TexasLDPC Inc. v. Broadcom Inc.

TexasLDPC Inc. v. Broadcom Inc. The Federal Circuit held that TexasLDPC's enforcement-only business activities did not terminate the license agreement, and that the agreement transferred all substantial rights in the asserted patents to TexasLDPC. The court also held that Texas A&M was not otherwise a necessary party under Rule 19 merely because it possessed potentially relevant discovery. The decision reinforces that an exclusive licensee can sue alone when the license transfers core exclusionary and enforcement rights, and Rule 19 cannot be used simply to force in a patent owner for discovery purposes. Reversed the district court's dismissal; costs awarded to TexasLDPC. The license granted TexasLDPC exclusive rights to make, use, sell, sublicense, sue, and collect damages for past, present, and future infringement for the life of the patents, subject to limited retained rights by Texas A&M. Applying Texas contract law, the court held the agreement unambiguously contemplated enforcement as part of TexasLDPC's business operations, so TexasLDPC did not trigger automatic termination by pivoting from commercialization to enforcement. On the all-substantial-rights issue, the court emphasized TexasLDPC's unfettered right to sue and collect damages, and found Texas A&M's retained research/education rights, Marvell-specific enforcement right, assignment-consent right, and financial interest insufficient to require joinder. The court rejected the district court's Rule 19 analysis, holding that Texas A&M was not necessary under Rule 19(a)(1)(B) and that the need for A&M-held licensing discovery did not prevent complete relief under Rule 19(a)(1)(A). The court declined to address a skeletal copyright-duration argument as waived or insufficiently developed. standing / jurisdiction waiver / forfeiture precedential infringement damages standing / jurisdiction waiver / forfeiture precedential infringement damages standing / jurisdiction precedential