Results 1 to 1 of 1

Thread: Court Issues Permanent Injunction Against Concepts in Optics in Aspex Case

  1. #1
    Manuf. Lens Surface Treatments
    Join Date
    Aug 2002
    Location
    in Naples FL for the Winter months
    Occupation
    Other Optical Manufacturer or Vendor
    Posts
    23,240

    Redhot Jumper Court Issues Permanent Injunction Against Concepts in Optics in Aspex Case

    Press Release

    Aspex Eyewear, Inc., et al. v. Miracle Optics, Inc, et al.

    All about Clip On's, infringing “Nino Balli’ eyewear and any other magnetic clip-on eyewear which falls within the scope of claims 1 or 17 of U.S. Patient RE 37-345.”

    (Dkt#04-1265) (Fed. Cir. 2006): A License? An Assignment? (PDF, 15 pages) This case provides a bright line rule as to whether one has standing to sue after they have transferred some or all of their rights in a patent to another party. The rule is: If there is a reversionary interest, then it is not an assignment and you the original patent owner still have a right to sue (See page 11.). Contour owned United States Patent No. 6,109,747 ("the '747 Patent"). After issuance of the '747 Patent, Contour transferred some right in the '747 Patent to Chic optic. Theses rights included: 1) the exclusive right to make use and sell, 2) the first right to commence legal action against third parties for infringement of the patent and the right to retain any award of damages for actions initiated by Chic, 3) and an unfettered right to sublicense (See pg. 2). The transfer document also contained a clause stating that the agreement would expire on March 6, 2003 and no later than March 16, 2006, unless Chic exercised an option to extend. After expiration, all rights originally granted to Chic would terminate (See pg. 3.). Later Chic sublicensed to Aspex.

    Just prior to the granting of a sublicense to Aspex, Chic sued Miracle for infringement of the '747 Patent. The trial court granted summary judgment to Miracle on the basis that neither Contour nor Aspex had standing to sue (See pg. 4.).

    On appeal the Fed. Cir. reversed the trial court. The Fed. Cir. reasoned that even though Contour transferred the right to sue, and the various sub-rights associated with it (e.g., the ability to make strategic decisions regarding litigation), what is dispositive is whether there is any limit on the right to sue. Here there was an expiration date of the rights provided by Contour to Chic and Apex.
    Last edited by Chris Ryser; 02-17-2006 at 11:43 AM.

Thread Information

Users Browsing this Thread

There are currently 1 users browsing this thread. (0 members and 1 guests)

Bookmarks

Posting Permissions

  • You may not post new threads
  • You may not post replies
  • You may not post attachments
  • You may not edit your posts
  •