Alps South, LLC v. Ohio Willow Wood Co., No. 13-1452 (Fed. Cir. 2015)Annotate this Case
The 109 patent, entitled “Gelatinous Elastomer Compositions and Articles,” is directed to composite articles of a thermoplastic gel and a substrate, such as foam or fabric, used as a protective liner between an amputated limb and a prosthetic limb. According to the patent, prosthetic liners that incorporate the claimed composite articles are comfortable and skin-friendly, and more durable than previous liners. Alps licensed several AEI patents, including the 109 patent. Shortly thereafter, Alps, without naming AEI as a co-plaintiff, filed a patent infringement suit against OWW. Alps declined to join as co-plaintiff. OWW moved to dismiss for lack of standing. Alps and AEI executed an amended license agreement 16 months after Alps commenced the action, listing the effective date of the original agreement. The court denied the motion, finding that the terms of the original agreement was sufficed to provide Alps with standing and that, under the nunc pro tunc amended agreement, Alps “clearly possesses the substantial rights to proceed without [AEI].” A jury found the patent valid and infringed. The Federal Circuit reversed the denial of OWW’s motion to dismiss and vacated the judgment. Alps possessed neither legal title nor all substantial rights at the outset of the litigation, and was required to join AEI, as a co-plaintiff.