stc.unm v. Intel Corporation

United States Court of Appeals
for the Federal Circuit
______________________

STC.UNM,
Plaintiff-Appellant,

v.

INTEL CORPORATION,
Defendant-Appellee.
______________________

2013-1241
______________________

Appeal from the United States District Court for the
District of New Mexico in No. 10-CV-01077, Judge Robert
C. Brack.
______________________

Decided: June 6, 2014
______________________

GEORGE C. SUMMERFIELD, Stadheim & Grear Ltd., of
Chicago, Illinois, argued for plaintiff-appellant. With him
on the brief were ROLF O. STADHEIM and STEVEN R.
PEDERSEN.

ROBERT A. VAN NEST, Keker & Van Nest LLP, of San
Francisco, California, argued for defendant-appellee.
With him on the brief were STEVEN A. HIRSCH and BRIAN
L. FERRALL. Of counsel on the brief were CHAD S.
CAMPBELL and DAN L. BAGATELL, Perkins Coie LLP, of
Phoenix, Arizona.
______________________
2 STC.UNM v. INTEL CORPORATION

Before NEWMAN, RADER, ∗ and DYK, Circuit Judges.
Opinion for the court filed by Circuit Judge Rader.
Dissenting opinion filed by Circuit Judge Newman.
RADER, Circuit Judge.
The United States District Court for the District of
New Mexico dismissed STC.UNM’s (STC) suit against
Intel Corp. for infringement of U.S. Patent No. 6,042,998
(’998 patent) for lack of standing. The district court held
that STC could not maintain its suit because non-party
Sandia Corp. is a co-owner of the patent, had not volun-
tarily joined as a co-plaintiff, and could not be involun-
tarily joined. Because, “as a matter of substantive patent
law, all co-owners must ordinarily consent to join as
plaintiffs in an infringement suit,” Ethicon, Inc. v. U.S.
Surgical Corp., 135 F.3d 1456, 1468 (Fed. Cir. 1998), and
because Sandia cannot be involuntarily joined under
Federal Rule of Civil Procedure 19, this court affirms.
I.
The background of this case begins with U.S. Patent
No. 5,705,321 (’321 patent). The invention disclosed in
the ’321 patent resulted from contributions of four people:
Steven Brueck, Saleem Zaidi, An-Shyang Chu, and Bruce
Draper. J.A. 25. At the time of invention, Brueck, Zaidi,
and Chu were employed by the University of New Mexico
(UNM). Id. Draper, however, was employed by Sandia.
Id. The applicants filed their patent application on June
6, 1995, which issued as the ’321 patent on January 6,
1998. The patent carries the title “Method for Manufac-
ture of Quantum Sized Periodic Structures in Si Materi-

∗
Randall R. Rader vacated the position of Chief
Judge on May 30, 2014.
STC.UNM v. INTEL CORPORATION 3

als.” The ’321 patent claims technology similar to that
disclosed in the asserted ’998 patent. See J.A. 252–53.
In mid-1996, the four inventors executed a Joint As-
signment to UNM of the invention disclosed in the appli-
cation that issued as the ’321 patent (’321 Assignment).
J.A. 436–41. The ’321 Assignment erroneously defined all
assignors as “employees of the University of New Mexico.”
J.A. 436. Draper was not employed by UNM. UNM was
the named assignee. Id. In pertinent part, the ’321
Assignment reads:
Assignors do hereby sell, assign, and transfer unto
Assignee all their right, title, and interest in and
to the invention . . . and their entire right, title,
and interest in and to any and all Patents which
may be issued thereon . . . and in and to any and
all divisions, reissues, continuations, and exten-
sions thereof.
Id.
In October 1996, UNM executed an assignment to
Sandia to correct Draper’s prior assignment to UNM,
which “was made in error” (Draper Assignment). J.A.
444. The Draper Assignment referenced the invention
that led to the ’321 patent and explicitly transferred to
Sandia “those rights and interests previously assigned to
[UNM] by Bruce Draper . . . and to any and all Patents
which may be issued thereon . . . and to any and all divi-
sions, reissues, continuations, and extensions.” Id.
While the application that led to the ’321 patent was
pending, Brueck and Zaidi (two of the named ’321 inven-
tors working for UNM) continued their research. J.A. 25.
On September 17, 1997, they filed the application that led
to the ’998 patent, titled “Method and Apparatus for
Extending Spatial Frequencies in Photolithography
Images.” The application incorporated the ’321 patent by
reference, but did not claim priority to any earlier-filed
4 STC.UNM v. INTEL CORPORATION

application. The record shows that Sandia’s employee,
Draper, was not listed as an inventor to the ’998 patent
and had no inventive contribution to any claim in the
patent. J.A. 26. UNM obtained assignments from both
Brueck and Zaidi for the ’998 patent. J.A. 5.
During prosecution of the ’998 patent, the U.S. Patent
and Trademark Office (PTO) twice rejected its claims for
double patenting over the ’321 patent, which shared two
common inventors. The examiner stated that “[t]he
subject matter claimed in the instant application is fully
disclosed in the [’321] patent and is covered by the patent
since the patent and the application are claiming common
subject matter.” J.A. 252–53, 263–64. To overcome these
double-patenting rejections, UNM filed a terminal dis-
claimer, which specified that “any patent granted on this
instant application shall be enforceable only for and
during such period” that the ’998 and ’321 patents “are
commonly owned.” J.A. 274. In the terminal disclaimer,
UNM stated that it was “the owner of record of a 100
percent interest in the instant application.” Id. The ’998
patent issued on March 28, 2000.
In July 2002 and August 2007, respectively, UNM as-
signed its own interest in the ’321 and ’998 patents to
STC—a wholly-owned licensing arm of UNM. J.A. 25. In
2008, STC successfully petitioned the PTO to correct the
inventorship of the ’998 patent to include two more named
inventors—Steve Hersee and Kevin Malloy. J.A. 315–27.
Hersee and Malloy were employees of UNM at the time of
invention and assigned their interests in the ’998 patent
to UNM. J.A. 25. Also in 2008, STC successfully sought a
certificate of correction from the PTO to indicate that the
’998 patent is a continuation-in-part of the ’321 patent.
J.A. 328–35.
STC filed the present infringement suit concerning
the ’998 patent against Intel on November 15, 2010. J.A.
110. Although Sandia has had an ownership interest in
STC.UNM v. INTEL CORPORATION 5

the ’321 patent since October 1996 through the Draper
Assignment, Sandia had never claimed any interest in the
’998 patent. See J.A. 414. STC and Sandia’s relationship
also reflected this understanding. For example, in 2009,
STC and Sandia entered into a royalty-sharing “Commer-
cialization Agreement” for the ’321 patent, which does not
mention the ’998 patent. J.A. 880–82.
STC had also on multiple occasions held itself out to
be the sole owner of the ’998 patent. For instance, STC
filed its requests with the PTO in 2008 as the sole “owner
of record.” E.g., J.A. 274. STC had also filed multiple
suits asserting the ’998 patent without joining Sandia.
See J.A. 340, 351. Further, STC had entered licenses with
other parties on the ’998 patent without sharing any
royalty proceeds with Sandia. See J.A. 344, 359–68.
During discovery in the present litigation, non-party
Sandia indicated that it believed it had no ownership
interest in the ’998 patent. Intel then asserted that STC
could not enforce the ’998 patent under the terms of the
terminal disclaimer, which required identical ownership
of both the ’321 and ’998 patents. J.A. 274, 458–59. In
response, STC contended (as it does on appeal here) that
Sandia did in fact co-own the ’998 patent since it issued
by operation of the Draper Assignment. Alternatively,
Sandia obtained ownership of the ’998 patent when it
formally became a continuation-in-part of the ’321 patent.
Nevertheless, in December 2011, out of “an abundance of
caution,” STC “confirm[ed] the prior [Draper]
[A]ssignment” and “assign[ed] an undivided interest in
each of” the ’321 and ’998 patents to Sandia (2011 As-
signment). J.A. 460.
II.
In January 2012, Intel moved for summary judgment,
asserting that the ’998 patent was unenforceable for
failing to comply with the common-ownership require-
ment of the terminal disclaimer. STC contended that the
6 STC.UNM v. INTEL CORPORATION

language of the Draper Assignment from UNM to San-
dia—specifically, the terms “the invention” and “issued
thereon”—operated automatically to give Sandia an
interest in the ’998 patent the moment it issued. J.A. 10.
Alternatively, STC relied on the Draper Assignment,
which gave Sandia an interest in “any and all divisions,
reissues, continuations, and extensions thereof.” STC
claimed that this language operated to effect Sandia’s
ownership when the PTO issued the certificate of correc-
tion in December 2008, formally making the ’998 patent a
continuation-in-part of the ’321 patent. J.A. 11.
The district court rejected both of STC’s theories and
granted partial summary judgment for Intel. The district
court reasoned that ownership rights must derive from
inventorship and, because Draper did not co-invent any
claims of the ’998 patent, he had no interest in the ’998
patent to assign. Thus, the court held that Sandia did not
co-own the ’998 patent with UNM or STC at any point
prior to the December 2011 Assignment. J.A. 16. The
court did not grant summary judgment on the remaining
issue of whether it was truly the same Sandia entity that
co-owned each of the ’321 and ’998 patents.
The parties then cross-moved on the issue of standing,
given Sandia’s co-ownership of the ’998 patent (since at
least December 2011) and absence from the case. Sandia
refused to join the case, “prefer[ring] to take a neutral
position with respect to this matter.” J.A. 884–85. The
district court granted Intel’s motion to dismiss for lack of
standing.
Relying on Ethicon, Inc. v. United States Surgical
Corp., 135 F.3d 1456 (Fed. Cir. 1998), the district court
explained that when a patent is co-owned, a co-owner
seeking to enforce the patent must join all other co-
owners as plaintiffs to establish standing. Without this
joinder, the plaintiff cannot pursue an infringement suit.
J.A. 31. The district court acknowledged that Federal
STC.UNM v. INTEL CORPORATION 7

Rule of Civil Procedure 19(a) generally gives a court the
ability to join a required party involuntarily. However,
the district court explained that Ethicon states that a co-
owner ordinarily has the substantive right to impede
another co-owner’s infringement action by refusing to
voluntarily join the suit. The court noted that only two
limited circumstances have been as yet recognized that
would allow for involuntary joinder, but neither was
present here. J.A. 31–39.
Finally, the district court rejected STC’s assertion
that it should be able to proceed equitably without joining
a necessary party under Rule 19(b). The district court
weighed each Rule 19(b) factor and found that “equity and
good conscience require that this action not go forward
without Sandia.” J.A. 39–43. STC does not appeal this
ruling, but does appeal whether Sandia can be involuntar-
ily joined under Rule 19(a) as well as the district court’s
partial grant of summary judgment on the timing of
Sandia’s co-ownership.
III.
This court reviews a district court’s dismissal for lack
of standing de novo. Isr. Bio-Eng’g Project v. Amgen, Inc.,
475 F.3d 1256, 1262–63 (Fed. Cir. 2007). This court has
long applied the rule that a patent co-owner seeking to
maintain an infringement suit must join all other co-
owners. See, e.g., id. at 1264–65. And, in Ethicon, this
court held that, “as a matter of substantive patent law, all
co-owners must ordinarily consent to join as plaintiffs in
an infringement suit.” 135 F.3d at 1468; see also Schering
Corp. v. Roussel-UCLAF SA, 104 F.3d 341, 345 (Fed. Cir.
1997) (“Ordinarily, one co-owner has the right to impede
the co-owner’s ability to sue infringers by refusing to
voluntarily join in such a suit.” (citing Willingham v.
Lawton, 555 F.2d 1340, 1344 (6th Cir. 1977))).
STC’s argument in support of standing is purely legal.
STC asserts that this court’s holding in Ethicon does not
8 STC.UNM v. INTEL CORPORATION

address a Rule 19(a) involuntary joinder at all. STC
claims that Ethicon has been repeatedly and erroneously
interpreted by this court in various instances of dicta to
create a rule contrary to Rule 19(a) that does not actually
exist. STC asserts that “there is no rule of substantive
patent law that precludes the application of Rule 19.”
Appellant’s Br. 15. STC thus argues that the holding in
Ethicon yields to Rule 19(a)’s involuntary joinder test.
Rule 19(a) states the following:
(1) Required Party. A person who is subject to ser-
vice of process and whose joinder will not deprive
the court of subject-matter jurisdiction must be
joined as a party if:
(A) in that person’s absence, the court cannot ac-
cord complete relief among existing parties; or
(B) that person claims an interest relating to the
subject of the action and is so situated that dispos-
ing of the action in the person’s absence may:
(i) as a practical matter impair or impede the per-
son’s ability to protect the interest; or
(ii) leave an existing party subject to a substantial
risk of incurring double, multiple, or otherwise in-
consistent obligations because of the interest.
(2) Joinder by Court Order. If a person has not
been joined as required, the court must order that
the person be made a party. A person who refuses
to join as a plaintiff may be made either a defend-
ant or, in a proper case, an involuntary plaintiff.
As support for its position, STC notes that “[n]owhere
in the majority opinion in Ethicon is Rule 19 mentioned.”
Appellant’s Br. 12. STC acknowledges though that the
dissent in Ethicon did explicitly argue that “[t]here is no
barrier to the involuntary joinder of a joint inventor
and/or co-owner under Rule 19, if such is needed to bring
STC.UNM v. INTEL CORPORATION 9

before the court all persons deemed necessary to the suit.”
135 F.3d at 1472 (Newman, J., dissenting). STC correctly
notes that the majority opinion in Ethicon does not explic-
itly refer to Rule 19; however, STC is incorrect in arguing
that Rule 19 trumps the holding that substantive patent
law ordinarily requires consent to joinder from all co-
owners.
Importantly, the holding in Ethicon that substantive
patent law requires co-owners (ordinarily) to consent to
suit was not dictum. Rather, it was essential to the
disposition of the case. In Ethicon, this court considered,
inter alia, whether a plaintiff who was a co-owner of the
asserted patent could maintain an infringement suit
despite an absent co-owner. The other co-owner had
granted a retroactive license to the accused infringer and
refused to join the suit as a co-plaintiff. This court con-
sidered the effect of the license in light of principles
expressed in a prior case, Schering Corp. v. Roussel–
UCLAF SA, 104 F.3d 341 (Fed. Cir. 1997).
In Ethicon, this court acknowledged two principles
about the retroactive license granted to the accused
infringer. First, “a license to a third party only operates
prospectively.” Ethicon, 135 F.3d at 1467. Thus, the
plaintiff, Ethicon, could not sue the defendant, U.S.
Surgical, for any damages incurred after the date of the
license or for any other prospective relief that may have
otherwise been warranted. Id.; see Schering, 104 F.3d at
345 (“[B]y granting a license . . . to a defendant that has
already been sued for infringement, a patent co-owner can
effectively deprive its fellow co-owner of the right to sue
for and collect any infringement damages that accrue
after the date of the license. . . . [or] obtain an injunction
against future acts of infringement by the licensee . . . .”).
Second, “[a]bsent agreement to the contrary, a co-
owner cannot grant a release of another co-owner’s right
to accrued damages.” Ethicon, 135 F.3d at 1467. Thus,
10 STC.UNM v. INTEL CORPORATION

although the non-plaintiff co-owner’s retroactive license
had released U.S. Surgical from any past damages poten-
tially owed to him, he could not “release U.S. Surgical
from its liability for past accrued damages to Ethicon.”
Id.; see Schering, 104 F.3d at 345 (“[T]he grant of a license
by one co-owner cannot deprive the other co-owner of the
right to sue for accrued damages for past infringement.
That would require a release, not a license, and the rights
of a patent co-owner, absent agreement to the contrary, do
not extend to granting a release that would defeat an
action by other co-owners to recover damages for past
infringement.”).
These two effects of the retroactive license thus did
not entirely dispose of the case. The retroactive license
did not eliminate the claim Ethicon had for U.S. Surgi-
cal’s alleged past infringement. Instead, this court had to
go on to apply the “settled principle” that “[a]n action for
infringement must join as plaintiffs all co-owners.” Ethi-
con, 135 F.3d at 1467 (citing Waterman v. Mackenzie, 138
U.S. 252, 255 (1891)). And, because the non-plaintiff co-
owner refused to join the suit as a co-plaintiff, this court
held that, “as a matter of substantive patent law, all co-
owners must ordinarily consent to join as plaintiffs in an
infringement suit.” Id. at 1468. Indeed, generally “one
co-owner has the right to impede the other co-owner’s
ability to sue infringers by refusing to voluntarily join in
such a suit.” Schering, 104 F.3d at 345. This holding
meant that Ethicon was unable to maintain its suit.
Whether this court in Ethicon expressly mentioned
Rule 19(a)—the involuntary joinder provision—does not
change the effect the holding had on it. Cf. DDB Techs.,
L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1289
n.2 (Fed. Cir. 2008) (“[W]e have explicitly held that Rule
19 does not permit the involuntary joinder of a patent co-
owner in an infringement suit brought by another co-
owner.”). Rules of procedure, such as that in Rule 19(a),
must give way to substantive patent rights. 28 U.S.C.
STC.UNM v. INTEL CORPORATION 11

§ 2072 (2012); see, e.g., Amchem Prods., Inc. v. Windsor,
521 U.S. 591, 613 (1997) (“[R]ules of procedure ‘shall not
abridge, enlarge or modify any substantive right.’” (quot-
ing § 2072)). To remove any doubt, this court holds that
the right of a patent co-owner to impede an infringement
suit brought by another co-owner is a substantive right
that trumps the procedural rule for involuntary joinder
under Rule 19(a).
There are, of course, scenarios that will overcome this
rule against involuntary joinder of a patent owner or co-
owner in particular instances. As this court acknowl-
edged in Ethicon and DDB Techs., two such scenarios
have as yet been recognized. “First, when any patent
owner has granted an exclusive license, he stands in a
relationship of trust to his licensee” and can be involun-
tarily joined as a plaintiff in the licensee’s infringement
suit; second, “[i]f, by agreement, a co-owner waives his
right to refuse to join suit, his co-owners may subsequent-
ly force him to join in a suit against infringers.” Ethicon,
135 F.3d at 1468 n.9 (citing see Indep. Wireless Tel. Co. v.
Radio Corp. of Am., 269 U.S. 459, 469 (1926); Willingham,
555 F.2d at 1344–45); see DDB Techs., 517 F.3d at 1289
n.2; see also Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d
1372, 1377 (Fed. Cir. 2000) (“As a general rule, this court
continues to adhere to the principle set forth in Independ-
ent Wireless that a patentee should be joined, either
voluntarily or involuntarily, in any infringement suit
brought by an exclusive licensee.”); Schering, 104 F.3d at
345 (“Absent such an agreement [allowing co-owners to
sue unilaterally], Schering, as a co-owner, would not be
able to sue for infringement if its co-owner Roussel de-
clined to join the suit.”). Hence, as stated in Ethicon,
ordinarily an absent co-owner must consent to join the
suit. None of the authorities cited in the dissent are to
the contrary.
In the present case, neither of the above scenarios ap-
plies. And STC has not argued that some third scenario
12 STC.UNM v. INTEL CORPORATION

should be recognized that would bring about a different
result based on the facts of this case. Moreover, each of
the recognized exceptions relies predominantly on an
absent co-owner who has in some way affirmatively given
up its substantive right to refuse to join the suit. In this
case, Sandia has—at the other end of the spectrum—
affirmatively retained this right by consistently express-
ing its desire to not join the case.
Accordingly, because Sandia has not voluntarily
joined this suit, and because no exception to this general
substantive rule applies, STC lacks standing to maintain
its suit against Intel.
This court is, of course, conscious of the equities at
play in this case. Unless STC can secure Sandia’s volun-
tary joinder, obtain the ’998 patent (and ’321 patent)
outright, or become the exclusive licensee of Sandia’s
interest, STC cannot enforce the ’998 patent in court.
STC is certainly still free to enjoy all the rights a co-owner
enjoys, such as commercializing or exploiting the ’998
patent through licensing without consent of the other co-
owners. See 35 U.S.C. § 262 (2012). Admittedly, a license
demand may have less bite if STC cannot sue potential
licensees if they refuse (and if Sandia would not voluntari-
ly join the suit). However, this limit on a co-owner’s right
to enforce a patent is one effect of the reality that each co-
owner is “at the mercy” of its other co-owners. Ethicon,
135 F.3d at 1468 (quoting Willingham, 555 F.2d at 1344).
Importantly, this limit protects, inter alia, a co-owner’s
right to not be thrust into costly litigation where its
patent is subject to potential invalidation. Furthermore,
the rule requiring in general the participation of all co-
owners safeguards against the possibility that each co-
owner would subject an accused infringer to a different
infringement suit on the same patent. Both concerns
underpin this court’s joinder requirement for patent
owners.
STC.UNM v. INTEL CORPORATION 13

Finally, because STC cannot maintain the present
suit without Sandia due to its lack of standing, this court
need not address the appealed ownership issues concern-
ing the ’998 patent.
IV.
Because co-owner Sandia did not consent to join this
infringement suit against Intel and cannot otherwise be
involuntarily joined on these facts, STC cannot maintain
its suit. Accordingly, this court affirms the district court’s
dismissal of the case.
AFFIRMED
 United States Court of Appeals
for the Federal Circuit
______________________

STC.UNM,
Plaintiff-Appellant,

v.

INTEL CORPORATION,
Defendant-Appellee.
______________________

2013-1241
______________________

Appeal from the United States District Court for the
District of New Mexico in No. 10-CV-01077, Judge Robert
C. Brack.
______________________

NEWMAN, Circuit Judge, dissenting.
The court today holds that Federal Rule of Civil Pro-
cedure 19 uniquely does not apply in patent cases. The
panel majority holds that although the co-owner of the
patent here in suit is an indispensable party to this
infringement suit, the co-owner cannot be joined under
Rule 19, and thus the patent cannot be enforced. This
holding is contrary to not only Rule 19, but to precedent.
I respectfully dissent.
JOINDER OF NECESSARY PARTIES
The University of New Mexico, together with Sandia
Corporation, are co-owners of the ’998 patent. Unless co-
owners have agreed otherwise, by statute each co-owner
2 STC.UNM v. INTEL CORPORATION

has the right to make, use, and sell the patented subject
matter, as well as to alienate its interest in whole or in
part. See 35 U.S.C. §262 (“Joint Owners”).
Also by statute: “A patentee shall have remedy by civ-
il action for infringement of his patent.” 35 U.S.C. §281
(“Remedy for Infringement of Patent”). Precedent estab-
lishes that all entities with the right to enforce the patent
are necessary parties to an action for enforcement; the
purpose is to shield the accused infringer from multiple
suits, as well as to resolve all potential claims efficiently
and fairly. Entities with enforcement rights who do not
voluntarily join in such suit “must” be joined involuntari-
ly, as provided by Federal Rule of Civil Procedure 19(a)
(“Required Joinder of Parties”).
Departing from this clear and compulsory procedure,
the panel majority holds that co-owner Sandia cannot be
involuntarily joined with the University in this infringe-
ment suit, thus preventing the University from enforcing
the patent, for Sandia is a necessary party. That holding
is not correct. When a party declines voluntarily to join in
a legal action for which it is deemed necessary, involun-
tary joinder is provided by Federal Rule 19. 1 The panel
majority’s ruling that joinder under Rule 19 does not
apply to co-owners of a patent unless the co-owners had
previously agreed to joinder is contrary to law.
A
Federal Rule 19(a) provides for the involuntary join-
der of a necessary party. It is not disputed that Sandia is
a necessary party, and that Sandia is within the court’s

1 The Federal Rules are adopted by Congress and
have the force of law. 28 U.S.C. §2072; Shady Grove
Orthopedic Assocs., P.A. v. Allstate Ins. Co., 559 U.S. 393,
406-07 (2010); 4 Charles Alan Wright et al., Federal
Practice and Procedure §1030 (3d ed. 2002).
STC.UNM v. INTEL CORPORATION 3

personal jurisdiction, with appropriate venue. Rule 19
requires joinder:
Rule 19. Required Joinder of Parties
(a) Persons Required to be Joined if Feasible.
(1) Required Party. A person who is subject to
service of process and whose joinder will not
deprive the court of subject-matter jurisdiction
must be joined as a party if:
(A) In that person’s absence, the court
cannot accord complete relief among
existing parties; or
(B) That person claims an interest relat-
ing to the subject of the action and is so
situated that disposing of the action in
the person’s absence may:
(i) as a practical matter impair or
impede the person’s ability to
protect the interest; or
(ii) leave an existing party subject to
a substantial risk of incurring
double, multiple, or otherwise
inconsistent obligations because
of the interest.
(2) Joinder by Court Order. If a person has not
been joined as required, the court must order
that the person be made a party. A person who
refuses to join as a plaintiff may be made either
a defendant or, in a proper case, an involuntary
plaintiff.
Rule 19 is not permissive; the word “must” is used in both
subsections (1) and (2).
Rule 19 was adopted in 1937, succeeding the joinder
provisions in the Federal Equity Rules of 1912. Profes-
4 STC.UNM v. INTEL CORPORATION

sors Wright & Miller state that the “most typical applica-
tion” of Rule 19(a) is in patent and copyright contexts.
See 7 Charles Alan Wright et al., Federal Practice and
Procedure §1606 (3d ed. 2013).
The underlying concern in patent cases arises from
the right of a holder of an undivided interest to enforce
the patent. In Waterman v. McKenzie, 138 U.S. 252
(1891), the Supreme Court reiterated the principle that
all entities with the right of enforcement must join in
such suit. In Independent Wireless Telegraph Co. v. Radio
Corp. of America, 269 U.S. 459 (1926), the Court dis-
cussed joinder of indispensable parties:
The presence of the owner of the patent as a party
is indispensable, not only to give jurisdiction un-
der the patent laws, but also in most cases to ena-
ble the alleged infringer to respond in one action
to all claims of infringement for his act . . . .
Id. at 468. The Court explained that if the patent owner
cannot be joined as a defendant, it can be joined as an
involuntary plaintiff. Id. at 472. This principle is explicit
in Rule 19(a)(2).
Rule 19 was elaborated in 1966, the Advisory Com-
mittee Note emphasizing avoiding “repeated lawsuits on
the same essential subject matter”:
Whenever feasible, the persons materially inter-
ested in the subject of the action . . . should be
joined as parties so that they may be heard and a
complete disposition made.
Extensive scholarship had elaborated these principles.
See, e.g., Developments in the Law – Multiparty Litigation
in the Federal Courts, 71 Harv. L. Rev. 877, 881-85 (1958)
(discussing the principles supporting compulsory joinder:
to avert unfairness to the defendant, the effect on absen-
tee property interests, and to achieve finality of disputed
issues); see also Note, Indispensable Parties in the Federal
STC.UNM v. INTEL CORPORATION 5

Courts, 65 Harv. L. Rev. 1050, 1052 (1952) (“The classic
test for determining indispensability in the federal courts
is that laid down one hundred years ago by the Supreme
Court in Shields v. Barrow: indispensable parties are
‘Persons who not only have an interest in the controversy,
but an interest of such a nature that a final decree cannot
be made without either affecting that interest, or leaving
the controversy in such a condition that its final termina-
tion may be wholly inconsistent with equity and good
conscience.’”).
In United Mine Workers of America v. Gibbs, 383 U.S.
715 (1966), the Court discussed joinder and its embodi-
ment in the Federal Rules:
Under the Rules, the impulse is toward entertain-
ing the broadest possible scope of action consistent
with fairness to the parties; joinder of claims, par-
ties and remedies is strongly encouraged.
Id. at 724. In Provident Tradesmens Bank & Trust Co. v.
Patterson, 390 U.S. 102, 111 (1968), the Court reiterated
the obligation of the courts to provide efficient adjudica-
tion of disputes, stating that Rule 19 serves “the interest
of the courts and the public in complete, consistent, and
efficient settlement of controversies,” by authorizing
joinder of all parties with an interest, as well as requiring
the joinder of all necessary parties.
B
These principles are beyond debate. They have been
applied in a wide variety of circumstances, under the
aegis of Rule 19. Following is a sampling from the other
federal circuits, illustrating the breadth with which
joinder has been administered and the solidity of its
principles. E.g., Pujol v. Shearson/Am. Express, Inc., 877
F.2d 132, 134 (1st Cir. 1989) (“[W]hen applying Rule
19(a), a court essentially will decide whether considera-
tions of efficiency and fairness, growing out of the particu-
6 STC.UNM v. INTEL CORPORATION

lar circumstances of the case, require that a particular
person be joined as a party.”); Schlumberger Indus., Inc. v.
Nat’l Sur. Corp., 36 F.3d 1274, 1286 (4th Cir. 1994) (“In
determining whether a party is necessary and, then,
indispensable, the court must consider the practical
potential for prejudice in the context of the particular
factual setting presented by the case at bar.”); Atlantis
Dev. Corp. v. United States, 379 F.2d 818, 824 (5th Cir.
1967) (involuntary joinder is favored by “the great public
interest, especially in these explosive days of ever-
increasing dockets, of having a disposition at a single time
of as much of the controversy to as many of the parties as
is fairly possible consistent with due process”).
A Sixth Circuit case dealt with the procedure whereby
a patent co-owner could sue for infringement. In Willing-
ham v. Star Cutter Co., 555 F.2d 1340 (6th Cir. 1977), the
court stated the issue as “whether a co-owner could au-
thorize by contract another co-owner to file suit for patent
infringement without the permission of the first co-owner,
in an action in which the unwilling co-owner is joined as
an involuntary plaintiff under Rule 19.” Id. at 1343. The
court held that if the unwilling co-owner “is amenable to
service of process and his joinder would not deprive the
court of jurisdiction in the sense of competence over the
action, he should be joined as a party; and if he has not
been joined, the court should order him to be brought into
the action.” Id. at 1346.
Although it is not disputed that Sandia is an indis-
pensable party to the University’s infringement suit, I
point out that the Federal Circuit has held that whether a
party is indispensable is a matter of regional circuit law.
See Dainippon Screen Mfg. Co., Ltd. v. CFMT, Inc., 142
F.3d 1266 (Fed. Cir. 1998) (determining whether a subsid-
iary was an indispensable party in a declaratory judg-
ment action for invalidity and non-infringement). In
Turner v. Brookshear, 271 F.2d 761 (10th Cir. 1959), that
court stated:
STC.UNM v. INTEL CORPORATION 7

Prior to the adoption of Rule 19(a) . . . it was well
settled that an indispensable party is one who has
such an interest in the subject matter of the con-
troversy that a final decree cannot be rendered be-
tween the other parties to the suit without
affecting his interest, or without leaving the con-
troversy in such a situation that its final determi-
nation may be inconsistent with equity and good
conscience. Rule 19(a) did not change the former
rule.
Id. at 764. Whether Federal Circuit or Tenth Circuit law
is applied, the result is the same: Sandia as co-owner with
enforcement rights is an indispensable party to this
infringement suit, and joinder is required as a matter of
the procedural law embodied in Rule 19 and in precedent.
Joinder of an indispensable party does not require a prior
agreement to join, whether the parties are co-owners or
patentee-licensee.
C
Until today, the Federal Circuit has been in accord
with the Supreme Court’s and the regional circuits’ con-
sistent judicial view of Rule 19. In AsymmetRx, Inc. v.
Biocare Medical, LLC, 582 F.3d 1314, 1321 (Fed. Cir.
2009), we considered a complex of licensing arrange-
ments, and held that patentee Harvard College was a
necessary party for “the purpose of Rule 19 to avoid
multiple suits or incomplete relief arising from the same
subject matter is best served by joinder . . . which would
permit the relationships between AsymmetRx, Biocare,
and Harvard to all be resolved at the same time as well as
solve the standing problem.”
In University of Utah v. Max-Planck-Gesellschaft Zur
Forderung Der Wissenschaften E.V., 734 F.3d 1315 (Fed.
Cir. 2013), the court discussed joinder under Rule 19 in an
action to correct inventorship, where patent ownership
and interested parties included a state university and
8 STC.UNM v. INTEL CORPORATION

several foreign entities. Amid issues including Eleventh
Amendment immunity and representation of foreign
owners, the court considered issues of joinder in the
context of “the proposition that a ‘patent owner is an
indispensable party who must be joined’” in an infringe-
ment suit. Id. at 1326 (quoting Alfred E. Mann Found. for
Sci. Research v. Cochlear Corp., 604 F.3d 1354, 1359 (Fed.
Cir. 2010)).
In Abbott Laboratories v. Diamedix Corp., 47 F.3d
1128, 1133 (Fed. Cir. 1995), the court held that the pa-
tentee must be permitted to join as a party plaintiff in a
suit by the licensee, stating that “Rule 19(a) provides that
a person who can be joined as a party should be joined if
(1) the person’s absence would make it impossible to grant
complete relief to the parties . . . .” The court observed
that “[t]he purpose of rule 19 [is] to avoid multiple suits or
incomplete relief arising from the same subject matter.”
Id.
There is no support, in law of logic or justice, for to-
day’s holding that the co-owner of a patent cannot be
involuntarily joined in an infringement suit and can
thereby, by its absence, bar the suit. The two cases on
which the panel majority relies do not support the majori-
ty’s position; indeed, these cases comport with the contra-
ry position.
The first case relied on by the panel majority is Scher-
ing Corp. v. Roussel-UCLAF SA, 104 F.3d 341, 344 (Fed.
Cir. 1997), involving a dispute between patent co-owners
Schering and Roussel. Co-owner Schering sued Zeneca
for infringement, and two weeks later co-owner Roussel
granted a license to Zeneca. Schering argued that the
terms of the co-ownership agreement, which gave each co-
owner the right to sue infringers and required each co-
owner to provide “reasonable assistance,” prevented
Roussel from licensing infringer Zeneca. This court held
that the agreement did not deprive Roussel of the right to
STC.UNM v. INTEL CORPORATION 9

grant a license to Zeneca, but that the license grant was
not retroactive and that “one co-owner cannot deprive the
other co-owner of the right to sue for accrued damages for
past infringement,” id. at 345. No aspect of the Schering
decision, even in dictum, supports today’s ruling that
Sandia cannot be joined under Rule 19 in the University’s
infringement suit.
The panel majority also seeks support in Ethicon, Inc.
v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998).
However, that case presented no dispute as to involuntary
joinder, and raised no question of applicability of Rule 19.
The issue in Ethicon was whether Mr. Young Jao Choi,
who contributed to two of the fifty-five patent claims,
thereby became co-owner of the patent with the full right
to grant a license to all fifty-five claims. All parties
stipulated to Choi’s joinder as a defendant-intervenor, a
status reflected in the official caption. The court’s ruling
in Ethicon was not concerned with involuntary joinder,
but with the licensing authority of this asserted co-
inventor.
The Ethicon court remarked that a co-owner can “im-
pede” the other co-owner’s infringement action. 135 F.3d
at 1468. Indeed it can, for when Mr. Choi was ratified as
co-owner he did “impede” the infringement action by
granting a license to the accused infringer. The imped-
ance was not due to non-joinder, but to Choi’s license to
U.S. Surgical. Ethicon did not involve Rule 19 or any
aspect of joinder, and provides no support for today’s
ruling that co-owner Sandia cannot be involuntarily
joined.
Departing from precedent, the panel majority propos-
es to restrict Rule 19 in patent cases, and proposes that a
patent co-owner cannot be involuntarily joined in an
infringement suit unless the co-owner had previously
contracted to join in any infringement suit. The panel
majority offers the anomalous rationale that when an
10 STC.UNM v. INTEL CORPORATION

infringement suit is brought by an exclusive licensee, the
patent owner can be joined; but when an infringement
suit is brought by a co-owner, the other co-owner cannot
be involuntarily joined. No precedent supports this
theory.
By refusing to apply Rule 19(a) and refusing to join
co-owner Sandia, the panel majority deprives co-owner
the University of judicial determination of the asserted
infringement, thwarting the processes of law. I respect-
fully dissent.