TexasLDPC Inc. sued Broadcom Inc., LSI Corporation, and Avago Technologies U.S. Inc. in the District of Delaware, No. 1:18-cv-01966-SB, on five low-density parity-check (LDPC) patents and related copyrights. The patents are U.S. 8,418,023; 8,555,140; 9,112,530; 8,359,522; and 8,656,250. Texas A&M University owns the IP and licensed it exclusively to TexasLDPC. TexasLDPC sued in its own name without joining A&M.
What the court held
The Federal Circuit, in an opinion by Judge Chen joined by Chief Judge Moore and Chief District Judge Bissoon, reversed the dismissal. First, the 2015 license agreement did not automatically terminate when TexasLDPC became an enforcement-focused entity. Second, the agreement transferred "all substantial rights" in the asserted patents, so TexasLDPC may sue as the effective patentee under 35 U.S.C. 281. Third, A&M is not a necessary party under Rule 19(a), so the case should not have been dismissed under Rule 12(b)(7).
What it means
University exclusive licenses often leave residual rights with the school. Those residual rights did not prevent TexasLDPC from suing alone here. The panel held that A&M's potential role in discovery did not require joinder in this case, while leaving open whether an owner that transfers all substantial rights could still be a necessary party in other circumstances. The case returns to Delaware; this appeal decided the license, standing, and joinder issues, not infringement.
What to watch next
Watch for the Delaware remand schedule and any rehearing petition. Also watch how later exclusive-license disputes cite the "all substantial rights" and Rule 19 holdings when a university patent owner stays off the caption.