Patent Assignment’s Silence as to Past Damages Precludes Pre-Assignment Damages Regardless of Subjective Intent

The court granted defendants' motion to limit plaintiff's damages to the time period after plaintiff was assigned the patent-in-suit because plaintiff's assignment did not give it the right to sue for past infringement. "[T]he assignment is completely silent as to whether Plaintiff acquired a right to sue for infringement that occurred prior to the date of the assignment. . . . Although Plaintiff claims that [the prior owner] subjectively intended to convey rights to Plaintiff to sue for past infringement, Plaintiff points to no language in the contract supporting such intent. . . . Plaintiff further contends that because [the owner] agreed to testify in all legal proceedings in the assignment, he must have intended to allow Plaintiff to sue for past infringement. However, the contractual language makes clear that the basic purpose for his agreeing to testify is to effectuate the rights granted in the assignment, which are not retroactive. The language cannot be reasonably interpreted in the manner that Plaintiff suggests."

Nano-Second Technology Co. Ltd. v. Dynaflex International, 2-10-cv-09176 (CACD May 1, 2013, Order) (Lew, J.).