: (1) subsidiaries; (2) divested, spun off, or sold business units; and (3) joint development partners developing either a "Mindspeed Product" or a "Conexant Product," respectively. There is no evidence in the record that suggests the Defendants satisfy any of these criteria. Nothing in the record indicates that Skyworks has this right. The court reversed the judgment of the district court and remanded for further proceedings consistent with opinion.