United States Court of Appeals 

for the Federal Circuit ______________________

LONE STAR SILICON INNOVATIONS LLC,

Plaintiff-Appellant

v.

NANYA TECHNOLOGY CORPORATION, NANYA 

TECHNOLOGY CORPORATION U.S.A., NANYA 

TECHNOLOGY CORPORATION 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 INNOVATIONS LLC,

Plaintiff-Appellant

v.

UNITED MICROELECTRONICS CORPORATION, 

UMC GROUP (USA),

Defendants-Appellees

______________________

2018-1582

______________________
2 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

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

______________________

TIMOTHY P. MALONEY, Fitch, Even, Tabin & Flannery, 

Chicago, IL, argued for plaintiff-appellant. Also represented by DAVID ALLEN GOSSE, NICOLE L. LITTLE, JOSEPH 

F. MARINELLI. 

 PETER JAMES WIED, Nixon Peabody LLP, Los Angeles, 

CA, argued for all defendants-appellees. Defendants-appellees Nanya Technology Corporation, Nanya Technology 

Corporation U.S.A., Nanya Technology Corporation Delaware also represented by VINCENT K. YIP.

 CHRISTOPHER KAO, Pillsbury Winthrop Shaw Pittman 

LLP, San Francisco, CA, for defendants-appellees United 

Microelectronics Corporation, UMC Group (USA). Also 

represented by BROCK STEVEN WEBER. 

 ______________________

Before O’MALLEY, REYNA, and CHEN, Circuit Judges.

O’MALLEY, Circuit Judge.
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 3

Lone Star Silicon Innovations LLC (“Lone Star”) sued 

Appellees1 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 considering 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. BACKGROUND

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 the agreement. J.A. 2025; J.A. 

2032. New entities can only be added if Lone Star and

 

1 Appellees in these consolidated appeals include 

Nanya 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”). 
4 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

AMD both agree to add them. J.A. 2025; J.A. 2048. If Lone 

Star sues an unlisted entity, AMD has the right—without 

Lone Star’s approval—to sublicense the covered patents to 

the unlisted target. J.A. 2028; J.A. 2032. AMD can also 

prevent Lone Star from assigning the patents or allowing 

them to enter the public domain. J.A. 2026 (“Any assignment of an Assigned Patent in violation of this Section 2.6 

shall be void ab initio.”); J.A. 2027 (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 AMD . . . .”). AMD 

and its customers can also continue to practice the patents,

J.A. 2027, and AMD shares in any revenue Lone Star generates from the patents through “monetization efforts.” 

J.A. 2029. 

B. District Court Litigation 

Lone Star sued Appellees, who are all listed as Unlicensed Third Party Entities 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, 

title, and interest” in the asserted patents to Lone Star. 

See, e.g., J.A. 2621. But it took Lone Star nearly a year after filing suit to produce the transfer agreement. Once 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’ motions.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 to 

Nanya and UMC (as well as other defendants whose appeals have been dismissed). For clarity, we will refer to a 
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 5

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 patents-insuit.” 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 particular: (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, the 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.
6 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

After it concluded 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 join 

AMD, 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.

(citing 35 U.S.C. § 286). 

Lone Star timely appealed. We have jurisdiction under 

28 U.S.C. § 1295(a)(1). 

II. DISCUSSION 

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. 

§ 100(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 a 

party’s ability to sue in its own name is whether an agreement transferring patent rights to that party is, in effect, 
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 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 Waterman 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 example, 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 also 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. Instead, 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 patentee 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 to 
8 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

these alleged infringers. The district court rejected both 

arguments. We review the district court’s conclusions de 

novo. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 

F.3d 1343, 1347 (Fed. Cir. 2016). We 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 asserted 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, as 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 

not . . . 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 

do 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 the 

management of the business growing out of their ownership.” 130 U.S. at 163. This suggests that limits affecting 
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 9

“control over the patents” might “modify or limit the absolute transfer 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. According 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, the 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 broad 

conveyance 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.
10 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

In considering this question, we have often focused on 

two salient rights: enforcement and alienation. For example, in Intellectual Property Development, Inc. v. TCI Cablevision of California, Inc., 248 F.3d 1333 (Fed. Cir. 2001),

we noted that the transferee 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 restriction 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] agreement at issue transfers fewer than all substantial rights in the ’202 patent 

from [the transferor] to [the transferee].”). The extent of 

Lone 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 targets 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.” See 
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 11

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 exclusionary 

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 least 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 targets. AMD could even 

withhold its consent conditional on payments from the unlisted target. See Oral Arg. at 17:45–18:02, available at 

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2018-1580.mp3.

Lone Star insists that restrictions on suing unlisted 

targets 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 litigation had the potential to impact the licensee’s litigation conduct and 
12 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

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, nor 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 parties 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 

the right to enforce its patents. The fact that AMD may 

have 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, the 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.
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 13

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 transferee 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 agreement 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. See Propat Int’l Corp. v. 

Rpost, Inc., 473 F.3d 1187, 1191 (Fed. Cir. 2007) (“The right 

to 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. See 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, several other aspects of the agreement further 

support our conclusion. For example, the agreement secures a share of Lone Star’s “monetization efforts” for

AMD. See Propat, 473 F.3d at 1191 (“[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 transferor] retains a substantial share of the proceeds is consistent with 

[transferor’s] retaining ownership rights in the 
14 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

patent . . . .”). And the agreement allows AMD and its affiliates to make, use, and sell products practicing the patents. See Diamond Coating, 823 F.3d at 619 (“We have 

held that a licensor’s retention of a limited right to develop 

and 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., 222 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 owner 

to 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 the 

transfer 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. 2018) (“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. 
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 15

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 conclusion 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 courts. 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 establish standing, i.e. show that its case or controversy is amenable to 

resolution by a federal court, by demonstrating that it suffers an injury which can be fairly traced to the defendant 

and likely redressed by a favorable judgment. Lujan v. 

Defs. of Wildlife, 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 an injury when their rights

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 has standing to sue.”). As we explained in Morrow, “exclusionary rights” involve the ability 
16 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

to exclude others from practicing an invention or to “forgive 

activities 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 that 

infringement. This is enough to confer standing at the 

pleadings stage. See WiAV, 631 F.3d at 1266 (noting that 

licensees “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 concluded that it lacked standing to 

proceed without AMD. But treating AMD’s absence as 
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 17

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—

which 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 as § 281, as jurisdictional. See 

AsymmetRx, 582 F.3d at 1318 (‘The issue of AsymmetRx’s 

standing 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 socalled “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 correctly 

places the focus on the statute. But it, too, is misleading, since “the absence of a valid (as opposed to 

arguable) cause of action does not implicate subject-matter jurisdiction, i.e., the court’s statutory or 

constitutional power to adjudicate the case.”

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 court 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 that 
18 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

motions to dismiss based on “statutory 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 intervening Supreme Court precedent makes clear that our earlier decisions mischaracterized the effects of § 281, we are bound to 

follow 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 can 

recognize that the court’s earlier decision has been implicitly overruled as inconsistent with intervening Supreme 

Court authority.”). We therefore firmly bring ourselves 

into accord with Lexmark and our sister circuits by concluding that whether a party possesses all substantial 

rights in a patent does not implicate standing or subjectmatter jurisdiction.6

 

6 Although the district court erred in treating Appellees’ 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., 573 

F.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).
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 19

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 the Court also concluded 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 and 

title 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. 2018) (noting 

that “the involuntary-plaintiff procedure” embodied 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 the same).

The rule of Independent Wireless, as incorporated into 

Rule 19, provides a clear command. A necessary party who 

is subject to service of process and whose joinder will not 

otherwise destroy a court’s subject-matter jurisdiction 
20 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

“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 otherwise required by part (a) cannot be feasibly joined, part (b) allows 

a 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 1222

(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 courts to engage with this two-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 patentees along with licensees

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’s 

mandatory command where the rule conflicts with “substantive 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 coowner is a substantive right that trumps the procedural 

rule for involuntary joinder under 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. 
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 21

at 1133. And, while the patentee in Abbott sought to voluntarily join the case, Rule 19 applies with equal force regardless 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 the 

principle that a patent owner should be joined, either voluntarily or involuntarily, in any patent infringement suit 

brought by an exclusive licensee 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 Procedure 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 under Rule 19); Univ. of Utah v. MaxPlanck-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 

Practice 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 purposes of Rule 19. As the 

Supreme Court recognized in Independent Wireless, joining 

a patentee under Rule 19 helps “secur[e] justice” for licensees so they can vindicate their rights. 269 U.S. 472–73. 

It makes little sense here to ignore this rule, even if we 
22 LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP.

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 1322 (concluding that “the purpose of 

Rule 19 . . . is best served by joinder of [the patentee], 

which would permit the relationships 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 and 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 asserted patents, Lone Star essentially conceded that 

AMD is a necessary party. The district court therefore

should have considered whether AMD’s joinder was feasible. If so, then AMD must be joined—involuntarily if need 

be. If not, then the district court should consider whether 

AMD is indispensable. Rather than engaging in this analysis, however, the 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 serve 
LONE STAR SILICON INNOVATIONS v. NANYA TECH. CORP. 23

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 that 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 

above, 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 proceed 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. Regardless, 

Rule 19 is mandatory and so it applies whether a defendant 

invokes Rules 12(b)(1), (6), (7), or none of the above. 

Finally, while Appellees point to cases in which we 

have affirmed dismissals where licensees lacked all substantial rights, these cases are distinguishable. 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 inappropriate 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 patents. In Prima Tek II, the 

 

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

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 noting that the patent 

owner 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 coplaintiff,” which is not the case here. 473 F.3d at 1194; see 

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 unpersuasive. Accordingly, we agree with

the district court that Lone Star cannot bring suit in its 

own name because it does not possess all substantial rights 

in the asserted patents. But we vacate the district court’s 

dismissal and remand with an instruction that it consider 

whether AMD must be joined here. We offer no view, however, on whether AMD must be or even can be joined. Our 

instruction to the district court is simply that it must consider the question. 

VACATED AND REMANDED

COSTS

No costs.