ORDER LIFTING STAY AND GRANTING MOTION TO DISMISS FOR LACK OF SUBJECT MATTER JURISDICTION

ROGER T. BENITEZ, District Judge.

This action concerns the alleged infringement and validity of four patents purportedly owned by Plaintiffs/Counter Defendants Wi-LAN, Inc., Wi-LAN USA, Inc., and Wi-LAN Labs, Inc. (collectively, "Wi-LAN"). On February 22, 2017, Wi-LAN filed its initial complaint. (Docket No. 1.) On November 2, 2017, Wi-LAN filed a motion for substitution of parties, wherein it represented the following:

(Docket No. 45 at p. 1.)

On March 28, 2018, while Wi-LAN's motion for substitution of parties was pending, Defendants/Counter Claimants LG Electronics, Inc., LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm U.S.A., Inc. (collectively, "LG") filed a motion to stay the action pending inter partes review. (Docket No. 106.)

On May 15, 2018, the Court denied Wi-LAN's motion for substitution of parties. (Docket No. 128.) On May 21, 2018, the Court stayed this action pending the Patent and Trademarks Office's decision on institution of inter partes review on the patents-at-issue in this case. (Docket No. 130.)

On May 23, 2018, LG filed the instant motion to dismiss for lack of subject matter jurisdiction. (Docket No. 129.) Wi-LAN did not respond to LG's motion. Because the Court finds subject matter jurisdiction lacking, the stay is LIFTED,1 and the action is DISMISSED.

LEGAL STANDARD

"It is a fundamental principle that federal courts are courts of limited jurisdiction." Stock W., Inc. v. Confederated Tribes of the Colville Reservation, 873 F.2d 1221, 1225 (9th Cir. 1989) (quoting Owen Equip. & Erection Co. v. Kroger, 437 U.S. 365, 374, (1978)). Under Rule 12(b)(1), a party can move a court to dismiss an action for lack of subject matter jurisdiction. Fed. R. Civ. Proc. 12(b)(1). In such a motion, the party asserting jurisdiction bears the burden to establish jurisdiction. See Kokkonen v. Guardian Life Ins. Co. of America, 511 U.S. 375 (1994) ("It is to be presumed that a cause lies outside [federal court] jurisdiction . . . and the burden of establishing the contrary rests upon the party asserting jurisdiction.") (internal citations omitted).

A Rule 12(b)(1) jurisdictional attack may be facial or factual. White v. Lee, 227 F.3d 1214, 1242 (9th Cir. 2000). A facial attack asserts that the allegations contained in a complaint are insufficient on their face to invoke federal jurisdiction. See Safe Air v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). A Rule 12(b)(1) motion will be granted if, on the face of the complaint, and when considered in its entirety, the complaint fails to allege facts sufficient to establish subject matter jurisdiction. Id.

In contrast, a factual attack is one that "relie[s] on extrinsic evidence and [does] not assert lack of subject matter jurisdiction solely on the basis of the pleadings." Id. (quoting Morrison v. Amway Corp., 323 F.3d 920, 924 n.5 (11th Cir. 2003)). "In resolving a factual attack on jurisdiction, the district court may review evidence beyond the complaint without converting the motion to dismiss into a motion for summary judgment." Id. (citing Savage v. Glendale Union High Sch., 343 F.3d 1036, 1039 n.2 (9th Cir. 2003)). Additionally, the court need not assume the truth of the plaintiff's allegations, and "once the moving party has converted the motion to dismiss into a factual motion by presenting affidavits or other evidence properly brought before the court, the party opposing the motion must furnish affidavits or other evidence necessary to satisfy its burden of establishing subject matter jurisdiction." Id. (quoting Savage, 343 F.3d at 1039 n.2.).

DISCUSSION

LG contends that on November 2, 2017, when Wi-LAN filed the motion for substitution of parties, it effectively admitted that it no longer had standing to assert the rights to the patents-at-issue as of June 1, 2017, when the original Wi-LAN, Inc. became Quarterhill and "transferred the right, title, and interest to all of the patents-in-suit" to non-party Wi-LAN, Inc. LG also contends that after the Court denied Wi-LAN's motion for substitution of parties, Wi-LAN has since failed to file any timely motions to seek reconsideration, join a party, or a new motion to substitute, and therefore dismissal for lack of subject matter jurisdiction is appropriate. As noted above, Wi-LAN did not oppose LG's motion to dismiss. The Court agrees with LG that subject matter jurisdiction is lacking.

"Standing to sue for infringement stems from the Patent Act, which provides: "`[a] patentee shall have remedy by civil action for infringement of his patent.'" Israel Bio-Eng'g Project v. Amgen, Inc., 475 F.3d 1256, 1264 (Fed. Cir. 2007) (quoting 35 U.S.C. § 281.) "As defined in § 100(d), `patentee' includes not only the patentee to whom the patent was issued but also `the successors in title to the patentee.'" Id. (quoting 35 U.S.C. § 100(d)). It is well established that a patentee or his assignee may grant and convey all or part of the ownership interest in the patent to another. Id. (citing Vaupel Textilmaschinen KG v. Meccanica Euro Italia, SPA, 944 F.2d 870, 873 (Fed. Cir. 1991)). Generally, a claim for patent infringement may only be brought by the sole owner of the patent rights or by all of the partial owners. Id. at 1264-65.

Here, LG presented evidence of Wi-LAN's own admissions to assigning all rights to all of the patents at issue in this dispute to a non-party. LG also points out Wi-LAN filed its motion for substitution of parties five months after it appears to have lost standing. Wi-LAN, the party bearing the burden of proof to demonstrate both standing and jurisdiction, has not offered any evidence to contradict LG's contentions, explain its delay in filing the motion for substitution of parties, or otherwise meet its burden to demonstrate the existence of its standing or this Court's jurisdiction. Therefore, the Court construes Wi-LAN's silence as tacit agreement to LG's contentions.

Moreover, even if Wi-LAN retained any of its rights to the patents-at-issue, it appears joinder of the newer entity non-party Wi-LAN, Inc. would nevertheless be required for subject matter jurisdiction to exist. See Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1467 (Fed. Cir. 1998) ("An action for infringement must join as plaintiffs all co-owners.") (citing Waterman v. Mackenzie, 138 U.S. 252, 255 (1891)). Accordingly, LG's motion is GRANTED and this action is DISMISSED.2

CONCLUSION

For all of the foregoing reasons, the Court LIFTS the stay in this action and finds Wi-LAN has not met its burden to establish the existence of subject matter jurisdiction. Therefore, LG's motion to dismiss for lack of subject matter jurisdiction is GRANTED, and the case is hereby DISMISSED.

IT IS SO ORDERED.