- OnAsset Intelligence asserted a patent for using RFID tags against Zebra Technologies in a suit in 2019
- Zebra previously filed a petition with the Supreme Court, arguing that the Federal Circuit failed to clarify what it means by “an exclusionary right.”
A case centered around a RFID patent infringement suit has reached a stage where the U.S. Supreme Court is being asked to reject its rival’s petition.
Intellectual Tech LLC, the patent-litigating arm of OnAsset Intelligence, said in a response brief filed there’s “almost 100 years” of legal precedent backing its ownership RFID patent and “nothing about this case supports deviating from this long-held precedent.”
OnAsset Intelligence asserted a patent covering a “method and system” for using RFID tags to identify and track objects against Zebra Technologies Corp. in a suit in 2019.
Case Arguments
The arguments in the petition are, if under Texas law, can a third party acting under power of attorney on behalf of and in the name of a patent owner has an independent right to grant a license to the defendant and whether the Federal Circuit erred in reaffirming its a nearly 100 year old precedent holding that a patent owner has an exclusionary right in its patent that would allow a license from a third party.
According to a story published by Law360, U.S. District Judge Alan Albright of the Western District of Texas in 2022 decided that Intellectual Tech had no exclusionary right to the patent under the terms of a loan that OnAsset Intelligence made and later defaulted on with Main Street Capital.
The Federal Circuit in May unanimously reversed that finding, ruling that the case lacked constitutional standing as the loan deal between Intellectual Tech’s parent company and Main Street Capital Corp didn’t deprive Intellectual Tech of all exclusionary rights to the patent.
Zebra Side
Zebra Technologies then filed a petition with the Supreme Court, arguing that the Federal Circuit failed to clarify what it means by “an exclusionary right.” The case is Zebra Technologies Corp. v. Intellectual Tech LLC, case number 24-114, in the U.S. Supreme Court.
Intellectual Tech is contending that the Federal Circuit ruling should stick “as this court said almost 100 years ago, the patent owner that assigns less than all exclusionary rights in the patent still suffers an ‘injury to his exclusive right by an infringer’.” Intellectual is basing their arguments on a 1926 Supreme Court ruling, Independent Wireless Telegraph Company v. Radio Corporation of America.
According to the 1926 decision, written by former U.S. President and Chief Justice William Howard Taft, “the owner of a patent who grants to another the exclusive right to make, use, or vend the invention which does not constitute a statutory assignment holds the title to the patent in trust for such a licensee, to the extent that he must allow the use of his name as plaintiff.”
Texas Law
Further, Texas-based Intellectual Tech argued the lower court ruling still needs to determine if Zebra Technologies has any standing due based on their belief they should not have received a license in the first place.
The company cited that under Texas law, Main Street does not have an independent right to license or assign the patent.
“Even the district court below had to acknowledge that, ‘it is more accurate to say that, on default, Main Street has an unfettered right to license and/or assign,” the Intellectual Tech brief states.