NUNC PRO TUNC ASSIGNMENT DID NOT CURE LACK OF STANDING

Monday, December 5, 2016

To file a patent infringement lawsuit, the plaintiff must own the patent or have substantial rights in the patent when the lawsuit is filed.  Prior to filing its action for patent infringement, the plaintiff in In re CTP Innovations, LLC sought to cure a “break” in the ownership chain of title of the patent by having the then-current patent owner execute a nunc pro tunc assignment in May 2013, whereby the patent was retroactively assigned to an earlier point in time (January 2013) to R.R. Donnelley & Sons Co.  U.S. District Judge Marvin J. Garbis found that while the nunc pro tunc assignment retroactively assigned the patent to R.R. Donnelley, the nunc pro tunc assignment did not “retroactively effect[]” an intervening assignment executed by R.R. Donnelley in February 2013 that was necessary to cure the break in the patent ownership chain of title.  According to Judge Garbis, R.R. Donnelley did not own the patent when it executed the February 2013 assignment, and therefore could not assign what it did not have.  The Court dismissed the lawsuit for lack of constitutional standing.  Notably, the Court indicated in a footnote that had the lawsuit not been dismissed for lack of standing, the Court would have held the patents invalid under 35 U.S.C. § 101 for not claiming patentable subject matter.