STC.UNM v. Intel Corporation

Filing 228

Cross MOTION to Dismiss STC's Remaining Claims for Lack of Standing by Intel Corporation. (Atkinson, Clifford)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
STC.UNM,

Civil No. 1:10–cv–01077–RB–WDS
Plaintiff,

v.
INTEL CORPORATION,
Defendant.

I NTEL ’ S C ROSS -M OTION
R EMAINING C LAIMS

FOR

TO

D ISMISS STC’ S

L ACK

OF

S TANDING

Clifford K. Atkinson
Douglas A. Baker
A TKINSON , T HAL & B AKER , P . C .
201 Third Street, N.W., Suite 1850
Albuquerque, NM 87102
(505) 764–8111
Robert A. Van Nest
Brian L. Ferrall
Benedict Y. Hur
K EKER & V AN N EST LLP
710 Sansome Street
San Francisco, CA 94111
(415) 391–5400
Chad. S. Campbell
Timothy J. Franks
P ERKINS C OIE LLP
2901 N. Central Avenue, Suite 2000
Phoenix, AZ 85012
(602) 351–8000

Motion
Intel Corporation moves for dismissal of STC’s remaining claims (its claims for patent
infringement on or after December 1, 2011) on grounds that STC lacks standing to sue for such
infringement without joinder of the co-owner of the patent-in-suit, Sandia Corporation. This
motion is supported by documents already on file in this case and Intel’s concurrent opposition
to STC’s Motion to Correct Standing and Request for Reconsideration [Doc. 218].
Argument
This Court previously held the patent-in-suit, U.S. Patent No. 6,042,998, unenforceable
from issuance through December 1, 2011, because that patent and U.S. Patent No. 5,705,321
were not commonly owned during that period, as required under a terminal disclaimer filed to
have the ’998 patent allowed in the first place. [Doc. 206 at 22] The Court declined, however, to
determine whether the ’998 patent has been enforceable since STC assigned an undivided
interest in the ’998 patent to Sandia Corporation on December 1, 2011. The Court held that the
record before it was insufficient to determine whether Sandia National Laboratories (the longtime co-owner of the ’321 patent) and Sandia Corporation (the new co-owner of the ’998 patent)
are the same entity. [Id. at 21–22]
In so holding, the Court observed that the “[a]ddition of a new co-owner at this point …
raises the issue of proper standing.” [Id. at 22] Sandia Corporation is not a party to this case, yet
the Federal Circuit has held that “[w]here one co-owner possesses an undivided part of the entire
patent, that joint owner must join all the other co-owners to establish standing” and that “[a]bsent
the voluntary joinder of all co-owners of a patent, a co-owner acting alone will lack standing.”
[Id. (quoting Israel Bio-Eng’g Project v. Amgen, Inc., 475 F.3d 1256, 1264–65 (Fed. Cir. 2007))]
–1–

The Court therefore encouraged the parties to confer and file appropriate motions addressing the
standing issue.
STC has now filed a motion to “correct standing.” In that motion, STC acknowledges the
general rule that a co-owner lacks standing to sue without joining all co-owners. STC also
concedes that Sandia Corporation has refused to join STC’s infringement suit against Intel. STC
requests, however, that the Court fix STC’s standing problem by either joining Sandia
Corporation as a plaintiff against its will under Fed. R. Civ. P. 19(a)(2) or ignoring Sandia
Corporation’s absence by treating it as dispensable party under Fed. R. Civ. P. 19(b).
Intel’s and Sandia Corporation’s oppositions to STC’s motion, which Intel incorporates
here by reference, explain at length why Sandia Corporation cannot be joined involuntarily and
why the Court should not treat Sandia Corporation as dispensable. Moreover, STC’s Rule 19
motion includes its only proposed solutions to its standing problem. STC points to no prospect
that Sandia Corporation will change its mind and join this suit, or that STC will solve its standing
and unenforceability problems by buying out the co-owners of both the ’998 and ’321 patents.
(STC does urge the Court to reconsider its original summary judgment ruling, but Intel’s
opposition explains why reconsideration is not warranted.)
Because STC admits its current lack of standing and has no reasonable prospect of
correcting that defect any time soon, Intel submits that the Court should now dismiss STC’s
remaining claims (for infringement on or after December 1, 2011) and put an end to the case.
The final dismissal should be with prejudice to refiling for claims through November 30, 2011,
due to the patent’s unenforceability during that period. The dismissal may be without prejudice
to refiling for claims after that date, preserving possible future remedies for STC if it can resolve

–2–

its standing problem without creating an unenforceability problem.1
If the Court grants this motion, Intel will submit an appropriate form of judgment.
Dated: July 10, 2012.

Respectfully submitted,
A TKINSON , T HAL & B AKER , P . C .
/s/ Clifford K. Atkinson
Douglas A. Baker
Clifford K. Atkinson
201 Third Street, N.W., Suite 1850
Albuquerque, NM 87102
(505) 764–8111
K EKER & V AN N EST

LLP

Robert A. Van Nest
Brian L. Ferrall
Benedict Y. Hur
P ERKINS C OIE

LLP

Chad S. Campbell
Timothy J. Franks
Attorneys for Defendant Intel Corporation

1

In that event, Intel remains entitled and preserves its rights to contend that Sandia
Corporation and Sandia National Laboratories are different entities and that the ’998 patent
continued to be unenforceable after December 1, 2011.
–3–

Certificate of Service
The undersigned hereby certifies that on July 10, 2012, the foregoing document was
electronically filed with the Clerk of Court using the CM/ECF system, which will automatically
send notification of such filing to all counsel who have entered an appearance in this action.
A TKINSON , T HAL & B AKER , P . C .
/s/ Clifford K. Atkinson
Clifford K. Atkinson

20336-1313/LEGAL24064617.1

–4–