Taylor v. Taylor Made Plastics, Inc. , 565 F. App'x 888 ( 2014 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
JAMES R. TAYLOR,
Plaintiff-Appellant,
v.
TAYLOR MADE PLASTICS, INC.,
Defendant-Appellee.
______________________
2014-1212
______________________
Appeal from the United States District Court for the
Middle District of Florida in No. 8:12-cv-00746-EAK-AEP,
Judge Elizabeth A. Kovachevich.
______________________
Decided: May 9, 2014
______________________
JAMES R. TAYLOR, of St. Petersburg, Florida, pro se.
AMY L. DRUSHAL, Trenam, Kemker, Scharf, Barkin,
Frye, O’Neill & Mullis, P.A., of Tampa, Florida, for de-
fendant-appellee. With her on the brief was ADAM S.
BUTKUS.
______________________
Before DYK, REYNA, and TARANTO, Circuit Judges.
2 TAYLOR v. TAYLOR MADE PLASTICS, INC.
PER CURIAM.
James Taylor (James T.) appeals the dismissal of his
patent infringement suit by the United States District
Court for the Middle District of Florida. The district court
held that James T. lacked standing because he was not
the sole owner of the patent and his co-owner did not join
the suit. We affirm.
BACKGROUND
James T. is the inventor of U.S. Patent No. 5,806,566,
which is directed to a “storm drainage conduit plug and
sealing band therefor.” U.S. Patent No. 5,806,566 (’566
patent) [54] (title). The invention is essentially an elastic
plug that fits into the open end of a storm drainage con-
duit or sewer pipe. The patent explains that such a plug is
often necessary to prevent dirt and debris from entering
the pipe opening during installation at a construction site.
James T. is the inventor of several patents in this area,
including at least three granted by the United States
Patent and Trademark Office and one granted by the
Canadian Intellectual Property Office.
At the time James T. obtained the ’566 patent, he was
married to a woman named Mary Louisa Taylor
(Mary T.). The marriage began in 1987 and lasted until
2011. The end of the marriage was marked by a conten-
tious divorce in which the parties disputed many issues,
including property ownership.
As part of its final judgment dissolving the marriage,
the Florida circuit court ordered an equitable distribution
of marital property. Under Florida law, divorce courts
have authority to divide marital assets unequally if the
court determines that an unequal distribution is warrant-
ed by certain equitable considerations. Fla. Stat.
§ 61.075(1). Assets acquired by either spouse during the
marriage are presumed to be marital assets subject to
equitable distribution. Id. § 61.075(6)(a)(1)(a), (8). These
TAYLOR v. TAYLOR MADE PLASTICS, INC. 3
may include patents. See Gulbrandsen v. Gulbrandsen, 22
So. 3d 640, 644 (Fla. Dist. Ct. App. 2009) (“[A] patent is
personal property that may be the subject of equitable
distribution when the inventor and his or her spouse
dissolve their marriage.”).
The circuit court found that the Taylors’ main assets
were the pipe plug patents, which were marital property
subject to equitable distribution. Based on its assessment
of the equities, the court ordered that proceeds “from the
production of the patents” be split unequally, with 60%
going to Mary T. and 40% to James T. J.A. 43.
On April 9, 2012, James T. filed this suit against Tay-
lor Made Plastics, Inc. (Taylor Made), alleging infringe-
ment of the ’566 patent. The complaint alleged that
James T. “owned the patent throughout the period of the
defendant’s infringing acts and still owns the patent.” J.A.
22. Taylor Made moved to dismiss the complaint, arguing
that James T. lacked standing because Mary T. was a co-
owner of the ’566 patent by virtue of the divorce, and she
had not joined the suit. The district court dismissed the
complaint on April 29, 2013.
James T. appealed the dismissal to the United States
Court of Appeals for the Eleventh Circuit, which trans-
ferred the case to this court. We have jurisdiction under
28 U.S.C. § 1295(a)(1). We review the dismissal for lack of
standing de novo. Fieldturf Inc. v. Sw. Recreational In-
dus., Inc., 357 F.3d 1266, 1268 (Fed. Cir. 2004).
DISCUSSION
The long-established rule is that a suit for patent in-
fringement must join all co-owners of the patent as plain-
tiffs. Waterman v. Mackenzie, 138 U.S. 252, 255 (1891). If
any co-owner should refuse to join as a co-plaintiff, the
suit must be dismissed for lack of standing. Id.; see also
Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1468
(Fed. Cir. 1998). But a party is not co-owner of a patent
4 TAYLOR v. TAYLOR MADE PLASTICS, INC.
for standing purposes merely because he or she holds an
equitable interest in the patent. Arachnid, Inc. v. Merit
Indus., Inc., 939 F.2d 1574, 1578–82 (Fed. Cir. 1991).
Rather, a co-owner must hold legal title to the patent. Id.
at 1579 (citing Crown Die & Tool Co. v. Nye Tool & Mach.
Works, 261 U.S. 24, 40–41 (1923)). Legal title vests initial-
ly in the inventor, and passes to others only through
assignment or other effective legal transfer. Id. at 1578
n.2.
Before the district court, James T. argued that
Mary T. was not the owner of legal title to the ’566 patent,
but he does not press that argument on appeal. 1 Instead,
James T. argues in his brief that the district court erred
in dismissing the complaint because Mary T. either (1)
joined the suit as a co-plaintiff by participating in media-
tion or (2) waived participation in the suit by entering an
agreement with James T. These arguments need not be
discussed in detail, as they are stated only in a cursory
fashion without any supporting facts. It is enough to note
that James T. has the burden of establishing standing,
Sicom Sys., Ltd. v. Agilent Techs., Inc., 427 F.3d 971, 976
(Fed. Cir. 2005), and that he has failed to carry that
burden.
AFFIRMED
COSTS
No costs.
1 In fact, James T.’s appellate brief appears to con-
cede that Mary T. is a co-owner of the patent. See Appel-
lant’s Br. 1 (“Please rule on the Lower Court’s ruling and
confirm that by virtue of the lower Court James Taylor
and Mary Louisa Taylor are the owners of said patent
mentioned in lawsuit.”).