## Facts

- The United States owned U.S. Patent No. 4,315,927 (the ’927 patent), titled “Dietary Supplementation with Essential Metal Picolinates,” which arose from federally funded research.
- The United States granted Nutrition 21 an exclusive license under the ’927 patent to make, use, and sell licensed products.
- The license agreement also authorized Nutrition 21 to file patent-infringement suits in its own name and on its own behalf, at its own expense, and to keep any damages recovered.
- Nutrition 21 sued Thorne Research, Inc. and Albert F. Czap for allegedly infringing the ’927 patent through sales of chromium picolinate products.
- The United States, through the Department of Justice, declined to join the infringement action voluntarily.
- Concerned that the suit might be dismissed for failure to include the patent owner under existing joinder precedent, Nutrition 21 joined the United States as an involuntary plaintiff under Federal Rule of Civil Procedure 19(a).
- The district court ruled that joinder of the United States was required and certified an interlocutory question for appeal.
- The United States took an interlocutory appeal, and both the United States and Nutrition 21 argued that the government’s joinder was not necessary given the license terms.

## Issues

1. Whether an exclusive licensee of a United States-owned patent, expressly authorized to sue “in its own name and on its own behalf,” may maintain an infringement action without the United States as a party.
2. Whether, given the rights granted in the exclusive license, the United States is a required party under Federal Rule of Civil Procedure 19 in the infringement suit.

## Decision

- The Federal Circuit answered the certified question in the affirmative.
- The court held that, under the circumstances of this license agreement, Nutrition 21 could maintain the patent-infringement action without the United States as a party.
- The case was returned to the district court for further proceedings consistent with the Federal Circuit’s ruling.

## Legal Principles

- Standing and party-joinder questions in patent infringement depend on the rights actually granted to the licensee, including whether the licensee received exclusionary rights and authority to enforce the patent.
- While patent-infringement suits traditionally include the patent owner, Rule 19 does not require joinder where the patent owner has granted an exclusive license that includes express authorization for the licensee to sue in its own name and for its own benefit.
- When the license terms place the enforcement interest primarily in the licensee—such as granting the licensee control of litigation and the right to retain recoveries—the patent owner may not be a required party, and the infringement action may proceed without the owner’s participation.
- The Rule 19 inquiry focuses on practical risks and fairness (including the risk of multiple suits and whether the absent party’s interests are adequately protected) rather than an automatic requirement that legal title always be joined.

## Conclusion

In *Nutrition 21 v. United States*, the Federal Circuit held that an exclusive licensee authorized by the United States to sue for infringement in its own name and on its own behalf may proceed without joining the United States as a party, because the license agreement’s allocation of exclusionary and enforcement rights made the government’s presence unnecessary under Rule 19.


Nutrition 21 v. United States, 930 F.2d 862 (1991)