In a recent decision from the United States District Court for the District of Massachusetts, the district court denied Abbott Laboratories’ motion for summary judgment in a patent infringement case involving multiple pharmaceutical companies. This ruling offers valuable insights into the application of Rule 19 joinder requirements in patent litigation.
The Case: Chr. Hansen HMO GmbH v. Glycosyn LLC
The dispute centers on a patent infringement claim brought by Glycosyn LLC against Abbott Laboratories, with Chr. Hansen HMO GmbH also involved as a plaintiff and counterclaim-defendant. Abbott argued that Glycosyn could not maintain its patent infringement suit without joining another company, Friesland Campina DOMO B.V. (“RFC”), which allegedly had an exclusive licensing agreement with Glycosyn for the patents at issue.
Abbott’s Three-Pronged Argument
Abbott’s motion for summary judgment rested on three key arguments:
- Glycosyn lacked Article III standing due to absence of injury-in-fact
- Glycosyn was not a “patentee” under 35 U.S.C. § 281 and thus lacked statutory authority to sue
- RFC was a “necessary and indispensable party” under Federal Rule of Civil Procedure 19(b)
The District Court’s Analysis
The district court, adopting Magistrate Judge Donald L. Cabell’s report and recommendation, dismissed Abbott’s first two arguments but dedicated significant attention to the Rule 19 joinder question.
As the district court noted: “The R&R effectively and convincingly disposes of the first two arguments, leaving only the issue of necessary joinder under Rule 19, a slightly more challenging question which this Court chooses to address further.”
The ruling hinges on a critical determination: an exclusive licensee is not automatically a necessary party in patent infringement litigation. The district court specifically found that “an exclusive licensee of a patent is not a necessary party to an infringement suit under Rule 19 when the licensee has let its conditional right to do so expire.”
Implications for Patent Practitioners
This decision highlights several important considerations for patent litigators:
- Expired Rights Matter: The district court emphasized that RFC had “let the clock run out on its right to sue,” making it no longer entitled to relief and therefore not a necessary party.
- Circuit Precedent Considerations: The district court also noted that Federal Circuit precedent should not automatically govern Rule 19 joinder decisions; rather, district courts should rely on the precedent of their own circuit.
- Textual Interpretation: The district court focused on the text of Rule 19, finding that a party is not “necessary” when it is not entitled to relief—which it was not here when it could no longer enforce its right to sue.
The case serves as a reminder that joinder rules in patent litigation involve nuanced analyses that go beyond simply identifying who holds what rights. The timing of those rights—and whether they remain active—can be determinative.
Chr. Hansen HMO GmbH v. Glycosyn LLC, Civil Action No. 22-11090-NMG (D. Mass. Mar. 24, 2025)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or at SGibson@jmbm.com