## Facts

- A French company (SCIPA) and a Horphag affiliate entered a 1985 joint development contract in France requiring joint patent filings, equal sharing of proceeds from any assignment/licensing, and exclusive litigation in Bordeaux courts.
- The U.S. patent application that issued as U.S. Patent No. 4,698,360 (the ’360 patent) listed Jack Masquelier as sole inventor.
- Masquelier assigned his rights in the future ’360 patent to SCIPA and Horphag jointly.
- In 1994, SCIPA purported to assign its interest in the ’360 patent to International Nutrition Company (INC).
- Horphag sued SCIPA and INC in Bordeaux to void the 1994 assignment; Masquelier later executed a 1996 “confirmatory assignment” to INC.
- French courts applied French law, held the 1994 assignment to INC void, and held the 1996 confirmatory assignment conveyed nothing because Masquelier had already transferred his rights in 1985.
- INC sued in the District of Connecticut for infringement of the ’360 patent and for Lanham Act unfair competition based on statements that INC was not an owner.
- The district court granted summary judgment for defendants, recognizing the French ownership judgments under international comity, holding INC lacked standing, and rejecting the Lanham Act claim; it also denied INC’s motions to join a party and amend its complaint.

## Issues

1. Whether U.S. courts should recognize, under international comity, French judgments determining ownership of a U.S. patent when the parties’ contract selected a French forum and French law was applied.
2. Whether INC had standing to sue for infringement absent legal title or an enforceable ownership interest in the ’360 patent.
3. Whether defendants’ statements that INC did not own the ’360 patent were actionable under the Lanham Act given the recognized French judgments.
4. Whether denial of joinder and leave to amend was an abuse of discretion where the proposed changes would not cure lack of standing.

## Decision

- The Federal Circuit affirmed summary judgment for defendants.
- The court held the district court properly accorded comity to the French judgments because the French proceedings were fair, had jurisdiction under the forum-selection clause, and resolved ownership under French law.
- Recognizing those judgments, INC had no ownership interest in the ’360 patent and therefore lacked standing to sue for infringement.
- The Lanham Act claim failed because the ownership statements challenged by INC were true (or not false) once the French judgments were recognized.
- Denial of joinder and amendment was not an abuse of discretion because procedural changes could not create standing without an ownership interest.

## Legal Principles

- U.S. courts may recognize foreign judgments under international comity when the foreign tribunal afforded fundamental procedural fairness and recognition does not offend public policy.
- Patent infringement standing requires the plaintiff to hold legal title or a sufficient enforceable interest in the patent; absent such rights, the action must be dismissed.
- Ownership and transfer of patent-related property interests may be governed by foreign contract/property law where the relevant agreements and forum-selection clauses point to a foreign jurisdiction.
- Lanham Act liability for false statements generally does not attach to truthful statements about legal rights as determined by binding, recognized judgments.
- Courts may deny joinder or amendment when the proposed changes are futile because they cannot remedy a dispositive standing defect.

## Conclusion

The Federal Circuit upheld recognition of French ownership judgments under comity, which defeated INC’s claimed title to the ’360 patent and eliminated standing to sue for infringement; the court also rejected INC’s Lanham Act theory because the challenged ownership statements were accurate in light of the recognized judgments and affirmed denial of futile procedural amendments.


Int’l Nutrition Co. v. Horphag Rsch. Ltd., 257 F.3d 1324 (Fed. Cir. 2001)