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Intellectual Property – Patent Infringement – Foreign Owner – Standing

The foreign owner of patents in suit at issue here – which prevent children from oversteering ride-on vehicles – may maintain standing to sue after transferring ownership of the patents to its affiliated distributor; an Alexandria U.S. District Court says that where, as here, an original plaintiff has standing, that plaintiff may assign the patents in suit during the course of the litigation and the assignee then has standing to maintain the action.

The crux of defendant Razor USA LLC’s motion to dismiss is its contention that Kettler International, as the exclusive distributor of plaintiff Heinz Kettler’s products, lacks standing to sue for patent infringement. Razor is correct that Kettler International does not have standing to sue based solely on the allegation in the original complaint that Kettler International is Heinz Kettler’s exclusive U.S. distributor. But the fact that Kettler International does not have standing to sue for patent infringement based on its status as an exclusive distributor does not finally resolve the standing issue.

Under Federal Circuit law, an assignee has standing to sue for patent infringement in its own name.

Here, the supplemental complaint alleges Heinz Kettler assigned its patent rights to Kettler International after the initial complaint was filed and the assignment expressly grants Kettler International the right to sue for past infringement.

Because Kettler International has standing to maintain the patent infringement suit in the Eastern District of Virginia, the facts and circumstances of this case do not warrant transfer to the Central District of California, where Razor is located.

Kettler International is a local business and Virginia has an interest in providing a forum for its residents to litigate their disputes. Docket conditions, while not a significant factor, favor retaining this case because statistics reflect that this district, on average, provides a speedier trial.

On balance, the relevant factors do not weigh strongly in favor of transfer. As an initial matter, plaintiffs’ decision to file suit in the Eastern District of Virginia is entitled to substantial deference because this District is Kettler International’s home forum. While some documents and witnesses are located in California, other documents and witnesses are located in Virginia and Germany. There is nothing in the record to suggest the interest of justice militates in favor of transfer. Thus, Razor has not satisfied its burden of proving transfer is warranted in this case.

Heinz Kettler GbmH & Co. v. Razor USA LLC (Ellis, J.) No. 1:10cv708, Nov. 5, 2010; USDC at Alexandria, Va. VLW 010-3-592, 14 pp.

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