         NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
           is not citable as precedent. It is a public record.

United States Court of Appeals for the Federal Circuit

                               05-1334


                    GOLDEN EAGLE USA, LLC,

                                             Plaintiff,


                                  v.


          CONSOLIDATED INDUSTRIAL CORPORATION
           (doing business as St. Clair Plastics Company),

                                             Defendant-Appellee,

                                 and

       HOLLINGSWORTH LOGISTICS MANAGEMENT, L.L.C.,
         HOLLINGSWORTH LOGISTICS GROUP, L.L.C.,
       HOLLINGSWORTH, INC., AND WADE R. WATERMAN,

                                             Defendants,

                 RESTROOM ESSENTIALS, L.L.C.,

                                             Defendant,

                                 and

                           RICK WRIGHT,

                                             Defendant-Appellant.


                  ____________________________

                  DECIDED: January 4, 2006
                  ____________________________
Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.

SCHALL, Circuit Judge.


                                        DECISION

       Defendant-Appellant Rick Wright appeals the decision of the United States

District Court for the Eastern District of Michigan compelling this case to arbitration.

Golden Eagle USA, LLC v. Consol. Indus. Corp., No. 03-70229, slip op. (E.D. Mich.

Aug. 25, 2003) (“District Court Opinion”). Defendant-Appellee Consolidated Industrial

Corporation (doing business as St. Clair Plastics Company) (“Consolidated”) argues

that the district court lacked jurisdiction in the case because Plaintiff Golden Eagle USA,

LLC (“Golden Eagle”) did not hold “all substantial rights” in the patent at issue, U.S.

Patent No. 6,446,275 (the “‘275 patent”). Because it does appear that Golden Eagle

may not have standing to sue for patent infringement, we vacate the order to arbitrate

and remand the case to the district court so that it may make a determination as to

Golden Eagle’s standing to sue.

                                      DISCUSSION

                                            I.

       Golden Eagle sued several defendants, including Consolidated and Wright,

alleging various state and federal causes of action. All state law claims were dismissed

by the district court, leaving only claims for infringement of the ‘275 patent and violation

of the Lanham Act (based upon alleged unfair competition and false representation).

District Court Opinion, slip op. at 6. The district court granted the motion of Defendants

Hollingsworth Logistics Management, L.L.C., Hollingsworth Logistics Group, L.L.C., and

Hollingsworth, Inc. to compel arbitration, despite the fact that many defendants being



05-1334                                      2
compelled to arbitration were not signatories to the contract which contained the

relevant arbitration agreement.

                                          II.

       In his appeal, Wright argues that the district court’s decision should be vacated to

the extent that it requires him to arbitrate any claims that he may have against any of

the other parties to the litigation. Wright complains that the court impermissibly bound

him to an arbitration agreement to which he was not a signatory.             For its part,

Consolidated asserts that the license agreement at issue reserved the right to the

licensors to bring an action for infringement, while this suit was brought in Golden

Eagle’s capacity as the licensee.          Consolidated contends that, under these

circumstances, the district court did not have subject matter jurisdiction over the patent

infringement claim because Golden Eagle was without standing to bring the claim, the

reason being that it did not hold “all substantial rights” in the ‘275 patent. The district

court failed to resolve this jurisdictional challenge before ordering arbitration of the

patent infringement claim.

                                            III.

       Standing to assert a patent infringement claim is a jurisdictional requirement that

must exist before a tribunal can address the merits of the claim. See Rite-Hite Corp. v.

Kelley Co., 56 F.3d 1538, 1551 (Fed. Cir. 1995) (stating that “the question of standing to

sue is a jurisdictional one”).    “Only a ‘patentee’ can bring an action for patent

infringement.” Mentor H/S, Inc. v. Med. Device Alliance, Inc., 240 F.3d 1016, 1017

(Fed. Cir. 2001); 35 U.S.C. § 281 (2000). The term “patentee” is defined as including

“not only the patentee to whom the patent was issued but also the successors in title to




05-1334                                         3
the patentee.” 35 U.S.C. § 100(d) (2000). “A licensee is not entitled to bring suit in its

own name as a patentee, unless the licensee holds ‘all substantial rights’ under the

patent.” Textile Prods., Inc. v. Mead Corp., 134 F.3d 1481, 1484 (Fed. Cir. 1998). If a

licensee possesses “all substantial rights,” the licensee effectively becomes an

assignee and, therefore, a “patentee” within the meaning of section 281. Mentor H/S,

240 F.3d at 1017. “Ordinarily, ‘an exclusive licensee that does not have all substantial

rights has standing to sue third parties only as a co-plaintiff with the patentee.’” Id.

(quoting Textile Prods., 134 F.3d at 1484).       “Without the patentee as plaintiff, the

remedies provided in the patent statute are unavailable except in extraordinary

circumstances ‘as where the patentee is the infringer, and cannot sue himself.’” Ortho

Pharm. Corp. v. Genetics Inst., Inc., 52 F.3d 1026, 1030 (Fed. Cir. 1995) (quoting

Waterman v. Mackenzie, 138 U.S. 252, 255 (1891)).

       Consolidated alleges that the license agreement reserved the right to the

licensors to bring an action for patent infringement and further alleges that Golden

Eagle sued only in its capacity as a licensee. Because Golden Eagle has not appeared

on appeal to justify its entitlement to sue, the matter is remanded to the district court to

make findings with respect to the issue of standing. To determine whether the license

agreement did or did not transfer “all substantial rights” in the patent, the district court

must “ascertain the intention of the parties and examine the substance of what was

granted by the agreement.” Mentor H/S, 240 F.3d at 1017. The case is remanded to

the




05-1334                                      4
district court for that purpose.1      Should the district court determine on remand that

Golden Eagle does not have standing to bring this patent infringement action, it must

dismiss the complaint. If the complaint is dismissed, the court obviously does not have

the authority to compel arbitration.

       Each party shall bear its own costs.




       1
              Because Golden Eagle’s Lanham Act claim alleges that the Defendants
are manufacturing and selling products that simulate and contain distinctive design
features of the ‘275 patent, if the district court dismisses the patent infringement claim, it
must also determine whether the Lanham Act claim can survive independently.


05-1334                                        5
