Judge Oetken Rules Patent Owner Has Burden to Prove Assignments of Patents to Show Standing
On December 7, 2018, District Judge Oetken (S.D.N.Y.) ruled that Plaintiff Bobcar Media, LLC (“Bobcar”) had not demonstrated that it had standing to sue Defendant Aardvark Event Logistics, Inc. (“Aardvark”) for patent infringement because no competent evidence of a written assignment was produced.
The patent infringement suit involved six patents: U.S. Patent Nos. 7,942,461; 8,220,854; 8,690,215; D652,353; D678,823; and D736,675 (collectively, “the Patents-in-Suit”). On their face, the Patents-in-Suit list Benjamin Cohen and David Hazan as the inventors and Bobcar as the assignee. However, Bobcar was not able to produce the actual assignments during fact discovery. Instead, Bobcar submitted “confirmations of assignment” from the inventors, stating that they had assigned their rights to Bobcar the year the patent was granted and several years before the filing of this lawsuit.
Aardvark moved to dismiss the patent infringement claims, claiming that Bobcar did not own the Patents-in-Suit when it filed the lawsuit. The Court acknowledged that a party must have standing, a “personal interest that must exist at the commencement of the litigation,” in order to file suit. Without standing, the Court lacks subject-matter jurisdiction and must dismiss the case.
Bobcar stated that it “lost the assignment document,” but that the “confirmations” of an assignment from the inventors sufficiently demonstrate that an assignment of the Patents-in-Suit occurred. The Court found that a “written instrument” is necessary to document the transfer of patent rights. Although the Court found that the existence of the agreement can be proven through secondary evidence, the Court found that Bobcar’s evidence was inadmissible to prove that a written assignment was executed. “Nothing in the declaration, deposition testimony, or confirmation documents on which Bobcar relies addresses what happened to the original assignment document, if it ever existed at all.”
However, the Court found that even if Bobcar could not provide any admissible evidence to demonstrate that a written assignment was agreed upon, it could cure the standing issue by adding the inventors of the Patents-in-Suit as plaintiffs in the action. The Court found that the declaration, deposition testimony, and confirmation documents were sufficient to prove the existence of a verbal assignment of rights for the Patents-in-Suit. As such, Bobcar could move forward with the lawsuit if the two inventors were added as plaintiffs.