## Facts

- Speedplay’s founder, Richard Bryne, invented a clipless bicycle pedal/cleat system and obtained U.S. Patent No. 4,942,778 and later U.S. Patent No. 5,213,009.
- Bryne and Speedplay executed agreements granting Speedplay rights under the patents, including a license covering the ’778 patent and improvements and an agreement assigning Speedplay Bryne’s bicycle-related inventions made during employment.
- The agreements gave Speedplay the exclusive right to enforce the patents; Bryne retained limited, contingent rights, including a right to sue only if Speedplay failed to do so within a specified time and a consent right over Speedplay’s assignment of its interest (not to be unreasonably withheld).
- Bebop developed a competing clipless pedal system.
- Speedplay sued Bebop for patent infringement and asserted related claims including trade dress infringement.
- Bebop counterclaimed for noninfringement, invalidity, and unenforceability, and challenged the trade dress claim.

## Issues

1. Whether Speedplay possessed “all substantial rights” in the asserted patents such that it had standing to sue in its own name without joining Bryne.
2. Whether Bebop’s accused pedal systems infringed the asserted patent claims as properly construed.
3. Whether and to what extent the district court’s rulings on validity, unenforceability, and related non-patent claims should be affirmed or reversed.

## Decision

- The Federal Circuit held Speedplay had standing because the agreements transferred all substantial rights in the patents, making Speedplay the effective patentee for purposes of bringing an infringement action without joining Bryne.
- The court applied a substance-over-form analysis and treated the transfer as tantamount to an assignment for standing purposes despite Bryne’s retained, limited rights.
- The court also addressed the merits of the infringement and related rulings, affirming in part and reversing in part.

## Legal Principles

- Only a “patentee,” including successors in title, may sue for infringement under 35 U.S.C. § 281.
- Whether a transaction is an assignment or a license turns on the rights conveyed, not the label used by the parties.
- An exclusive licensee receives standing to sue in its own name when the agreement conveys “all substantial rights” in the patent, which can make the licensee the effective patentee.
- Limited retained interests by the original patent owner—such as a contingent right to sue if the licensee declines, or a consent right over assignment constrained by reasonableness—do not necessarily prevent a finding that all substantial rights were transferred.
- Courts assess standing by evaluating the totality of the transferred bundle of rights, with emphasis on exclusivity of practicing the invention and the right to sue and collect damages.

## Conclusion

The Federal Circuit treated Speedplay as the effective patentee because it held all substantial rights under the patents, so it could sue Bebop for infringement without joining the inventor, even though the inventor retained limited contingent and approval rights.


Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245 (Fed. Cir. 2000)