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(L to R) Douglas R. Nemec and Chris McKinley, Skadden, Arps, Slate, Meagher & Flom (Photo: Courtesy Photo)

In Lone Star Silicon Innovations v. United Microelectronics, Nos. 2018-15 82 (Fed. Cir. May 30, 2019), the U.S. Court of Appeals for the Federal Circuit discussed how restrictive patent assignment agreements can prevent a party from suing for patent infringement. A patentee, or one who has “all rights or all substantial rights” in a patent, can assert that patent in an infringement suit. A party with rights to a patent, but lacking “all rights or all substantial rights” in it, is merely a patent licensee who cannot bring an infringement suit on its own. Instead, the patentee must join the licensee’s suit in order for it to proceed.

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