The Federal Circuit Court of Appeals’ recent decision in STC.UNM v. Intel Corp. provides important guidance regarding involuntary joinder of patent co-owners in the university context. The Federal Circuit held 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. As a result, the court dismissed the University of New Mexico’s patent infringement suit against Intel Corp. because Sandia Corp., the co-owner of the patent at issue, refused to join the suit as co-plaintiff. Through this decision, the Federal Circuit stressed the importance of obtaining the express or implied agreement of all co-owners to join a suit as plaintiff. STC.UNM v. Intel Corp., 754 F.3d 940, 946 (Fed. Cir. 2014), petition for rehearing en banc denied, 767 F.3d 1351 (Fed. Cir. 2014).
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