Rowe Int’l Corp. v. Ecast, Inc., No. 06 C 2703, 2007 WL 1438370 (N.D. Ill. May 14, 2007) (Kennelly, J.).*
Judge Kennelly denied defendants’ motion to dismiss plaintiffs’ patent infringement complaint for lack of standing. As to two patents that were not expressly assigned to plaintiffs before the suit was filed (the "Progeny Patents"), the Court used Illinois contract law to interpret the following blanket provision in the assignment agreement regarding the parent patent, which assigned the parent application and any improvements or related applications:
any and all other applications . . . which the undersigned may file . . . on said invention or improvements, and in any and all Letters Patent of the United States and foreign countries, which may be obtained on any of said applications . . . .
The Court held that this provision was unambiguous. Pursuant to this provision, the inventors assigned plaintiffs any related patents or improvements to the original application. Because the Progeny Patents were related to the parent patent, they were assigned to plaintiffs. And, therefore, plaintiffs had standing to file suit. Additionally, the Court noted that the express assignment of the Progeny Patents that plaintiffs received post-filing did not retroactively confer standing upon plaintiffs for this suit.
* You can read more about this case in the Blog’s archives.