Case: 21-154 Document: 36 Page: 1 Filed: 09/22/2021
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: CIRBA INC., DBA DENSIFY,
`Petitioner
`______________________
`
`2021-154
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the District of Delaware in No. 1:19-cv-
`00742-LPS, Judge Leonard P. Stark.
`______________________
`
`ON PETITION
`______________________
`
`PAUL D. CLEMENT, Kirkland & Ellis LLP, Washington,
`DC, argued for petitioner Cirba Inc. Also represented by
`JULIE M.K. SIEGAL; ARIEL C. GREEN, COURTLAND L.
`REICHMAN, Reichman Jorgensen Lehman & Feldberg LLP,
`Redwood Shores, CA; AISHA MAHMOOD HALEY; CHRISTINE
`E. LEHMAN, Washington, DC.
`
` DEANNE MAYNARD, Morrison & Foerster LLP, Wash-
`ington, DC, argued for respondent VMware, Inc. Also rep-
`resented by BRIAN ROBERT MATSUI, MICHAEL QIAN;
`RICHARD HUNG, MICHAEL ALLEN JACOBS, San Francisco,
`CA; WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
`Dorr LLP, Boston, MA; THOMAS SAUNDERS, SETH P.
`WAXMAN, Washington, DC.
` ______________________
`
`

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`Case: 21-154 Document: 36 Page: 2 Filed: 09/22/2021
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`2
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`IN RE: CIRBA INC.
`
`
`Before TARANTO, HUGHES, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`
`O R D E R
`Cirba Inc. petitions for a writ of mandamus directing
`the United States District Court for the District of Dela-
`ware to vacate its order granting VMware, Inc.’s motion to
`dismiss Cirba Inc. for lack of constitutional standing and
`its order granting VMware’s motion for a new trial.
`VMware opposes. We deny the petition.
`BACKGROUND
`In April 2019, Cirba Inc. (Inc.) and Cirba IP, Inc. (IP)
`(collectively, Plaintiffs) filed suit in the District of Dela-
`ware against VMware for patent infringement of U.S. Pa-
`tent Nos. 8,209,687 and 9,654,367, unfair competition
`under the Lanham Act, deceptive trade practices under
`Delaware law, and common law trademark infringement.
`In May 2019, Plaintiffs moved for a preliminary injunction,
`which the district court denied in favor of an expedited jury
`trial that occurred in January 2020. VMware raised the
`issue of whether Inc. has standing to sue VMware for in-
`fringement of the patents-in-suit for the first time in the
`proposed pretrial order. In response, Inc. urged the court
`to address the standing issue post-trial and the court
`agreed. At trial, the jury rejected VMware’s patent inva-
`lidity defenses and found that VMware willfully infringed
`the asserted claims of the patents-in-suit. The jury
`awarded over $236 million in damages.
`Inc. and VMware are direct competitors offering com-
`peting products covered by the patents-in-suit. Inc.’s em-
`ployees invented the invention claimed in the patents-in-
`suit, and Inc. was the original patentee. Then, for tax pur-
`poses, Inc. transferred its patents to its wholly owned sub-
`sidiary IP in an Assignment Agreement. In turn, IP
`
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`Case: 21-154 Document: 36 Page: 3 Filed: 09/22/2021
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`IN RE: CIRBA INC.
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`3
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`granted back to Inc. rights in a License Agreement; this
`License Agreement is key to the standing issue.
`After trial, VMware moved to dismiss Inc. from the
`case for lack of standing, asserting that Inc. is only a bare
`licensee to the patents-in-suit. In response, Inc. argued
`that it has standing because Inc. holds an exclusive license
`to the patents-in-suit. The district court analyzed the As-
`signment Agreement—assigning the patents from Inc. to
`IP—and the License Agreement—granting Inc. a license to
`the patents-in-suit—and concluded that “the Assignment
`Agreement left Inc. with no rights whatsoever in the pa-
`tents-in-suit” other than “those rights granted to Inc. by IP
`in the License Agreement.” Cirba Inc. v. VMware, Inc., No.
`CV 19-742-LPS, 2020 WL 2992348, at *4 (D. Del. June 3,
`2020) (emphasis omitted). The district court acknowledged
`that the License Agreement describes Inc.’s license as “an
`exclusive, transferable, worldwide license to use.” Id.
`(quoting J.A. 120). But the court noted that the License
`Agreement also expressly states that “IP remains ‘the ex-
`clusive owner of all proprietary rights, including rights
`based upon . . . patent . . . laws,’” and that it “‘gives [Inc.]
`no rights in such proprietary rights.’” Id. at *4 (quoting
`J.A. 121–22) (emphasis omitted). Given this language, the
`district court concluded that Inc. is “a bare licensee, and
`not an exclusive licensee,” and “lacks any right to exclude.”
`Id. The court quoted our precedent holding that “the touch-
`stone of constitutional standing in a patent infringement
`case is whether a party can establish that it has an exclu-
`sionary right in a patent that, if violated by another, would
`cause the party holding the exclusionary right to suffer le-
`gal injury.” Id. at *2 (quoting WiAV Sols. LLC v. Motorola,
`Inc., 631 F.3d 1257, 1265 (Fed. Cir. 2010)). The district
`court dismissed Inc. for lack of constitutional standing,
`holding that “Inc. is a bare licensee, lacks standing to sue,
`and must be dismissed.” Id. at *5; see id. at *1 n.1 (“[T]he
`Standing Motion here only relates to constitutional stand-
`ing.”). The district court also granted a new trial with IP
`
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`Case: 21-154 Document: 36 Page: 4 Filed: 09/22/2021
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`4
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`IN RE: CIRBA INC.
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`as the sole plaintiff. This petition followed. We have juris-
`diction under the All Writs Act, 28 U.S.C. § 1651.
`DISCUSSION
`A writ of mandamus is a “drastic and extraordinary
`remedy reserved for really extraordinary causes” and the
`legal standard for mandamus relief is demanding. Cheney
`v. U.S. Dist. Court for Dist. of Columbia, 542 U.S. 367,
`380–81 (2004) (internal quotation marks and citation omit-
`ted). “As the writ is one of the most potent weapons in the
`judicial arsenal, three conditions must be satisfied before
`it may issue.” Id. at 380 (internal quotation marks and ci-
`tation omitted). The petitioner must demonstrate: (1) that
`he has “no other adequate means to attain the relief he de-
`sires”; (2) a “clear and indisputable” right to the writ; and
`(3) that the “writ is appropriate under the circumstances.”
`Id. at 380–81.
`In its petition seeking a writ of mandamus, Inc. asserts
`that the district court erred in two respects: (1) holding
`that Inc. is a bare licensee without the right to exclude;
`and, in any event, (2) holding that exclusionary rights are
`necessary for Article III standing. We address these two
`issues in turn, bearing in mind the heavy burden required
`for a writ of mandamus.
`
`A
`Section 2 of the License Agreement states that “[IP]
`hereby grants, and [Inc.] accepts, an exclusive, transfera-
`ble, worldwide license to use the Products.” J.A. 120 (em-
`phasis added). Section 8, titled “Proprietary Rights,” states
`that “[Inc.] acknowledges that, between [Inc.] and [IP], [IP]
`is the exclusive owner of all proprietary rights, including
`rights based upon trade secret, patent and copyright laws,”
`and “[t]his Agreement gives [IP] no rights in such proprie-
`tary rights.” J.A. 121–22. We agree with the district court
`that the License Agreement does not grant Inc. exclusion-
`ary rights.
`
`

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`Case: 21-154 Document: 36 Page: 5 Filed: 09/22/2021
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`IN RE: CIRBA INC.
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`5
`
`A patent grant confers on the patentee “the right to ex-
`clude others from” making, using, offering for sale, selling,
`or importing the invention. 35 U.S.C. § 154(a)(1). “If [a
`licensee] has not received . . . the right to exclude others
`from making, using, or selling the patented invention, the
`party has a ‘bare license,’ and has received only the pa-
`tentee’s promise that the party will not be sued for infringe-
`ment.” Rite-Hite Corp. v. Kelley Co. Inc., 56 F.3d 1538,
`1552 (Fed. Cir. 1995) (citing Western Elec. Co. v. Pacent Re-
`producer Corp., 42 F.2d 116, 118 (2d Cir. 1930)). A right
`“to use” the invention—under a license to use—is not a
`right to exclude others, and the Supreme Court has long
`made clear that it is not a right granted by the Patent Act.
`See Impression Products, Inc. v. Lexmark Int’l, Inc., 137 S.
`Ct. 1523, 1534 (2017) (“The right to use, sell, or import an
`item exists independently of the Patent Act. What a patent
`adds—and grants exclusively to the patentee—is a limited
`right to prevent others from engaging in those practices.”
`(citing Crown Die & Tool Co. v. Nye Tool & Machine
`Works, 261 U.S. 24, 35 (1923)); Cont’l Paper Bag Co. v. E.
`Paper Bag Co., 210 U.S. 405, 425 (1908); Patterson v. Ken-
`tucky, 97 U.S. 501, 507 (1878) (“The sole operation of the
`statute is to enable him to prevent others from using the
`products of his labors except with his consent. But his own
`right of using is not enlarged or affected.”).
`Inc. argues that it has exclusionary rights by virtue of
`the words “exclusive” and “transferable” in § 2. Pet. 23–25.
`But what is “exclusive” and “transferable” is only a right
`“to use.” Moreover, “[t]he use of the word ‘exclusive’ is not
`controlling; what matters is the substance of the arrange-
`ment.” Textile Prods., Inc. v. Mead Corp., 134 F.3d 1481,
`1484 (Fed. Cir. 1998). Nor does transferability of the right
`granted alter the scope of that right. Here, the above-
`quoted language in § 8, stating that the License Agreement
`gives Inc. no proprietary rights under the patent laws, un-
`dermines any suggestion that § 2 conveys a right to ex-
`clude. Read in context, the word “exclusive” in § 2 is most
`
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`Case: 21-154 Document: 36 Page: 6 Filed: 09/22/2021
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`6
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`IN RE: CIRBA INC.
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`reasonably read to give Inc. no more than a breach of con-
`tract claim were IP to license others to use the patent. See
`Rite-Hite, 56 F.3d at 1553 (explaining that the bare licen-
`see’s remedy would lie in a breach of contract action instead
`of a patent infringement action against infringers). Fur-
`thermore, read in context with the language in § 8, the
`grant of a “transferable, worldwide license to use the Prod-
`ucts” simply allows Inc. to transfer a covenant not to sue
`for using the Products. J.A. 120 (emphasis added). It does
`not give Inc. the right to exclude others from using the pa-
`tented invention. Inc. is therefore a “bare licensee,” even if
`one with a promise of exclusivity, in that it has use rights
`but no part of the right to exclude granted by the statute.
`We note that in Morrow v. Microsoft Corporation we
`explained that “a party with the rights of an exclusive li-
`censee holds exclusionary rights and has standing to sue
`for infringement if the patentee joins the suit to satisfy any
`[statutory standing] concerns present in that case.” 499
`F.3d 1332, 1343 (Fed. Cir. 2007) (citing Evident Corp.
`v. Church & Dwight Co., 399 F.3d 1310, 1314 (Fed. Cir.
`2005)). What may follow from the use of the phrase “exclu-
`sive license” in license agreements as a general matter,
`however, does not eliminate the need to “pay particular at-
`tention” to the specific language of the licensing contract at
`issue in a given case. Id. (citing Prima Tek II, L.L.C. v. A-
`Roo Co., 222 F.3d 1372, 1379 (Fed. Cir. 2000)). Here, as we
`noted above, § 8 of the license removes any possibility of
`reading § 2 as conveying exclusionary rights because it
`states that IP is the “exclusive owner of all proprietary
`rights, including . . . patent” and that Inc. has “no rights in
`such proprietary rights.” J.A. 121–22. In the present case,
`the overall substance of the license simply does not grant
`Inc. any exclusionary rights. Accordingly, we see no error
`in the district court’s holding that Inc. is a bare licensee
`without the right to exclude.
`B
`
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`Case: 21-154 Document: 36 Page: 7 Filed: 09/22/2021
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`IN RE: CIRBA INC.
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`7
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`Inc. also asserts that it is sufficient for Article III
`standing that a party demonstrate a concrete injury, trace-
`able to the challenged conduct (here infringement), and re-
`dressable in the suit. Pet. 13, 16, citing, e.g., TransUnion
`LLC v. Ramirez, 141 S. Ct. 2190, 2204 (2021) (holding that
`only a plaintiff with a concrete injury has Article III stand-
`ing); Lexmark Int’l, Inc. v. Static Control Components, Inc.,
`572 U.S. 118, 125 (2014) (citing Lujan v. Defenders of Wild-
`life, 504 U.S. 555, 560 (1992) and explaining that constitu-
`tional standing requires a concrete injury). According to
`Inc., exclusionary rights are not necessary for a concrete
`injury, and it has been sufficiently injured for Article III
`standing by virtue of the competitive injury it suffered
`based on VMware’s use of the patented invention.
`VMware counters that the cases relied on by Inc. hold
`only that a showing of concrete injury, causation, and re-
`dressability is necessary for Article III standing, not that
`such a showing is sufficient, and that many Supreme Court
`cases, including Inc.’s principal authorities on Article III
`standing, also require a “legally and judicially cognizable”
`injury in fact, i.e., “an invasion of a legally protected inter-
`est.” Opp. 20–21; see Raines v. Byrd, 521 U.S. 811, 819
`(1997) (explaining that Article III standing requires a le-
`gally and judicially cognizable injury that is concrete and
`particularized); TransUnion, 141 S. Ct. at 2205, 2206;
`Lujan, 504 U.S. at 560. According to VMware, a bare licen-
`see like Inc. suffers no legally cognizable injury from patent
`infringement.
`We are not firmly convinced that Inc. has demon-
`strated a clear and indisputable right to issuance of the
`writ based on the district court’s holding that Article III
`requires an injury to the plaintiff’s right to exclude. See
`Cheney, 542 U.S. at 381. As VMware notes, Inc. seeks a
`change in the law because Inc.’s position would confer Ar-
`ticle III standing on a bare licensee, contrary to our
`
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`Case: 21-154 Document: 36 Page: 8 Filed: 09/22/2021
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`8
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`IN RE: CIRBA INC.
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`precedent.1 Opp. 23. For its part, Inc. contends that this
`change in the law is required by the Supreme Court’s deci-
`sion in Lexmark, as well as our court’s decision in Lone Star
`Silicon Innovations LLC v. Nanya Tech. Corp., 925 F.3d
`1225, 1235–36 (Fed. Cir. 2019).
`Our decisions prior to Lexmark have routinely held
`that constitutional standing requires at least one exclu-
`sionary right. See WiAV, 631 F.3d at 1264–65, 1267; Mor-
`row, 499 F.3d at 1340–41; Intell. Prop. Dev., Inc. v. TCI
`Cablevision of Cal., Inc., 248 F.3d 1333, 1347 (Fed. Cir.
`2001). Post-Lexmark, we noted that our precedent treating
`35 U.S.C. § 281 as a jurisdictional requirement was irrec-
`oncilable with Lexmark and we clarified that “whether a
`party possesses all substantial rights in a patent does not
`implicate standing or subject-matter jurisdiction.” Lone
`Star, 925 F.3d at 1235–36. It is not clear, however, that
`Lexmark and Lone Star also require us to alter our prece-
`dent holding (as the district court summarized it) that “the
`touchstone of constitutional standing in a patent infringe-
`ment case is whether a party can establish that it has an
`exclusionary right in a patent that, if violated by another,
`would cause the party holding the exclusionary right to suf-
`fer legal injury.” Cirba, 2020 WL 2992348, at *2 (citing
`WiAV, 631 F.3d at 1265). Lexmark and Lonestar warn
`against
`conflating
`statutory
`requirements with
`
`
`1 A hypothetical may aid in understanding the scope
`of Inc.’s view. During argument, Inc.’s counsel agreed that,
`under Inc.’s view, a third party that made an acceptable
`non-infringing alternative would suffer a concrete injury
`sufficient for Article III standing to sue VMware for patent
`infringement because the third party would benefit eco-
`nomically if VMware could no longer practice the invention
`claimed
`in IP’s patent.
` Oral Arg. at 7:52–9:04,
`http://oralarguments.cafc.uscourts.gov/default.aspx?fl=21-
`154_09032021.mp3.
`
`

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`Case: 21-154 Document: 36 Page: 9 Filed: 09/22/2021
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`IN RE: CIRBA INC.
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`9
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`jurisdictional/standing requirements. These cases do not
`answer the question of whether an injury must be both “le-
`gally cognizable” and “concrete” or simply “concrete” for Ar-
`ticle III standing. The same is true of Schwendimann
`v. Arkwright Advanced Coating, Inc., 959 F.3d 1065 (Fed.
`Cir. 2020), also relied on by Inc. Accordingly, we deny Inc.’s
`petition.
`
`C
`Like the district court, we have concluded that, under
`the License Agreement, Inc. lacks any right to exclude or
`any other exclusionary right against VMware. It follows
`from that premise that Inc. lacks any statutory right under
`35 U.S.C. § 281 to be a patent plaintiff in this case (even
`with Cirba as a co-plaintiff). Indeed, Inc. does not appear
`to dispute that conclusion if the premise of no exclusionary
`right (which Inc. disputes) is correct. And the clarity of the
`statutory requirement suggests that the statute (not the
`Constitution) should decide plaintiff status in disputes like
`the current one in the future.
`Inc. argues, however, that in this case VMware for-
`feited any statutory objection. Pet. 5–6; Reply 8–9. The
`district court seems to have rejected Inc.’s forfeiture con-
`tention. J.A. 515–16 (“VMware’s challenge . . . was timely
`even if it was a statutory challenge and not a constitutional
`challenge.”). At the same time, the district court never
`stated that it was dismissing Inc. under the statute, and in
`its initial ruling, the court stated that VMware’s “Standing
`Motion here relates only to constitutional standing.”
`Cirba, 2020 WL 2992348, at *1 n.1. Regardless, we cannot
`say that the record before us compels a finding of forfeiture
`of a statutory objection.
`In support of its forfeiture contention, Inc. points to no
`assertion by VMware that it was making only a constitu-
`tional, and not a statutory, objection. Moreover, VMware’s
`express rationale for objecting to Inc.’s presence as a plain-
`tiff has been the same from the beginning: VMware has
`
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`10
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`IN RE: CIRBA INC.
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`consistently argued that Inc. must be dismissed because
`Inc. lacked any exclusionary right under the License Agree-
`ment—which (as just noted) is a sufficient basis for Inc.
`lacking a statutory right to sue. But Inc. argues that
`VMware indirectly implied that it was limiting its argu-
`ment to a constitutional one because, in VMware’s key fil-
`ings, it (a) did not separately assert that the statute barred
`Inc.’s presence and (b) quoted from one of this court’s cases
`referring to “constitutional” standing, cited Fed. R. Civ. P.
`12(b)(1), and used the term “jurisdiction.” See J.A. 254; see
`also J.A. 370–71.
`The bases on which Inc. relies do not compel a determi-
`nation that a statutory ground for the objection to Inc.’s
`presence was forfeited. VMware’s omission of a separate
`“statutory” label, its accurate quotation of “constitutional”
`from the cited case, and its use of “jurisdiction” (and cita-
`tion to Fed. R. Civ. P. 12(b)(1)) all merely reflect the fact
`that “jurisdiction” and “constitutional” were terms used too
`loosely in our past cases, as we made clear in Lone Star,
`925 F.3d at 1235. Cf. Arbaugh v. Y&H Corp., 546 U.S. 500
`(2006) (Supreme Court noting its own overuse of “jurisdic-
`tion” in prior cases); Fort Bend Cnty., Texas v. Davis, 139
`S. Ct. 1843 (2019) (same). Moreover, we have approved
`treating a dismissal for want of jurisdiction as a dismissal
`for failure to state a claim where “there were no practical
`differences between the two forms of dismissal under the
`facts of th[e] case.” Adair v. United States, 497 F.3d 1244,
`1251 (Fed. Cir. 2007) (citing Brodowy v. United States, 482
`F.3d 1370, 1376 (Fed. Cir. 2007)); see Lone Star, 925 F.3d
`at 1236 n.6 (explaining that the district court’s error in
`treating a statutory objection as jurisdictional was harm-
`less because 12(b)(1) and 12(b)(6) motions are reviewed un-
`der an analogous standard).2 On the record before us, with
`
`
`2 See also Morrison v. Nat’l Australian Bank Ltd.,
`561 U.S. 247, 254 (2010); Sioux Honey Ass’n v. Hartford
`
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`IN RE: CIRBA INC.
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`11
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`VMware having consistently relied on a single substantive
`rationale (Inc.’s lack of exclusionary rights), Inc. has not
`shown any practical difference—between a statutory, non-
`jurisdictional objection and a constitutional, jurisdictional
`objection—that would show prejudice so as to compel a de-
`termination of forfeiture of the statutory objection.
`Inc. contends there is such a difference. Citing
`Schwendimann, 959 F.3d at 1068–70, Inc. insists that a
`merely statutory defect that precludes its presence as a
`plaintiff in this case (unlike a constitutional defect) could
`be cured by altering the License Agreement, with retroac-
`tive effect to the filing of the complaint and, indeed, to the
`start of the damages period. Pet. 19–20. But this conten-
`tion concerns what is at present only a hypothetical possi-
`bility. Inc. did not attempt to effect a cure through any
`such alteration in the district court, and it has not done so
`to date (though it says that it stands ready to do so). Ac-
`cordingly, we have no factual record addressing a specific
`contract alteration and no development of, or district court
`ruling on, legal arguments about the consequences of such
`an alteration for Inc.’s rights, including whether an altera-
`tion in the circumstances of this case would come within
`the narrow holding of Schwendimann (whose facts are
`hardly matched by anything Inc. suggests occurred here in
`entering into the License Agreement). We therefore do not
`address what if any possibility of cure Inc. might have had
`or might yet have. In so stating, we are neither inviting
`nor discouraging an attempt at cure. We simply conclude
`that, on the present record, Inc. could readily have been
`dismissed for want of a statutory right to sue for the very
`
`
`Fire Ins. Co., 672 F.3d 1041, 1062 n.7 (Fed. Cir. 2012);
`Wright & Miller, 5C Fed. Prac. & Proc. Civ. § 1366 n.9 (3d
`ed.) (citing authorities for treating a Rule 12(b)(1) motion
`as a Rule 12(b)(6) motion where no prejudice results from
`the recharacterization of the procedural vehicle).
`
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`12
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`IN RE: CIRBA INC.
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`reason the district court dismissed Inc. for want of consti-
`tutional standing.
`Inc. has not demonstrated a clear and indisputable
`right to a writ directing the district court to vacate its order
`granting VMware’s motion to dismiss and motion for a new
`trial based on the court’s finding that Inc. does not have
`constitutional standing.
`Accordingly,
`IT IS ORDERED THAT:
`(1) Inc.’s petition for a writ of mandamus is denied.
`(2) Each side shall bear its own costs.
`FOR THE COURT
`
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`
`September 22, 2021
` Date
`
`
`
`
`
`
`
`