Who can sue for patent infringement? BOBCAR v. AARDVARK

A patent is a set of exclusive rights granted by a government to an inventor of a new invention. To be granted a patent an inventor must file a patent application which demonstrate the invention meets all the requirements to be granted a patent. In the United State, the United States Patent and Trademark Office reviews patent applications. If a patent application demonstrates that an invention is new, useful and not obvious than an inventor can be granted a patent on the invention. A patent gives the patent owner the exclusive right to make, use, sell and import the invention in the United States. If someone other than the patent owner attempts to exercise one of these exclusive rights that can be considered patent infringement. A patent owner can file a complaint with a court for an injunction to stop patent infringement and to recover monetary damages for patent infringement which has occurred.

A patent is a type of intellectual property. Like any kind of property, a patent can be bought and sold. In the context of patents, selling a patent is called an assignment. Frequently an inventor will assign their patent to a company that is better equipped to manufacture and sell the patented invention.

Once an inventor assigns a patent to a company, that company is granted all the rights of the patent, including the right to sue for patent infringement. It should be noted that the company must carefully document the assignment and retain any paperwork related to the assignment. Assignments can be recorded with the United States Patent and Trademark Office, but it is not a requirement. If a company purchases a patent from an inventor and sues for patent infringement the company will have to prove that it is the rightful owner of the patent to demonstrate that it has standing to sue for patent infringement. Standing, in law, is the requirement that a person who brings a lawsuit be a proper party to request adjudication of the particular issue involved. If a purchaser of a patent cannot demonstrate that they were assigned the patent by the inventor, then the purchaser cannot demonstrate that they have standing to sue for patent infringement and the lawsuit can be dismissed.

A case which demonstrates the importance of documenting the assignment of a patent is BOBCAR MEDIA, LLC, v. AARDVARK EVENT LOGISTICS, INC., 1:16-cv-00885 (S.D.N.Y. 2016). This case revolves around patents related to promotional vehicles, specifically trucks that serve as mobile advertising. The plaintiff owns several patents for mobile advertising vehicles, some of those patents were purchased from the original inventors. The plaintiff sued the defendant for operating vehicles which allegedly infringed on patents owned by the plaintiff. The defendant moved to have the case dismissed for lack of standing, because the plaintiff did not prove ownership of several of the patents.

The District Court found that during fact discovery in the case, the plaintiff did not produce any documents constituting the written assignment of the patents at issue from the inventors to the plaintiff. During depositions the plaintiffs witnesses stated they didn’t know the location of the assignment contracts for the patents. The plaintiff was adamant that the contracts existed but could not produce them.

The District Court gave the plaintiff 10 days to produce the assignment contracts for the patents or to get the inventors named in the patent to join the case.

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