Federal Circuit Finds Nunc Pro Tunc Agreement Does Not Confer Standing

The tenuous nature of an exclusive licensee's standing to enforce a patent was something I learned early in my legal career, when I was a judicial clerk at the Federal Circuit. In Alps South LLC v. Ohio Willow Wood Co., the Federal Circuit issued another painful lesson on this topic, when it reversed, vacated and remanded a jury verdict of willful infringement because the plaintiff-licensee lacked standing to bring suit without joining the patent owner.

The License Agreements

The patent at issue was U.S. Patent No. 6,552,109, owned by Applied Elastomerics, Inc. and exclusively licensed to Alps South, LLC. According to the Federal Circuit decision, the patent relates to composite articles useful in "'liners' that are used as a cushioning and protective layer between the residuum of an amputated limb and a prosthetic limb."