SAN DIEGO, October 29, 2007 – Multimedia Games Inc. (“Multimedia”), a manufacturer of interactive gaming systems, represented by Callie A. Bjurstrom, Charles A. Bird and Peter K. Hahn of Luce, Forward, Hamilton & Scripps LLP, convinced the Federal Circuit Court of Appeals to reverse the decision of the United States District Court for the Southern District of California refusing to dismiss a patent suit filed against the company.
International Gamco Inc. filed suit against Multimedia claiming that its sale and operation of the central system for the New York State Lottery infringed claims of a patent it previously sold to a third party. In connection with that sale, International Gamco reserved exclusive rights to the patent in the New York State Lottery market for the specific purpose of suing Multimedia for infringement. The patent owner did not join in the lawsuit.
In a landmark decision, the Federal Circuit held that an exclusive field of use licensee does not have standing to sue for patent infringement and that the complaint against Multimedia should have been dismissed.
“We are very pleased with the decision,” Bjurstrom said. “The Federal Circuit has sent a clear message that licensees with relatively insubstantial patent rights will not be able to file litigation without the involvement of the patent owner as a party, thereby reducing the threat of multiple lawsuits involving the same technology and the same patent.”
Hahn added, “This decision will require parties licensing patented technology to carefully negotiate their agreements and address up front what happens if a licensee wishes to litigate potential infringement and the patent owner does not.”
Clifton Lind, Multimedia’s president and chief executive officer, hailed the efforts of the Luce Forward team handling the representation of the company. “We are very pleased with the court’s ruling, and are thankful to the fine Luce Forward attorneys responsible for this great result.”
The Luce Forward legal team was led by Bjurstrom and Hahn, along with Bird who presented the case to the Federal Circuit.
Founded in 1873, Luce, Forward, Hamilton & Scripps LLP is a full-service California law firm with offices in San Diego, Carmel Valley/Del Mar, Los Angeles, Orange County, Rancho Santa Fe and San Francisco. For more information, visit www.luce.com.
