## Facts

- James Turner, through Entek Corporation, obtained four patents on scrap-tire conversion processes and registered the LEAKY PIPE trademark; the rights were assigned to Entek.
- After Turner and Entek entered bankruptcy, the patents and trademark were sold with bankruptcy-court approval to Banstar Corporation.
- On August 4, 1991, Banstar’s shareholders approved transferring Banstar’s interest in the acquired intellectual property to Gaia Technologies, Inc., but no contemporaneous written assignment was executed or recorded.
- In 1993, Banstar continued to represent in bankruptcy proceedings that it owned the intellectual property.
- In October 1993, Gaia sued multiple corporate and individual defendants in federal district court for (1) patent infringement, (2) trademark infringement, and (3) related Texas state-law claims; Gaia alleged corporate direct infringement and individual inducement.
- In 1994, during litigation, Gaia recorded with the PTO an assignment from Banstar to Gaia that purported to be effective August 4, 1991, though the copy was undated.
- A jury returned verdicts for Gaia on the patent, trademark, and state-law claims, imposing liability on corporate and individual defendants.

## Issues

1. Whether Gaia had standing to sue for patent infringement, requiring legal title to the asserted patents at the time the complaint was filed.
2. Whether Gaia had standing to sue for trademark infringement, requiring ownership (or a qualifying proprietary interest) in the mark at the time the complaint was filed.
3. Whether, after dismissal of the federal claims for lack of jurisdiction, the district court could or should retain supplemental jurisdiction over the Texas state-law claims under 28 U.S.C. § 1367.

## Decision

- The Federal Circuit held Gaia lacked standing to assert the patent claims because it did not prove legal title to the patents when it filed suit.
- The court held Gaia likewise lacked standing to assert the trademark claim because it did not prove ownership of the mark when it filed suit.
- The court vacated the judgment as to the patent and trademark claims and remanded with instructions to dismiss those claims for lack of jurisdiction.
- The court vacated the judgment on the state-law claims and remanded for the district court to decide whether to retain or dismiss them under § 1367.

## Legal Principles

- Standing to sue for patent infringement is jurisdictional and generally requires the plaintiff to hold legal title when the action is filed.
- A post-filing assignment, including an attempted retroactive effective date, does not cure a lack of standing that existed at filing.
- Standing to sue for trademark infringement similarly depends on ownership (or a legally sufficient proprietary interest) in the mark at filing.
- When foundational federal claims are dismissed for lack of jurisdiction, the district court must reassess whether to exercise supplemental jurisdiction over related state-law claims under 28 U.S.C. § 1367.

## Conclusion

The Federal Circuit vacated the infringement and related judgments because Gaia failed to establish ownership of the asserted patents and trademark when it filed suit, requiring dismissal of the federal claims for lack of jurisdiction and a remand for the district court to determine whether to keep or dismiss the supplemental Texas claims.


Gaia Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774 (Fed. Cir. 1996)