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.
______________________

ON PETITION FOR REHEARING EN BANC
______________________

GEORGE C. SUMMERFIELD, Stadheim & Grear Ltd., of
Chicago, Illinois, filed a petition for rehearing en banc for
plaintiff-appellant. With him on the petition was ROLF O.
STADHEIM. Of counsel was STEVEN R. PEDERSEN.

ROBERT A. VAN NEST, Keker & Van Nest LLP, of San
Francisco, California, filed a response for defendant-
appellee. With him on the response were BRIAN L.
FERRALL and STEVEN A. HIRSCH. Of counsel on the re-
sponse were DAN L. BAGATELL and CHAD S. CAMPBELL,
Perkins Coie LLP, of Phoenix, Arizona.

______________________
2 STC.UNM V. INTEL CORPORATION

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, O’MALLEY, WALLACH, TARANTO, CHEN, and
HUGHES, Circuit Judges. ∗
DYK, Circuit Judge, with whom MOORE and TARANTO,
Circuit Judges, join, concurs in the denial of the petition
for rehearing en banc.
NEWMAN, Circuit Judge, with whom LOURIE, O’MALLEY,
and WALLACH, Circuit Judges, join, dissents from the
denial of the petition for rehearing en banc.
O’MALLEY, Circuit Judge, with whom NEWMAN, LOURIE,
and WALLACH, Circuit Judges, join, dissents from the
denial of the petition for rehearing en banc.
PER CURIAM.
ORDER
A petition for rehearing en banc was filed by plaintiff-
appellant STC.UNM, and a response thereto was invited
by the court and filed by defendant-appellee Intel Corpo-
ration. The petition for rehearing en banc and response
were referred to the panel that heard the appeal, and
thereafter, the petition for rehearing en banc and re-
sponse were referred to the circuit judges who are author-
ized to request a poll of whether to rehear the appeal en
banc. A poll was requested, taken, and failed.

Upon consideration thereof,

IT IS ORDERED THAT:

(1) The petition for panel rehearing is denied.

(2) The petition for rehearing en banc is denied.

∗
Randall R. Rader, who retired from the position of
Circuit Judge on June 30, 2014, did not participate in this
decision. Circuit Judge Reyna did not participate.
STC.UNM V. INTEL CORPORATION 3

(3) The mandate of the court will issue on September
24, 2014.
FOR THE COURT

September 17, 2014 /s/ Daniel E. O’Toole
Date Daniel E. O’Toole
Clerk of Court
 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.
______________________

DYK, Circuit Judge, with whom MOORE and TARANTO,
Circuit Judges, join, concurring in the denial of the peti-
tion for rehearing en banc.
In my view, en banc review is properly denied. The
panel decision here in no way departs from the proper
construction of Rule 19.
Rule 19(a) provides the procedural mechanism by
which a party can join necessary parties. It applies if, “in
[a] person’s absence, the court cannot accord complete
relief among existing parties . . . .” Fed. R. Civ. P. 19(a)(1).
It goes on to provide that: “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
2 STC.UNM v. INTEL CORPORATION

made either a defendant or, in a proper case, an involun-
tary plaintiff.” Fed. R. Civ. P. 19(a)(2).
Rule 19 by its terms presupposes the existing parties’
substantive entitlement to “relief” from another source of
law. It therefore does not authorize compulsory joinder
when the plaintiff has no substantive right to relief with-
out the consent of that person, i.e., where the right can be
asserted only jointly, not unilaterally by the plaintiff. In
that situation, without the absent person’s consent, the
existing plaintiff has no right to “relief” to which Rule 19
applies.
A contrary view of Rule 19 would overstep the bound-
aries of congressional authorization. Procedural rules
cannot be used to abridge, enlarge, or modify any sub-
stantive right. 28 U.S.C. § 2072; see also Amchem Prods.,
Inc. v. Windsor, 521 U.S. 591, 613 (1997) (“[R]ules of
procedure ‘shall not abridge, enlarge or modify any sub-
stantive right.’” (quoting § 2072)). Where, as here, there is
a substantive right not to join in the assertion of the
plaintiff’s claim, Rule 19(a) does not apply. Applying the
Rule both to compel joinder as a party and on that basis
to allow assertion of the infringement claim, as STC.UNM
argues, would abridge the rights of the joined party and
enlarge the rights of the initial plaintiff.
In other contexts, courts have read Rule 19 as author-
izing involuntary joinder of plaintiffs only if the proposed
plaintiff is substantively obligated to join. Caprio v.
Wilson, for example, explained that joinder of involuntary
plaintiffs was intended for circumstances in which there
was a trust relationship between the plaintiff and invol-
untary co-plaintiff, obligating the involuntary co-plaintiff
to allow its name to be used in the suit. 513 F.2d 837,
839–40 (9th Cir. 1975). When that trust or contractual
relationship is lacking, courts have declined to allow
plaintiffs to involuntarily join other plaintiffs. See, e.g.,
Diagnostic Unit Inmate Council v. Films, Inc., 88 F.3d
STC.UNM v. INTEL CORPORATION 3

651, 654 (8th Cir. 1996) (Arkansas Department of Correc-
tions could not be joined as involuntary plaintiff under
Rule 19(a) because it “has no obligation, contractual or
otherwise, to allow the inmates to use its name to secure
declaratory judgment relief” in copyright infringement
action); Caprio, 513 F.2d at 839–40 (Post Office could not
be joined as involuntary plaintiff because there was no
trust relationship between appellant and the Post Office
who each had an “independent right”); Coast v. Hunt Oil
Co., 195 F.2d 870, 871–72 (5th Cir. 1952) (no involuntary
joinder of partner with 51% interest under Rule 19(a)).
For these reasons, the decision in this case fully com-
ports with Rule 19. That Rule, as its authorizing statute
requires, directs the inquiry to the nature of the underly-
ing substantive rights. It does not alter the scope of those
rights. It is substantive patent law, not Rule 19, that
answers the dispositive question here: whether one co-
owner may unilaterally enforce a patent, without the
consent of other co-owners.
As to that underlying substantive-rights question,
precedent has long provided a clear answer. This court
has consistently recognized that the substantive right to
enforce the patent does not belong unilaterally to each co-
owner, but requires all of the co-owners’ agreement, so
that each co-owner has a substantive right not to be
involuntarily joined in a patent infringement suit without
such agreement. See, e.g., Ethicon, Inc. v. U.S. Surgical
Corp., 135 F.3d 1456, 1468 (Fed. Cir. 1998), cert. denied,
525 U.S. 923 (1998) (“[A]s a matter of substantive patent
law, all co-owners must ordinarily consent to join as
plaintiffs in an infringement suit.”); Schering Corp. v.
Roussel-UCLAF SA, 104 F.3d 341, 345 (Fed. Cir. 1997)
(“Ordinarily, 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.” (citing Willingham v.
Lawton, 555 F.2d 1340, 1344 (6th Cir. 1977))); DDB
Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d
4 STC.UNM v. INTEL CORPORATION

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.” (citing Ethicon, 135 F.3d at 1468));
Taylor v. Taylor Made Plastics, Inc., 565 F. App’x 888, 889
(Fed. Cir. 2014) (“If any co-owner should refuse to join as
a co-plaintiff, the suit must be dismissed for lack of stand-
ing.”) (citation omitted); Israel Bio-Eng’g Project v. Amgen,
Inc., 475 F.3d 1256, 1264–65 (Fed. Cir. 2007) (“Absent the
voluntary joinder of all co-owners of a patent, a co-owner
acting alone will lack standing.”) (citation omitted); Gal-
Or v. U.S., 470 F. App’x 879, 884 (Fed. Cir. 2012) (same).
The panel dissent and the dissents from the denial of
rehearing en banc do not point to any case law that,
contrary to this consistent line of precedent, imposes a
substantive obligation on a patent co-owner to consent to
the assertion of an infringement claim or, therefore, to
join an infringement suit absent an agreement or implied
agreement to join. Case law indicating that Rule 19 is
available to an owner to join a co-owner under circum-
stances in which there is an agreement by the co-owner to
join, 1 or available to someone who, by agreement, is an
exclusive licensee, 2 only underscores the importance of
absent owners’ consent to joinder. Under circumstances
in which a plaintiff has a contractual right to unilaterally
enforce the patent, Rule 19 unremarkably allows that

1 See, e.g., Willingham v. Lawton, 555 F.2d 1340,
1343 (6th Cir. 1977).
2 See, e.g., Indep. Wireless Tel. Co. v. Radio Corp. of
Am., 269 U.S. 459, 469 (1926) (explaining that a patent
holder holds “the patent in trust for” an exclusive licensee
and may therefore be required to serve as a plaintiff on
behalf of the exclusive licensee in an infringement action
against a third party); see also Abbot Labs. v. Diamedix
Corp., 47 F.3d 1128, 1132–33 (Fed. Cir. 1995).
STC.UNM v. INTEL CORPORATION 5

plaintiff to join involuntary plaintiffs. Without agree-
ment, no precedent has held that a co-owner may be
involuntarily joined. 3
Section 262 as long construed provides a foundation
for the consistent conclusion that an individual co-owner
has no unilateral substantive right to enforce a patent,
i.e., that another co-owner has a substantive right not to
be involuntarily joined in enforcing the patent. Section
262 provides that, absent agreement to the contrary by
the patent holders, each patent holder has the right to
unilaterally practice the patent. 35 U.S.C § 262. 4 That
right, both before and after enactment of the provision,
has been consistently interpreted to include the unilateral
right to grant another a license to practice the patent, see
Shum v. Intel Corp., 629 F.3d 1360, 1369 (Fed. Cir. 2010);
Schering, 104 F.3d at 344; Willingham, 555 F.2d at 1344
(“It has been held that a co-owner of a patent can even
grant a license to a third party without consent of the
other owners and neither the co-owner-licensor nor the
third-party-licensee is liable to the other owners. Talbot
v. Quaker State Oil Refining, 104 F.2d 967 (3d Cir. 1939);
Bendix Aviation Corp. v. Kury, 88 F. Supp. 243 (E.D.N.Y.

3 IpVenture’s statement, relied on by one of the dis-
sents, that involuntary plaintiffs can be joined under Rule
19, is dicta because that case did not involve co-owners.
See IpVenture, Inc. v. ProStar Computer, Inc., 503 F.3d
1324, 1326 (Fed. Cir. 2007). That dicta has never been
relied upon by any subsequent Federal Circuit case, and it
is contrary to this circuit’s established law.
4 35 U.S.C. § 262 provides: “In the absence of any
agreement to the contrary, each of the joint owners of a
patent may make, use, offer to sell, or sell the patented
invention within the United States, or import the patent-
ed invention into the United States, without the consent
of and without accounting to the other owners.”
6 STC.UNM v. INTEL CORPORATION

1950). See Aberdeen Hosiery Mills Co. v. Kaufman, 96
U.S.P.Q. 133 (E.D.N.Y. 1953).”). If a co-owner can unilat-
erally license third parties, it follows that such a co-owner
may decline to sue for infringement, and another co-owner
may not unilaterally sue for infringement. Hence the
longstanding recognition that “[o]rdinarily, 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.
Changing this court’s approach would disrupt settled
precedent of this court, which has not been drawn into
question by the Supreme Court. That precedent provides
a clear definition of substantive rights that may, then, be
altered by contract. The value of stability is especially
great for such rights. See Pearson v. Callahan, 555 U.S.
223, 233 (2009). Moreover, allowing involuntary joinder
of co-owners might compel them to incur attorney’s fees,
subject them to sanctions in exceptional cases under
§ 285, and disrupt established business relationships with
the defendant or related parties.
The rule against involuntary joinder is well estab-
lished. Changing that rule would upset settled expecta-
tions. There is no reason for en banc review.
 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, with whom LOURIE, O’MALLEY,
and WALLACH, Circuit Judges, join, dissenting from the
denial of the petition for rehearing en banc.
The University of New Mexico (through its licensing
arm STC.UNM) and the Sandia Corporation are joint
owners of the patents in suit, which STC seeks to enforce
against Intel Corporation. A split panel of this court held
that such an infringement suit cannot proceed, because
Sandia has not joined in the suit, and cannot be involun-
tarily joined despite Federal Rule 19 and its provisions for
involuntary joinder of a necessary party. The Rule in-
cludes:
2 STC.UNM v. INTEL CORPORATION

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 de-
prive 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 . . . .
....
(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.
Rule 19 is not permissive—yet this court holds that
Rule 19 uniquely does not apply in patent cases. The
court today denies STC’s petition for en banc review,
confirming this further removal of patent causes from the
mainstream of the law. I previously commented on this
flawed direction, see STC.UNM v. Intel Corp., 754 F.3d
940, 947 (Fed. Cir. 2014) (Newman, J., dissenting), and
write again to stress the constitutional and statutory and
common law principles that are violated by withdrawal of
disputes from judicial resolution. When access to the
courts is barred, a foundation of the nation is eroded. The
Court has observed:
Freedom of access to the courts is a cherished val-
ue in our democratic society. . . . The courts pro-
vide the mechanism for the peaceful resolution of
disputes that might otherwise give rise to at-
tempts at self-help. There is, and should be, the
strongest presumption of open access to all levels
of the judicial system.
STC.UNM v. INTEL CORPORATION 3

Talamini v. Allstate Ins. Co., 470 U.S. 1067, 1070-71
(1985) (Stevens, J., concurring).
The Federal Rules of Civil Procedure have “the force
of a federal statute,” Sibbach v. Wilson & Co., 312 U.S. 1,
13 (1941). Here Sandia, as patent co-owner, is necessary
to the infringement suit in order to protect the defendant
from separate suits for the same transgression. Sandia is
within the district court’s jurisdiction, is subject to pro-
cess, and can readily be joined.
The requirement that all co-owners must be included
in a patent enforcement action flows from the common
law, where the Court explained in Waterman v. Macken-
zie, 138 U.S. 252 (1891), that in order to protect defend-
ants from multiple suits by owners of “an undivided part
or share” of the patent, all such owners should be included
in suit enforcing the patent:
The monopoly thus granted is one entire thing,
and cannot be divided into parts, except as au-
thorized by those laws. The patentee or his as-
signs may, by instrument in writing, assign,
grant, and convey, either (1) the whole patent,
comprising the exclusive right to make, use, and
vend the invention throughout the United States;
or (2) an undivided part or share of that exclusive
right; or (3) the exclusive right under the patent
within and throughout a specified part of the
United States.
138 U.S. 252, 255 (1891); see also Indep. Wireless Tel. Co.
v. Radio Corp. of Am., 269 U.S. 459, 474 (1926) (noting
that joinder of all entities with a right of enforcement
averts multiple suits for the same acts).
In turn, the patent statute has codified the rights of
joint owners of patents, each to have full enjoyment of the
patent right (absent contrary agreement). Such enjoy-
4 STC.UNM v. INTEL CORPORATION

ment includes the right to exclude. Article III states the
judicial obligation to assure these rights:
[U]nder Article III, Congress established courts to
adjudicate cases and controversies as to claims of
infringement of individual rights whether by un-
lawful action of private persons or by the exertion
of unauthorized administrative power.
Stark v. Wickard, 321 U.S. 288, 310 (1944).
The Federal Rules state the procedural foundations of
the processes of law. The unique exclusion of patent cases
from Federal Rule 19 is as peculiar as it is unjustified.
See Provident Tradesmens Bank & Trust Co. v. Patterson,
390 U.S. 102 (1968) (discussing the criteria for necessary
parties to litigation).
The Federal Rules of Civil Procedure are “in every
pertinent respect, as binding as any statute duly enacted
by Congress, and federal courts have no more discretion
to disregard the Rule’s mandate than they do to disregard
constitutional or statutory provisions.” Bank of Nova
Scotia v. United States, 487 U.S. 250, 255 (1988); see also,
e.g., 28 U.S.C. §2072; Shady Grove Orthopedic Assocs.,
P.A. v. Allstate Ins. Co., 559 U.S. 393, 406-07 (2010).
The Federal Rules have consistently been applied to
facilitate judicial dispute resolution, to settle legal contro-
versies—not to bar aggrieved persons from access to
judicial attention. “Under the Rules, the impulse is
toward entertaining the broadest possible scope of action
consistent with fairness to the parties; joinder of claims,
parties and remedies is strongly encouraged.” United
Mine Workers v. Gibbs, 383 U.S. 715, 724 (1966); see also
Fed. Res. Corp. v. Shoni Uranium Corp., 408 F.2d 875,
877-78 (10th Cir. 1969) (“To obtain this result [of an
adjudication binding on all interested persons] is the very
purpose of Rule 19 and reflects the true interest of all
litigants, both state and federal courts, and, indeed, the
STC.UNM v. INTEL CORPORATION 5

public itself. Legal controversies should be settled, when
possible, in whole and not through multiple litigation.”
(citing Provident Tradesmens Bank, 390 U.S. at 108)).
No justification can be found for withdrawing or ex-
cluding the co-owner of a patent from access to legal
process. Section 281 of Title 35 provides that “A patentee
shall have remedy by civil action for infringement of his
patent.” Rights in patent property as between joint
owners are the rights of owners “in common,” Pitts v.
Hall, 19 F. Cas. 758, 760 (C.C.N.D.N.Y. 1854) (No.
11,193); Clum v. Brewer, 5 F. Cas. 1097 (C.C.D. Mass.
1855) (No. 2,909), and are enforceable in accordance with
the patent statute, the laws of property, and the proce-
dural Rules of the federal courts.
In accordance with the common law right of owners in
common, such owners are not liable to share their profits,
see 35 U.S.C. §262 (“In the absence of any agreement to
the contrary, each of the joint owners of a patent may
make, use, offer to sell, or sell the patented invention
within the United States, or import the patented inven-
tion into the United States, without the consent of and
without accounting to the other owners.”). The right to
use and sell the patented invention necessarily includes
the right to exclude others from the patented invention, in
analogy to the right and duty to avoid waste of property
owned in common. See Edwards Lifesciences AG v.
CoreValve, Inc., 699 F.3d 1305, 1314 (Fed. Cir. 2012) (the
right to exclude “is a fundamental tenet of patent law”).
The “proper case” for involuntary joinder of a plaintiff
is predicated on a duty owed to the plaintiff by the party
whose joinder is sought. Cf., e.g., Sheldon v. West Bend
Equip. Corp., 718 F.2d 603, 606 (3d Cir. 1983) (“[W]e
must ask, first, whether [employer] had a duty to permit
[plaintiff] to use its name to protect the rights asserted in
the action . . . .”); Caprio v. Wilson, 513 F.2d 837, 839-40
(9th Cir. 1975) (“[A]uthorization in Rule 19(a) to join a
6 STC.UNM v. INTEL CORPORATION

party as an involuntary plaintiff may be invoked only
when the party sought to be joined has a duty to allow
plaintiff to use his name in the action.” (quotation omit-
ted)). For patent cases, to facilitate 35 U.S.C §281 (“A
patentee shall have remedy by civil action for infringe-
ment of his patent.”), Rule 19 implements the duty dis-
cussed in Independent Wireless, for joinder in an action
brought by the exclusive licensee arises because the
patent owner
holds the title to the patent in trust for such a li-
censee, to the extent that he must allow the use of
his name as plaintiff in any action brought at the
instance of the licensee in law or in equity to ob-
tain damages for the injury to his exclusive right
by an infringer, or to enjoin infringement of it. . . .
269 U.S. at 459. Likewise, patent owners in common
have a similar duty to avoid waste of the property they
own in common. Rule 19 provides a simple procedure for
implementing that right, while continuing to protect the
defendant.
This court holds that a party who is necessary to the
action cannot be joined, and therefore that the action
cannot proceed. Yet our constitutional framework pro-
vides for resolution of property disputes through judicial
attention. An arbitrary rule that excludes enforcement of
a property right that is owned in common, cannot be
reconciled with the principles of the rule of law. At a
minimum, this ruling should be reviewed by the en banc
court, not tacitly confirmed.
 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.
______________________

O’MALLEY, Circuit Judge, with whom NEWMAN, LOURIE,
and WALLACH, Circuit Judges, join, dissenting from the
denial of the petition for rehearing en banc.
The panel majority “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)”
of the Federal Rules of Civil Procedure. STC.UNM v.
Intel Corp., 754 F.3d 940, 946 (Fed. Cir. 2014). It reaches
this conclusion, however, without adequately explaining
the legal footing upon which it is premised. It fails to
ground its holding in either federal common law or the
provisions of the Patent Act and ignores the mandatory
nature of the Federal Rules of Civil Procedure.
2 STC.UNM v. INTEL CORPORATION

Several things are clear about Rule 19. First, Rule
19(a)(1)(A) provides that “[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 in that person’s absence, the court cannot accord
complete relief among existing parties.” Fed. R. Civ. P.
19(a)(1)(A) (emphasis added). Second, Rule 19, like all
other Federal Rules of Civil Procedure, is “as binding as
any federal statute.” Stone Container Corp. v. United
States, 229 F.3d 1345, 1354 (Fed. Cir. 2000) (“[T]he Fed-
eral Rules of Civil Procedure, like the Federal Rules of
Criminal procedure, are ‘as binding as any federal stat-
ute.’” (quoting Bank of Nova Scotia v. United States, 487
U.S. 250, 255 (1988)). Third, again, like all other Rules of
Civil Procedure, Rule 19 applies in patent cases just as
fully as it applies in all other federal civil actions. See,
e.g., eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 393-
94 (2006) (rejecting this court’s attempt to develop a rule
regarding the right to injunctive relief “unique to patent
disputes,” holding that “the traditional four-factor frame-
work . . . governs the award of injunctive relief”). And,
finally, it is Rule 19—not substantive judge-made laws
governing joinder—that establishes the criteria for as-
sessing joinder. See Provident Tradesmens Bank & Trust
Co. v. Patterson, 390 U.S. 102, 118 n.13 (1968) (citing with
approval to a commentator who noted that “there is no
case support for the proposition that the judge-made
doctrines of compulsory joinder have created substantive
rights beyond the reach of the rulemaking power” (quot-
ing 2 Barron & Holtzoff, Federal Practice & Procedure
§ 512, n. 21.14 (1967 Supp.) (Wright ed.)).
Despite these principles, the panel majority concludes
that there is a substantive patent law right which not
only makes a patent co-owner a necessary party to an
infringement action, but prohibits involuntary joinder of
that necessary party and “trumps” the dictates of Rule 19.
Careful scrutiny of the cases upon which the majority
STC.UNM v. INTEL CORPORATION 3

relies to create this overriding substantive patent law
right reveals, however, that it is predicated upon a series
of misinterpretations and misstatements of that purport-
ed authority. There is nothing, moreover, in either the
panel majority opinion or the cases upon which it relies
which explains why any such substantive patent law right
would be powerful enough to overcome the mandatory
requirements of Rule 19(a).
I believe we should consider this case en banc to ana-
lyze whether there is any statutory or other foundation
for the so-called substantive patent law right to which the
panel majority clings and, if so, whether it is that right, or
Rule 19, that provides the criteria for our analysis of
joinder in this and other patent cases that come before us
and the district courts. I respectfully dissent from the
court’s refusal to do so.
I. RULE 19 IS MANDATORY
Absent any statutory support and without federal
common law authority, there is no source from which the
panel majority’s alleged substantive right derives. Ac-
cordingly, we are required to apply Rule 19, and the panel
majority’s refusal to do so violates the Rules Enabling Act.
The Rules Enabling Act provides that “[t]he Supreme
Court shall have the power to prescribe general rules of
practice and procedure and rules of evidence for cases in
the United States district courts . . . and courts of ap-
peals.” 28 U.S.C. § 2072(a). Those rules “shall not
abridge, enlarge or modify any substantive right.” Id. at
§ 2072(b). Pursuant to this statutorily-granted authority,
the Supreme Court promulgated the Federal Rules of
Civil Procedure, which: (1) “have the force [and effect] of a
federal statute,” Bright v. United States, 603 F.3d 1273,
1279 (Fed. Cir. 2010) (“In light of this statutory promul-
gation scheme, the Supreme Court has held that the
Federal Rules of Civil Procedure are deemed to have ‘the
force [and effect] of a federal statute.”) (citation omitted);
4 STC.UNM v. INTEL CORPORATION

and (2) apply in all civil actions, see Fed. R. Civ. P. 1 (with
certain limited exceptions, the Federal Rules “govern the
procedure in all civil actions and proceedings in the
United States district courts”).
Rule 19(a) provides for the involuntary joinder of a
necessary party. The rule states, in relevant part, that:
(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 par-
ty if:
(A) in that person’s absence, the court
cannot accord complete relief among exist-
ing parties; or
(B) that person claims an interest relat-
ing to the subject of the action and is so sit-
uated that disposing of the action in the
person’s absence may:
(i) as a practical matter impair or
impede the person’s ability to pro-
tect 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 par-
ty. A person who refuses to join as a plain-
tiff may be made either a defendant or, in a
proper case, an involuntary plaintiff.
STC.UNM v. INTEL CORPORATION 5

Fed. R. Civ. P. 19(a)(1)-(2). By its terms, therefore, when
a person satisfies the requirements of Rule 19(a), joinder
of that person is required.
If joinder of a required party is not feasible, Rule 19(b)
provides that “the court must determine whether, in
equity and good conscience, the action should proceed
among the existing parties or should be dismissed.” Fed.
R. Civ. P. 19(b). That analysis involves consideration of
several factors specified in Rule 19(b), including: (1) “the
extent to which a judgment rendered in the person’s
absence might prejudice that person or the existing par-
ties”; (2) “the extent to which any prejudice could be
lessened or avoided”; (3) “whether a judgment rendered in
the person’s absence would be adequate”; and
(4) “whether the plaintiff would have an adequate remedy
if the action were dismissed for nonjoinder.” Fed. R. Civ.
P. 19(b)(1)-(4).
We have determined that “[w]hether a party is indis-
pensable under Rule 19(b) is a matter of regional circuit
law.” Dainippon Screen Mfg. Co., Ltd. v. CFMT, Inc., 142
F.3d 1266, 1269 (Fed. Cir. 1998). The Tenth Circuit
applies a three part test to determine whether a party is
“indispensable” to an adjudication. N. Arapaho Tribe v.
Harnsberger, 697 F.3d 1272, 1278 (10th Cir. 2012). First,
the court must find that the party is “required to be
joined” under Rule 19(a). Id. Second, “the court must
determine that the required party cannot feasibly be
joined.” Id. Finally, the court must assess under Rule
19(b) “whether the required-but-not-feasibly-joined party
is so important to the action” that it cannot “in equity and
good conscience” proceed in the person’s absence. Id. at
1278-79.
Here, the district court essentially collapsed the three
prongs of its Rule 19 analysis into one. The court found
that: (1) Sandia is a necessary party because “substantive
patent law requires that co-owners of a patent be joined in
6 STC.UNM v. INTEL CORPORATION

an infringement action”; (2) joinder of Sandia is not
feasible “due to substantive patent law, which allows a co-
owner to decline to participate in an infringement action”;
and (3) Sandia is indispensable because to find otherwise
“would be to negate one of the rights of patent ownership:
to block an infringement action by refusing to partici-
pate.” Memorandum Opinion and Order, STC.UNM v.
Intel Corp., No. 10-cv-1077 (D.N.M. Jan. 17, 2013), ECF
No. 246 at 18-20. In reaching these conclusions, the
district court ignored the mandatory language in Rule
19(a)(1)(A). Because it is undisputed that Sandia is a
necessary party and jurisdiction and venue are proper,
joinder was required under Rule 19(a). STC.UNM, 754
F.3d at 948 (Newman, J., dissenting) (“It is not disputed
that Sandia is a necessary party, and that Sandia is
within the court’s personal jurisdiction, with appropriate
venue.”).
Recognizing the mandatory nature of Rule 19, one
panel of this court has noted, albeit in dictum, that “all
entities with an independent right to enforce the patent
are indispensable or necessary parties to an infringement
suit. When such an entity declines to join in the suit it
may be joined involuntarily, either as a party plaintiff or
party defendant . . . .” IpVenture, Inc. v. ProStar Comput-
er, Inc., 503 F.3d 1324, 1326 (Fed. Cir. 2007) (“[W]e need
not reach the question of whether the district court had
discretion, in applying Fed. R. Civ. P. 19(a), to permit the
addition of parties in this case without requiring dismis-
sal and refiling by the plaintiff.”).
For its part, the Supreme Court has indicated in a
non-patent case that Rule 19—not substantive law—
applies when determining who must participate in a
lawsuit. See Provident Tradesmens Bank & Trust Co. v.
Patterson, 390 U.S. 102 (1968). There, the Third Circuit
declined to follow Rule 19, and, instead, held that “the
right of a person who ‘may be affected’ by the judgment to
be joined is a ‘substantive’ right, unaffected by the federal
STC.UNM v. INTEL CORPORATION 7

rules; that a trial court ‘may not proceed’ in the absence of
such a person; and that since [one party] could not be
joined as a defendant without destroying diversity juris-
diction the action had to be dismissed.” Id. at 107. 1 The
Supreme Court reversed, holding that “Rule 19(b), which
the Court of Appeals dismissed as an ineffective attempt
to change the substantive rights . . . is, on the contrary, a
valid statement of the criteria for determining whether to
proceed or dismiss in the forced absence of an interested
person.” Id. at 125.
The panel majority’s invocation of a substantive right
“of a patent co-owner to impede an infringement suit
brought by another co-owner,” and its concomitant refusal
to apply Rule 19(a) seems inconsistent with the Supreme
Court’s conclusion that it is Rule 19—and only its manda-
tory dictates—that sets forth the criteria for joinder. See
STC.UNM, 754 F.3d at 946. This court should assess
whether there is actually some statutory or other basis for
the controlling “substantive right” the district court and
panel majority now declares to exist and, if so, whether it
is a right that is sufficient to overcome the dictates of
Rule 19’s provisions for involuntary joinder.

1 At the outset, the Court noted that the absent
party fell within the category of persons who should be
“joined if feasible” under Rule 19(a), but “could not be
made a defendant without destroying diversity.” Provi-
dent Tradesmens, 390 U.S. at 108. Because Rule 19(a)
provides that joinder cannot deprive the court of subject-
matter jurisdiction, the Court focused its analysis on Rule
19(b), which asks whether the court should dismiss the
action or proceed without the absent party. Id. at 108-09.
The Court’s discussion of the interplay between alleged
substantive rights and Rule 19 remains relevant to our
analysis here, even though it occurred when discussing
Rule 19(b) rather than Rule 19(a).
8 STC.UNM v. INTEL CORPORATION

Notably, there is no dispute over whether co-owners
are necessary parties to infringement actions; the ques-
tion we must address is whether a co-owner’s mere recal-
citrance can prevent enforcement of another co-owner’s
rights. Rule 19(a) is designed to address circumstances
just like those at issue here. See 7 Charles Alan Wright et
al., Federal Practice and Procedure § 1606 (3d ed. 2013)
(“The joinder of an absent person who should be a plain-
tiff as an involuntary plaintiff is authorized by the second
half of the third sentence of Rule 19(a). . . . The purpose of
this procedure is to mitigate some of the harshness that
occasionally results when the joinder of a nonparty is
found to be desirable but the nonparty refuses to join in
the action.”). Involuntary joinder assumes recalcitrance
by the joined party (or, as here, a preference to remain
neutral), but authorizes joinder nonetheless. Rule 19(a)
makes no exception for recalcitrant patent owners and we,
to date, have not explained from where such an exception
derives. See id. (noting that the “most typical application”
of Rule 19(a) “has been to allow exclusive licensees of
patents and copyrights to make the owner of the monopo-
ly an involuntary plaintiff in infringement suits”). 2
The cases the concurrence claims support the contrary
proposition do not do so. Rule 19(a) provides for involun-
tary joinder when the parties to be joined are necessary to
a proper resolution of the dispute being litigated—like co-

2 The suggestion by the concurrence that applica-
tion of Rule 19(a) to reluctant patent co-owners would
subject them to sanctions and attorney fees is curious; it
is extraordinarily so. It is difficult to imagine a world in
which a district court would see fit to impose sanctions on
an involuntary plaintiff, who neither initiated the litiga-
tion, nor actively participated in it. And, should such an
order ensue, it is impossible to imagine a world in which
we would not vacate it.
STC.UNM v. INTEL CORPORATION 9

owners of a patent. See Institut Pasteur v. Cambridge
Biotech Corp., 186 F.3d 1356, 1372 (Fed. Cir. 1999) (not-
ing that the inquiry under Rule 19(a) is “whether the
party should be joined if feasible, i.e., is the party ‘neces-
sary’”); see also A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d
1213, 1220 (Fed. Cir. 2010) (“If a party is deemed neces-
sary under Rule 19(a), but cannot be joined, then a court
must consider whether that party is indispensable and
dismissal appropriate under Rule 19(b).”). In the cases
the concurrence cites, the question addressed was either
whether there was standing to bring suit or whether the
basic predicate for application of Rule 19(a) was satis-
fied—i.e., whether the unwilling party was necessary to,
or even had anything remotely to do with the plaintiff’s
claims. See Caprio v. Wilson, 513 F.2d 837, 839-40 (9th
Cir. 1975) (concluding, in a case involving a congress-
man’s alleged misuse of the “franking privilege” by mail-
ing a congressional newsletter, that the district court’s
refusal to join the Post Office as an involuntary plaintiff
under Rule 19(a) was proper because “no trust relation-
ship exist[ed] between appellant and the Post Office” and
“[e]ach has an independent right which may be exer-
cised”) 3; see also Diagnostic Unit Inmate Council v. Films
Inc., 88 F.3d 651, 653-54 (8th Cir. 1996) (where the Ar-
kansas Department of Corrections (“ADC”) was joined as
an involuntary plaintiff under Rule 19(a) but “declined to
take a position in the lawsuit,” the court concluded that
“ADC ha[d] no obligation, contractual or otherwise, to
allow the inmates to use its name to secure declaratory
judgment relief that only ADC may seek”); Coast v. Hunt
Oil Co., 195 F.2d 870, 872 (5th Cir. 1952) (rejecting appel-
lant’s argument that, as a partner with a forty-nine
percent interest in a partnership, he had the right to

3 In Caprio, the court specifically noted that Rule
19(a) is “use[d] almost exclusively in patent and copyright
infringement cases.” 513 F.2d at 839.
10 STC.UNM v. INTEL CORPORATION

make the partnership an involuntary plaintiff under Rule
19(a) or to make his unwilling partner a party defendant
because “the plaintiff himself has no standing, joint or
otherwise, to maintain this action”). Thus, in none of
those cases did the court decide—contrary to the dictates
of the Supreme Court and the Rules Enabling Act—that,
where the predicate for application of Rule 19 has been
satisfied (as it undeniably is here), the rule can be ig-
nored.
II. DEVELOPMENT OF THE ALLEGED
“SUBSTANTIVE RIGHT”
The majority relies primarily on this court’s prior de-
cision in Ethicon, Inc. v. United States Surgical Corp., 135
F.3d 1456 (Fed. Cir. 1998) to outlaw use of involuntary
joinder of co-owners in patent cases. Neither Ethicon nor
the cases on which it relies specifically holds that a patent
co-owner cannot be involuntarily joined under Rule 19(a).
Instead, examination of the pertinent case law reveals
that repeated references to unsupported dicta have mor-
phed into a hard and fast rule from which this court
refuses to deviate and which it now refuses to justify.
In Ethicon, we quoted an earlier Federal Circuit deci-
sion for the proposition that “‘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.’” 135 F.3d at
1468 (quoting Schering Corp. v. Roussel-UCLAF SA, 104
F.3d 341, 345 (Fed. Cir. 1997)). Schering, in turn, relied
solely on a Sixth Circuit decision—Willingham v. Lawton,
555 F.2d 1340 (6th Cir. 1977)—not on the Patent Act or
even preexisting federal common law. But Willingham
did not purport to create any substantive patent rights.
In fact, the Willingham court expressly declined to ad-
dress the patent co-owner’s argument that it had a sub-
stantive right not to be forced to join the action under
Rule 19(a). As explained below, Rule 19 was not at issue
in either Schering or Ethicon, and the court in Willing-
STC.UNM v. INTEL CORPORATION 11

ham actually endorsed the application of Rule 19(a) on
the facts before it. Accordingly, none of these cases gives
rise to a substantive patent right that can trump applica-
tion of Rule 19.
First, the “crux of the problem” in Willingham was
“whether a co-owner could authorize 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.” 555 F.2d at 1343-44. Although the
patent co-owner, Star, argued that “Rule 19(a) is proce-
dural and does not alter the substantive law requiring
voluntary joinder of all co-owners of a patent in a suit for
its infringement,” the court found that it “need not reach
this issue,” because Star waived any objection by signing
a contract that gave either co-owner the right to initiate
an infringement action in its sole discretion. Id. at 1343
n.5. The court further explained that: (1) “[m]aking a
patent owner an involuntary plaintiff is not new;”
(2) “[j]oining Star as an involuntary plaintiff protects the
interests of both the defendants”; and (3) “Rule 19(a)
requires the continued joinder of Star as an involuntary
plaintiff in the infringement suit.” Id. at 1346. The Sixth
Circuit recognized the “general rule that all co-owners of a
patent must be joined as plaintiffs before an infringement
suit can be initiated,” in Willingham. Id. at 1343 (citing
Waterman v. Mackenzie, 138 U.S. 252, 255 (1891)). 4 It did

4 In Waterman, the Supreme Court explained that a
patentee or his assignee may grant and convey to another:
(1) the whole patent; (2) an undivided part or share of
that exclusive right; or (3) “the exclusive right under the
patent within and throughout a specified part of the
United States.” 138 U.S. at 255. “A transfer of either of
these three kinds of interests is an assignment, properly
speaking, and vests in the assignee a title in so much of
12 STC.UNM v. INTEL CORPORATION

not create or purport to create any new substantive
patent law right that would trump application of Rule 19,
however. Indeed, it expressly stated it was not address-
ing that question because it found any rights Star might
have had on that score to have been waived. Id. at 1343
n.5 (comparing Provident Tradesmens Bank & Trust Co.
v. Patterson, 390 U.S. 102, 125 (1968) (recognizing that
Rule 19(b) is “a valid statement of the criteria for deter-
mining whether to proceed or dismiss in the forced ab-
sence of an interested person” and that “judge-made
doctrines of compulsory joinder” do not create substantive
rights falling outside the reach of the rule), with Gibbs v.
Emerson Elec. Mfg. Co., 29 F. Supp. 810, 812 (D. Mo.
1939) (concluding that “it appears that one joint owner or
coowner or tenant in common of a patent right cannot
compel the other coowner to join in a suit for an infringe-
ment”).
Schering involved a dispute between two co-owners of
a pharmaceutical patent: Schering and Roussel. Schering
sued Zeneca for infringement, and two weeks later, Rous-
sel granted a license to Zeneca. Schering argued that the
terms of its co-ownership agreement with Roussel—which
provided that, “if one of the co-owners files an infringe-
ment suit, it can call on the non-suing co-owner to provide
‘reasonable assistance’ in connection with the litigation”—
meant that the non-suing party could not grant a license
to a defendant or prospective defendant. Schering, 104
F.3d at 345-46. Undertaking a contract analysis, we held

the patent itself, with a right to sue infringers; in the
second case, jointly with the assignor; in the first and
third cases, in the name of the assignee alone.” Id.
Importantly, the “development of the practice of joining a
party as an involuntary plaintiff was a response” to
Waterman. 7 Charles Alan Wright et al., Federal Practice
and Procedure § 1606 (3d ed. 2013).
STC.UNM v. INTEL CORPORATION 13

that nothing in the agreement limited the right to grant
licenses under the patent, but that “the 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.”
Id. at 345.
Involuntary joinder was not at issue on appeal in
Schering because, at the district court level, “Schering
joined Roussel as an involuntary plaintiff pursuant to
Rule 19(a).” Schering Corp. v. Zeneca Inc., 958 F. Supp.
196, 197 (D. Del. 1996); see also Schering, 104 F.3d at 346
(noting that the “co-ownership agreement made Roussel
subject to being named as an involuntary plaintiff in an
infringement action brought by Schering”). Accordingly,
this court in Schering did not address or analyze Rule 19;
it proceeded on the assumption that joinder under Rule
19(a) had occurred and that no objection to it had been
raised on appeal. While we did cite the Sixth Circuit’s
Willingham decision for the proposition that, “[o]rdinarily,
one co-owner has the right to impede the other co-owner’s
ability to sue infringers by refusing to voluntarily join,”
the “impediment” to which we referred was not due to
non-joinder or a “refus[al] to voluntarily join”—it was due
to the co-owner’s decision to license the patent to the
accused infringer prospectively. Schering, 104 F.3d at
345 (citing Willingham, 555 F.2d at 1344). We explained
that, “by granting a license to a prospective infringement
defendant, or 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.” Schering, 104 F.3d at 345 (emphasis added).
Again, we never said a co-owner could deprive a fellow co-
owner of his or her rights merely by not joining in an
infringement action.
In Ethicon, the co-owner of the patent—Dr. Choi—
granted a “retroactive license” to the accused infringer—
U.S. Surgical—and thus could not consent to an infringe-
14 STC.UNM v. INTEL CORPORATION

ment suit against it. Ethicon, 135 F.3d at 1459. Because
the parties stipulated to Choi’s intervention as defendant-
intervenor in the case, the majority neither cited nor
discussed Rule 19. Id. at 1458. Instead, the court focused
on the scope of the “retroactive license.” Specifically, the
court found that: (1) “a license to a third party only oper-
ates prospectively;” and (2) absent agreement otherwise,
“a co-owner cannot grant a release of another co-owner’s
right to accrued damages.” Id. at 1467 (concluding that
“Choi cannot release U.S. Surgical from its liability for
past accrued damages to Ethicon, only from liability to
himself”). In the context of its retroactive licensure
discussion, the court explained 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. 5 The court did not cite any authority for this so-
called “substantive patent law,” but subsequently cited
Schering for the proposition that one co-owner can “im-
pede” the other co-owner’s ability to pursue an infringe-
ment action. Id. (quoting Schering, 104 F.3d at 345). As
in Schering, however, Choi’s ability to “impede” Ethicon’s

5 The court recognized two exceptions: (1) “when
any patent owner has granted an exclusive license, he
stands in a relationship of trust to his licensee and must
permit the licensee to sue in his name”; and (2) “[i]f, by
agreement, a co-owner waives his right to refuse to join
suit, his co-owners may subsequently force him to join in
a suit against infringers.” Ethicon, 135 F.3d at 1468 n.9
(citing Indep. Wireless Tel. Co. v. Radio Corp. of Am., 269
U.S. 459, 469 (1926); Willingham, 555 F.2d at 1344-45).
As the dissent in the present case points out, it makes
little sense to say “that when an 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.”
STC.UNM, 754 F.3d at 951 (Newman, J., dissenting).
STC.UNM v. INTEL CORPORATION 15

infringement action was not due to non-joinder, particu-
larly since Choi was already a voluntary party to the case.
Instead, it was because Choi had granted a license to U.S.
Surgical. The court concluded that dismissal was war-
ranted because “Choi did not consent to an infringement
suit against U.S. Surgical and indeed can no longer
consent due to his grant of an exclusive license,” and thus
“Ethicon’s complaint lacks the participation of a co-owner
of the patent.” Id. at 1468. Because the court’s decision
in Ethicon did not involve joinder or Rule 19, it cannot
stand for the proposition that Rule 19 cannot be invoked
to force joinder when no license impedes doing so.
The panel majority here states that “[w]hether this
court in Ethicon expressly mentioned Rule 19(a)—the
involuntary joinder provision—does not change the effect
the holding had on it.” STC.UNM, 754 F.3d at 946. But
the majority in Ethicon did not discuss joinder under Rule
19, did not purport to harmonize the requirements of Rule
19 with preexisting substantive patent law, and—because
the decision was focused on licensing issues—did not
create any new principles of law applicable to future cases
involving the involuntary joinder of patent co-owners.
Importantly, the Ethicon majority’s silence cannot be
evidence of its position with respect to Rule 19, even
though the dissenting opinion discussed the rule. Ethi-
con, 135 F.3d at 1472 (Newman, J., dissenting) (“There is
no barrier to the involuntary joinder of a joint inventor
and/or co-owner under Rule 19, if such is needed to bring
before the court all persons deemed necessary to the
suit.”); see also United Haulers Ass’n v. Oneida-Herkimer
Solid Waste Mgmt. Auth., 261 F.3d 245, 260 (2d Cir. 2001)
(“[W]e require more than the Court’s silence on this point
before concluding that it either rejected or accepted the
public/private distinction advocated by the concurring and
dissenting opinions.”).
Although our Ethicon decision was not based on Rule
19, we subsequently stated that it “explicitly held that
16 STC.UNM v. INTEL CORPORATION

Rule 19 does not permit the involuntary joinder of a
patent co-owner in an infringement suit brought by
another co-owner.” DDB Technologies, L.L.C. v. MLB
Advanced Media, L.P., 517 F.3d 1284, 1289 n.2 (Fed. Cir.
2008) (citing Ethicon, 135 F.3d at 1468). It is unclear,
however, why the court in DDB would say that Ethicon
made an explicit holding with respect to Rule 19 when it
was not even mentioned in the majority opinion. In any
event, the reference to Ethicon in DDB was dictum be-
cause the sole issue before the court in that case dealt
with entitlement to jurisdictional discovery. Id. at 1286
(“[W]e hold that the district court erred in denying DDB’s
request for jurisdictional discovery.”). 6
Tracing the origin of this so-called rule of substantive
patent law makes clear that, prior to the panel majority’s
decision in this case, we had never explicitly held that one
patent co-owner cannot involuntarily join the other.
Neither Schering nor Ethicon made any pronouncements

6 Other decisions from this court have perpetuated
the idea that all co-owners must ordinarily join as plain-
tiffs in an infringement suit, but, again, Rule 19(a) was
neither raised nor addressed in those cases. See Isr. Bio-
Eng’g Project v. Amgen, 475 F.3d 1256, 1264 (Fed. Cir.
2007) (citing Ethicon and Schering to find that “one co-
owner has the right to limit the other co-owner’s ability to
sue infringers by refusing to join voluntarily in the patent
infringement suit”); Int’l Nutrition Co. v. Horphag Re-
search Ltd., 257 F.3d 1324, 1331 (Fed. Cir. 2001) (citing
Ethicon for the proposition that United States patent law
“requires that all co-owners normally must join as plain-
tiffs in an infringement suit”). Mere repetition of dicta—
without any accompanying analysis and without consid-
eration of Rule 19—cannot give rise to a substantive
patent right sufficient to overcome application of that
rule.
STC.UNM v. INTEL CORPORATION 17

on involuntary joinder that were necessary to the resolu-
tion of those cases. As it stands, therefore, there is no
preexisting federal common law supporting the panel
majority’s declaration of a substantive patent right that
wholly trumps application of Rule 19. 7
III. WE HAVE NOT IDENTIFIED A STATUTORY BASIS FOR
THIS SO-CALLED SUBSTANTIVE PATENT RIGHT
Notably, the panel majority does not attempt to
identify a statutory foundation for the alleged substantive
patent right. In Ethicon, the court suggested that the

7 STC.UNM argues in its petition for rehearing that
we lack the judicial authority to create a substantive
patent right. Intel responds that the panel decision does
not create or purport to create any federal common law
and instead is an “interpretation, harmonization, and
application of the Patent Act, the Rules Enabling Act, and
Rule 19.” Intel’s Opp. to Petition for Rehearing En Banc
11. The panel majority does not discuss federal common
law principles and does not purport to derive the alleged
substantive right at issue from federal common law.
Although there is “no federal general common law,” the
Supreme Court has “recognized the need and authority in
some limited areas to formulate what has come to be
known as ‘federal common law.’” Texas Indus., Inc. v.
Radcliff Materials, Inc., 451 U.S. 630, 640 (1981) (cita-
tions omitted). “These instances are ‘few and restricted,’
and fall into essentially two categories: those in which a
federal rule of decision is ‘necessary to protect uniquely
federal interests,’ and those in which Congress has given
the courts the power to develop substantive law.” Id.
(internal citations omitted). Neither category seems to
support the creation of a common law “substantive right”
that one co-owner can in all circumstances prevent a
patent infringement suit by refusing to join that suit as a
plaintiff.
18 STC.UNM v. INTEL CORPORATION

general principle it gleaned from Schering and Willing-
ham found support in Section 262 of the Patent Act,
which provides that:
In the absence of any agreement to the contrary,
each of the joint owners of a patent may make,
use, offer to sell, or sell the patented invention
within the United States, or import the patented
invention into the United States, without the con-
sent of and without accounting to the other own-
ers.
35 U.S.C. § 262. It is well-established that “[e]ach co-
owner’s ownership rights carry with them the right to
license others, a right that also does not require the
consent of any other co-owner.” Schering, 104 F.3d at
344. Given these rights, the Ethicon court declared that
“the congressional policy expressed by section 262 is that
patent co-owners are ‘at the mercy of each other.’” Ethi-
con, 135 F.3d at 1468 (quoting Willingham, 555 F.2d at
1344). But Section 262 merely sets forth the rights of
patent co-owners absent an agreement; it says nothing to
support the existence of a substantive patent right that
would trump the mandatory joinder requirements in Rule
19. Nothing in Section 262 suggests that one co-owner
can deprive the others of their rights to enforce the pa-
tent. To the contrary, the statute specifically provides
that each co-owner has an independent right to practice
the patent.
While it is clear that patent co-owners can license
their rights to the patent going forward, we have held
that:
the grant of a license by one co-owner cannot de-
prive the other co-owner of the right to sue for ac-
crued damages for past infringement. That would
require a release, not a license, and the rights of a
patent co-owner, absent agreement to the contra-
ry, do not extend to granting a release that would
STC.UNM v. INTEL CORPORATION 19

defeat an action by other co-owners to recover
damages for past infringement.
Schering, 104 F.3d at 345; see also Ethicon, 135 F.3d at
1467 (“Nonetheless Choi cannot release U.S. Surgical
from its liability for past accrued damages to Ethicon,
only from liability to himself.”). Thus, while each co-
owner is able to enter into an agreement with a potential
infringer prospectively, it cannot release that infringer’s
liability for damages a co-owner suffered for past in-
fringement. Despite this settled principle, the panel
majority here holds that one co-owner can prevent anoth-
er co-owner’s claim for accrued damages for past in-
fringement simply by refusing to join as a plaintiff in the
infringement suit. In doing so, the panel majority has
created an inconsistency with our prior decisions in
Schering and Ethicon. Perhaps more importantly, the
panel majority’s decision will interfere with litigants’
ability to access the courts to enforce their patent rights.
The majority’s decision here also conflicts with the
fact that the grant of a patent statutorily includes “the
right to exclude others.” 35 U.S.C. § 154(a)(1). We have
specifically recognized that “[a] patentee’s right to exclude
is a fundamental tenet of patent law.” Edwards Lifesci-
ences AG v. CoreValve, Inc., 699 F.3d 1305, 1314 (Fed.
Cir. 2012) (citations omitted). It seems inconsistent to say
that each co-owner has an independent right to practice
the patent, but that they may prevent one another from
enforcing the fundamental right of exclusion solely be-
cause they “prefer[] to take a neutral position.” See
STC.UNM, 754 F.3d at 943.
Finally, the Patent Act provides that “[a] patentee
shall have remedy by civil action for infringement of his
patent.” 35 U.S.C. § 281 (emphasis added). In other
words, each co-owner has a right to file a civil action to
enforce the patent. But the effect of the panel majority’s
decision here is that, if a patent co-owner refuses to join
20 STC.UNM v. INTEL CORPORATION

the infringement suit voluntarily as a plaintiff, it can
prevent the other owner from obtaining judicial relief for
accrued damages. If that were the case, then Section
281’s statutorily-mandated right to a civil action would
have little meaning. Accordingly, while there may be
some other support for this so-called overriding “substan-
tive right” against involuntary joinder in patent infringe-
ment cases, the panel majority has provided no statutory
basis for its decision, which actually appears inconsistent
with several provisions of the Patent Act.
IV. CONCLUSION
The panel majority cites our prior decisions in Ethi-
con, Schering, and DDB as support for its holding that a
patent owner or co-owner cannot be forced to join as a
plaintiff in a patent infringement suit. But mere repeti-
tion of an unsupported proposition that originated in dicta
cannot give rise to a substantive patent right sufficient to
overcome the requirements of Rule 19(a).
Rather than once again simply exempt patent law
from the rules that govern all federal litigation, we should
either: (1) clarify the basis for this so-called substantive
right against involuntary joinder in patent infringement
cases and explain why it can overcome the dictates of
Rule 19; or (2) hold that Rule 19 applies, including the
provisions for involuntary joinder set forth therein, and
direct the lower court to consider the propriety of joinder
or dismissal under that rule alone. For these reasons, I
respectfully dissent from the court’s denial of STC’s
request for rehearing en banc.