United States District Court, D. Delaware
CONNOLLY, UNITED STATES DISTRICT JUDGE.
HIP, Inc. filed this patent case against Defendants Hormel
Foods Corporation, Hormel Foods Corporate Services, LLC,
Osceola Food LLC, Rochelle Foods, LLC, and Dold Foods, LLC.
In Count I of its amended complaint, HIP alleges pursuant to
35 U.S.C. § 256 a claim for correction of inventorship
and ownership of U.S. Patent No. 9, 980, 498 (the "#498
patent"), asserting that HIP's president, David
Howard, is the sole inventor of the #498 patent and that,
because Howard assigned all his rights to HIP, HIP is the
sole owner of the patent. D.I. 21 at ¶¶ 138-148. In
Count V, HIP alleges in the alternative a claim for
correction of co-inventorship and co-ownership, asserting
that David Howard is a co-inventor and HIP a co-owner of the
#498 patent. D.I. 21 at ¶¶ 192-193. In Counts II,
III, and IV, HIP alleges that Defendants infringe the #498
patent. D.I. 21 at ¶¶ 149-191. HIP seeks among
other things in its amended complaint: "a judgment and
an award of all damages sustained ... as the result of
Defendants' misconduct, including but not limited to
their acts of infringement and/or inducing
infringement[.]" Id. at 44.
have moved to dismiss Counts II, III, and IV for lack of
subject matter jurisdiction under Federal Rule of Civil
Procedure 12(b)(1) "due to HIP's lack of standing
because  Hormel Foods Corporation, not HIP, owns the [#]498
patent." D.I. 24 at 1.
party invoking federal jurisdiction bears the burden of
establishing the elements [of standing]." Lujan v.
Defs. of Wildlife, 504 U.S. 555, 561 (1992). "[T]o
assert standing for patent infringement, the plaintiff must
demonstrate that it held enforceable title to the patent
at the inception of the lawsuit." Paradise
Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309
(Fed. Cir. 2003) (emphasis in original). "The general
rule is that one seeking to recover money damages for
infringement of a United States patent (an action 'at
law') must have held legal title to the
patent" Arachnid, Inc. v. Merit Indus., Inc.,
939 F.2d 1574, 1579 (Fed. Cir. 1991) (emphasis in original).
undisputed here that HIP has never held legal title to the
#498 patent. HIP argues, however, that this Court has
jurisdiction over HIP's infringement allegations based on
"HIP's assertion of current equitable
ownership." D.I. 27 at 2.
support of its position, HIP argues that that the Federal
Circuit "explain[ed]" in Arachnid
"that 'a federal district court has
jurisdiction to determine "a claim for
infringement," asserted by an adjudged equitable title
holder.'" Id. at 4 (quoting
Arachnid, 939 F.2d at 1580). HIP's selective and
incomplete quoting from the Arachnid decision,
however, is misleading. The sentence from Arachnid
reads in its entirety: "In other words, a federal
district court has jurisdiction to determine a * claim for
infringement,' asserted by an adjudged equitable title
holder, as a prerequisite to awarding equitable
relief for that infringement." 939 F.2d at 1580
(emphasis in original). Indeed, in Arachnid, the
Federal Circuit made clear that the "equitable basis of
district court jurisdiction [is] of no help" to a
plaintiff who has "sought money damages, a
remedy at law, not equity." Id. (emphasis in
original). Notably, HIP also failed to cite in its answering
brief the Federal Circuit's decision in Morrow v.
Microsoft Corp., 499 F.3d 1332 (Fed. Cir. 2007). If
there were any doubt about Arachnid's holding,
Morrow resolved it. The Court stated explicitly in
Morrow that it had previously held in
Arachnid that "equitable title to the patent is
insufficient to confer standing to sue for legal relief from
infringement." Id. at 1343. Because HIP seeks
money damages for infringement, equitable title is
insufficient to provide it standing to allege Counts II, III,
to HIP's assertions, Federal Rule of Civil Procedure
18(b), which permits a plaintiff to assert a claim that is
contingent on another claim, cannot cure HIP's standing
defect. The requirement that a plaintiff possess legal title
of a patent to bring an infringement action for money damages
is a constitutional standing rule, see
Morrow, 499 F.3d at 1339 ("Constitutional
injury in fact occurs when a party performs at
least one prohibited action with respect to the patented
invention that violates the exclusionary rights [of the
party holding legal title to the patent]." (emphasis
added)), and is therefore jurisdictional. As the Federal
Rules of Civil Procedure "do not extend or limit the
jurisdiction of the district courts," FED. R. Civ. P.
82, Rule 18(b) cannot provide HIP with the necessary standing
to bring claims for money damages for infringement of the
above-stated reasons, I will dismiss Counts II, III, and IV
under Rule 12(b)(1) for lack of subject matter jurisdiction.
See Ballentine v. United States, 486 F.3d 806, 810
(3d Cir. 2007) ("A motion to dismiss for want of
standing is  properly brought pursuant to Rule 12(b)(1),
because standing is a jurisdictional matter.")-
on this Twenty-eighth day of March in 2019, IT IS
HEREBY ORDERED that:
"Defendants' Renewed Motion to Dismiss Counts II-IV
of the First Amended Complaint" (D.I. 24) is GRANTED.
Counts II, III, and IV of the First Amended Complaint (D.I.
21) are DISMISSED.
Defendants Hormel Foods Corporate Services, LLC, Osceola Food
LLC, Rochelle Foods, LLC, and Dold Foods, LLC are
DISMISSED. This action shall be re-captioned
accordingly for future filings.