Property, intangible

a blog about ownership of intellectual property rights and its licensing

What Nunc Pro Tunc Means

Patent standing cases are a dime a dozen, so I don’t necessarily blog them.  But Epic Sporting Goods, Inc. v. Fungoman LLC gives a really good summary of the legal significance of an assignment nunc pro tunc, so I thought I’d share it.

On August 1, 2006 the asserted patent (U.S. Patent 7.082,938 titled “Baseball Fielding Practice Machine”) issued to Thomas Wilmont.  Plaintiff Epic Sporting Goods, Inc. filed a patent infringement lawsuit on November 30, 2009.  There was a nunc pro tunc assignment of the patent dated November 16, 2009, two weeks before the suit was filed, but it was executed on December 11, 2009, 11 days after the suit was filed.  Good enough?
No, as is well-settled by the Federal Circuit:
As a general matter, parties should possess rights before seeking to have them vindicated in court. Allowing a subsequent assignment to automatically cure a standing defect would unjustifiably expand the number of people who are statutorily authorized to sue. Parties could justify the premature initiation of an action by averring to the court that their standing through assignment is imminent. Permitting non-owners and licensees the right to sue, so long as they eventually obtain the rights they seek to have redressed, would enmesh the judiciary in abstract disputes, risk multiple litigation, and provide incentives for parties to obtain assignment in order to expand their arsenal and the scope of litigation. Inevitably, delay and expense would be the order of the day.
So what is a nunc pro tunc assignment for?
Plaintiff argues state law governs the effective date of the Assignment and that, under Alabama law, the effective date of the Assignment is November 16, 2009. The Court and Defendants agree with Plaintiff that state law generally governs the validity and enforcement of a contract and that the Court must look to state law to determine the ownership of a patent. Plaintiff’s argument is misplaced, however, as it fails to recognize the distinction between the effective date of the Assignment as it relates to (1) whether the Assignment is valid and enforceable as between the parties (a matter of state law), and (2) whether Plaintiff had Article III standing to assert a cause of action for patent infringement (a matter of federal law).
Case dismissed without prejudice under Federal Rule of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction.

Epic Sporting Goods, Inc. v. Fungoman LLCNo. 09-1981 (W.D. La. Feb. 10, 2011).

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