United States District Court, E.D. Texas, Sherman Division
VIRGINIA INNOVATION SCIENCES, INC.
AMAZON.COM, INC., et al INNOVATION SCIENCES, LLC
RESIDEO TECHNOLOGIES, INC. INNOVATION SCIENCES, INC.
HTC CORPORATION INNOVATION SCIENCES, INC.
VECTOR SECURITY, INC.
MEMORANDUM OPINION AND ORDER
L. MAZZANT UNITED STATES DISTRICT JUDGE.
before the Court is Defendant Vector Security, Inc's
(“Vector”) Motion to Dismiss for Lack of Standing
(Dkt. #163) and Resideo Technologies, Inc.'s
(“Resideo”) Notice of Joinder in Vector Security,
Inc.'s Motion to Dismiss for Lack of Standing (Dkt.
#174). Having reviewed the motion, the notice, and the
relevant pleadings, the Court finds that the motion should be
present lawsuit consists of four separate cases that have
been consolidated for pretrial purposes. In two of those
cases, Plaintiff asserts U.S. Patent No. 9, 912, 983
(“the ‘983 Patent”) against Defendants
Vector and Resideo (collectively “Movants”).
Tiejun (“Ronald”) Wang is one of several listed
inventors on U.S. patent application no. 11/501, 747
(“the ‘747 application”), which was filed
on August 10, 2006. Ronald Wang is also listed as an inventor
on the ‘983 Patent along with his sister, Tiehong Wang
(“Anne Wong”). On May 10, 2017, Ronald Wang and
Anne Wong executed a document purporting to assign their
rights in the ‘983 Patent to Virginia Innovation
Sciences, Inc., Plaintiff's predecessor
Ronald Wang worked for RF Micro Devices, Inc.
(“RFMD”) from October 2005 through September
2006, during the time the ‘747 application was filed.
As a condition of his employment, Ronald Wang entered into an
“Inventions Confidentiality and Non-Solicitation
Agreement” with RFMD, which contained an invention
assignment provision (“RFMD Agreement”).
filed suit against Movants on July 5, 2018. On July 16, 2019,
Vector filed the present motion to dismiss for lack of
standing (Dkt. #163) and on July 25, 2019, Resideo filed its
notice of joinder (Dkt. #174). Plaintiff filed its response
on August 21, 2019 (Dkt. #203). On September 5, 2019, Vector
and Resideo filed their reply to the motion (Dkt. #221).
Finally, on September 13, 2019, Plainitff filed a sur-reply
(Dkt. #239). The Court held a hearing on the motion on
November 4, 2019.
contend that Plaintiff does not have standing to bring the
present suit. According to Movants, Ronald Wang's
interest in the ‘983 Patent was assigned to RFMD
pursuant to the RFMD Agreement; thus, his purported transfer
to VIS was ineffective. Because of the ineffective
assignment, Movants contend that Plaintiff is, at most, a
co-owner of the ‘983 Patent. Movants argue that all
co-owners must jointly consent to bring a patent infringement
suit. Because Innovation Sciences, LLC is the only plaintiff
in this case, Movants assert that Plainitff lacks standing
and this deficiency causes the Court to lack subject matter
jurisdiction over the case against Movants.
counters whether all co-owners are properly joined
in the suit is not a jurisdictional question or even a
standing question. According to Plaintiff, the standing
inquiry is limited to Article III standing regarding whether
there is a case and controversy. Plaintiff argues that it has
properly alleged constitutional standing at the pleadings
stage and that the motion should be denied on this basis.
Movants maintain that regardless of whether there is case or
controversy pursuant to Article III, Plaintiff still lacks
standing. According to Movants, the failure to join all
co-owners in a patent case is a matter of prudential
standing. Movants contend that the lack of prudential
standing serves as a proper basis for dismissal.
is a threshold subject matter jurisdictional requirement.
Lujan v. Defenders of Wildlife, 504 U.S.
555, 559-60 (1992).
Article III of the Constitution limits the federal juridical
power to “Cases” or “Controversies, ”
thereby entailing as an irreducible minimum that there be (1)
an injury in fact, (2) a causal relationship between the
injury and the challenged conduct, and (3) a likelihood that
the injury will be redressed by a favorable decision.
Biotechnology Indus. Org. v. District of Columbia,
496 F.3d 1362 (Fed. Cir. 2007) (quoting United
Food & Commercial Workers Union Local 751 v. Brown
Grp., Inc., 517 U.S. 544, 550 (1996) (internal
quotations omitted)). The Supreme Court of the United States
has clarified that constitutional standing is limited to this
analysis of “Article III's limitation of the
judicial power to resolv[e] ‘Cases' and
‘Controversies.'” Lexmark Int'l, Inc.
v. Static Control Components, Inc., 572 U.S. 112, 125
(2014). Thus, the Court finds whether all owners are joined
as plaintiffs in the present lawsuit does not affect the
constitutional standing analysis.
Plaintiff argues that it has sufficiently alleged
constitutional standing for purposes of defeating a motion to
dismiss based on its allegation that “it owns all
right, title and interest in the patent-in-suit, that Vector
[and Resideo] ha[ve] infringed those rights and harmed
Innovation, and that Innovation is entitled to damages that
can be awarded by the Court or a jury.” (Dkt. #203 at
p. 7). Movants did not respond to this argument,
instead focusing on prudential standing as opposed to
constitutional standing. “The party invoking federal
jurisdiction bears the burden of establishing these
elements.” Lujan, 504 U.S. at 561 (citations
omitted). “At the pleadings stage, general factual
allegations of injury resulting from the defendant's
conduct may suffice, for on a motion to dismiss we
‘presum[e] the general allegations embrace those
specific facts that are necessary to support the