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I. INTRODUCTION 

WSOU Investments, LLC (“WSOU”) does not own U.S. Patent Nos. 7,366,160 and 

7,106,702 (together, the “Wade Patents”) that it has asserted against Microsoft Corporation 

(“Microsoft”). A party that does not hold title or even a license to the Wade Patents has no 

exclusionary right in the patents. Article III permits “only parties with exclusionary rights to a 

patent [to] bring suit for patent infringement.” Luminara Worldwide, LLC v. Liown Elecs. Co., 

814 F.3d 1343, 1347 (Fed. Cir. 2016). WSOU thus lacks standing to bring Case No. 6:20-cv-454 

(for the ’160 Patent) and Case No. 6:20-cv-461 (for the ’702 Patent). 

WSOU purports to have acquired title to the Wade Patents from Alcatel Lucent. But on 

August 2, 2017, Alcatel Lucent assigned the patents to third-party Wade and Company 

(“Wade”), not WSOU. WSOU produced no documents showing that Wade ever assigned the 

Wade Patents to WSOU. At most, Wade assigned “the whole of the interest of Wade and 

Company in [a] Patent Purchase Agreement”—a contract with various Nokia entities (including 

Alcatel Lucent) involving the purchase of the “Terrier” portfolio that included the Wade Patents. 

This simply transferred future obligations under the contract vis-à-vis the Nokia entities. 

 

 

 

 

This confirms that as of the filing of these cases, WSOU—a non-owner and non-licensee of the 

Wade Patents—did not hold (and still does not hold) exclusionary rights to the Wade Patents. 

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WSOU lacks Article III standing to bring Case No. 6:20-cv-454 (for the ’160 Patent) and 

Case No. 6:20-cv-461 (for the ’702 Patent) against Microsoft. This Court should enter judgment 

of no liability in favor of Microsoft and dismiss these cases. 

II. LEGAL STANDARD 

Federal courts are courts of limited jurisdiction. Article III, Section 2 vests in federal 

courts the power to resolve “cases” or “controversies” arising under the enumerated categories. 

“The doctrine of constitutional standing serves to identify which disputes fall within these broad 

categories and therefore may be resolved by a federal court.” WiAV Sols. LLC v. Motorola, Inc., 

631 F.3d 1257, 1264 (Fed. Cir. 2010) (citations omitted). To establish constitutional “standing,” 

a party must show that it has suffered an injury-in-fact, traceable to the defendant, and which can 

be redressed by a federal court. Lone Star Silicon Innovations LLC v. Nanya Tech. Corp., 925 

F.3d 1225, 1234 (Fed. Cir. 2019). 

A patent-infringement plaintiff only satisfies the “injury in fact” requirement if it possess 

“exclusionary rights” in the asserted patents. Id. (citing WiAV Sols. LLC, 631 F.3d at 1264). “A 

patent grant bestows the legal right to exclude others,” and hence an injury-in-fact only “occurs 

when a party performs at least one prohibited action with respect to the patented invention that 

violates these exclusionary rights.” Morrow v. Microsoft Corp., 499 F.3d 1332, 1339 (Fed. Cir. 

2007) (citing Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-61 (1992)). Stated differently, if 

a plaintiff lacks exclusionary rights, it is “not injured by a party that makes, uses, or sells the 

patented invention,” and therefore lacks standing. Morrow, 499 F.3d at 1341. A constitutional 

standing defect unlike a prudential standing defect (e.g., under 35 U.S.C. § 281) cannot be cured 

by adding the patent owner to the suit. Id. 

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III. FACTUAL BACKGROUND 

In July 2017, Wade entered into a Patent Purchase Agreement (“PPA”) with Alcatel 

Lucent, Nokia Solutions and Networks BV, and Nokia Technologies Oy (together, the non-Wade 

parties are the “Nokia entities”). Documents appended to the PPA contained specific 

assignments by the Nokia entities to Wade. For example, Schedule B1 assigned the Terrier 

portfolio, including the Wade Patents, from Alcatel Lucent to Wade. (PPA, WSOU-MICAL0000246-247, -253 (identifying the ’160 Patent), -359 (identifying the ’702 Patent).) 

Wade and the Nokia entities amended the PPA (“Amended PPA”), effective August 2, 

2017. Per the Amended PPA, Alcatel Lucent assigned Wade the Terrier Portfolio, including the 

Wade Patents, on August 2, 2017. Relevant here, the Amended PPA replaced the original 

assignments from the Nokia entities to Wade with amended assignments from the Nokia entities 

to Wade (Amended PPA, § 9.14, WSOU-MICAL-0000710-711 (amended assignment to Wade), 

-717 (identifying the ’160 Patent), -823 (identifying the ’702 Patent)). Wade accepted the 

assignment of the Terrier Portfolio, on August 2, 2017. 

Later, on August 21, 2017, Wade assigned to WSOU Wade’s interest in the PPA (the 

“PPA Assignment”). This assigned WSOU rights in the PPA—specifically, “Wade and 

Company hereby assigns to WSOU Investments LLC and WSOU Investments LLC hereby 

accepts the whole of the interest of Wade and Company in the Patent Purchase Agreement.” 

(PPA Assignment, WSOU-MICAL-0000932). 

Wade did not assign or license the Wade Patents to WSOU in the PPA Assignment. 

Thereafter, the Amended PPA was amended five additional times 

 None of these amendments or agreements assigned the Wade Patents to WSOU. 

WSOU, however, was a signatory to each of these amendments and 

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assignment of the Wade Patents to Wade (including amended schedules listing the assignment to 

Wade), and (2) the PPA Assignment from Wade to WSOU. See generally PTO Recordation. 

IV. ARGUMENT

WSOU does not own or license the Wade Patents; as such, it does not have an 

exclusionary right in the Wade Patents. Because WSOU lacks an exclusionary right in the Wade 

Patents, it suffers no injury-in-fact from infringement. WSOU therefore lacks Article III 

standing to assert the Wade Patents against Microsoft. See Morrow, 499 F.3d at 1339 (“A patent 

grant bestows the legal right to exclude others from making, using, selling, or offering to sell the 

patented invention in the United States, or importing the invention . . . Constitutional injury in 

fact occurs when a party performs at least one prohibited action with respect to the patented 

invention that violates these exclusionary rights.”) (citations omitted). 

 Wade can sell 

the patents, sue any entity for infringement in its own name (subject to the limitations in the 

PPA, as amended), and can forgive any infringement of the patents by granting a license. 

Nothing in the PPA, Amended PPA, or PPA Assignment says otherwise. Wade’s right to sell, 

sue on, and license the Wade Patents are hallmarks of an exclusionary right in the patents. 

The Federal Circuit has found a lack of standing in far less egregious situations. In 

Morrow, the plaintiff held a right to sue for infringement of the patent-at-issue. Although the 

plaintiff held the right to sue for infringement, another entity held title to the patent. The Federal 

Circuit explained that while the plaintiff had “the right to sue infringers” it did not have an 

exclusionary right; instead, the title holder “h[eld] the right to sell the patent, grant exclusive and 

nonexclusive licenses, grant the right to sublicense, or transfer any of the rights that [it] holds to 

another party.” Morrow, 499 F.3d at 1342. As such, the plaintiff lacked Article III standing—a 

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right to sue is not a right to exclude, and any infringement of the exclusionary right harms the 

title holder, not the holder of the right-to-sue. Id. (“For any suit that [plaintiff] brings, its 

grievance is that the exclusionary interests held by [the title holder] are being violated. 

[Plaintiff] is not the party to which the statutes grant judicial relief.”). 

Here, WSOU does not even hold the right to sue. 

 What Wade 

assigned WSOU on August 21, 2017 was just “the whole of the interest of Wade and Company 

in the Patent Purchase Agreement.” (PPA Assignment, WSOU-MICAL-0000932.) In short, 

Wade’s assigned WSOU its interests under the PPA vis-à-vis the Nokia entities, whereby WSOU 

could sue the Nokia entities for breach. For example, in WSOU’s home state, “[a] person to 

whom a contract, express or implied, has been transferred or assigned, either in accordance with 

a statute or with the common law, may sue thereon in his or her own name.” 10 Del. C. § 3902. 

The subsequent and recent conduct between the parties confirms that WSOU did not 

inherit the assignment of the Wade Patents from Alcatel Lucent to Wade by virtue of receiving 

Wade’s interest in the PPA. First, the parties to the assignment of the Wade Patents are 

indisputably Alcatel Lucent and Wade, not Alcatel Lucent and WSOU. That express assignment 

controls over any generalized statement in the PPA that the Nokia entities shall cause the patents 

to be assigned. See, e.g., Bowmer v. Bowmer, 50 N.Y.2d 288, 294 (N.Y. 1980) (a “rule of 

construction” is “the specific provisions tend to restrict the general”). 

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WSOU’s right to sue Nokia for breach of contract does not grant it exclusionary rights to 

the Wade Patents. Without exclusionary rights in the Wade Patents, WSOU is not injured by any 

infringement and therefore lacks Article III standing. 

V. CONCLUSION

WSOU lacks Article III standing to bring these cases. A constitutional standing defect 

cannot be cured by joining Wade to these cases. Morrow, 499 F.3d at 1341. This Court should 

enter judgment of no liability to Microsoft, and dismiss Case No. 6:20-cv-454 (for the ’160 

Patent) and Case No. 6:20-cv-461 (for the ’702 Patent). 

DATED: April 12, 2022 Respectfully submitted, 

 

/s/ Richard A. Cederoth (by permission) 

Melissa R. Smith, Bar No. 24001351 

melissa@gillamsmithlaw.com 

James “Travis” Underwood, Bar No. 

24102587 

travis@gillamsmithlaw.com

GILLAM & SMITH, LLP 

303 South Washington Avenue 

Marshall, Texas 75670 

Tel: (903) 934-8450 

Fax: (903) 934-9257 

Michael J. Bettinger

mbettinger@sidley.com 

Irene Yang 

irene.yang@sidley.com 

Brooke S. Boll 

brooke.boll@sidley.com 

SIDLEY AUSTIN LLP 

555 California Street, Suite 2000 

San Francisco, CA 94104 

Tel: (415) 772-1200 

Fax: (415) 772-7400 

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Richard A. Cederoth 

rcederoth@sidley.com 

John W. McBride 

jwmcbride@sidley.com 

Richard M. Chen 

rchen@sidley.com 

Kevin Robert Oliver

kevin.oliver@sidley.com 

SIDLEY AUSTIN LLP 

1 South Dearborn St. 

Chicago, IL 60603 

Tel: (312) 853-7000 

Fax: (312) 853-7036 

ATTORNEYS FOR MICROSOFT 

CORPORATION 

Case 6:20-cv-00461-ADA Document 137 Filed 04/19/22 Page 10 of 11
CERTIFICATE OF SERVICE

I, Richard M. Chen, certify that on April 12, 2022, the documents filed with the Clerk of 

Court via the Court’s CM/ECF system under seal in the above-captioned cases were 

subsequently served on all counsel of record by electronic mail. 

DATED: April 12, 2022 /s/ Richard M. Chen

Richard M. Chen

rchen@sidley.com

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Tel: (312) 853-7000 

Fax: (312) 853-7036 

ATTORNEY FOR MICROSOFT 

CORPORATION 

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