Context:
- A.L.M. Holdings and Ergon Asphalt & Emulsions Inc are the joint owners of U.S. patents relating to warm-mix asphalt paving methods and compositions.
- In 2008, they licensed certain rights under several of those patents to an exclusive licensee1, Ingevity, granting it an “exclusive”, “royalty-bearing, worldwide license” to “manufacture, have manufactured, import, use, sell, offer to sell and otherwise commercialize” licensed products.
- Under the terms of this agreement, A.L.M. and Ergon retained a right to initiate infringement proceedings against third parties over the licensed patents. They were required to inform Ingevity prior to launching any litigation, but could pursue litigation without requiring Ingevity’s participation or consent.
- In March 2024, A.L.M. sued Zydex Industries for infringement of six licensed patents in the United States District Court for the District of Delaware.
- The district court dismissed the case, agreeing with Zydex’s argument that A.L.M. lacked standing under Article III of the U.S. Constitution. A.L.M. appealed.
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Court and counsel
Panel: Circuit Judge Raymond T. Chen, Circuit Judge Tiffany P. Cunningham, and Circuit Judge Leonard P. Stark.
A.L.M. and Ergon were represented by Husch Blackwell’s Joseph Diedrich, Jeffer Ali, and Stephen Reid Howe.
Zydex was represented by Gish’s Edward Tulin, Raymond Johnson Bilderbeck, Andrew Gish, and Conor McDonough.
- A.L.M. and Ergon granted the exclusive license to MeadWestvac in 2008. After a merger and restructuring, the exclusive license was taken over by Ingevity in 2015. ↩︎