No Standing for for Plaintiff That Did Not Have Sole Ownership
In Israel Bio-Engineering Project v. Amgen, Inc., et al. (January 26, 2007), the Federal Circuit affirmed that IBEP lacked standing to bring the suit because it did not have sole ownership of the patent:
Rubinstein was a presumptive co-owner of the patent because he was listed as one
of four inventors on the face of the patent. It is undisputed that after the
R&D program ended, Rubinstein, beginning in January 1988, discovered the substantially purified protein and the specific amino acid sequence described in claims 2 and 3 of the '701 patent. Rubinstein then assigned his ownership rights to Yeda. Rubinstein was not required to assign his ownership share to IBEP under the Sub-R&D Contract, and Yeda properly became a co-owner of the patent by virtue of claims 2 and 3. Even assuming IBEP has co-ownership of the patent under the Sub-R&D Contract because claim 1 was discovered in 1987, the district court properly ruled that IBEP has at most a pro rata undivided ownership interest in the ’701 patent pursuant to the Sub-R&D Contract’s assignment clause. Rubinstein’s assignee, Yeda, also owns at least a pro rata undivided ownership interest in the whole ’701 patent and throughout the two appeals has made it quite clear that it wants no part of the litigation. Without a complete ownership interest or the voluntary joinder of Yeda, IBEP lacks standing to sue for infringement.