Fixed-Term License Cannot be Assignment for Purposes of Transferring Standing to Sue

The U.S. Court of Appeals for the Federal Circuit has held that a termination provision in the license agreement precludes the agreement from being held the equivalent of an assignment for purposes of determining who has standing to sue. Aspex Eyewear, Inc. v. Miracle Optics, Inc., Case No. 04-1265 (Fed. Cir. Jan. 10, 2006) (Lourie, J.).

Contour and Aspex brought suit under patents originally assigned to Contour by the inventor but that were later the subject of a broad license conveying nearly all rights in the patent, including (purportedly) the right to enforce the patent in court. The defendant argued the grant of rights from Contour to a third party (Chic Optic) was so broad that Contour had effectively lost the right to sue under the patent. The district court agreed, holding that the license (signed before this suit was filed) stripped Contour of standing to sue.