The opinion of the court was delivered by: Honorable Janis L. Sammartino United States District Judge
ORDER: GRANTING DEFENDANT ILLINOIS TOOL WORKS, INC.'S MOTION TO DISMISS
AND RELATED COUNTERCLAIMS
Presently before the Court is Defendant Illinois Tool Works, Inc.'s (ITW) motion to dismiss Plaintiff MOC Products Company, Inc. (MOC) for lack of standing. (Doc. No. 89.) Also before the Court are Plaintiffs' opposition and ITW's reply. (Doc. Nos. 95 (Opp'n), 96 (Reply).) Having considered the parties' arguments and the law, the Court GRANTS ITW's motion to dismiss.
Plaintiffs EBS Automotive Services (EBS), ABF Technologies, Inc. (ABF), and MOC allege patent infringement by Defendants ITW and CMC Industries, Inc. (See Doc. No. 87 (FAC).) Defendants allegedly have infringed and continue to infringe U.S. Patent No. 6,206,055 (the '055 patent), which is jointly owned by EBS and ABF. (Id. ¶¶ 9--16.) ITW moves to dismiss MOC, "ABF's exclusive licensee of the '055 Patent" (id. ¶ 11), for lack of standing. (See Doc. No. 89-1 (Mem. ISO MTD).)
Because standing "pertain[s] to a federal court's subject-matter jurisdiction under Article III, [it is] properly raised in a motion to dismiss under Federal Rule of Civil Procedure 12(b)(1), not Rule 12(b)(6)." White v. Lee, 227 F.3d 1214, 1242 (9th Cir. 2000). "A plaintiff has the burden of establishing the elements required for standing . . . ." Takhar v. Kessler, 76 F.3d 995, 1000 (9th Cir. 1996); see In re Dynamic Random Access Memory (DRAM) Antitrust Litig., 546 F.3d 981, 984 (9th Cir. 2008) ("The party asserting jurisdiction bears the burden of establishing subject matter jurisdiction on a motion to dismiss for lack of subject matter jurisdiction."). Rule 12(b)(1) motions may challenge jurisdiction facially or factually. Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). "In a facial attack, the challenger asserts that the allegations contained in a complaint are insufficient on their face to invoke federal jurisdiction. By contrast, in a factual attack, the challenger disputes the truth of the allegations that, by themselves, would otherwise invoke federal jurisdiction." Id.
ITW's challenge to MOC's standing is facial instead of factual because ITW contends that Plaintiffs' allegations are insufficient on their face to establish MOC's standing. See Wolfe v. Strankman, 392 F.3d 358, 362 (9th Cir. 2004). That is, ITW contends that an exclusive licensee of ABF does not have standing to bring an action for infringement of the '055 patent. (Mem. ISO MTD 9--10.) Accordingly, the Court assumes Plaintiffs' "allegations to be true and draw[s] all reasonable inferences in [Plaintiffs'] favor." Wolfe, 392 F.3d at 362.
ITW makes one argument in support of its motion to dismiss: "Without a joint license from both [ABF and EBS], MOC cannot be an exclusive licensee in the '055 Patent for purposes of standing." (Mem. ISO MTD 1.) Plaintiffs, of course, disagree. (Opp'n 6--7.)
Plaintiffs in patent infringement suits fall into three categories for standing purposes: "those that can sue in their own name alone; those that can sue as long as the patent owner is joined in the suit; and those that cannot even participate as a party to an infringement suit." Morrow v. Microsoft Corp., 499 F.3d 1332, 1339 (Fed. Cir. 2007). In the first category are the patentee, 35 U.S.C. § 281; his successors, id. § 100(d); and other recipients of "'all substantial rights' to the patent," Morrow, 499 F.3d at 1340 (quoting Intellectual Prop. Dev., Inc. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333, 1345 (Fed. Cir. 2001)). In the second category are "exclusive licensee[s] having fewer than all substantial patent rights," who must join the patentee or assignee in any patent infringement suit. Intellectual Prop. Dev., 248 F.3d at 1347; accord Morrow 499 F.3d at 1340. In the final category are non-exclusive licensees "that hold less than all substantial rights to the patent and lack exclusionary rights under the patent statutes to meet the injury in fact requirement" of Article III. Morrow, 499 F.3d at 1340; see Lujan v. Defenders of Wildlife, 504 U.S. 555, 560--61 (1992) (discussing Article III standing requirements).
Plaintiffs do not contend that MOC is a patentee, assignee, or recipient of all substantial rights to the '055 patent. (See Opp'n 6 (arguing that MOC "received a significant portion of the 'sticks' from the 'bundle' that comprise patent ownership" from ABF).) The question, then, is whether MOC-an exclusive licensee of one joint patent owner-is an exclusive or a non-exclusive licensee for standing purposes. Although the Court is not aware of any authorities addressing this precise question, it is readily answered by reference to principles underlying the Federal Circuit's standing decisions.
"To be an exclusive licensee for standing purposes, a party must have received, not only the right to practice the invention within a given territory, but also the patentee's express or implied promise that others shall be excluded from practicing the invention within that territory as well." Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1552 (Fed. Cir. 1995) (citing Indep. Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459, 468--69 (1926)). "If the party has not received an express or implied promise of exclusivity under the patent, i.e., the right to exclude others from making, using, or selling the patented invention, the party has a 'bare license' . . . ." Id. "[A] 'bare licensee'-one who enjoys only a nonexclusive license-has no standing to sue for infringement under the Patent Act." Prima Tek III, LLC v. A-Roo Co., 222 F.3d 1372, 1377 (Fed. Cir. 2000); accord Rite-Hite, 56 F.3d at 1553 ("The grant of ...