United States District Court, D. Maryland
IN RE CTP INNOVATIONS, LLC, PATENT LITIGATION Nos. 14-cv-3894-MJG, 14-cv-3884-MJG, 14-cv-3886-MJG, 14-cv-3887-MJG, 14-cv-3888-MJG, 14-cv-3889-MJG, 14-cv-3890-MJG, 14-cv-3893-MJG, 15-cv-1469-MJG, 15-cv-1470-MJG, 15-cv-1471-MJG, 15-cv-1550-MJG, 15-cv-1646-MJG, 15-cv-1692-MJG, 15-cv-1693-MJG, 15-cv-1807-MJG, 15-cv-1813-MJG, 15-cv-1975-MJG, 15-cv-2016-MJG, 15-cv-2052-MJG, 15-cv-2389-MJG, 15-cv-2391-MJG, 15-cv-2682-MJG, 15-cv-3123-MJG, 15-cv-3124-MJG Date Event Rights Owner Individual Case Nos. ECF No.
MEMORANDUM & ORDER RESOLVING MOTIONS
J. Garbis United States District Judge
Court has before it the following motions:
Defendants' Consolidated Motion to Dismiss Under 35
U.S.C. Section 101 [ECF No. 343];
Defendants' Consolidated Rule 12 Motion to Dismiss or,
Alternatively, for Judgment on the Pleadings [ECF No. 345];
Defendants' 12(b)(6) Motion to Dismiss Willful
Infringement Claims [ECF No. 346]; and
Defendants' Joint Rule 12(b)(1) Motion to Dismiss for
Lack of Subject Matter Jurisdiction due to Plaintiff's
Lack of Standing [ECF No. 354],
together with the materials submitted relating thereto.
Court has held a hearing and has had the benefit of the
arguments of counsel.
CTP Innovations, LLC (“CTP”) is a non-practicing
patent assertion entity. In March 2013, CTP obtained a
purported assignment of United States Patent Nos. 6, 611, 349
(“the ‘349 Patent”) and 6, 738, 155
(“the ‘155 Patent”) (collectively,
“the Patents in Suit”) from Media Innovations,
LLC (“Media”). The Patents in Suit pertain to
systems and methods relating to the printing industry.
CTP contacted many printing companies stating that they may
have infringed the Patents in Suit and offering a
“fully paid-up, one-time license” including
“past, present, and future uses of the
technology.” Compl. Ex. C at 3, ECF No. 1-3 in
MJG-14-3894. In the one letter of this type on the record,
CTP offered a license for $75, 000 if agreement was reached
in two weeks and $95, 000 if agreement was reached in three
recipients of CTP's letter accepted the offer. Beginning
in 2013, CTP has sued more than 75 printing companies for
infringement of the Patents in Suit. In addition, one
printing company filed suit against CTP seeking a declaratory
judgment of non-infringement, and CTP counterclaimed for
infringement. Taylor Publishing Company
(“Taylor”) v. CTP Innovations, LLC,
many of these cases settled, by December 12, 2014, nine
remained pending. On that date, the United States Judicial
Panel on Multidistrict Litigation (“MDL”) issued
its Transfer Order [ECF No. 1] consolidating the then-pending
actions and transferring them for pretrial purposes to this
Court. In 2015, more than 20 additional tag-a-long cases were
filed and subsequently transferred to this Court under the
present, the instant MDL proceeding consists of 26 cases
filed in 18 districts. In addition, CTP has stated an
intention to file as many as 200 additional tag-a-long
discussed herein, the Court shall grant Defendants' Joint
Motion to Dismiss for Lack of Subject Matter Jurisdiction due
to Plaintiff's Lack of Standing [ECF No. 354].
not, prior to filing any of the pending cases, obtain
ownership of a right to sue for infringement of the Patents
in Suit. Accordingly, CTP lacked the necessary constitutional
standing to sue for patent infringement of the Patents in
Suit. “A court may exercise jurisdiction only if a
plaintiff has standing to sue on the date it files
suit.” Abraxis Bioscience, Inc. v. Navinta
LLC, 625 F.3d 1359, 1364 (Fed. Cir. 2010).
“Standing is a constitutional requirement pursuant to
Article III and it is a threshold jurisdictional
issue.” Id. at 1363.
Court's holding that it lacks jurisdiction over CTP's
infringement claims, moots Defendant's motions other than
the Joint Motion seeking dismissal pursuant to Rule 12(b)(1)
as well as Taylor's claim for a declaratory judgment of
plaintiff bears the burden of proving jurisdiction to survive
a Rule 12(b)(1) motion to dismiss. Kokkonen v. Guardian
Life Ins. Co. of Am., 511 U.S. 375, 377 (1994).
Generally, whether a court has subject matter jurisdiction
over a patent case is determined by the law of the regional
because it is a “procedural question not unique to
patent law.” Univ. of Utah v.
Max-Planck-Gesellschaft zur Forderung der Wissenschaften
E.V., 734 F.3d 1315, 1319 (Fed. Cir. 2013).
standing to sue for patent infringement flows from the patent
statutes. Israel Bio-Eng'g Project v. Amgen
Inc., 475 F.3d 1256, 1264 (Fed. Cir. 2007) (citing 35
U.S.C. § 281, which provides that “[a] patentee
shall have remedy by civil action for infringement of his
patent.”). Therefore, subject matter jurisdiction in
the instant case implicates Federal Circuit law on standing.
See, e.g., Paradise Creations, Inc. v. UV Sales,
Inc., 315 F.3d 1304, 1308 (Fed. Cir.
2003)(“Whether a party has standing to sue in federal
court is a question of federal law.”); Bushnell,
Inc. v. Brunton Co., 659 F.Supp.2d 1150, 1163 n. 15 (D.
Kan. 2009)(citing Madey v. Duke Univ., 307 F.3d
1351, 1358 (Fed. Cir. 2002)).
standing requirement imposes both constitutional and
prudential limitations on federal court jurisdiction.
Morrow v. Microsoft Corp., 499 F.3d 1332, 1338 (Fed.
Cir. 2007). The constitutional component of standing arises
from the “case-or-controversy requirement of Article
III.” Lujan v. Defenders of Wildlife, 504 U.S.
555, 560 (1992). Constitutional standing is jurisdictional
and must be present on the date a suit is filed. WiAV
Solutions LLC v. Motorola, Inc., 631 F.3d 1257, 1263-64
(Fed. Cir. 2010). “[T]he touchstone of constitutional
standing in a patent infringement suit is whether a party can