Failure of License to Convey All Substantial Rights Prevents Licensee From Asserting Patent Rights Against Third Party Without Patent Owner

In Fieldturf, Inc. v. Southwest Recreational Industries, Inc., 57 F.3d 1266 (Fed. Cir. 2004), Fieldturf obtains a license to practice the claimed “artificial turf” as an alternative to natural grass for playing surfaces for athletic games, as disclosed in U.S. Patent No. 4,337,283.  Evidently, the inventor of the ‘283 patent, Frederick Haas Jr., had assigned the patent to a Louisiana partnership that, through a succession of entities, conveyed the exclusive license rights to Fieldturf.  Fieldturf asserted the ‘283 patent against Southwest, the maker of AstroPlayTM (a rubber and sand-filled system), on the basis that Southwest’s manufacture of AstroPlayTM was alleged to infringe the patent.  However, on appeal from a Kentucky district court, the Federal Circuit dismissed the patent claim because Fieldturf did not have standing to enforce the patent because the licensing agreement was nothing more than a bare license that did not grant the right to enforce the patent, either explicitly or impliedly.  Fieldturf was neither the patentee, a successor in title to the patentee or an exclusive licensee of the patent at issue.  To have an exclusive license, Fieldturf must show that it possesses “all substantial rights in the patent, which Fieldturf was not able to do.  As a result, Fieldturf does not have standing and cannot bring suit against Southwest.

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