Case Cite

Nano-Second Technology Co. v. Dynaflex International, No. 2:10–cv-09176-MAN, slip op., (C.D. Cal. May 1, 2013).

IPDQ Commentary

The court in Nano-Second ruled an assignment must contain an express provision allowing the assignee to sue for infringement occurring prior to the date of the assignment in order for the assignee to have standing to sue for pre-assignment damages.

Case Summary

Plaintiff sued alleging several claims, including patent infringement. Id. Slip Op. at 2. Defendant moved for summary judgment, seeking to limit the patent damages period. Id. Slip Op. at 4, 12.

Defendant moved for summary judgment as to patent damages prior to Sept. 10, 2010, arguing Plaintiff did not have legal title to the patent-in-suit prior to that date. Id. On that date, the inventor had assigned the patent to Plaintiff. Id. Slip Op. at 13. The assignment including the following language:

[The assignor] sold, assigned, transferred, and . . . unto [Plaintiff] its successors or assigns, the entire right, title and interest for all countries in and to all inventions and improvements disclosed in the [patent in suit]. Id. Slip Op. at 13

The court concluded the foregoing language did not transfer the right to sue for infringement occurring prior to the date of assignment to the Plaintiff. Id. Slip Op. at 14 (“However, the assignment is completely silent as to whether Plaintiff acquired a right to sue for infringement that occurred prior to the date of the assignment, “).

“The general rule is that one seeking to recover money damages for infringement of a United States patent . . . must have held the legal title to the patent during the time of the infringement.” Id. Slip Op. at 12 quoting Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991). The court also cited Arachnid and other case law for the proposition that, a party may sue for infringement if a written assignment expressly grants the party a right to do so. Id. “It is a great mistake to suppose that the assignment of a patent carries with it a transfer of the right to damages for an infringement committed before such assignment.” Id. Slip Op. at 12-13 quoting Moore v. Marsh, 74 U.S. 515 (1868).