Case: 22-2207 Document: 48 Page: 1 Filed: 05/01/2024
United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL TECH LLC,
Plaintiff-Appellant
v.
ZEBRA TECHNOLOGIES CORPORATION,
Defendant-Appellee
______________________
2022-2207
______________________
Appeal from the United States District Court for the
Western District of Texas in No. 6:19-cv-00628-ADA, Judge
Alan D. Albright.
______________________
Decided: May 1, 2024
______________________
JAMES PERKINS, Cole Schotz P.C., Dallas, TX, argued
for plaintiff-appellant. Also represented by TIMOTHY J.H.
CRADDOCK, GARY SORDEN.
WILLIAM R. PETERSON, Morgan, Lewis & Bockius LLP,
Houston, TX, argued for defendant-appellee. Also repre-
sented by KARON NICOLE FOWLER, JAMES JOHN KRITSAS,
AMANDA SCOTT WILLIAMSON, Chicago, IL; BRENT A.
HAWKINS, San Francisco, CA.
______________________
Before PROST, TARANTO, and HUGHES, Circuit Judges.
Case: 22-2207 Document: 48 Page: 2 Filed: 05/01/2024
2 INTELLECTUAL TECH LLC v.
ZEBRA TECHNOLOGIES CORPORATION
PROST, Circuit Judge.
Intellectual Tech LLC (“IT”) appeals from a decision of
the United States District Court for the Western District of
Texas dismissing all its claims against Zebra Technologies
Corporation (“Zebra”) for lack of constitutional standing.
Intell. Tech LLC v. Zebra Techs. Corp., No. 6:19-cv-628,
2022 WL 1608014 (W.D. Tex. May 20, 2022) (“Opinion”).
For the reasons below, we reverse and remand.
BACKGROUND
In 2019, IT asserted U.S. Patent No. 7,233,247 (“the
’247 patent”) against Zebra. J.A. 67. The complaint al-
leged, among other things, that IT “is the owner and as-
signee” of the ’247 patent. Compl., Intell. Tech LLC v.
Zebra Techs. Corp., No. 6:19-cv-628 (W.D. Tex. Oct. 22,
2019), ECF No. 1 ¶ 7. Zebra first moved to dismiss the
complaint for lack of standing, and the district court denied
the motion. J.A. 300. Subsequently, Zebra moved for sum-
mary judgment of no subject-matter jurisdiction based on
IT’s purported lack of constitutional and statutory stand-
ing. J.A. 309. The district court considered this a renewed
motion to dismiss, granted the motion based on its deter-
mination that IT lacked constitutional standing, and dis-
missed all claims without prejudice. Opinion, 2022 WL
1608014.
IT is the wholly owned subsidiary of OnAsset Intelli-
gence, Inc. (“OnAsset”). Rule 7.1 Corporate Disclosure
Statement, Intell. Tech LLC v. Zebra Techs. Corp., No.
6:19-cv-628, (W.D. Tex. Oct. 22, 2019), ECF No. 2. Here,
the history of OnAsset’s agreements with a lender, Main
Street Capital Corporation (“Main Street”), provides im-
portant background regarding IT’s creation and its legal
interest in the ’247 patent. We first outline these agree-
ments and then describe the underlying district court deci-
sion.
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INTELLECTUAL TECH LLC v. 3
ZEBRA TECHNOLOGIES CORPORATION
I
In 2011, OnAsset granted Main Street a security inter-
est in its patents—including the ’247 patent, which was as-
signed to OnAsset at the time—as part of a loan agreement.
J.A. 229–39 (2011 Patent and Trademark Security Agree-
ment); J.A. 477–89 (Security Agreement); J.A. 399–466
(Loan Agreement). The terms gave Main Street certain
rights that it could exercise upon OnAsset’s default of the
loan. In 2013, Main Street notified OnAsset that it was in
default. J.A. 510–12.
Subsequently, in 2017, OnAsset and Main Street en-
tered into a forbearance agreement. J.A. 162. At the same
time, IT was formed as OnAsset’s subsidiary, and OnAsset
assigned the ’247 patent to IT. J.A. 283–85; J.A. 184. In
turn, IT entered into a joinder agreement to the loan agree-
ment between OnAsset and Main Street. J.A. 211. And IT
entered into its own patent and trademark security agree-
ment with Main Street, granting Main Street a security in-
terest in the ’247 patent like OnAsset had. J.A. 249 (2017
Patent and Trademark Security Agreement). However, by
2018, IT had defaulted as well. Opinion, 2022 WL
1608014, at *3, *4 n.2.
IT agrees with the district court’s assessment that the
2011 and 2017 patent and trademark security agreements
have “mirrored” terms. See Appellant’s Br. 11 n.1 (citing
Opinion, 2022 WL 1608014, at *3). As a result, Main
Street’s default rights at the time the complaint was filed
in 2019 were the same whether assessed based on OnAs-
set’s 2013 default (where IT’s assignment from OnAsset
was subject to these rights) or IT’s own 2018 default. We
follow the parties’ and district court’s convention of citing
the 2011 agreement throughout.
Turning to the pertinent provisions, section 4 of the pa-
tent and trademark security agreement provides:
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4 INTELLECTUAL TECH LLC v.
ZEBRA TECHNOLOGIES CORPORATION
4. Debtor’s Use of the Patents and Trademarks.
Debtor shall be permitted to control and manage
the Patents and Trademarks, including the right to
exclude others from making, using or selling items
covered by the Patents and Trademarks and any
licenses thereunder, in the same manner and with
the same effect as if this Agreement had not been
entered into, so long as no Default exists.
J.A. 232.
In the event of a default, section 6 provides options that
Main Street can elect to exercise:
6. Remedies. While a Default exists, Secured
Party may, at its option, take any or all of the fol-
lowing actions:
(a) Secured Party may exercise any or all
remedies available under the Loan Agree-
ment.
(b) Secured Party may sell, assign, trans-
fer, pledge, encumber or otherwise dispose
of the Patents and Trademarks.
(c) Secured Party may enforce the Patents
and Trademarks and any licenses thereun-
der, and if Secured Party shall commence
any suit for such enforcement, Debtor
shall, at the request of Secured Party, do
any and all lawful acts and execute any and
all proper documents required by Secured
Party in aid of such enforcement.
J.A. 232.
In turn, section 3(j) provides mechanisms for Main
Street to exercise its rights. Specifically, it states:
3. Representations, Warranties and Agreements.
Debtor represents, warrants and agrees as follows:
Case: 22-2207 Document: 48 Page: 5 Filed: 05/01/2024
INTELLECTUAL TECH LLC v. 5
ZEBRA TECHNOLOGIES CORPORATION
...
(j) Power of Attorney. To facilitate Se-
cured Party’s taking action under subsec-
tion (i) and exercising its rights under
Section 6, Debtor hereby irrevocably ap-
points (which appointment is coupled with
an interest) Secured Party, or its delegate,
as the attorney-in-fact of Debtor with the
right (but not the duty) from time to time
while a Default exists to create, prepare,
complete, execute, deliver, endorse or file,
in the name and on behalf of Debtor, any
and all instruments, documents, applica-
tions, financing statements, and other
agreements and writings required to be ob-
tained, executed, delivered or endorsed by
Debtor under this Section 3, or, necessary
for Secured Party, while a Default exists, to
enforce or use the Patents or Trademarks
or to grant or issue any exclusive or non-
exclusive license under the Patents or
Trademarks to any third party, or to sell,
assign, transfer, pledge, encumber or oth-
erwise transfer title in or dispose of the Pa-
tents or Trademarks to any third party.
Debtor hereby ratifies all that such attor-
ney shall lawfully do or cause to be done by
virtue hereof. The power of attorney
granted herein shall terminate upon the
termination of the Loan Agreement as pro-
vided therein and the payment and perfor-
mance of all Obligations.
J.A. 230–32 (emphasis in original). Zebra has not pointed
to evidence that Main Street has elected to exercise any
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6 INTELLECTUAL TECH LLC v.
ZEBRA TECHNOLOGIES CORPORATION
rights under section 6 or taken any action as attorney in
fact under section 3(j). 1
II
Zebra moved to dismiss for lack of standing under Fed-
eral Rules of Civil Procedure 12(b)(1) and 12(c). The dis-
trict court denied the motion, concluding that IT “is the
rightful owner of the ’247 patent, retains the right to en-
force that patent, and thus has constitutional and statu-
tory standing to bring a patent infringement suit against
Zebra.” J.A. 300.
Zebra renewed its standing arguments in the form of a
motion for summary judgment for lack of subject-matter
jurisdiction. Zebra primarily argued that OnAsset’s initial
default in 2013 triggered an immediate transfer of exclu-
sionary rights to Main Street such that OnAsset had no ex-
clusionary rights to assign IT as of the 2017 assignment
agreements. J.A. 316.
The district court rejected this primary argument, con-
cluding that default gave Main Street the right “to enforce,
‘sell, assign, transfer, pledge, encumber or otherwise dis-
pose of’ the ’247 patent,” but it did not “automatically divest
OnAsset of title to the ’247 patent.” Opinion, 2022 WL
1608014, at *3 (quoting J.A. 232 (2011 Patent and Trade-
mark Security Agreement, section 6)). Nonetheless, the
district court granted Zebra’s motion as to constitutional
standing—which the court restyled as a renewed motion
1 After the complaint was filed, IT, OnAsset, and
Main Street entered into an amended forbearance agree-
ment that extended the forbearance date to the end of 2022.
J.A. 557. However, because this does not alter the consti-
tutional standing analysis as of the complaint’s filing date,
we need not assess the impact of forbearance on Main
Street’s rights. See Paradise Creations, Inc. v. UV Sales,
Inc., 315 F.3d 1304, 1309–10 (Fed. Cir. 2003).
Case: 22-2207 Document: 48 Page: 7 Filed: 05/01/2024
INTELLECTUAL TECH LLC v. 7
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under Rule 12(b)(1)—because, in its view, the fact that
“Zebra could obtain a license on the [’247] patent from Main
Street” deprived IT of all its exclusionary rights. Id. at *7.
The district court acknowledged that one way to read sec-
tion 6 of the agreement was that it did not give Main Street
a right to license, but the district court seemed to conclude
that Main Street’s ability to assign, and Zebra’s theoretical
ability to obtain title from such an assignment, had the
same impact on the standing analysis as Main Street hav-
ing “an unconditional right to license.” Id. at *7 n.4. The
court stated that it was “follow[ing] [two district court]
Uniloc opinions, and their extension of [the Federal Circuit
decision in] WiAV, to find a lack of constitutional standing.”
Id. at *7 (citing WiAV Sols. LLC v. Motorola, Inc., 631 F.3d
1257, 1266 (Fed. Cir. 2010); Uniloc USA, Inc. v. Apple, Inc.,
No. C 18-00358, 2020 WL 7122617 (N.D. Cal. Dec. 4, 2020);
Uniloc USA, Inc. v. Motorola Mobility, LLC, No. CV 17-
1658, 2020 WL 7771219 (D. Del. Dec. 30, 2020)).
Next, the court rejected “IT[’s] request[] that it be af-
forded the opportunity to cure any defects in constitutional
standing by joining Main Street or substituting it under
Federal Rules of Civil Procedure 19 or 20.” Id. at *8. The
court reasoned that the standing defect existed at the time
of filing and was therefore incurable. Id. Finally, the court
found it unnecessary to reach Zebra’s arguments related to
statutory standing in light of the Article III (i.e., constitu-
tional) determination. Id. The court dismissed all of IT’s
claims without prejudice. Id.
IT moved for reconsideration. J.A. 581–82. The court
denied IT’s motion, largely reiterating the reasoning it out-
lined in its initial decision. Intell. Tech LLC v. Zebra Techs.
Corp., No. 6:19-cv-628, 2022 WL 3088572 (W.D. Tex. Aug.
3, 2022). The court summarized its understanding of the
relevant law as follows: “a patent title holder can deprive
itself of exclusionary rights by vesting a third party with a
right to assign or sublicense the patent (even if the third
party never exercises those rights).” Id. at *2. The court
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8 INTELLECTUAL TECH LLC v.
ZEBRA TECHNOLOGIES CORPORATION
acknowledged that “IT may be correct that it is more accu-
rate to say that, on default, Main Street has an unfettered
right to license and/or assign the ’247 patent in IT’s name.”
Id. at *3 (emphasis in original). However, the court consid-
ered its analysis “completely unaffected by this” purported
agency-based distinction. Id.
IT timely appealed. J.A. 611. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(1).
DISCUSSION
I
Article III standing determinations are reviewed de
novo. Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d
1359, 1363 (Fed. Cir. 2010). Standing requires: (1) an in-
jury in fact; (2) traceability; and (3) redressability. Lujan
v. Defs. of Wildlife, 504 U.S. 555, 560–61 (1992). The only
meaningful dispute raised by the circumstances here re-
lates to the injury-in-fact requirement. 2 An injury in fact
is an “actual or imminent” “concrete and particularized”
“invasion of a legally protected interest.” Id. at 560. This
requirement is mandatory at the inception of the lawsuit
and carries through the case, requiring the plaintiff to
prove it “with the manner and degree of evidence required
at the successive stages of the litigation.” Id. at 561.
The interpretation of an unambiguous contract is a le-
gal issue, and we review the district court’s interpretation
de novo. Gonzalez v. Denning, 394 F.3d 388, 392 (5th Cir.
2004). It is undisputed that Texas law applies to the
2 Zebra does present a cursory redressability argu-
ment based on IT’s ability to sufficiently prove its damages
model. Appellee’s Br. 25. Because this is an argument
about IT’s ability to prove substantive elements of its
claims instead of a jurisdictional argument, we reject it
without further discussion.
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INTELLECTUAL TECH LLC v. 9
ZEBRA TECHNOLOGIES CORPORATION
agreements at issue here. See Appellant’s Br. 8; Appellee’s
Br. 8. Under Texas law, contracts are read as a whole to
give meaning to the parties’ intent as expressed in the writ-
ing, and an agreement is considered ambiguous only where
the language of the contract is subject to two or more rea-
sonable interpretations or meanings. Gonzalez, 394 F.3d
at 392; see also Frost Nat’l Bank v. L&F Distribs., Ltd., 165
S.W.3d 310, 312 (Tex. 2005) (concluding that an agreement
is not ambiguous where, “after the pertinent rules of con-
struction are applied, the contract can be given a definite
or certain legal meaning”).
II
The only question before us is whether IT demon-
strated the irreducible constitutional minimum of an in-
jury in fact. All that requires here is that IT retained an
exclusionary right—i.e., infringement would amount to an
invasion of IT’s legally protected interest. Under the only
reasonable reading of the patent and trademark security
agreement, IT still retained at least one exclusionary right,
even in view of the rights Main Street gained upon default.
Before going further, it is perhaps just as important to
frame what is not at issue on appeal here. We need not
determine whether IT’s legal interest in the ’247 patent
was sufficient to meet the “patentee” requirement of
35 U.S.C. § 281, an issue the district court did not reach.
This court has clarified, in light of the Supreme Court’s
opinion in Lexmark International, Inc. v. Static Control
Components, Inc., 572 U.S. 118 (2014), that § 281 is not a
jurisdictional requirement. See Lone Star Silicon Innova-
tions LLC v. Nanya Tech. Corp., 925 F.3d 1225, 1235 (Fed.
Cir. 2019) (“Lexmark is irreconcilable with our earlier au-
thority treating § 281 as a jurisdictional requirement.”);
Schwendimann v. Arkwright Advanced Coating, Inc., 959
F.3d 1065, 1071 (Fed. Cir. 2020) (“[Lone Star] recognized
that intervening Supreme Court precedent made clear that
our earlier decisions treating the prerequisites of the
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10 INTELLECTUAL TECH LLC v.
ZEBRA TECHNOLOGIES CORPORATION
Patent Act as jurisdictional were wrong.”). Further, we
have acknowledged that the § 281 inquiry (sometimes
called statutory standing in our cases, particularly before
Lexmark) and the injury-in-fact inquiry (for constitutional
standing) are distinct. Lone Star, 925 F.3d at 1234–35
(“[A]lthough Lone Star does not possess all substantial
rights in the asserted patents [to satisfy § 281] its allega-
tions still satisfy Article III.”); Univ. of S. Fla. Rsch.
Found., Inc. v. Fujifilm Med. Sys. U.S.A., Inc., 19 F.4th
1315, 1324 (Fed. Cir. 2021) (“[W]e hold [the plaintiff] fails
to meet the statutory requirements of § 281 but does meet
the requirements of constitutional standing.”). In general,
the question for the injury-in-fact threshold is whether a
party has an exclusionary right. Univ. of S. Fla. Rsch.
Found., 19 F.4th at 1323.
Prior to our case law’s acknowledgement of this juris-
dictional and substantive distinction, many of this court’s
opinions had improperly melded the injury-in-fact inquiry
with the § 281 inquiry—often performing a combined anal-
ysis of the two simultaneously. The lack of delineation be-
tween these two separate legal questions in prior opinions
may have caused some of the uncertainty the district court
grappled with here. However, the implications illustrate
why the distinction is critical. Article III standing is a ju-
risdictional requirement, which is incurable if absent at
the initiation of suit. See Paradise Creations, 315 F.3d at
1309–10; Abraxis, 625 F.3d at 1366 n.2. Further, for Arti-
cle III purposes, “[a]t least one plaintiff must have standing
to seek each form of relief requested in the complaint.”
Town of Chester, N.Y. v. Laroe Ests., Inc., 581 U.S. 433, 439
(2017). The issue of whether the statutory requirements of
§ 281 are met, on the other hand, is not jurisdictional and
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a defect is curable by joinder. Lone Star, 925 F.3d at 1235–
36. 3
We now turn to the only question on appeal, whether
IT had an exclusionary right in the ’247 patent when the
complaint was filed. The answer is a clear yes.
Zebra argues that Main Street’s ability to license the
’247 patent pursuant to section 3(j) of the agreement de-
prived IT of all exclusionary rights. Zebra makes two ar-
guments related to licensing: (1) Main Street had the
exclusive ability to license upon default, which deprived IT
of all exclusionary rights, Appellee’s Br. 29–32; and
(2) even if both Main Street and IT had the ability to license
upon default, Main Street’s non-exclusive ability to do so
still divested IT of all exclusionary rights, id. at 17–29.
First, based on our assessment of the patent and trade-
mark security agreement as a whole, we reject Zebra’s ar-
gument that the agreement granted Main Street exclusive
licensing rights upon default. Nothing in the agreement
indicates that, without further action by Main Street, the
mere triggering of Main Street’s options under section 6
3 Issues of joinder are also not before us on appeal.
Because the district court concluded that IT lacked consti-
tutional standing, it did not assess IT’s proposed joinder of
Main Street under Federal Rules of Civil Procedure 19 or
20. Opinion, 2022 WL 1608014, at *8. In light of our de-
termination that IT does have constitutional standing, is-
sues of joinder can, if necessary, be addressed on remand.
See Lone Star, 925 F.3d at 1236–39. We also note that fol-
lowing the dismissal here, Main Street, OnAsset, and IT
filed suit as co-plaintiffs. Intell. Tech LLC v. Zebra Techs.
Corp., No. 6:22-cv-00788 (W.D. Tex.). That case is cur-
rently stayed pending this appeal. Order Staying Case, In-
tell. Tech LLC v. Zebra Techs. Corp., No. 6:22-cv-788 (W.D.
Tex. Jan. 9, 2023), ECF No. 48.
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12 INTELLECTUAL TECH LLC v.
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and mechanisms under section 3(j) automatically deprived
IT of all its rights under section 4. Because we reject this
exclusive-rights argument based on our interpretation of
the agreement alone, we need not assess whether IT would
have constitutional standing under that reading of the
agreement.
Next, we conclude that IT retained exclusionary rights
even though Main Street had the non-exclusive ability to
license the ’247 patent. 4 A patent owner has exclusionary
rights sufficient to meet the injury-in-fact requirement
even where, without more, it grants another party the abil-
ity to license. See Uniloc USA, Inc. v. Motorola Mobility
LLC, 52 F.4th 1340, 1345 (Fed. Cir. 2022) (observing but
not holding that “[p]atent owners and licensees do not have
identical patent rights, and patent owners arguably do not
lack standing simply because they granted a license that
gave another party the right to sublicense the patent to an
alleged infringer”); see also id. at 1351 (Lourie, J., addi-
tional views) (“The grant of a non-exclusive license with the
right to sublicense, as here, gives the licensee the right to
sublicense others. But the patentee still retains the right
to sue unlicensed infringers.”). 5
4 We need not address the parties’ dispute about the
agency-based implications of the attorney-in-fact provision
in section 3(j) because our conclusion is the same even if,
upon default, Main Street could grant licenses on behalf of
itself. At oral argument in this court, Zebra stated that it
was not relying on the attorney-in-fact provision as a
ground independent of the section 6 and 3(j) provisions.
Oral Arg. at 11:55–12:02, No. 22-2207, https://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=22-2207_0403202
4.mp3.
5 In Uniloc, the district court concluded that a
lender’s ability to sublicense upon default deprived the pa-
tent owner of standing, and this court affirmed the no-
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Zebra relies heavily on this court’s opinion in WiAV, as
the district court did in its opinion, to support its argument
that Main Street’s non-exclusive ability to license stripped
IT of all exclusionary rights. However, WiAV is not instruc-
tive here.
In WiAV, the court asked whether the plaintiff was an
exclusive licensee (an entity that received an exclusionary
right as part of a license) or bare licensee (an entity that
received only “a promise from the patentee that the pa-
tentee will not sue the licensee for practicing the patented
invention”). 631 F.3d at 1265. And, even through that
lens, which is distinct from the situation at issue here, the
court still rejected the notion that “the licensee must be the
only party with the ability to license the patent” in order to
constitute an exclusive licensee. Id. at 1266 (emphasis in
original). There, in order to assess whether the plaintiff’s
license included the rights to exclude the alleged infringer,
the court assessed whether the alleged infringer possessed
or was capable of “obtaining[] a license of those rights from
any other party.” Id. at 1266–67. Ultimately, the court
determined that WiAV’s sole ability to practice and subli-
cense within its licensed subfield was sufficient to demon-
strate that its license had conferred an exclusionary right
and, as a result, infringement within that subfield
amounted to an injury in fact. Id. at 1267.
The licensee-versus-patentee distinction between
WiAV and this case is critical. A patent owner has exclu-
sionary rights as a baseline matter unless it has
standing judgment based only on collateral estoppel as a
result of an earlier unappealed loss on the issue by Uniloc.
52 F.4th at 1345. The reasoning of the district court’s
standing determination in Uniloc has not been endorsed by
this court.
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14 INTELLECTUAL TECH LLC v.
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transferred all exclusionary rights away. 6 In contrast, a
licensee ordinarily obtains freedom from suit but does not
necessarily obtain an interest in preventing others from
practicing the patent. As a result, in the licensee context,
questions about other entities’ ability to license can provide
a reasonable proxy for understanding the extent of rights a
licensee received as part of the license—i.e., whether the
license granted exclusionary rights or mere freedom from
suit. Those same questions do not provide a reasonable
proxy for understanding whether a patent owner retains at
least one exclusionary right or whether it has transferred
all exclusionary rights away. As Judge Lourie explained in
his additional views in Uniloc, the issue of patent owner’s
exclusionary rights is “incorrectly dealt with . . . as one of
determining what is an exclusive license.” 52 F.4th at 1351
(Lourie, J., additional views).
We need not enumerate the exclusionary rights af-
forded by a patent or fully define their scope here. Instead,
it is sufficient to conclude that Main Street and IT’s shared
ability to license while a default existed did not divest IT,
the patent owner, of all exclusionary rights. Cases that
have evaluated a patent owner’s rights support this conclu-
sion. For example, in Aspex Eyewear, Inc. v. Miracle Op-
tics, Inc., this court concluded that the patent owner had
not transferred away all of its rights where the rights it
granted to a third party, including an unfettered right to
sublicense (among many other rights), were given “for only
a limited portion of the patent term.” 434 F.3d 1336, 1342–
43 (Fed. Cir. 2006); see also Alfred E. Mann Found. for Sci.
Rsch. v. Cochlear Corp., 604 F.3d 1354, 1361 (Fed. Cir.
2010) (concluding that the patent owner had not trans-
ferred away all rights, even under an exclusive license with
6 Because there is no dispute that OnAsset had all
rights in the ’247 patent before its loan agreement with
Main Street, the patent owner framing is apt here.
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rights to sublicense, where the patent owner retained the
right to sue). Further, in the context of patent co-owners,
which share exclusionary rights, we have concluded that
an individual co-owner has Article III standing. See Anten-
naSys, Inc. v. AQYR Techs., Inc., 976 F.3d 1374, 1378 (Fed.
Cir. 2020). In sum, IT still suffers an injury in fact from
infringement even if IT and Main Street can both license
the patent.
In addition to its arguments about licensing, Zebra also
argues that the clause in section 6 of the patent and trade-
mark security agreement that granted Main Street the op-
tion to “sell, assign, transfer, pledge, encumber or
otherwise dispose of the” ’247 patent, J.A. 232, divested IT
of all exclusionary rights. We disagree on this point as
well.
Main Street’s unexercised option to assign—whether to
itself or to others—was not a present divestment of IT’s ex-
clusionary rights. Zebra’s arguments treat Main Street’s
option to assign as equivalent to the ultimate ability to li-
cense under WiAV. Whatever role another entity’s ability
to license has in the Article III inquiry for a patent owner,
it is clear that assignment must be evaluated based on the
actual transfer of rights, not mere ability. See Abraxis, 625
F.3d at 1364–65 (evaluating whether rights transferred au-
tomatically or were set to transfer at some point in the fu-
ture); Cent. Admixture Pharmacy Servs., Inc. v. Advanced
Cardiac Sols., P.C., 482 F.3d 1347, 1352–53 (Fed. Cir.
2007) (holding that the plaintiff had Article III standing
even where the government had “discretionary authority to
take title” to the asserted patent because the government
“ha[d] shown no interest” in doing so (emphasis in origi-
nal)). The district court correctly determined that IT was
not automatically divested of title upon default. However,
it incorrectly concluded that Main Street’s option to assign
presently divested IT of all other legal interests in the ’247
patent. The exclusionary rights that IT would have lost
upon Main Street’s foreclosure or assignment to another
Case: 22-2207 Document: 48 Page: 16 Filed: 05/01/2024
16 INTELLECTUAL TECH LLC v.
ZEBRA TECHNOLOGIES CORPORATION
party must be evaluated in the same way the court evalu-
ated title—based on the actual state of rights instead of
their hypothetical redistribution at some unspecified point
in the future. Because Main Street did not exercise any
options under section 6, IT was not presently divested of all
exclusionary rights.
CONCLUSION
Main Street’s default rights under the patent and
trademark security agreement did not deprive IT of all ex-
clusionary rights. Thus, the district court incorrectly de-
termined that IT could not demonstrate that infringement
of the ’247 patent amounted to an injury in fact. Because
IT has constitutional standing, we reverse and remand.
REVERSED AND REMANDED
COSTS
Costs to IT.