Atmel Corp. v. Authentec, Inc. (PDF)
490 F. Supp. 2d 1952
Decided June 11, 2007
Judge Wilken

Judge Wilken was faced with Defendant Authentec’s motion to dismiss for lack of standing pursuant to FRCP 12(h)(3). Atmel sued Authentec for patent infringement of the ‘114 patent. The ‘114 patent was issued and assigned to Thomson-CSF. Thereafter, Thomson-CSF assigned the patent to a third party along with the majority shares in its subsidiary, TCS. At some point after the assignment, TCS became known at Atmel Gernoble. Atmel Gernoble is a subsidiary of Atmel Paris, which is in turn a subsidiary of Atmel Corp. Later Atmel Gernoble assigned the rights in the ‘114 patent to Atmel Switzerland. In the United States, Atmel Corp. has alone practiced the ‘114 patent.

Defendant argued that at the time the original complaint was filed, Atmel Corp. did not own the patent and was not an exclusive licensee. At the time the complaint was filed, Atmel Corp. was the only plaintiff and the ’114 patent was the only patent in suit. Plaintiff counters that Atmel Corp. has exclusive rights to the ‘114 patent and that, as the parent company, it acts as an exclusive licensee to the patent.

Judge Wilken cites Propat Int’l Corp. v. RPost US, Inc., 473 F.3d 1187, 1189 (Fed. Cir. 2007) to state

the court held that an exclusive licensee with less than all substantial rights in the patent also has constitutional standing but “must normally join the patent owner in any suit on the patent.”

Contrast this with the recent case about appellate standing discussed by Patently-O earlier this week.

Judge Wilken relied heavily upon a case from the Western District of Michigan in holding that

Atmel Corporation had constitutional standing as an exclusive licensee at the inception of the case and cured the defect in prudential standing when it joined Atmel Switzerland, the patent owner.

Being a parent company of the patent owner, and the fact that Atmel Corp. controlled the patent were key factors in this holding.