Amgen, Inc. v. F. Hoffman-LaRoche Ltd. 2006 WL 2987949 D.Mass., Decided Oct 20, 2006 Judge William G. Young In this case, Amgen sought declaratory judgment regarding infringement of several Amgen patents by Hoffman. However, of interest was a procedural issue that has bearing on patent licensees being able to join in lawsuits. Here, Ortho is a licensee of the patents in question, and wished to join in the suit. Judge Young allowed for Ortho to intervene despite the fact that Ortho did not hold all of the substantive rights to the patent. For those in need of a quick refresher on Federal Civil Procedure, Rule 19 provides for joinder of necessary parties. Rule 24 (a) allows for an intervention of right to protect an interest in the lawsuit if it isn’t adequately represented otherwise. It is accepted that an assignee or an exclusive licensee of a patent is a required party under FRCP 19. Judge Young found Ortho to be an exclusive licensee because the language of the license gave Ortho an

“exclusive license to make in one location, have made and use LICENSED KNOW-HOW, LICENSED PATENTS and LICENSED PRODUCTS in the LICENSED TERRITORY in the LICENSED FIELD and to sell LICENSED PRODUCTS in LICENSED TERRITORY” to be exactly what it says it is: an exclusive license. This is quite sufficient for joint standing purposes.

Having found Ortho to be an exclusive licensee despite lacking the right to sue for infringement on its own, Judge Young deemed Ortho to be a necessary party to the action.

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