UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`In the Matter of
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`CERTAIN ACTIVE MATRIX
`ORGANIC LIGHT-EMITTING DIODE
`DISPLAY PANELS AND MODULES
`FOR MOBILE DEVICES, AND
`COMPONENTS THEREOF
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`Inv. No. 337-TA-1351
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`ORDER NO. 44:
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`INITIAL DETERMINATION GRANTING RESPONDENTS’
`MOTION FOR SUMMARY DETERMINATION OF LACK OF
`STANDING
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`(January 9, 2024)
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`On November 15, 2023, Respondents Mianyang BOE Optoelectronic Technology Co.,
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`Ltd., Injured Gadgets, LLC, Parts4LCD, Phone LCD Parts LLC, and Wholesale Gadget Parts, Inc.
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`(collectively, “Respondents”) moved (1351-014) for summary determination that Complainant
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`Samsung Display Co., Ltd. (“Samsung Display” or “SDC”) lacks standing to bring and maintain
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`this investigation. On November 27, 2023, Samsung Display opposed the motion. See EDIS Doc.
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`ID 809326 (“Opp.”).1 The Commission Investigative Staff (“Staff”) filed a response in support of
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`the motion. EDIS Doc. ID 809338 (“Staff Resp.”).
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`In its complaint,
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`Display disclosed
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` Nine days before the close of fact discovery, Samsung
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`1 I note that Samsung Display’s opposition violates my Ground Rules. Ground Rule 5.4.2.2 limits
`responses to motions for summary determination to 25 pages. Although Samsung Display’s motion
`is 25 pages, Samsung Display uses single-spaced font for portions of its response in violation of
`Ground Rule 1.2. See Opp. at 5-8.
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`Respondents brought this issue to my attention via a letter pursuant to Ground Rule 5.4.1.1.
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`I held a case management conference on October 5, 2023, during which Samsung Display
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`represented
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` I ordered the parties to submit briefs on the issue of standing and further ordered Samsung
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`Display to provide additional discovery. Id. at 34:20-39:11. In its brief on standing, Mianyang
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`BOE stated that it was awaiting additional discovery but that “[o]nce that discovery is produced,
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`Mianyang BOE will review it and consider next steps in terms of how best to present the issue to
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`the ALJ for resolution.” EDIS Doc. ID 806420 at 15. I therefore directed Respondents to identify
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`the next steps on the standing issue. Order No. 33 (Oct. 24, 2023). After receiving the parties’
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`responses, I informed the parties that this issue was best addressed through a motion for summary
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`determination.
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`In its motion, Respondents assert that Samsung Display
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`Display cannot meet its burden to prove standing and the Investigation should be terminated. Id.
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` Respondents therefore argue that Samsung
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`at 25.
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`Samsung Display asserts that the evidence shows that
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`2 The Asserted Patents are U.S. Patent No. 7,414,599, U.S. Patent No. 9,330,593, U.S. Patent No.
`9,818,803, U.S. Patent No. 10,854,683, and U.S. Patent No. 11,594,578.
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` Samsung Display also argues that
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`Respondents’ legal argument must fail. It concludes that “it would be plain legal error to extend
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`[the Federal Circuit’s] holding [in WiAV Solutions LLC v. Motorola, Inc., 631 F.3d 1257 (Fed. Cir.
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`2010] about a special restriction on standing of exclusive licensees to apply to patentees.” Id. at
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`22.
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`Staff supports Respondents’ motion. Staff Resp. at 2. Staff asserts that the evidence
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`demonstrates that
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`I.
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`LEGAL PRINCIPLES
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`Summary determination is appropriate when there is no genuine issue as to any material
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`fact and the moving party is entitled to a determination as a matter of law. See 19 C.F.R. § 210.18.
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`“The determination sought by the moving party shall be rendered if pleadings and any depositions,
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`answers to interrogatories, and admissions on file, together with the affidavits, if any, show that
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`there is no genuine issue as to any material fact and that the moving party is entitled to a summary
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`determination as a matter of law.” Id. at § 210.18(b). In determining whether there is a genuine
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`issue of material fact, “the evidence must be viewed in the light most favorable to the party
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`opposing the motion with doubts resolved in favor of the nonmovant.” Crown Operations Int’l,
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`Ltd. v. Solutia, Inc., 289 F.3d 1367, 1374 (Fed. Cir. 2002) (citations omitted).
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`Commission Rule 210.12 requires that intellectual property-based complaints “include a
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`showing that at least one complainant is the owner or exclusive licensee of the subject intellectual
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`property.” 19 C.F.R. § 210.12(a)(7). In applying this rule, the Commission has adopted the
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`standing requirement established by the federal courts in patent infringement cases. See SiRF
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`Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1326 n.4 (Fed. Cir. 2010) (noting the
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`Commission strictly reads the federal standing precedent into its rules of procedure); Certain
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`Optical Drives, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-897,
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`Comm’n Op. at 4, EDIS Doc. No. 548902 (Dec. 4, 2014) (public version Jan. 7, 2015) (“Optical
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`Drives”); see also Certain Audio Processing Hardware, Software, & Prods. Containing the Same,
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`Inv. No. 337-TA-1026, Comm’n Op. at 9 n. 6 (Apr. 18, 2018) (“Audio Processing”) (“Although
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`the Commission is not part of the judicial branch . . . the Commission has applied the standing
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`requirement established by courts in patent infringement cases in determining compliance with
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`Commission Rule 21.12(a)(7).” Complainants bringing an action under 19 U.S.C. § 1337(a)(1)(B)
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`based on patent infringement must therefore show that they have constitutional standing to assert
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`patent rights. Optical Drives, Comm’n Op. at 4.
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`Constitutional standing requires that a plaintiff (1) suffer an injury in fact, (2) show a
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`proximate causal connection between the injury and the defendant’s conduct and (3) show that the
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`injury would be redressable by a favorable court decision.” Audio Processing, Comm’n Op. at 9.
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`“In causes of action involving patent infringement, the Patent Act is the source of these legally
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`protected interests.” Id.
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`The Supreme Court has explained that “a statutory cause of action extends only to plaintiffs
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`whose interests ‘fall within the zone of interests protected by the law invoked.’” Lexmark, 572
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`U.S. 118 at 129 (citations omitted). In the scheme the Commission has adopted from the federal
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`courts, the relevant statute for this analysis is the Patent Act, which grants exclusive rights to a
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`patentee. See 35 U.S.C. §§ 154(a)(1), 281; Optical Drives, Comm’n Op. at 4–5. The Patent Act
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`requires that a complaint of patent infringement “be brought by a party holding legal title to the
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`patent.” Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1130 (Fed. Cir. 1995); see also Ball v.
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`Coker, 168 F. 304, 307 (D.S.C. 1909) (“[N]o person may bring suit for profits or damages for
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`infringement who is not the patentee, or such assignee or grantee as the statute points out.”).
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`Complainant bears the burden of establishing standing. See Sicom Sys., Ltd. v. Agilent Techs., Inc.,
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`427 F.3d 971, 976 (Fed. Cir. 2005) (stating that the party bringing suit has the burden of
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`establishing that it has standing).
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`II.
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`FACTUAL BACKGROUND
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`A.
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`Overview
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`In its response, Staff notes:
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`reach this conclusion.
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`Samsung Display asserts that there is a dispute of material fact as to
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` For the reasons set forth below, I also
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` It is Samsung Display’s burden to prove standing. Sicom, 427 F.3d at 976. As
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`explained in more detail below, Samsung Display is unable to meet this burden.
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`B.
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`Undisputed Facts
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`I find that the following facts are undisputed:
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`1.
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`Samsung Display holds legal title to the Asserted Patents by assignments recorded
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`at the U.S. Patent and Trademark Office. Opp. Ex. 1.
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`9.
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`C.
`From these undisputed facts, I find that, for purposes of this order,
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`2.
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` In a case where the non-moving party bears the burden of proof at trial, the
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`moving party can meet its initial burden by showing that there is an absence of evidence in the
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`record necessary to prove an element of the non-moving party’s case. See Celotex Corp. v. Catrett,
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`477 U.S. 317, 323, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). “[I]n rendering a decision on a
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`motion for summary judgment, a court must ‘view the evidence presented through the prism of the
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`substantive evidentiary burden’ that would inhere at trial.” Monarch Knitting Mach. Corp. v.
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`Sulzer Morat Gmbh, 139 F.3d 877, 880-881 (Fed. Cir. 1998) (quoting Anderson v. Liberty Lobby,
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`Inc., 477 U.S. 242, 254 (1986)). Thus, the non-moving party’s substantive, evidentiary burden at
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`trial must be considered in determining whether there is an absence of evidence in the record
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`necessary to prove an element of the non-moving party’s case. For the reasons set forth below, I
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`find that Samsung Display cannot meet its burden to show that
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`Opp. at 6. For purposes of summary determination, I must view this evidence in the light most
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`favorable to Samsung Display.
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`This does not end the inquiry, however. First,
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`. See, e.g., Doe v. United States, 58 Fed. Cl. 479, 483 (Ct. Cl. 2003)
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`(“Although Plaintiff has stated in his affidavit that he had an oral contract . . . that bare assertion
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`is not sufficient to create a genuine issue of material fact . . . . [S]elf-serving affidavits without
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`factual support in the record will not defeat a motion for summary judgment.”); Aguirre v. Valerus
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`Field Sols. LP, No. 4:15-CV-03722, 2019 WL 989413, at *1 (S.D. Tex. Mar. 1, 2019) (“[B]are
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`assertions from deposition testimony, without evidence supporting the claims during the
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`deposition, are insufficient at the summary judgment stage.”); Jones v. Lowndes Cnty., Miss., 678
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`F.3d 344, 348 (5th Cir. 2012) (non-movant cannot avoid summary judgment by relying on
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`“[c]onclusional allegations and denials, speculation, improbable inferences, unsubstantiated
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`assertions and legalistic argumentation”).
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`III. OVERVIEW OF THE LEGAL LANDSCAPE
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`The question before me is
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` This issue has not been precisely
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`addressed in a precedential opinion by either the Supreme Court or Federal Circuit. Additionally,
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`there are varied opinions on standing that are sometimes inconsistent and confusing. Indeed, “the
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`standing rules in [patent] law appear to be as much a patchwork as Dr. Frankenstein’s monster,
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`and only marginally more coherent.” Roger D. Blair & Thomas F. Cotter, The Elusive Logic of
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`Standing Doctrine in Intellectual Property Law, 74 Tul. L. Rev. 1323, 1328 (2000).
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`The private parties and Staff discuss three district court opinions and dicta in a Federal
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`Circuit opinion that address this issue. Each of these opinions are discussed in more detail below.
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`Further, the district court opinions rely heavily on the Federal Circuit’s decision in WiAV Solutions
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`LLC v. Motorola, Inc., 631 F.3d 1257 (Fed. Cir. 2010). As WiAV specifically addresses the issue
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`of constitutional standing (as opposed to other Federal Circuit cases which, as discussed more fully
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`below, do not), I find that it is useful to discuss this case in detail at the outset as well.
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`A.
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`The WiAV Opinion
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`In 2010, the Federal Circuit issued the WiAV opinion. WiAV concerned the question of
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`whether an exclusive licensee to a patent has constitutional standing. The court explained: “Article
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`III, § 2 of the Constitution limits the jurisdiction of federal courts to ‘Cases’ or ‘Controversies.’
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`The doctrine of constitutional standing serves to identify which disputes fall within these broad
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`categories and therefore may be resolved by a federal court.” Id. at 1263-1264 (citing Elk Grove
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`Unified Sch. Dist v. Newdow, 542 U.S. 1, 11, 124 S. Ct. 2301, 159 L.Ed.2d 98 (2004); Lujan v.
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`Defenders of Wildlife, 504 U.S. 555, 560, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992).) The court then
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`stated: “For a party to establish constitutional standing, it must ‘show that the conduct of which
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`[it] complains has caused [it] to suffer an ‘injury in fact’ that a favorable judgment will redress.”
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`Id. at 1264 (citing Elk Grove, 542 U.S. at 12, 124 S.Ct. 2301).
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`The court noted that “often a statute creates the necessary legally protected interest” and
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`that “[t]he Patent Act of 1952 is the source of the legally protected interests at issue” in WiAV. Id.
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`The court then explained that the “legally protected interests in a patent are the exclusionary rights
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`created by the Patent Act,” and thus “a party holding one of more of those exclusionary rights . . .
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`suffers a legally cognizable injury when an unauthorized party encroaches upon the rights and
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`therefore has standing to sue.” Id. at 1264-1265. “Thus, the touchstone of constitutional standing
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`in a patent infringement suit is whether a party can establish that it has an exclusionary right in a
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`patent that, if violated by another, would cause the party holding the exclusionary right to suffer
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`legal injury.” Id. at 1265.
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`The court asserted: “Because an exclusive licensee derives its standing from the
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`exclusionary rights it holds, it follows that its standing will ordinarily be coterminous with those
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`rights.” Id. at 1266. The court presented two scenarios: (1) “an exclusive licensee lacks standing
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`to sue a party for infringement if that party holds a preexisting license under the patent to engage
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`in the allegedly infringing activity” and (2) “an exclusive licensee lacks standing to sue a party
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`who has the ability to obtain such a license from another party with the right to grant it.” Id. The
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`court noted that, “[i]n both of those scenarios, the exclusive licensee does not have an exclusionary
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`right with respect to the alleged infringer and thus is not injured by that alleged infringer.” Id. If,
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`however, “an exclusive licensee has the right to exclude others from practicing a patent, and a
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`party accused of infringement does not possess, and is incapable of obtaining, a license of those
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`rights from any other party, the exclusive licensee’s exclusionary right is violated.” Id. at 1266-
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`1267. The court therefore held:
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`[A]n 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 exclusive 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.
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`Id. at 1267. After applying the law to the facts of the case, the court found that WiAV had standing.
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`Id.
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`B.
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`District Court Opinions
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`Three recent district court opinions extended WiAV to hold that a patent owner lacks
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`constitutional standing if a third party has an unfettered right to sublicense the asserted patent. Two
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`of these decisions (as well as the Federal Circuit decision addressed below) relate to the same
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`patent licensing agreement. It is thus useful to provide some overall background on the licensing
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`agreement at issue in those cases.
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`In 2014, Uniloc Luxembourg and Uniloc USA, Inc. (hereinafter, “the Unilocs”) entered
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`into financial agreements with Fortress Credit Co., LLC (“Fortress”) to fund its litigations via a
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`loan. Uniloc USA, Inc. v. Apple, Inc, No. C 18-00358 WHA, 2020 WL 7122617, at *1 (N.D. Cal.
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`Dec. 4, 2020) (hereinafter, “Uniloc California”). These agreements included a Conformed
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`Revenue Sharing and Note and Warrant Purchase Agreement and a Patent License Agreement. Id.
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`Under the terms of the agreements, “Fortress agreed to loan the Unilocs up to $26 million and
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`purchased stock options in Uniloc Luxembourg; in return, the Unilocs granted Fortress a share of
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`their revenues.” Uniloc USA, Inc. v. Motorola Mobility, LLC, Civil Action No. 17-1658-CFC,
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`2020 WL 7771219, at * 1 (D. Del. Dec. 30, 2020) (hereinafter, “Uniloc Delaware”). “As security
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`for the $26 million loan, the Unilocs granted Fortress a license in a patent portfolio.” Id.
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`Specifically, the agreement granted Fortress “a non-exclusive, royalty free, license (including the
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`right to grant sublicenses) with respect to the Patents.” Uniloc California, 2020 WL 7122617, at
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`*1. “Aside from agreeing to seek the Unilocs’ consent before granting sublicenses that would
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`impose financial burdens on them, Fortress held an unfettered right in its ‘sole and absolute
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`discretion’ to license the [asserted] patent to the world.” Id. at *7.
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`The agreement did, however, include the condition that Fortress “shall only use such
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`license following an Event of Default.” Id. In both of the district court opinions discussed below,
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`the courts found that the Uniloc plaintiffs had defaulted. Uniloc California, 2020 WL 7122617 at
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`*4-*6; Uniloc Delaware, 2020 WL 7771219 at *7.
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`1.
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`Uniloc California
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`In the first of the Uniloc cases, the U.S. District Court for the Northern District of California
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`held that the Unilocs’ “patent licensing scheme divested them of exclusionary rights and, thus, of
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`Article III standing.” Uniloc California, 2020 WL 7122617, at *1. In finding that the Unilocs
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`lacked standing, the court explained that “a party ‘derives its standing from the exclusionary rights
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`its holds,” and “its standing will ordinarily be conterminous with those rights.” Id. at * 7 (citing
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`WiAV, 631 F.3d at 1266). The court compared the situation to that of an exclusive licensee, noting
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`that the Federal Circuit has held that “an exclusive licensee lacks standing to sue a party who has
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`the ability to obtain such a license from another party with the right to grant it.” Id. (quoting WiAV,
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`631 F.3d at 1266). The court recognized that the situation of a patentee is different than that of an
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`exclusive licensee, but rejected Uniloc’s contention that its status as a patent owner necessarily
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`confers Article III standing. Id. The court stated: “A patent licensee’s right to grant an
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`unencumbered sublicense renders even the patent owner’s right to exclude (and, thus, to sue)
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`illusory.” Id. (citing Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp., 604
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`F.3d 1354, 1362 (Fed. Cir. 2010) (emphasis in original). Because Fortress “held an unfettered right
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`in its ‘sole and absolute discretion’ to license” the patent, the court found that “[n]either Uniloc
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`Luxembourg nor Uniloc USA could have had an expectation that others would not practice the
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`[patent] and would not have been injured if and when others did so.” Id.
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`The Uniloc court also rejected the Unilocs’ argument that “under [Mann] there must always
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`be a patent owner . . . who has the right to sue and that any other result would be absurd.” Id. The
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`court explained that Mann held that there could only be one patent owner holding “all substantial
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`rights,” but it did not hold that there must always be one.” Id. (emphasis added). The court further
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`explained that a scenario in which no one has the right to sue a particular defendant was not absurd.
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`The court reasoned:
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`This is still America; the free market is our default, and the patent is an aberration.
`Among our ordinary property rights comes the right to destroy, a right consistent
`with and applicable to the fleeting property interest of a patent which might be
`destroyed by failure to pay maintenance fees, voluntary commitment to the public
`domain, or other means. 35 U.S.C. § 41(b). Regardless, a licensing scheme that
`divests all interest holders of standing does not destroy a patent. It merely prevents
`suit until a restructuring of the interests among them. “While parties are free to
`assign some or all patent rights as they see fit based on their interests and objectives,
`this does not mean that the chosen method of diversion will satisfy standing
`requirements.” Morrow, 499 F.3d at 1341, fn. 8.
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`Id. As such, the court found that the Unilocs did not have Article III standing. Id. at * 8.
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`2.
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`Uniloc Delaware
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`The U.S. District Court for the District of Delaware reached the same conclusion with
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`respect to the Unilocs. The court concluded that “constitutional standing . . . does not depend on
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`labels; it is the substance of the allegations that matters.” Uniloc Delaware, 2020 WL 7771219 at
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`*5 (quoting Lone Star Silicon Innovations LLC v. Nanya Tech. Corp., 925 F.3d 1225, 1234 (Fed.
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`Cir. 2019). In reaching this conclusion, the court first explained that “a plaintiff’s standing does
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`not turn on whether it is designated a patentee, patent owner, patent holder, or exclusive licensee.”
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`Id. Instead, “[t]he substance that matters is whether the plaintiff has exclusionary rights.” Id. The
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`court then noted: “[A]t its core, the right to exclude is the legal right to prevent others from
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`practicing the asserted patent.” Id.
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`The court also addressed the WiAV decision and noted that “nothing in WiAV suggests that
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`its holding should be limited to exclusive licensees.” Id. The court explained that “[t]he fact that
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`the plaintiff was designated in the applicable contract in WiAV as an exclusive licensee was
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`relevant only insofar as the contract gave the plaintiff the exclusionary rights that accompanied the
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`asserted patent.” Id.
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`Next, the court rejected the Unilocs’ argument that extending WiAV to cover patentees who
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`grant a licensee the ability to sublicense will lead to “the absurd result that no one could bring
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`suit.” Id. at *6. The court explained that “this argument ‘would convert standing into a requirement
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`that must be observed only when satisfied.’” Id. (citing Valley Forge Christian College v.
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`Americans for Separation of Church & State, Inc., 454 U.S. 464, 489 (1982)). The court noted that
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`“[g]ranting a third party the right to license a patent in that party’s sole and absolute discretion has
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`consequences. One of those consequences is the loss of the exclusionary rights in the patent.” Id.
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`The court concluded: “In sum, under WiAV, the plaintiff is an infringement case – regardless of
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`whether the plaintiff is the owner of the asserted patent or a licensee – does not possess the right
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`to exclude the defendant from practicing the patent and therefore lacks constitutional standing to
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`sue that defendant if another party has the ability to grant the defendant a license to the patent.”
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`Id.
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`The court then addressed the argument that Lone Star found that a plaintiff with merely the
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`ability to license a patent or forgive infringement has standing. Id. The court noted that this
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`argument
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`cannot be reconciled with (1) the Federal Circuit's en banc holding in [Rite-Hite
`Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed. Cir. 1995)] that “[t]o be an exclusive
`licensee [i.e., to have exclusionary rights] for standing purposes, a party must have
`received . . . the patentee’s express or implied promise that others shall be excluded
`from practicing the invention . . . .” 56 F.3d at 1552; (2) the court’s holding in
`[Textile Productions Inc. v. Mead Corp., 134 F.3d 1481 (Fed. Cir. 1998)] that a
`licensee is an exclusive licensee and has constitutional standing only “if the
`patentee has promised, expressly or impliedly, that ‘others shall be excluded from
`practicing the invention’ . . . .” 134 F.3d at 1484 (quoting Rite-Hite); or (3) the
`court’s holding in WiAV that a licensee does not have exclusionary rights in a patent
`if a third-party could license a defendant’s infringing activity.
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`Id. The court ultimately concluded that the Unilocs lacked standing under the legal framework set
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`forth in its opinion. Id. at * 8.
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`3.
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`Intellectual Tech
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`The third decision is Intellectual Tech LLC v. Zebra Techs. Corp., No. 6:19-cv-00628
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`ADA, 2022 WL 1608014 (W.D. Tex. May 20, 2022). In this case, Intellectual Tech LLC’s
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`(“Intellectual Tech”) parent company, OnAsset Intelligence, Inc. (“OnAsset”), entered into an
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`agreement with Main Street Capital Corporation (“Main Street”), in which OnAsset gave Main
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`Street a security interest in the patent in exchange for a loan. Id. at * 1. The agreement provided
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`that, if OnAsset defaulted, Main Street could “at its option,” “sell, assign, transfer, pledge,
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`encumber or otherwise dispose” of the patent. Id. at *3. OnAsset defaulted on the loan, but the
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`parties entered a forbearance agreement which required OnAsset to engage in certain monetization
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`actions with respect to the patent. Id. OnAsset then formed Intellectual Tech. and assigned it the
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`patent. Id. The court found that the forbearance agreement “did not act to revert Main Street’s
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`rights in the [patent] to” Intellectual Tech. Id. at *4. Thus, the court found that Main Street still
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`“possessed an unfettered right to license” the patent. Id. at *7.
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`The court concluded that, because the defendant had the ability to obtain a license from
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`Main Street, Intellectual Tech “could not have an exclusionary right against [the defendant] to
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`engender Article III standing.” Id. at * 7. The court joined Uniloc California and Uniloc Delaware
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`in extending WiAV to find that “a patent owner lacks constitutional standing if a third party has an
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`unfettered right to sublicense the asserted patent.” Id. at *6.
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`In denying Intellectual Tech’s subsequent motion for reconsideration, the court further
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`explained:
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`The WiAV and Uniloc opinions laid down the following principle: a patent title
`holder can deprive itself of exclusionary rights by vesting a third party with a right
`to assign or sublicense the patent (even if the third party never exercises those
`rights). The Court cannot stress this point enough: holding title to a patent is not the
`same as holding exclusionary rights to a patent. In the Uniloc opinions, the patent
`title holders, the Unilocs, did not have exclusionary rights because they vested a
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`third party, Fortress with a right to sublicense the patent. Fortress did not have an
`exclusionary right in the asserted patent, but Fortress’s right to sublicense the same
`sufficed to deprive the Unilocs of their exclusionary right.
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`Intellectual Tech LLC v. Zebra Tecs. Corp., No. 6:19-cv-00628-ADA, 2022 WL 3088572 at *2
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`(W.D. Tex. Aug. 3, 2022).
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`C.
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`Federal Circuit Dicta
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`In 2022, the Federal Circuit heard an appeal of Uniloc Delaware (along with the appeal of
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`another matter involving the Unilocs). Uniloc USA, Inc. v. Motorola Mobility LLC, 52 F.4th 1340
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`(Fed. Cir. 2022). In the appeal, the defendants argued that the decision in Uniloc California –
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`which had become final by the dismissal of the appeal) – “establishes that [the Unilocs] lack
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`standing as a matter of collateral estoppel.” Id. at 1343. The Federal Circuit agreed and therefore
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`affirmed the district court’s decisions that the Unilocs lacked standing. Id.
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`In its discussion, the Federal Circuit commented that there “is considerable force to
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`Uniloc’s argument that, even if Fortress had been granted a license and an unfettered right to
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`sublicense, Uniloc would have Article III standing.” Id. at 1345. The court noted: “Patent owners
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`and licensees do not have identical patent rights, and patent owners arguably do not lack standing
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`simply because they granted a license that gave another party the right to sublicense the patent to
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`an alleged infringer.” Id. The court noted, however, that it “need not resolve the question of
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`whether a patent owner who granted a right to sublicense lacks standing here.” Id.
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`Judge Lourie submitted separate comments on the issue of standing. He noted: “In my
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`view, there is more than considerable force to [the Unilocs’ argument]; it is clear that Uniloc still
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`had the right to sue unlicensed infringers after it granted the license.” Id. at 1351. According to
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`Judge Lourie, the Uniloc Delaware court “so misconstrued the license issue that something further
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`needs to be said about it.” Id. Judge Lourie stated that “the patentee still retains the right to sue
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`unlicensed infringers” and that the non-exclusive license “only grants a licensee freedom from
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`suit; it does not divest the licensor of its right to sue or license other parties, or to practice the
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`patent itself.” Id. He further stated that while “[i]t is true that the licensee could preempt such a
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`suit by granting a sublicense, immunizing the purported infringer,” that scenario “is a far cry from
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`holding that the patent owner, simply by having granted a non-exclusive license with the right to
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`sublicense, loses the power to sue an unlicensed infringer.” Id.
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`IV. ANALYSIS
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`Bearing this background in mind, I turn to the legal question at hand:
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`The Federal Circuit has made it clear that it is the violation of the exclusionary rights that
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`come with a patent that constitutes the injury-in fact necessary for Article III standing in a patent
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`infringement case. In WiAV, for example, the court explained that “the touchstone of constitutional
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`standing in a patent infringement suit is whether a party can establish that it has an exclusionary
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`right in a patent that, if violated by another, would cause the party holding the exclusionary right
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`to suffer legal injury.” 631 F.3d at 1265. Similarly, in Morrow v. Microsoft Corp., 499 F.3d 1332
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`(Fed. Cir. 2007), the court explained: “Constitutional injury in fact occurs when a party performs
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`at least one prohibited action with respect to the patented invention that violates [the plaintiff’s]
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`exclusionary rights.” Id. at 1339 (citing Lujan, 504 U.S. at 560-561). Other statements in Federal
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`Circuit opinions further support this understanding. See id. at 1339 (“The party holding the
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`exclusionary rights to the patent suffers legal injury in fact under the statute.”); Intell. Prop. Dev.,
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`Inc. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333, 1346 (Fed. Cir. 2001) (“A party . . . that has
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`the right to exclude others from making, using, and selling an invention described in the claims of
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`a patent is constitutionally injured by another entity that makes, uses, or sells the invention.”);
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`Lone Star, 925 F.3d at 1234 (“We have recognized that those who possess ‘exclusionary rights’ in
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`a patent suffer an injury when their rights are infringed.”).
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`A corollary to this understanding is that, if a complainant has contracted away its
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`exclusionary rights, it does not suffer a legal injury. This conclusion is also supported by Federal
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`Circuit precedence. In WiAV, the court concluded that an exclusive licensee does not have
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`constitutional “standing to sue a party who has the ability to obtain such a license from another
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`party with the right to grant it” because the exclusive licensee would “not have an exclusionary
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`right with respect to the alleged infringer.” 631 F.3d at 1266.
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`It is notable that so called “statutory standing” cases – or cases that determine whether
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`statutory requirements have been met in order for a party to have the right to sue – analyze the
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`exclusionary right as part of the “all substantial rights” rubric as the “right to sue.” For example,
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`in cases addressing statutory standing,7 the court has found that a licensor’s right to exclude is
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`“illusory” if the licensee “can render that right nugatory by granting the alleged infringer a royalty-
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`free sublicense.” Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1251 (Fed. Cir. 2000); see also
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`Mann, 604 F.3d at 1361 (finding that a licensor’s right to sue is “rendered illusory by the licensee’s
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`ability to settle licensor-initiated litigation by granting royalty-free sublicenses to the accu