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Data Speed Technology LLC v. EMC Corp.

Citation: 36 F. Supp. 3d 432Docket: Civ. No. 13-616-SLR, Civ. No. 13-624-SLR, Civ. No. 13-625-SLR, Civ. No. 13-1052-SLR, Civ. No. 13-1443-SLR, Civ. No. 13-1447-SLR, Civ. No. 13-1450-SLR, Civ. No. 13-1452-SLR, Civ. No. 14-33-SLR, Civ. No. 14-34-SLR, Civ. No. 14-36-SLR

Court: District Court, D. Delaware; April 8, 2014; Federal District Court

Narrative Opinion Summary

The case involves a dispute over patent infringement filed by Data Speed Technology LLC (DST LLC) against several defendants, centered on the ownership and standing to sue for U.S. Patent No. 5,867,686. The defendants sought dismissal based on DST LLC's alleged lack of standing due to unclear patent ownership. The court, exercising jurisdiction under 28 U.S.C. §§ 1331 and 1338, examined the intricate history of assignments involving multiple entities and individuals, including the original inventors, a corporation (DST Corp.), and the late Peter King. Central to the case were key agreements, including a 'Security Agreement' and 'Settlement Agreement,' which outlined the conditional transfer of rights among parties. The court scrutinized the patentee's chain of title, emphasizing statutory requirements under 35 U.S.C. § 261 and precedents like Waterman v. Mackenzie. Ultimately, DST LLC successfully established its standing by demonstrating a clear chain of title, leading to the denial of the defendants' motions to dismiss. The ruling reaffirmed DST LLC's right to pursue infringement claims based on their proven ownership of the patent, concluding the procedural phase favorably for the plaintiff.

Legal Issues Addressed

Article III Standing and Jurisdiction

Application: The court assessed DST LLC's standing as a jurisdictional prerequisite, which needed to be established at the time of the lawsuit, focusing on the chain of title for the '686 patent.

Reasoning: Standing, a jurisdictional prerequisite, must be established at the time of the lawsuit, placing the burden on the plaintiff to prove it.

Co-Ownership and Joint Participation in Infringement Suits

Application: The case highlights the necessity for co-owners to jointly participate in infringement lawsuits, emphasizing DST LLC's need to demonstrate clear ownership to avoid multiple liabilities.

Reasoning: Co-owners must jointly participate in infringement lawsuits to avoid multiple liabilities against an infringer for a single infringement event.

Requirements for Patent Assignment

Application: The case discusses the need for written instruments for patent assignments, as required by 35 U.S.C. § 261, and how DST LLC ultimately established its title through a series of documented assignments.

Reasoning: Legal title holders must typically bring infringement suits, with patent assignments regulated by 35 U.S.C. § 261, requiring written instruments for transfer.

Standing in Patent Infringement Cases

Application: DST LLC claimed standing based on their assignment of the '686 patent, demonstrating an adequate chain of title to withstand the motions to dismiss.

Reasoning: DST LLC claimed standing based on their assignment of the '686 patent, issued on February 2, 1999. However, the history of the patent's ownership was unclear and inadequately presented to the court.

Substantial Rights and Patent Ownership

Application: The court recognized that a party granted substantial rights under a patent is considered the owner, which was pivotal in DST LLC's claim to the '686 patent.

Reasoning: A party granted substantial rights under a patent is recognized as the owner, irrespective of transaction descriptions.