Patent Ownership and Standing: A Gentle Reminder to Investigate

A recent filing in the Eastern District of Texas highlights the importance of investigating patent ownership issues before initiating a lawsuit or as part of defending against a lawsuit.  Earlier this month, accused infringer Eli Lilly filed a motion to dismiss for lack of subject-matter jurisdiction under Fed. R. Civ. P. 12(b)(1), contending that Plaintiff Erfindergemeinschaft Uropep GbR (“EUG”) lacked standing to bring the patent infringement lawsuit because it does not own the asserted patent.  Erfindergemeinschaft Uropep GbR v. Eli Lilly and Co., Case No. 2:15-cv-1202 (E.D. Tex.).

In support of its motion Eli Lilly argued that by virtue of various assignments both the asserted patent and its parent patent were owned by Uropep Biotech GbR (Uropep), not the plaintiff, EUG.  Eli Lilly contended that a first assignment document shows that all U.S. rights in the application resulting in the parent patent were assigned to one of the named inventors, Forssmann.  Eli Lilly contends that a second assignment document directed to the application resulting in the asserted patent, which was signed by all of the inventors (including Forssmann) also assigned that application to Uropep—for all countries.  As a result of these assignments, argued Eli Lilly, a later third assignment executed by Forssmann—in which he attempted to convey all rights to plaintiff EUG—was invalid.  Forssmann no longer had any rights to convey as a result of the earlier assignments.

Eli Lilly’s motion provides a reminder about the importance for generic drug defendants to diligently investigate patent ownership issues when faced with a new ANDA litigation.  Likewise, a plaintiff should be sure to verify it has identified the correct party, and can prove ownership, before it files suit.  In addition, Eli Lilly’s pleading also serves as a reminder to licensing counsel to analyze previous assignments and the scope of rights each party maintains as a result of any such assignments.