Assignment Agreement That Failed To Specifically Address Right To Sue For Past Damages Held Insufficient On Summary Judgment; Summary Judgment Granted To Limit Damages To Period After Patent Was Acquired

Plaintiff Nano-Second Technology filed a patent infringement action against Dynaflex International, GForce Corporation, d/b/a/ DFX Sports & Fitness. As part of the patent infringement action, Nano-Second alleged "that Defendants have infringed upon its '311 Patent by selling, importing, making, offering, or using wrists exercisers ("Accused Products") that fall within the scope of the claims of the '311 Patent. First Amended Complaint "FAC" ¶ 12. Further, Plaintiff alleges that these unpatented Accused Products and their packaging are marked with the patent number of the '311 Patent without Plaintiff's consent. Id. ¶¶ 21, 41. Plaintiff claims that in addition to falsely marking their Accused Products and infringing Plaintiff's patent, Defendants have contacted Plaintiff's potential and existing customers misrepresenting that they own the '311 Patent. Id. ¶ 25."

The defendants moved for partial summary judgment, including asserting that the period of damages available for plaintiff did not begin until the plaintiff acquired the patent. "Defendants assert that Plaintiff cannot seek damages for patent infringement that occurred before September 10, 2010, because plaintiff did not have legal title to the '311 Patent before that date."

In ruling on the motion, the district court addressed the general rule of ownership of the patent to seek damages for patent infringement. "The general rule is that one seeking to recover money damages for infringement of the United States patent...must have held the legal title to the patent during the time of the infringement." Arachnid, Inc. v. Merit Indus., Inc. 939 F.2d 1574, 1579 (Fed. Cir. 1991). A party may sue for infringement occurring before it obtained legal title if a written assignment expressly grants the party a right to do so. Id. at 1579 n. 7. (citing, Inter alia, Moore v. Marsh, 74 U.S. (7 Wall.) 515 (1868) ("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.") (emphasis added); See also Abraxis Bioscience, Inc., v. Navinta LLC, 625 F. 3d 1359, 1367 (Fed. Cir. 2010)."

Here, the district court found that "[t]he assignment is unambiguous and clearly transfers all interest in the '311 Patent to Plaintiff. 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, in this case...