United States Court of Appeals for the Federal Circuit ______________________

INTELLECTUAL TECH LLC, Plaintiff-Appellant

v.

ZEBRA TECHNOLOGIES CORPORATION, Defendant-Appellee ______________________

2022-2207 ______________________

Appeal from the United States District Court for the Western District of Texas in No. 6:19-cv-00628-ADA, Judge Alan D. Albright. ______________________

Decided: May 1, 2024 ______________________

JAMES PERKINS, Cole Schotz P.C., Dallas, TX, argued for plaintiff-appellant. Also represented by TIMOTHY J.H. CRADDOCK, GARY SORDEN.

WILLIAM R. PETERSON, Morgan, Lewis & Bockius LLP, Houston, TX, argued for defendant-appellee. Also repre- sented by KARON NICOLE FOWLER, JAMES JOHN KRITSAS, AMANDA SCOTT WILLIAMSON, Chicago, IL; BRENT A. HAWKINS, San Francisco, CA. ______________________

Before PROST, TARANTO, and HUGHES, Circuit Judges. Case: 22-2207 Document: 48 Page: 2 Filed: 05/01/2024

2 INTELLECTUAL TECH LLC v. ZEBRA TECHNOLOGIES CORPORATION

PROST, Circuit Judge. Intellectual Tech LLC (“IT”) appeals from a decision of the United States District Court for the Western District of Texas dismissing all its claims against Zebra Technologies Corporation (“Zebra”) for lack of constitutional standing. Intell. Tech LLC v. Zebra Techs. Corp., No. 6:19-cv-628, 2022 WL 1608014 (W.D. Tex. May 20, 2022) (“Opinion”). For the reasons below, we reverse and remand. BACKGROUND In 2019, IT asserted U.S. Patent No. 7,233,247 (“the ’247 patent”) against Zebra. J.A. 67. The complaint al- leged, among other things, that IT “is the owner and as- signee” of the ’247 patent. Compl., Intell. Tech LLC v. Zebra Techs. Corp., No. 6:19-cv-628 (W.D. Tex. Oct. 22, 2019), ECF No. 1 ¶ 7. Zebra first moved to dismiss the complaint for lack of standing, and the district court denied the motion. J.A. 300. Subsequently, Zebra moved for sum- mary judgment of no subject-matter jurisdiction based on IT’s purported lack of constitutional and statutory stand- ing. J.A. 309. The district court considered this a renewed motion to dismiss, granted the motion based on its deter- mination that IT lacked constitutional standing, and dis- missed all claims without prejudice. Opinion, 2022 WL 1608014. IT is the wholly owned subsidiary of OnAsset Intelli- gence, Inc. (“OnAsset”). Rule 7.1 Corporate Disclosure Statement, Intell. Tech LLC v. Zebra Techs. Corp., No. 6:19-cv-628, (W.D. Tex. Oct. 22, 2019), ECF No. 2. Here, the history of OnAsset’s agreements with a lender, Main Street Capital Corporation (“Main Street”), provides im- portant background regarding IT’s creation and its legal interest in the ’247 patent. We first outline these agree- ments and then describe the underlying district court deci- sion. Case: 22-2207 Document: 48 Page: 3 Filed: 05/01/2024

INTELLECTUAL TECH LLC v. 3 ZEBRA TECHNOLOGIES CORPORATION

I In 2011, OnAsset granted Main Street a security inter- est in its patents—including the ’247 patent, which was as- signed to OnAsset at the time—as part of a loan agreement. J.A. 229–39 (2011 Patent and Trademark Security Agree- ment); J.A. 477–89 (Security Agreement); J.A. 399–466 (Loan Agreement). The terms gave Main Street certain rights that it could exercise upon OnAsset’s default of the loan. In 2013, Main Street notified OnAsset that it was in default. J.A. 510–12. Subsequently, in 2017, OnAsset and Main Street en- tered into a forbearance agreement. J.A. 162. At the same time, IT was formed as OnAsset’s subsidiary, and OnAss