Monday, June 26, 2017

Assignment Requiring Plaintiff to Pay Transferor 100% of Gross Proceeds From Litigation Does Not Deprive Plaintiff of Standing

The court denied defendant's motion to dismiss plaintiff's patent infringement action for lack of standing because plaintiff obtained substantial rights to the patents-in-suit through its assignment from the prior owner even though it had to surrender 100% of litigation and licensing proceeds to the prior owner. "[Plaintiff's] Agreement is nearly identical to the [prior owner's] Agreement. The only difference is that the transferee must pay 100% of the gross proceeds from litigation and licensing to the transferor, rather than 50% in the [prior owner's] Agreement. Again, this is compensation for the transfer that does not reserve any control for the assignor over the Asserted Patents or their use. . . . Defendant argues that Plaintiff has no economic interest because he must surrender the gross proceeds from the litigation to [the prior owner]. However, this does not diminish Plaintiff’s rights to the Asserted Patents for the purpose of standing. Any infringement of Plaintiff’s exclusive right to make and sell the patented products would still cause Plaintiff to suffer a justiciable injury, regardless of whether he retains any damages awarded for that injury."

Agarwal v. Buchanan d/b/a Jeff Buchanan Tree Services d/b/a Buchanan Industries d/b/a Wood Chipper Safety Shield, 2-17-cv-02182 (CACD June 22, 2017, Order) (O'Connell, USDJ)

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