Judge Connolly Grants Motion to Dismiss for Lack of Subject Matter Jurisdiction

June 5, 2019

Publication| Intellectual Property

In HIP, Inc. v. Hormel Foods Corp., No. 18-802-CFC (Mar. 28, 2019), Judge Connolly dismissed the plaintiff’s infringement claims for lack of subject matter jurisdiction. In one of its counts, the plaintiff sought an order of correction under 35 U.S.C. § 256 that its president be named the sole inventor and owner of the asserted patent (or at least co-inventor and co-owner). The defendants moved to dismiss the infringement claims for lack of standing on the basis that one of the defendants, not the plaintiff, owned the patent.

The plaintiff claimed standing to sue for infringement as the equitable owner of the patent. (The parties did not dispute that the plaintiff lacked legal title.) Judge Connolly stated that equitable standing would, at best, allow the plaintiff to seek equitable relief but not to seek damages from infringement, which the plaintiff was seeking. The Court also rejected the argument that Fed. R. Civ. P. 18(b), which permits the assertion of claims contingent on other claims, provided standing to assert the infringement claims, since standing was a threshold constitutional issue.

Key Point: The Court rejected the plaintiff’s theory of standing as an equitable owner because it was inconsistent with the relief—damages—the plaintiff was seeking. The Court explained that one must be an adjudged equitable title owner to seek an equitable remedy for patent infringement, which the plaintiff here was not.

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