## Facts

- Håkan Lans invented U.S. Patent No. 4,303,986, directed to a color graphics data display system.
- In 1989, Lans executed an assignment transferring ownership of the patent to his company, Uniboard Aktiebolag.
- After the assignment, Lans sent infringement assertion letters to computer manufacturers identifying himself as the patent owner and did not disclose Uniboard’s ownership.
- In 1997, Lans sued multiple computer companies for patent infringement in his own name in the U.S. District Court for the District of Columbia, without naming Uniboard.
- Defendants obtained the 1989 assignment in discovery and sought summary judgment on the ground that Lans did not own the patent and therefore lacked standing.
- The district court granted summary judgment against Lans, denied leave to amend to substitute Uniboard as plaintiff, and denied post-judgment relief.
- Uniboard later filed its own infringement action, but the patent had expired by the time of that suit.
- The district court dismissed Uniboard’s action because Uniboard had not satisfied 35 U.S.C. § 287(a) (marking or patentee-provided actual notice), and expiration precluded prospective relief.

## Issues

1. Whether an inventor who assigned all rights in a patent to a company has standing to sue for infringement in his own name.
2. Whether the district court abused its discretion by denying amendment or post-judgment relief to substitute the patent owner when the failure to name the owner was not an honest mistake.
3. Whether an assignee can recover damages for infringement of an expired patent without compliance with 35 U.S.C. § 287(a), and whether letters sent by a non-owner satisfy § 287(a)’s actual-notice requirement.

## Decision

- The Federal Circuit affirmed summary judgment that Lans lacked standing because he had assigned the patent to Uniboard before filing suit.
- The Federal Circuit affirmed the denial of amendment and Rule 60(b) relief because the omission of the patent owner was a deliberate litigation choice, not an honest and understandable mistake.
- The Federal Circuit affirmed dismissal of Uniboard’s infringement action because Uniboard failed to satisfy § 287(a)’s marking or actual-notice requirements, and letters sent by Lans in his personal capacity did not constitute notice by the patentee.

## Legal Principles

- Only the patentee or a successor in title with legal ownership has standing to sue for patent infringement; a party may not sue on a patent it does not own.
- A post-filing attempt to cure a real-party-in-interest defect by substituting the patent owner may be denied when the initial failure to name the owner is intentional rather than mistaken; such substitution is committed to the district court’s discretion under the applicable procedural rules.
- Under 35 U.S.C. § 287(a), absent marking, damages are limited to infringement occurring after the infringer receives actual notice from the patentee (or an authorized representative acting for the patentee); notice sent by a non-owner asserting personal ownership does not satisfy the statute.
- When a patent has expired, prospective relief is unavailable; if § 287(a) is not satisfied during the patent term, expiration can leave no recoverable damages period.

## Conclusion

The Federal Circuit held that Lans’s pre-suit assignment deprived him of standing, upheld the district court’s refusal to permit substitution where the misidentification of ownership was deliberate, and ruled that Uniboard could not recover damages because § 287(a) notice must come from the patentee and the patent had expired.


Lans v. Digit. Equip. Corp., 252 F.3d 1320 (Fed. Cir. 2001)