District Court Grants Motion to Dismiss for Lack of Standing Where Plaintiff Did Not Provide Evidence That It Owned the Patent at the Time of Filing the Complaint

September 29, 2014

Juno Lighting, LLC ("Juno") filed a complaint against Nora Lighting, Inc. ("Nora") on February 11, 2013. The complaint alleged that Nora infringed Juno's patent, No. 5,505,419 ("'419 Patent"), entitled Bar Hanger for a Recessed Light Fixture Assembly. Nora filed a counterclaim on May 28, 2013.

After the case was stayed pending a reexamination of the patent by the Patent Office and a summary judgment motion for literal infringement was granted in favor of Juno, Nora filed a motion to dismiss for lack of standing.

As explained by the district court, "35 U.S.C. §281 provides that '[a] patentee shall have remedy by civil action for infringement of his patent.' Under 35 U.S.C. §100(d), 'patentee' includes the person or persons to whom the patent was issued, as well as the patentee's successors in title. Therefore, generally, a suit for patent infringement may be brought only by a party holding legal title to the patent. See Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991)."

The district court found that "Defendant sets forth evidence that the documents produced by Plaintiff, to date, show that the '419 patent is owned by Juno Manufacturing, LLC, as opposed to Plaintiff. (Morseburg Decl., Exs. A, B, and H.) As such, Plaintiff does not have legal title to the '419 patent, and therefore, has no standing to sue for infringement of this patent. In opposition, Plaintiff argues only that Plaintiff and Juno Manufacturing are closely related entities, and that Plaintiff has standing, at least, under an alter ego theory.

However, Plaintiff provides no adequate authority to support this theory. Instead, Plaintiff directs the Court's attention to the fact that it has filed a separate action against Defendant for infringement of the '419 patent, which names Juno Manufacturing as the plaintiff."
The district court then concluded that "Plaintiff has failed to provide any evidence that it held legal title to the '419 patent at the time it instituted the action. Nor has Plaintiff offered any other legal basis to support standing. As such, the Court finds that Plaintiff has not satisfied its burden of proof on this issue, and dismisses the action for lack of jurisdiction. See Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1203 (Fed. Cir. 2005) (stating that in the area patent infringement, if the original plaintiff lacked Article III standing, there is a jurisdictional defect, and the suit must be dismissed).

Accordingly, the district court granted the motion to dismiss for lack of standing.


Juno Lighting LLC v. Nora Lighting, Inc., Case No. CV 13-00981 RGK (PJWx) (C.D. Cal. Sept. 19, 2014)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.