# United States **Court of Appeals**  **for the Federal Circuit**

______________________

LONE STAR SILICON IN NOVATIONS LLC, Plaintiff

- Appellant

v.

NANYA TECHNOLOGY COR PORATION, NANYA

TECHNOLOGY CORPORATION U.S.A., NANYA

TECHNOLOGY CORPORATI ON DELAWARE, Defendants

- Appellees

______________________

2018

- 1581

______________________
Appeal from the United States District Court for the
Northern District of California in No. 3:17

- cv

- 04032

- WHA, Judge William H. Alsup.

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -

LONE STAR SILICON IN NOVATIONS LLC, Plaintiff

- Appellant

v.

UNITED MICROELECTRON ICS CORPORATION, UMC GROUP (USA), Defendants

- Appellees

____________ __________

2018

- 1582

______________________LONE STAR SILICON IN NOVATIONS v. NANYA TECH

. CORP

. 2

Appeal from the United States District Court for the
Northern District of California in No. 3:17

- cv

- 04033

- WHA, Judge William H. Alsup.

______________________

Decided: May 30, 2019

______________________

T IMOTHY P. M ALONEY

, Fitch, Even, Tabin & Flannery, Chicago, IL, argued for plaintiff

- appellant. Also represented by D AVID A LLEN G OSSE

, N ICOLE L. L ITTLE

, J OSEPH F. M ARINELLI

.

P ETER J AMES W IED

, Nixon Peabody LLP, Los Angeles, CA, argued for all d efendants

- appellees. Defendants

- appellees Nanya Technology Corporation, Nanya TechnologyCorporation U.S.A., Nanya Technology Corporation Delaware also represented by V INCENT K. Y IP

.

C HRISTOPHER K AO , Pillsbury Winthrop Shaw Pittman LLP, San Franc isco, CA, for defendants

- appellees United Microelectronics Corporation, UMC Group (USA). Also represented by B ROCK S TEVEN W EBER

.

______________________

Before O’M ALLEY

, R EYNA

, and C HEN

, Circuit Judges.

O’M ALLEY

, Circuit Judge

.L ONE STAR SILICON INN OVATIONS v. NANYA TECH

. CORP

. 3

Lone Star Silicon Innovations LLC (“Lone Star”) sued Appellees 1 for infringing various patents. 2 The district court concluded that Lone Star does not own these patents and therefore lacks the ability to assert them. In re Lone
Star Silicon Innovations LLC

, No. 3:17

- cv

- 03980

- WHA

, 2018 WL 500258, at *1 (N.D. Cal. Jan. 20, 2018). We agree with the district court that Lone Star cannot assert these
patents on its own. But the district court should not have
dismissed this case without consideri ng whether Advanced Micro Devices, Inc. (“AMD”), the relevant patentee, should
have been joined. Its failure to address this issue was legally erroneous in view of Federal Rule of Civil Procedure
19 and our case law. We therefore vacate the district court’s dismissal and remand for further proceedings consistent with this opinion.

I. B ACKGROUND

A. The Patent Transfer Agreement

The asserted patents were originally assigned to AMD,
which later executed an agreement purporting to transfer “all right, title and interest” in the patents to Lone Star

. The transfer agreement, however, imposes several limits on Lone Star. For example, Lone Star agreed to only assert
the covered patents against “Unlicensed Third Party Entit [ies]” specifically listed in th e agreement . J.A. 2025; J.A.
2032. N ew entities can only be added if Lone Star and

1 Appellees in these consolidated appeals includeNanya Technology Corporation, Nanya Technology Corporation U.S.A., and Nanya Technology Corporation Delaware (“Nanya”) and United Microelectronics Corporation and UMC Group (USA) (“UMC”).

2 These include U.S. Patent Nos. 5,912,188; 6,023,085; 6,097,061; 6,388,330; RE39,518; 5,973,372; 6,153,933 ; 5,872,038; 6,103,611; 6,326,231; 6, 380,588; and 6,046,089 (“the asserted patents”).LONE STAR SILICON IN NOVATIONS v. NANYA TECH

. CORP

. 4

AMD both agree to add them . J.A. 2025; J.A. 20 48 . If Lone Star sues an unlisted entity, AMD has the right

— without Lone Star’s approval

— to sublicense the covered patents t o the unlisted target. J.A. 2028; J.A. 203 2

. AMD can also prevent Lone Star from assigning the patents or allowing them to enter the public domain

. J.A. 202 6 (“Any assignment of an Assigned Patent in violation of this Section 2.6
shall be void ab initio .”); J.A. 202 7 (explaining that if Lone Star intends to stop paying maintenance fees for a covered patent it must “notify AMD of its decision” and “assign the Abandoned Patent to AMD or to a Person selected by AMD in AMD’s sole discretion if requested by A MD

. . . .”)

. AMD
and its customers can also continue to practice the patents

, J.A. 2027 , and AMD share s in any revenue Lone Star generate s from the patents through “monetization efforts

. ”
J.A. 2029.

B. District Court Litigation

Lone Star sued Appell ees, who are all listed as Unlicensed Third Party Entit ies in the transfer agreement, in successive infringement actions filed between October 2016 and December 2016. In each case, Lone Star alleged, among other things, that AMD transferred “all right,
ti tle, and interest” in the asserted patents to Lone Star

. See, e.g. , J.A. 2621

. But it took Lone Star n early a year after filing suit to produc e the transfer agreement. O nce it did, Appellees filed motions to dismiss their respective
suits under Federal Rule of Civil Procedure 12(b)(1)

. J.A. 3913 (Nanya); J.A. 351 (UMC)

. The district court granted Appellees’ motion s

. 3 As the district court correctly explained , we have recognized three

3 Because the district court did not consolidate these cases below, it entered separate but identical orders as toNanya and UMC (as well as other defendants whose appeals have been dismissed). For cla rity, we will refer to aL ONE STAR SILICON INN OVATIONS v. NANYA TECH

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categories of plaintiffs in patent infringement cases. In re
Lone Star , 2018 WL 500258, at *3. First, a patentee

, i.e.

, one with “all rights or all substantial rights” in a patent

, can sue in its own name

. Id. Second

, a licensee with “exclusionary rights ” can sue along with the patentee. Id.
And

, finally, a licensee who lacks exclusionary rights has

no authority to assert a patent (even along with the patentee). Id. The district court concluded that it only needed to address this first category “since Lone Star claims to be an ‘assignee’ and ‘sole owner’ of the pat ents

- in

suit.” Id. As the district court acknowledged, however,
Lone Star had asked to join AMD so that, if Lone Star could not proceed alone, it could proceed along with AMD.
Id. at * 6.

In determining whether the agreement between AMD
and Lone Star transferred “ all substantial rights ” to the asserted patents, the district court examined the rights
transferred to Lone Star and those retained by AMD.
Id. at * 3 (“ Whether an agreement constitutes an assignment or license depends not on the ‘ labels ’ or ‘ bare formalities ’ of title transfer but on the ‘ substance of what was granted. ’”). The district court focused on three aspects of the transfer agreement in particula r: (1) AMD’s ability to control how Lone Star asserts or transfers the patents, (2) Lone Star’s inability to practice the patents, and (3) AMD’s right to share in “monetization efforts.” Id. at *3

– 5. The district court then compared the balance of rights here to previous cases where we have said agreements did or did not transfer all substantial rights. Id. Ultimately, t he district court concluded that AMD did not
transfer all substantial rights in the patents to Lone Star

. Id. at * 6.

single order throughout. See In re Lone Star , 2018 WL

500258.LONE STAR SILICON IN NOVATIONS v. NANYA TECH

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After it conclu ded that Lone Star could not sue in its own name, the district court dismissed the case. Id. And although it acknowledged that Lone Star had asked to joinAMD, the district court concluded that doing so would “reward Lone Star for its litigation gimmick and unfairly prejudice defendants.” Id. In particular, the district court emphasized that if AMD were joined it “would enjoy earlier filing dates for [its] claims than defendants would for any counterclaims for purposes of recovering damages.” Id. (citi ng 35 U.S.C. § 286).

Lone Star timely appealed. W e have jurisdiction under 28 U.S.C. § 1295(a)(1).

II. D ISCUSSION

Lone Star argues that it possesses all substantial rights in the asserted patents and therefore can assert
them in its own name

. And

, if it cannot, Lone Star maintains that it must be given an opportunity to join AMD as a plaintiff before this case is dismissed

. Appellees argue that Lone Star does not possess all substantial rights and therefore lacks standing to bring suit and that the district court did not err in refusing to consider Lone Star’s request to join AMD

. We address these arguments below

. A. All Substantial Rights

Title 35 allows a “patentee” to bring a civil action for patent infringement. 35 U.S.C. § 281. The term patentee includes the original patentee (whether the inventor or original assignee) and “successors in title.” 35 U.S.C. § 10 0 (d). But it does not include mere licensees. See AsymmetRx, Inc. v. Biocare Med.

, LLC , 582 F.3d 1314, 1318

– 19 (Fed. Cir. 2009) ( citing Indep

. Wireless Tel

. Co. v. Radio Corp. of Am

. , 269 U.S. 459 (1926) ).

If the party asserting infringement is not the patent’s original patentee , “the critical determination regarding aparty’s ability to sue in its own name is whether an agreement transferring patent rights to that party is, in effect,L ONE STAR SILICON INN OVATIONS v. NANYA TECH

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. 7

an assignment or a mere license.” Id. at 1319. In distinguishing between “an assignment” and a “mere license,” we“examine whether the agreement transferred all substantial rights to the patents.” Id. (internal quotation marks omitted) . This inquiry depends on the substance of what was granted rather than formalities or magic words.
See Waterma n v. Mackenzie , 138 U.S. 252, 256 (1891) (“Whether a transfer of a particular right or interest under a patent is an assignment or a license does not depend upon the name by which it calls itself, but upon the legal effect of its provisions.”). For exampl e, in previous cases we have reviewed how an agreement affected who could use, assert, license, or transfer the covered patents. Alfred E. Mann Found. For Sci. Research v. Cochlear Corp. , 604 F.3d 1354, 1359 (Fed. Cir. 2010) (collecting cases). We have a lso considered whether the transferor retained reversionary rights in or ongoing control over the patents. Id. at 1360

– 61. But our ultimate task is not to tally the number of rights retained against those transferred. See AsymmetRx

, 582 F.3d at 1321. I nstead, we examine the “totality” of the
agreement to determine whether a party other than the original patentee has established that it obtained all substantial rights in the patent

. Id.

If a party cannot bring suit in its own name , it may still bring suit along with the patent ee so long as it possesses “exclusionary rights.” Morrow v. Microsoft Corp. , 499 F.3d 1332, 1340 (Fed. Cir. 2007). In such a case, “the patentee who transferred these exclusionary rights is usually joined” according to Federal Rule of Civil Procedure 19. Id.

Against this backdrop, Lone Star asserts two reasons why it believes it may sue in its own name . First, it argues that the transfer agreement was a complete assignment because a single provision in the agreement conveyed “all right, title and interest” in the patents to Lone Star

. J.A. 2025. Second, Lone Star argues that

, even if we look beyond this provision, the transfer agreement gave it all substantial rights in the patents , at least with respect toLONE STAR SILICON IN NOVATIONS v. NANYA TECH

. CORP

. 8

these alleged infringers . The district court rejected both arguments. W e review the district court’s conclusions d e

novo. Luminara Worldwide, LLC v. Liown Elecs. Co. , 814 F.3d 1343, 1347 (Fed. Cir. 2016)

. W e agree with the district

court that , while Lone Star was given a number of rights in the transfer agreement, it was not given all substantial rights in the asser ted patents.

1. “All Right, Title and Interest”

Lone Star argues that our analysis begins and ends with the transfer agreement’s broad conveyance of “all right, title and interest” in the covered patents. J.A. 2025. But, a s the district court correctly recognized, the rest of the agreement “substantially curtail[s] Lone Star’s rights.”
Lone Star

, 2018 WL 500258 at * 2 . To say that this amounts to an assignment because of the initial, broad grant ignores the total effect of the agreement. Our analysis in these types of cases has never been so reliant on labels. See

, e.g. , Diamond Coating Techs., LLC v. Hyundai
Motor Am. , 823 F.3d 615, 618 (Fed. Cir. 2016) (“ We have

no t

. . . treat [ed] bare formalities of ‘ title ’ transfer as sufficient to determine that an ‘ assignment ’ of the entire exclusive right has occurred. ”); A123 Sys., Inc. v. Hydro

- Quebec

, 626 F.3d 1213, 1218 (Fed. Cir. 2010) (“ In determining ownership for purposes of standing, labels given by the parties
d o not control. Rather, the court must determine whether the party alleging effective ownership has in fact received all substantial rights from the patent owner. ”)

. Lone Star’s reliance on Rude v. Westcott , 130 U.S. 152,

162

- 63 (1889)

, to support its argument is misplaced. Appellant’s Br. at 23

– 24. In Rude , the Supreme Court concluded that a transferor retaining royalty rights did not
affect ownership for the transferee because the royalties “reserve[d] to [the transferor] no control over the patents or their use or disposal, or any power to interfere with themanagement of the business growing out of their ownership.” 130 U.S. at 163. This suggests that limits affectingL ONE STAR SILICON INN OVATIONS v. NANYA TECH

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“control over the patents” might “modify or limit the absolute t ransfer of title.” Id. Indeed, the Supreme Court cautioned two years later in Waterman that “ [w] hether a transfer of a particular right or interest under a patent is an assignment or a license does not depend upon the name by which it calls itself, but upon the legal effect of its provisions .” 138 U.S. at 256 (emphasis added). That is consistent with our analysis here.

Lone Star also argues that the district court “ misconstrued the [transfer agreement] at a fundamental level.” Appellant Br. at 26. A ccording to Lone Star, the broad conveyance of rights transferred AMD’s rights to Lone Star.That AMD retains certain rights, such as the right to neutralize any enforcement effort by Lone Star against an unlisted target, reflects a “contractual promise[] ” from Lone Star back to AMD rather than a limit on which rights were
transferred to Lone Star. Id. at 27. But such a distinction finds no support in our case law

. As stated above, t he substance of the transaction is what matters and the substance of this transfer agreement gave AMD important rights in the patents. The relevant question here is
whether AMD’s rights, however retained or reacquired

, include any substantial rights

. See AsymmetRx , 582 F.3d at 1320 (“ Although the AsymmetRx License effected a broadconveyance of rights to AsymmetRx, Harvard retained substantial interests

. . . and AsymmetRx therefore does not have the right to sue for infringement as a ‘patentee’ under the patent statute.”). Lone Star’ s argument invites us to ignore the totality of the circumstances and instead focus on a single part of the agreement. We decline to do so.

2. The Totality of the Transfer Agreement

We turn next to whether the “totality” of the transfer agreement reflects a transfer of all substantial rights in the asserted patents to Lone Star

. Id. at 1321

. We conclude
that it does not.LONE STAR SILICON IN NOVATIONS v. NANYA TECH

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In considering this question, we have often focused ontwo salient rights: enforcement and alienation. For example, in Intellectual Pro perty Dev elopment , Inc. v. TCI Cablevision of California, Inc. , 248 F.3d 1333 (Fed. Cir. 2001)

, we noted that the transf eree could only bring suit, at least in some cases, with consent from the transferor. 248 F.3d at 1344. But, as we explained, “a transferee that receives all substantial patent rights from a transferor would never need consent from the transferor to file suit.” Id. (emphasis added). The transferor also retained the right to prevent the transferee from assigning the patents at issue without prior consent. Id. at 1345. Again, we explained , this sort of restrictio n on alienation “weigh[ed] in favor of finding a transfer of fewer than all substantial rights.” Id. Taken together, these facts indicated that the transferor retained substantial rights in the patents. Id. at 1345 (“ In light of [the transferor’s] right to permit infringement in certain cases, the requirement that [the transferor] consent to certain actions and be consulted in others, and the limits on [the transferee’s ] right to assign its interests in the ’ 202 patent, we find that the [transfer] agreeme nt at issue transfers fewer than all substantial rights in the ’ 202 patent from [the transferor] to [the transferee]

. ”). The extent ofLone Star’s ability to enforce and alienate the asserted patents is also instructive.

As to enforcement

, Lone Star needs AMD’s consent to file suit against unlisted entities. For example, if Lone Star asserts the patents against a target that is not listed in the transfer agreement

, then AMD can grant a sublicense and negate the lawsuit . AMD can also negate any effort to add

new target s to the agreement

. Lone Star’s enforcement rights are, thus, illusory, at least in part. See Speedplay, Inc. v. Bebop, Inc. , 211 F.3d 1245, 1251 (Fed. Cir. 2000) ( explaining that the right to sue is “ illusory ” when one party

“ can render that right nugatory by granting the alleged infringer a royalty

- free sublicense ”). Lone Star therefore does not possess the right to sue for “ all infringement. ” SeeL ONE STAR SILICON INN OVATIONS v. NANYA TECH

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Sicom Sys., Ltd. v. Agilent Techs., Inc. , 427 F.3d 971, 979 (Fed. Cir. 2005) (concluding that the right to sue for commercial infringement

, but not non

- commercial infringement

, signified that the transferee lacked “the exclusive right to sue for all infringement”) . This suggests that Lone Star therefore lacks all substantial rights in the asserted
patents. See Intellectual Prop. Dev. , 248 F.3d at 1344

– 45;
see also Diamond Coating , 823 F.3d at 621 (agreeing with
a district court’s conclusion that a transferee’s ex clusionary rights were not “unfettered” because the transferor enumerated who it wanted the transferee to sue).

Lone Star emphasizes that it possesses the right to initiate lawsuits and the right to indulge infringement (by not initiating a lawsuit) at lea st as to unlicensed entities, which includes Appellees . It is true that we have treated
the exclusive right to sue as significant. See, e.g.

, Sicom

, 427 F.3d at 979 (“[A] n important substantial right is the exclusive right to sue for patent infringement .”); Abbott Labs. v. Diamedix Corp. , 47 F.3d 1128, 1132 (Fed. Cir. 1995) (“ [T] he right to indulge infringements

. . . normally accompanies a complete conveyance of the right to sue

. ”). But, as explained above, it is AMD who decides whether
Lone Star can challenge or indulge infringement with respect to unlisted targets. For example, if an unlisted entity begins practicing the patents

, AMD

— without Lone Star’s

consent

— can indulge that infringement by refusing to add that party to the list of approved targe ts. AMD could even
withhold its consent conditional on payments from the unlisted target. See Oral Arg. at 17:45

– 18:02

, available athttp://oralarguments.cafc.uscourts.gov/default.aspx?fl=2018

- 1580.mp3

. Lone Star insists that restrictions on suing unlistedtargets are irrelevant here because Appellees are all Unlicensed Third Party Entities. Appellant Br. at 32 (“[I]n Diamond Coating

. . . and other similar cases, the
transferor’s retained control over l itigation had the potential to impact the licensee’s litigation conduct andLONE STAR SILICON IN NOVATIONS v. NANYA TECH

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strategies with respect to the named defendants.”). But we rejected this same argument in Sicom :
We find unpersuasive Sicom ’ s response that it is not suing Appellees ’ customers, n or suing for

non

- commercial infringement, and that this court should not consider risks that are outside the scope
of the facts in this case. Sicom ’ s focus on the parties in suit is misplaced where this court has established that the intention of the part ies to the Agreement and the substance of what was granted are relevant factors in determining whether all substantial rights in a patent were conveyed

. Sicom , 427 F.3d at 979. The fact that the transfer agreement allows Lone Star to assert the patents against Appellees is important, but it is the effect of the agreement on
the respective rights of the patentee and the transferee
that controls

. 4 See, e.g.

, Intellectual Prop. Dev

. , 248 F.3d at 1336 (concluding that a transferee that possessed the exclusive right to file suit still did not possess all substantial rights); Diamond Coating , 823 F.3d at 619 (same). And the effect of this agreement is that AMD did not fully transfer

t he right to enforce its patents. The fact that AMD mayhave transferred some rights, with respect to certain unlisted entities, does not mean it transferred all substantial rights in the full scope of the patent.

As to alienation, t he agreement restricts Lone Star’s ability to transfer the asserted patents. In particular, Lone Star cannot transfer the patents to a buyer unless that buyer agrees to be bound by the same restrictions as Lone Star. J.A. 2026. Otherwise, AMD can withhold its

4 For the same reason, the fact that Lone Star has paid the maintenance fees for the asserted patents does not negate the reversionary interest provided to AMD in the
agreement.L ONE STAR SILICON INN OVATIONS v. NANYA TECH

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required consent and halt the sale. While Lone Star argues that this restriction is insignificant because AMD cannot “unreasonably” withhold its consent, Lone Star concedes that it would be reasonable, indeed expected, for AMD to withhold consent if the prospective trans feree refuses to be bound by the transfer agreement. Appellant’s Br. at 46 (“In the full context of § 2.6, it would not be reasonable for AMD to withhold consent so long as [Lone Star] complied with the requirement

. . . to secure the transferee’s agreeme nt to be bound by [the transfer agreement].”). Not only
does this substantially restrict Lone Star’s ability to transfer the patents, it ensures that AMD will always control how the patents are asserted

. S ee Propat Int’l Corp. v. Rpost, Inc. , 473 F.3d 1187, 1191 (Fed. Cir. 2007) (“ The rightto dispose of an asset is an important incident of ownership, and such a restriction on that right is a strong indicator that the agreement does not grant [the transferee] all substantial rights under the patent. ”). This is fundamentally inconsistent with a transfer of all substantial rights. Requiring Lone Star to assign the patents back to AMD, or an agent of its choice, before abandoning the patents has a
similar effect

. S ee Aspex Eyewear, Inc. v. Miracle Optics,
Inc. , 434 F.3d 1336, 1340

– 41 (Fed. Cir. 2006) ( discussing how reversionary interests favoring the transferor signal, to varying degrees, a transfer of fewer than all substantial rights)

.In addition to these restrictions on enforcement and alienation, s everal other aspects of the agreement further
support our conclusion. For example, t he agreement secures a share of Lone Star’s “monetization efforts” for
AMD. S ee Propat , 473 F.3d at 119 1 (“[T]he fact that a patent owner has retained a right to a portion of the proceeds of the commercial exploitation of the patent

. . . does not necessarily defeat what would otherwise be a transfer of all substantial rights

. . . [but] the fact that [the t ransferor] retains a substantial share of the proceeds is consistent with [transferor’s] retaining ownership rights in theLONE STAR SILICON IN NOVATIONS v. NANYA TECH

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patent

. . . .”). And the agreement allows AMD and its affiliates to make, use, and sell products practicing the patents. S ee Diamo nd Coating , 823 F.3d at 6 19 (“We have held that a licensor’s retention of a limited right to developand market the patented invention indicates that the licensee failed to acquire all substantial rights.” (internal quotation marks omitted)). While these facts may not be dispositive alone

, together they suggest that AMD did not
transfer all substantial rights in its patents to Lone Star

. 5

Lone Star argues that the policy underpinning our “all substantial rights” test , the danger of multiple litigations against the same defendant by multiple plaintiffs, is not present here because AMD cannot sue Appellees. But we have also recognized a danger in allowing patentees to award a “hunting license” to third

- parties. See Prima Tek II, L.L.C. v. A

- Roo Co. , 22 2 F.3d 1372, 1381 (Fed. Cir. 2000) (“[A] ‘right to sue’ clause cannot confer standing on a bare
licensee

. . . To hold otherwise would allow a patent ownerto effectively grant a ‘hunting license,’ solely for the purpose of litigation, in the form of a pro forma exclusive license

. . . The Supreme Court long ago disapproved of such arrangements.”); see also Crown Die & Tool Co. v. Nye Tool
& Mach. Works , 261 U.S. 24, 40 (1923) (concluding that thetransfer of the right to sue for patent infringement, by itself, does not permit a plaintiff to bring suit for infringement in its own name); John Wiley & Sons, Inc. v. DRK
Photo , 882 F.3d 394, 409 (2d Cir. 201 8) (“ Crown Die suggests to us that the realm of intellectual property law has

5 Relying on Diamond Coating , the district court also considered whether Lone Star has the right “to make, use, and sell products or services under the patent[s].” In re
Lone Star , 2018 WL 500258, at *3 (referring to this “right”as “vitally important”). Even assuming Lone Star possesses such a right, our conclusion remains the same in view of the agreement as a whole.L ONE STAR SILICON INN OVATIONS v. NANYA TECH

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special characteristics that place it outside of any generally permissive regime for the assignment of federal claims.”).
This additional policy concern lends support to our con clusion here.

In sum, we agree with the district court that AMD did
not transfer all substantial rights in the asserted patents

. Lone Star is therefore not the relevant patentee and cannot assert these patents in its own name under § 281.

B. Article III Standing

Appellees argue that

, because Lone Star is not a patentee and never explicitly alleged that it was an exclusive
licensee

, it lacks standing to bring suit. We disagree.

The Constitution of the United States vests judicial power in the federal cou rts. U.S. Const. art. III, § 1

. That power may only be exercised to resolve “Cases” or
“Controversies.” Id. art. III, § 2. “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). A party must establ ish standing, i.e. show that its case or controversy is amenable to resolution by a federal court, by demonstrat ing that it suffer s an injury which can be fairly traced to the defendant and likely redressed by a favorable judgment. Lujan v. Defs. of Wildl ife , 504 U.S. 555, 560

– 61 (1992). At the pleading stage, “general factual allegations

. . . may suffice” to satisfy these requirements. Id. at 561.

We have recognized that those who possess “exclusionary rights” in a patent suffer a n injury when their ri ghts

are infringed. See, e.g.

, WiAV , 631 F.3d at 1264

– 65 (“[A] party holding one or more of those exclusionary rights

— such as an exclusive licensee

— suffers a legally cognizable injury when an unauthorized party encroaches upon those rights and therefore h as standing to sue. ”)

. As we explained in Morrow , “exclusionary rights” involve the abilityLONE STAR SILICON IN NOVATIONS v. NANYA TECH

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to exclude others from practicing an invention or to “forgiveactivities that would normally be prohibited under the patent statutes.” 499 F.3d at 1342. Lone Star alleged that it possesses the sort of exclusionary rights that confer Article III standing. See, e.g.

, J.A. 13082

– 13084 (alleging that it

possesses rights in the asserted patents)

. The transfer agreement, which is referenced in each complaint, also suggests as much. See, e.g. , J.A. 2621 (mentioning AMD’s “assign[ment]” of rights to Lone Star); J.A. 2025 (allowing Lone Star to “collect royalties”). These rights distinguish Lone Star from the plaintiff in Morrow

, who lacked the ability to grant licenses or “forgive” infringement

. 499 F.3d

at 1338

– 43. Lone Star also alleged that Appellees infringe
its exclusionary rights. See, e.g.

, J.A. 2623

– 2655 . And it is
clear that a court could redress an injury caused by t hat infringement. This is enough to confer standing at the pleadings stage

. See WiAV , 631 F.3d at 1266 (noting that
licensee s “ may have standing to sue some parties and not
others ”)

. Appellees insist that Lone Star lacks constitutional standing because it did not allege it was an “exclusive licensee. ” Appellees’ Br. at 59 (“[Lone Star] has no basis for constitutional standing, for it never alleged that it is an exclusive licensee .”). But constitutional standing also does not depend on labels ; it is the substance of the allegations
that matters

. Lone Star adequately alleged that it possesses exclusionary rights and that Appellees infringe those rights

. See, e.g.

, J.A. 2621

– 2655

. The fact that it believed its rights included all substantial rights does not

mean its allegations fall short of alleging a cognizable injury. Cf. Morrow , 499 F.3d at 1340 (concluding that a party “hold[ing ] exclusionary rights and interests created by the patent statutes, but not all substantial rights to the patent” still has constitutional standing to sue for infringement).

Although Lone Star cleared this constitutional threshold, the district court con cluded that it lacked standing to proceed without AMD. But treating AMD’s absence asL ONE STAR SILICON INN OVATIONS v. NANYA TECH

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implicating Lone Star’s standing confuses the requirements of Article III

— which establish when a plaintiff may invoke the judicial power

— and the requirements of § 281

— whi ch establish when a party may obtain relief under the patent laws. The district court’s mistake, repeated by the parties on appeal, is understandable. Indeed, we have often treated “statutory standing

, ” i.e. whether a party can
sue under a statute such a s § 281, as jurisdictional

. See AsymmetRx , 582 F.3d at 1318 (‘The issue of AsymmetRx’sstanding to bring suit without Harvard joining as a plaintiff was not raised by either party or by the district court. However, an appellate court must satisfy itself that it has standing and jurisdiction whether or not the parties have raised them.”).

But the Supreme Court has recently clarified that so

called “ statutory standing ” defects do not implicate a court’s subject

- matter jurisdiction:

We have on occasion referred to [ whether a plaintiff may bring suit under a certain statute ] as “ statutory standing ” and treated it as effectively jurisdictional

. . . That label is an improvement over the language of “ prudential standing, ” since it correc tly places the focus on the statute. But it, too, is misleading, since “ the absence of a valid (as opposed toarguable) cause of action does not implicate subject

- matter jurisdiction, i.e. , the court ’ s statutory or constitutional power to adjudicate the c ase. ”

Lexmark Int’l, Inc. v. Static Control Components, Inc. , 572 U.S. 118, 128 n.4 (2014) ; see also Flast v. Cohen , 392 U.S. 83, 99 (1968) (“The fundamental aspect of standing is that it focuses on the party seeking to get his complaint before
a federal c ourt and not on the issues he wishes to have adjudicated.”).

Lexmark is irreconcilable with our earlier authority treating § 281 as a jurisdictional requirement. Indeed, following Lexmark , several courts have concluded thatLONE STAR SILICON IN NOVATIONS v. NANYA TECH

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motions to dismiss based on “ st atutory standing” defects are properly brought under Rule 12(b)(6) rather than Rule 12(b)(1) in recognition of the fact that such defects are not jurisdictional

. See

, e.g. , Minden Pictures, Inc. v. John Wiley & Sons, Inc. , 795 F.3d 997, 1001 (9th Cir. 2015) (noting that “[defendant’s] Rule 12 motion to dismiss [because the plaintiff was not the owner of the copyright at issue] should have been brought under Rule 12(b)(6) . . . rather than under Rule 12(b)(1) . . . for the issue is statutory rather than Article III standing”) ; John Wiley & Sons , 882 F.3d at 402

n.4 (distinguishing between a plaintiff’s “right to pursue a cause of action under the Copyright Act” and “Article III standing” in view of Lexmark ). Where interveni ng Supreme Court precedent makes clear that our earlier decisions mischaracterized the effects of § 281, we are bound tofollow that precedent rather than our own prior panel decisions

. Cf. Troy v. Samson Mfg. Corp. , 758 F.3d 1322, 1326 (Fed. Cir. 2014) ( “It is established that a later panel canrecognize that the court’s earlier decision has been implicitly overruled as inconsistent with intervening Supreme Court authority.”). W e therefore firmly bring ourselves
into accord with Lexmark and our sister ci rcuits by concluding that whether a party possesses all substantial rights in a patent does not implicate standing or subject

matter jurisdiction

. 6

6 Although the district court erred in treating Appellee s’ motions as jurisdictional, its error was harmless because we review motions to dismiss under Rule 12(b)(1) and Rule 12(b)(6) de novo. See Harris v. Amgen, Inc. , 573F.3d 728, 732 n.3 (9th Cir. 2009) (acknowledging that “dismissal for lack of statutory standing is properly viewed as dismissal for failure to state a claim” but finding the error harmless in light of analogous standard of review).L ONE STAR SILICON INN OVATIONS v. NANYA TECH

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Accordingly, although Lone Star does not possess all substantial rights in the asserted patents its allegations still satisfy Article III

. See Lexmark , 572 U.S. at 128 n.4.

C

. Rule 19

Lone Star argues that

, because it has standing, even if it lacks all substantial rights in the patents, it should be given an opportunity to join AMD as a necessary party before this case is dismissed

. We agree. This result is compelled by Federal Rule of Civil Procedure 19 and our case
law.

In Independent Wireless , the Supreme Court acknowledged that licensees cannot bring suit in their own name

. 269 U.S. at 466

– 68. But t he Court also conclude d that an
exclusive licensee should be able to join the patent owner, involuntarily if need be, to maintain suit. Id. at 473. Otherwise, the licensee possesses a right without a remedy.
Id. at 472. Joinder, by contrast, “secur [es] justice to the
exclusive licensee.” Id. It also honors “the obligation the [patent] owner is under to allow the use of his name andtitle to protect all lawful exclusive licensees and sublicensees against infringers.” Id

. The joinder rule outlined in Independent Wireless was incorporated into Federal Rule
of Civil Procedure 19. See 7 Charles Alan Wright et al.,
Federal Practice and Procedure § 1606 (3d ed. 201 8 ) (noting
that “t he involuntary

- plaintiff procedure ” embodie d in Rule 19 was “first enunciated by the Supreme Court in Independent Wireless ” and observing that the rule “ has been used extensively to allow the exclusive licensee of a patent or a copyright

. . . to prosecute an action by compelling the joinder of the owner ” (internal footnotes omitted)); see also Caprio v. Wilson , 513 F.2d 837, 839 (9th Cir. 1975) ( acknowledging t he same )

. The rule of Independent Wireless , as incorporated into Rule 19, provides a clear command. A necessary party who is subject to ser vice of process and whose joinder will not otherwise destroy a court’s subject

- matter jurisdictionLONE STAR SILICON IN NOVATIONS v. NANYA TECH

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“must be joined. ” Fed. R. Civ. P. 19(a)(1)

. The rule extends its command directly to courts. See Fed. R. Civ. P. 19(a)(2) (“If a person has not been joined as required, the court must order that the person be made a party .” (emphasis added) ).

Of course, while the rule’s command is mandatory, it is not inflexible. If a party whose joinder is otherwis e required by part (a) cannot be feasibly joined, part (b) allowsa court to consider whether the case should proceed anyway or be dismissed because that party is indispensable.
Fed. R. Civ. P. 19 (b) ; see also A123 Sys. , 626 F.3d at 122 2 (concluding that dismissal was appropriate because the absent patent owner, who could not be joined because it had not waived sovereign immunity, “was not only a necessary party but also an indispensable party”)

. Put simply, the
rule requires court s to engage with this tw o

- step inquiry
when a plaintiff asserts claims that also implicate the rights of necessary third parties

. 7

We have interpreted Rule 19 and Independent Wireless

as directing courts to join patentee s along with licensee s who otherwise have standing . In Abbott , for example, we explained that such joinder is “required” and consistent
with “the policies underlying Fed. R. Civ. P. 19.” 47 F.3d

7 We have recognized a limited exception to Rule 19’smandatory command where the rule conflicts with “substan tive patent rights.” STC.UNM v. Intel Corp. , 754 F.3d 940, 946 (Fed. Cir. 2014) (“[T]he right of a patent co

- owner to impede an infringement suit brought by another co

owner is a substantive right that trumps the procedural rule for involuntary joinder un der Rule 19(a).”). Setting aside of the merits of such an exception, this is not a case where substantive patent rights and the rules of procedure point in different directions because, as Independent Wireless recognized, patent owners have no substantive patent right to shield themselves from being joined along with an appropriate licensee.L ONE STAR SILICON INN OVATIONS v. NANYA TECH

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at 1133. And

, while the patentee in Abbott sought to voluntarily join the case , Rule 19 applies with equal force r egardless of whether joinder is prompted by the patentee or
the licensee

. In either case

, the patentee must be joined , if feasible, when it is a necessary party

. Fed. R. Civ. P. 19.
Abbott is no outlier in this respect

. See, e.g., Intellectual Prop. Dev. , 248 F.3d at 1347 ( “ As a general rule, in accordance with Independent Wireless , this court adheres to theprinciple that a patent owner should be joined, either voluntarily or involuntarily, in any patent infringement suit brought by an exclusive lic ensee having fewer than all substantial patent rights

. ”); Morrow , 499 F.3d at 1340 ( noting
that “ [a] patentee who transferred these exclusionary interests is usually joined to satisfy prudential standing concerns” and stating that “[t]his joinder analysis has been incorporated in Federal Rule of Civil Procedur e 19 ”); AsymmetRx

, 582 F.3d at 1321

– 22 (concluding that the plaintiff lacked all substantial rights in the asserted patents, but remanding for consideration of whether the patentee should be joined und er Rule 19) ; Univ. of Utah v. Max

Planck

- Gesellschaft Zur Forderung Der Wissenschaften
E.V. , 734 F.3d 1315, 1326 (Fed. Cir. 2013) (noting that our cases “strongly support the conclusion that patent owners are required to be joined if feasible under Rule 19 (a)”); Alps S., LLC v. Ohio Willow Wood Co. , 787 F.3d 1379, 1385 (Fed.Cir. 2015) (acknowledging “our practice of endorsing joinder of patent owners

. . . in order to avoid dismissal for lack of standing”); see also 7 Charles Alan Wright et al., Federal
Pr actice and Procedure § 1611 (3d ed. 2019) (“[T] he nonjoinder of someone described in Rule 19(a) does not result in a dismissal if that person can be made a party to the
action .”).

Joinder also furthers the purpose s of Rule 19. As the Supreme Court recogni zed in Independent Wireless

, joining a patentee under Rule 19 helps “secur[e] justice” for licensee s so they can vindicate their rights . 269 U.S. 472

– 73.
I t makes little sense here to ignore this rule, even if weLONE STAR SILICON IN NOVATIONS v. NANYA TECH

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could, because the licensee brought suit thinking it was the patentee and turned out to be wrong. Joinder also ensures that the resulting judgment affords complete relief between AMD, Lone Star, and Appellees

. See AsymmetRx

, 582 F.3d at 13 22 (concluding that “the purpose of
Rule 19

. . . is best served by joinder of [the patentee], which would permit the relationship s between [the licensee], [the defendant], and [the patentee] to all be resolved at the same time as well as solve the standing problem”) ; Abbott , 47 F.3d at 1133 (nothing that “[ t]he purpose of Rule

19

. . . is thus served by joinder” to “permit [the patentee’s] dispute with [the defendant] to be adjudicated along with [the licensee’s]”).

The district court’s dismissal was inconsistent with
Rule 19 an d our case law. If AMD is the patentee , as the district court correctly concluded, then AMD ’s joinder
would ordinarily be “required.” See Abbott , 47 F.3d at 1133 (citing Rule 19). And since Lone Star agreed that AMD should be joined , assuming it retained substantial rights in
the as serted patents, Lone Star essentially conceded that AMD is a necessary party. The district court thereforeshould have considered whether AMD’s joinder was feasible. If so , then AMD must be joined

— involuntarily if need
be . If not, then the district cour t should consider whetherAMD is indispensable. Rather than engaging in this analysis, however, t he district court declined to join AMD because it thought doing so “would reward Lone Star” for a “litigation gimmick” and prejudice Appellees. In re Lone
Star , 2018 WL 500258, at *6

. But the application of Rule 19 is mandatory, not discretionary

. 8

8 Appellees contend that the decision to allow joinder of parties is discretionary under Rule 15. Appellees’ Br. at 49 (“Rule 15(a)(2)

. . . prove[s] that curative amendments are permissive, not mandatory, and fall within the district court’s broad discretion.”). But Rule 15 and Rule 19 serveL ONE STAR SILICON INN OVATIONS v. NANYA TECH

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The district court also faulted Lone Star for not expressly alleging that it was an “exclusive licensee.” Id. (“To repeat, Lone Star’s complaints alleged only t hat it is an ‘assignee’ and ‘sole owner’ of the patents

- in

- suit. It cannot simply retreat to the position of an ‘exclusive licensee’to evade arguments that it did not actually receive ‘all substantial rights’ in the patents

- in

- suit.”). As explained
abov e, Lone Star alleged that it possesses exclusionary rights. Although its rights are less than all substantial rights, we have consistently said that the cure for this defect is to join the patent owner and not to dismiss the case. See, e.g. , Morrow , 499 F.3d at 1340

. Appellees argue that Rule 19 is inapposite because it only applies where a district court dismisses for failure to join a party under Rule 12(b)(7). Appellees ’ Br. at 57 (“The Rule 19 cases and commentary

. . . explain how courts should proc eed in the face of motions to dismiss for failure to join a required party, which is a Rule 12(b)(7) motion.”).In fact, some of the defendants below did move for dismissal under Rule 12(b)(7). See , e.g., J.A. 14534

. R egardless,
Rule 19 is mandatory and so it applies whether a defendant
invoke s Rules 12(b)(1), (6), (7), or none of the above.

Finally, while Appellees point to cases in which we
have affirmed dismissals where licensee s lacked all substantial rights , t hese cases are disting uishable. Appellees’
Br. at 51

– 53. In Sicom , for example, the licensee did not

contest that its case should be dismissed assuming it could not establish that it possessed all substantial rights. 427
F.3d at 980 (noting that dismissal “is generally inapp ropriate where the standing defect can be cured”). But Lone Star argued in the alternative that the trial court should join AMD if the court found that Lone Star did not possess all substantial rights in the patent s

. I n Prima Tek II , the

different functions . Where there is a request to join an absent party, it is Rule 19 that governs.LONE STAR SILICON IN NOVATIONS v. NANYA TECH

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parties disputed whether we should join parties in the first instance on appeal, after a trial, where it was unclear that the patent owner could even be joined. 222 F.3d at 1381 (concluding that we should exercise our authority to join parties on appeal “sparingly” and n oting that the patentowner may have been “beyond the jurisdiction of the district court”). And in Propat , we concluded that the licensee
could not sue “even with [the transferor] named as a co

plaintiff,” which is not the case here. 473 F.3d at 1194 ; se e also Textile Prods., Inc. v. Mead Corp. , 134 F.3d 1481, 1485 (Fed. Cir. 1998) (same)

. Ultimately

, once the district court correctly concluded
that AMD did not transfer all substantial rights in the asserted patents to Lone Star , the district court should have
considered whether AMD could have been or needed to be joined before dismissing this case. Its failure to do so was legally erroneous.

III. Conclusion

We have considered the parties’ remaining arguments
and find them u npersuasive. According ly , we agree with
the district court that Lone Star cannot bring suit in its
own name because it d oes not possess all substantial rights in the asserted patents. But we vacate the district court’s
dismissal and remand with an instru ction that it consider
whether AMD must be joined here

. We offer no view , however, on whether AMD must be or even can be joined . O urinstruction to the district court is simply that it must consider the question.

VACATED AND REMANDED

C OSTS

No costs.