Scope of Patent Assignment Implicates a Patent Holding Company’s Standing to Bring Infringement Suits

MHL Tek, LLC v. Nissan Motors Corp., No. 2010-1287 (Fed. Cir. Aug. 10, 2011):

Holding:

A patent holding company does not have standing to assert any of the patents-in-suit as none of the patent right was properly assigned. Slip op. at 15.

Relevant Facts:

MHL Tek filed infringement suits against numerous automobile manufacturers over U.S. Patent Nos. 5,663,496 (“the ’496 patent”), 5,741,966 (“the ’966 patent”), and 5,731,516 (“the ’516 patent”). The ’496 and the ’966 patents are divisionals of one parent application, to which the ’516 patent is not related. Slip op. at 4-5. Days after the parent application was filed, the inventors executed an assignment to Animatronics, Inc., granting “the entire right, title and interest, domestic and foreign, in and to the inventions and discoveries in [the Parent Application].” Id. at 10. A subsequent assignment by Animatronics, Inc. to McLaughlin Electronics granted “the entire right, title and interest, domestic and foreign, in and to the inventions and discoveries set forth in the [Parent] Application.” Id. at 10-11. The second assignment carved out rights to the parent application that concern the Animatronics Proprietary Inventions, which was defined separately in the assignment. Id. Prior to the infringement action, the inventors signed documents to assign the patents-in-suit to MHL Tek. During the trial, Animatronics, Inc. assigned MHL Tek the rights to the patents-in-suit as well. Id. at 11.

Comments:

Note that the Federal Circuit explained the language of the assignment, not the patent specification, controls the scope of the assignment. Slip op. at 16. Further, a patent can be found covered under the broad assignment language “inventions and discoveries in [the parent application]” when the specification of the unrelated parent application supports the claims in the patent. Id. at 19.