Winet Labs LLC v. Motorola Mobility LLC

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WINET LABS LLC,
Plaintiff-Appellant
v.
MOTOROLA MOBILITY LLC,
Defendant-Appellee
______________________
2020-2235
______________________
Appeal from the United States District Court for the
Northern District of Illinois in No. 1:20-cv-01094, Senior
Judge Harry D. Leinenweber.
______________________
Decided: April 12, 2021
______________________
MATTHEW MICHAEL WAWRZYN, Wawrzyn LLC, Chi-
cago, IL, for plaintiff-appellant.
L OUIS A. K LAPP , Riley Safer Holmes & Cancila LLP,
Chicago, IL, for defendant-appellee. Also represented by
S TEPHEN MAXWELL H ANKINS , San Francisco, CA.
______________________
Before N EWMAN, MOORE, and T ARANTO, Circuit Judges.
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WINET LABS LLC v. MOTOROLA MOBILITY LLC 2
T ARANTO, Circuit Judge.
WiNet Labs LLC—a Wyoming corporation that we will
call simply “WiNet”—sued Motorola Mobility LLC for in-
fringement of WiNet’s U.S. Patent No. 7,593,374. The dis-
trict court granted Motorola’s motion to dismiss the action
under Federal Rule of Civil Procedure 12(b)(6) for failure
to state a claim. WiNet has appealed the dismissal. After
the district court dismissed under Rule 12(b)(6), however,
Motorola, in the course of seeking an award of attorney’s
fees, suggested that WiNet did not own the ’374 patent and
thus lacked Article III standing to bring this action from
the outset. In the submissions on the fees motion, the par-
ties produced evidence on the issue of ownership, including
two assignments, that the district court did not have a
chance to address before entering the merits judgment now
on appeal. Because the evidence raises a serious question
about WiNet’s standing, we vacate the judgment and re-
mand so that the district court may decide in the first in-
stance whether WiNet had Article III standing when it
filed the present action and, if so, whether it still does.
I
A
On February 14, 2020, WiNet sued Motorola, alleging
that Motorola was infringing the ’374 patent. J.A. 7–12
(Complaint). In its complaint, WiNet alleged that it was
“the exclusive owner of the ’374 patent” but did not assert
specific facts or attach evidence in support of the ownership
allegation. Complaint, ¶ 8.
About ten weeks later, on May 27, 2020, Motorola
moved to dismiss the suit under Rule 12(b)(6) on the
ground that the complaint did not state facts that gave rise
to a plausible inference of infringement alleged. Motorola
did not move under 12(b)(1) to dismiss the suit for lack of
subject-matter jurisdiction, question WiNet’s ownership of
the ’374 patent, or mention Article III standing. That
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WINET LABS LLC v. MOTOROLA MOBILITY LLC 3
remained true throughout the 12(b)(6) briefing. On August
4, 2020, the district court granted Motorola’s motion and
dismissed the case with prejudice. J.A. 6.
Two weeks later, on August 18, 2020, Motorola moved
for attorney’s fees. In its motion, Motorola for the first time
questioned, somewhat indirectly, WiNet’s ownership of the
’374 patent. See ECF No. 28 at 3 & n.3. It stated that
WiNet “allegedly purchased” the patent from a separate
company, M-Labs, Ltd., id. at 3, but it added that the U.S.
Patent and Trademark Office’s publicly available assign-
ment database still lists M-Labs, Ltd. as the assignee of the
patent, id. at 3 n.3 (citing ECF No. 28-4 (Exhibit 3)).
On September 2, 2020, the day after the notice of ap-
peal of the Rule 12(b)(6) dismissal was filed, WiNet op-
posed the fees motion. ECF No. 31. In its opposition brief,
WiNet made no argument about ownership, but it attached
a declaration stating that “WiNet owns the patent-in-suit”
and included “a true and correct copy of the assignment
agreement according to which WiNet holds title in the ’374
patent.” ECF No. 31-1, ¶ 2 (Exhibit A, Wawrzyn Declara-
tion); ECF No. 31-2 (Exhibit 1). That assignment carries
signatures from March and April 2019, which is before
WiNet filed this suit. ECF No. 31-2.
The 2019 assignment identifies plaintiff-appellant
WiNet Labs LLC, a Wyoming corporation (which we have
called simply “WiNet”), as the 2019 assignee. Id. But the
2019 assignment does not identify as the assignor the Brit-
ish Virgin Islands corporation originally called “M-Labs,
Ltd.” (with a name change to “WiNet Labs Ltd.” in 2008) to
which, the parties agree, the inventors had earlier assigned
all rights in the patent. See WiNet Reply Br. at 3; ECF No.
34-4 (Exhibit 21); ECF No. 31-2. Rather, the 2019 assign-
ment states that the new assignment is being made by the
five named inventors on the patent. ECF No. 31-2. The
assignment declares that the named inventors “hold a re-
versionary right” in the ’374 patent because ownership
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WINET LABS LLC v. MOTOROLA MOBILITY LLC 4
“reverted to” the inventors when the British Virgin Islands
corporation WiNet Labs Ltd., acknowledged to be the pre-
vious assignee, “ceased operations.” Id. Nowhere in its op-
position or in its exhibits did WiNet present facts or
explanation supporting the asserted reversion of the patent
from the earlier assignee to the inventors.
One week later, on September 9, 2020, Motorola filed
its reply in support of its fees motion. Motorola directly
contended that “WiNet never had standing to bring this
case.” ECF No. 34 at 1. In support, Motorola attached a
May 1, 2005 assignment (obtained from the PTO) in which
the five inventors assigned their “entire right, title and in-
terest” in the ’374 patent to M-Labs, Ltd. ECF No. 34-2.
The 2005 assignment says nothing about reversion.
Motorola argued that, with no evidence of any transfer of
the patent back to the inventors from M-Labs, Ltd. (re-
named WiNet Labs Ltd.), the inventors had nothing to as-
sign in 2019, so WiNet could not and did not receive
ownership from the inventors in 2019 and lacked standing
to bring this action. ECF No. 34 at 1–3.
The district court stayed resolution of Motorola’s mo-
tion for attorney’s fees pending WiNet’s appeal of the Rule
12(b)(6) dismissal to this court. ECF No. 35.
B
WiNet submitted its opening appellate brief on Novem-
ber 16, 2020, after the briefing for Motorola’s motion for
attorney’s fees was completed. WiNet did not mention the
ownership dispute or standing. Motorola in its response
brief did. It argued that “WiNet does not own” the ’374 pa-
tent, so “WiNet never had standing to bring this case in the
district court, and it lacks standing now.” Motorola Re-
sponse Br. at 2; see also id. at 2–6. WiNet in its reply in
this court did not dispute that the 2005 assignment docu-
ment assigned the patent to M-Labs, Ltd., which then
changed its name to “WiNet Labs Ltd.” WiNet Reply Br.
at 3. But WiNet set forth no additional facts or explanation
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WINET LABS LLC v. MOTOROLA MOBILITY LLC 5
supporting its sole asserted basis for WiNet’s ownership—
namely, that ownership reverted to the inventors when
WiNet Labs Ltd. ceased operations, the essential premise
for the inventors’ 2019 reassignment to WiNet. Specifi-
cally, WiNet provided no facts or explanation indicating
how, despite the absence of any reversion language in the
2005 assignment, the inventors received ownership back
from the 2005 assignee.
II
It is well-established that “every federal appellate
court has a special obligation to ‘satisfy itself not only of its
own jurisdiction, but also that of the lower courts in a cause
under review,’ even though the parties are prepared to con-
cede it,” and that the principle applies to the issue of Article
III standing. Bender v. Williamsport Area Sch. Dist., 475
U.S. 534, 541 (1986) (quoting Mitchell v. Maurer, 293 U.S.
237, 244 (1934)); see also FW/PBS, Inc. v. City of Dallas,
493 U.S. 215, 230–31 (1990). “To have standing, a plaintiff
must ‘present an injury that is concrete, particularized,
and actual or imminent; fairly traceable to the defendant’s
challenged behavior; and likely to be redressed by a favor-
able ruling.’” Dep’t of Commerce v. New York, 139 S. Ct.
2551, 2565 (2019) (quoting Davis v. Fed. Election Comm’n,
554 U.S. 724, 733 (2008)).
Here, the only basis on which WiNet has asserted that
the alleged infringement caused it an injury required for
Article III standing is its asserted ownership of the ’374 pa-
tent. We have now been presented with evidence that casts
grave doubt on whether WiNet has any ownership interest
in the patent. WiNet relies entirely on the 2019 assign-
ment from the inventors, made after the acknowledged
2005 full assignment from the inventors to a separate en-
tity (M-Labs, Ltd., renamed WiNet Labs Ltd.). The 2019
assignment depends, for its effectiveness in transferring
ownership to WiNet, on WiNet’s assertion that ownership
had reverted to the inventors before the 2019 assignment.
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WINET LABS LLC v. MOTOROLA MOBILITY LLC 6
But the 2005 assignment on its face says nothing about any
reversion to the inventors. WiNet has not set forth any
facts, explanation, or analysis of law (e.g., law of a relevant
jurisdiction bearing on the consequences of a cessation of
business operations) indicating how such a reversion could
have occurred or did occur. The record now before us cre-
ates a serious question about WiNet’s Article III standing.1
Without deciding whether we could ourselves resolve
the question, we vacate the judgment and remand so that
the district court may address the Article III question.
Motorola did not present the issue or relevant facts to that
court before the dismissal on the merits. A remand will
enable the district court to address WiNet’s Article III
standing in the first instance, using any appropriate proce-
dures.
In vacating and remanding, we indicate no view about
the merits of the Rule 12(b)(6) dismissal currently before
us. Nor do we foreclose or invite consideration of matters
beyond Article III standing. We also do not decide whether,
if Article III standing is held to be absent, this case would
fall within the general rule that a dismissal for want of
standing is without prejudice, or whether an exception to
that general rule would apply. See, e.g., MAO-MSO Recov-
ery II, LLC v. State Farm Mut. Auto. Ins. Co., 935 F.3d 573,
581–82 (7th Cir. 2019); El v. AmeriCredit Fin. Servs., Inc.,
710 F.3d 748, 751 (7th Cir. 2013); see also Georgakis v. Ill.
State Univ., 722 F.3d 1075, 1077 (7th Cir. 2013)
1 The ownership question that affects Article III
standing here does not cover every statutory question rele-
vant to “patentee” status affecting a plaintiff’s right to sue
for infringement, see 35 U.S.C. §§ 100(d), 281, such as
whether a plaintiff “possesses all substantial rights in a pa-
tent,” Lone Star Silicon Innovations LLC v. Nanya Tech.
Corp., 925 F.3d 1225, 1235 (Fed. Cir. 2019) (distinguishing
constitutional from statutory requirements).
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WINET LABS LLC v. MOTOROLA MOBILITY LLC 7
(“Dismissals for want of federal jurisdiction normally are
without prejudice (though even then, . . . the ground on
which a court holds that it lacks jurisdiction may have a
preclusive effect in future cases—at the least it will bar re-
filing the identical suit in the same court).”).
III
For the foregoing reasons, we vacate the judgment and
remand.
VACATED AND REMANDED
COSTS
The parties shall bear their own costs.
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