The Firm represented the defendant in a patent infringement lawsuit in the U.S. District Court for the Southern District of New York, which resulted in dismissal based on lack of standing to sue.
The plaintiff, a non-practicing entity, acquired several patents and engaged in an extensive enforcement campaign, including against the defendant. After the complaint was filed, the defendant filed a pre-motion letter addressing deficiencies in the complaint. The defendant argued, among other things, that the asserted patent had a broken chain of title, and therefore the plaintiff lacked standing to sue. Specifically, the asserted patent was not properly assigned in 2019 from the inventors to the original owner because the assignment document was not signed.
In response, the inventors executed the assignment document – six years after the fact – and the plaintiff filed an amended complaint. The defendant then filed a motion to dismiss the amended complaint.
The defendant’s motion to dismiss was based on lack of subject matter jurisdiction because of lack of standing to sue, lack of personal jurisdiction, improper venue and failure to state a claim. With respect to the standing issue, the defendant argued that the newly executed assignment did not cure the defect because the plaintiff did not own the asserted patent when the original complaint was filed. The defendant further argued that whether the standing issue is characterized as a constitutional standing issue under Rule 12(b)(1) (lack of subject matter jurisdiction) or as a statutory standing issue under Rule 12(b)(6) (failure to state a claim), the only way to overcome the standing issue is to dismiss and refile after properly curing any ownership issues. The court agreed.
The court rejected the plaintiff’s argument that the defective assignment was a curable statutory standing issue (whether the plaintiff has the right to sue). Instead, the court determined that the defective assignment is an Article III (constitutional) standing issue (whether the plaintiff’s infringement claim is within the court’s subject matter jurisdiction).
The court held that a plaintiff must demonstrate that it held enforceable title to the asserted patent at the inception of the lawsuit to assert constitutional standing. As such, the plaintiff’s post-filing assignment cannot retroactively fix an Article III jurisdictional defect in the complaint. Therefore, the case was dismissed for lack of subject matter jurisdiction.
Case No. 1:25-cv-07387-PKC (S.D.N.Y.)