IP Law Daily Issues in chains of title precluded patent infringement suit against 25 publishers
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Thursday, December 1, 2016

Issues in chains of title precluded patent infringement suit against 25 publishers

By Mark Engstrom, J.D.

Patent assertion entity CTP Innovations lacked standing to sue 25 publishers that allegedly infringed two printing patents that CTP purportedly owned by assignment, the federal district court in Baltimore has ruled. Because an assignment of the patents from Banta Corp. to R.R. Donnelley & Sons "nunc pro tunc" did not validate prior purported transfers from R.R. Donnelley to Media Innovations and from Media Innovations to CTP, neither patent was owned by CTP when the lawsuit was filed. The court thus dismissed the suit for lack of subject matter jurisdiction based on CTP’s lack of standing (In re CTP Innovations LLC Patent Litigation, November 30, 2016, Garbis, M.).

The inventors of the patents in suit (U.S. Patent Nos. 6,611,349 and 6,738,155) assigned title and all substantive rights in those patents to Banta Corp. in 1999. Several years later, R.R. Donnelley acquired Banta but not its assets (patent or otherwise) and thereafter "assigned" the rights in the patents in suit to Media Innovations, which "assigned" those rights to CTP. However, Media Innovations could not transfer any rights to CTP because it had not obtained any rights from R.R. Donnelley (which owned Banta but not its patents). Subsequently, Banta executed a written assignment of the patents in suit to R.R. Donnelley—nunc pro tunc—as of January 3, 2013 (i.e., after the assignment from the inventors to Banta but prior to the purported assignment from RR. Donnelly to Media Innovations).

CTP argued that Banta’s nunc pro tunc assignment to R.R. Donnelley "retroactively clos[ed]" the gaps in the chain of title between R.R. Donnelley and Media Innovations and between Media Innovations and CTP. The court disagreed. A nunc pro tunc agreement could not be used to "rewrite history," the court explained, to "retroactively provide standing" for a patent infringement suit.

CTP also argued that the assignments from R.R. Donnelley to Media Innovations and from Media Innovations to CTP were for an "expectant interest," and for that reason, title was "automatically" transferred in those assignments as a result of the assignment from Banta to R.R. Donnelley. However, the language of the purported assignments, which used the present tense, was based on the assignor’s ownership of title, not on its expectation that it would acquire title in the future.

For those reasons, the court ruled that CTP did not own a valid right to sue for the infringement of the asserted patents at the time that the lawsuits were filed.

The case is No. 3:15-cv-08324-MAS-DEA.

Attorneys: Samuel F. Miller (Baker, Donelson, Bearman, Caldwell & Berkowitz, PC) for CTP Innovations, LLC. Benjamin C. White (St. Onge, Steward, Johnston & Reens, LLC) for Cenveo Corp.

Companies: Taylor Publishing Company; CTP Innovations, LLC; Ebsco Industries, Inc.; Worldwide Tickets and Labels, Inc.; Walton Press, Inc.; Geo Graphics, Inc.; Indexx, Inc.; American Printing Company; Jet Printing, LLC; Publication Printers Corp.; Command Web Offset Company, Inc.; Sandy Alexander, Inc.; F.C.L. Graphics, Inc.; Worzalla Publishing Company; Specialty Promotions, Inc.; Arandell Corp.; Valassis Communications, Inc.; Schumann Printers, Inc.; Directmail.com; Midland Information Resources; Times Printing Co., Inc.; Trend Offset Printing Services, Inc.; Ennis, Inc.; Versa Press, Inc.; Journal Graphics, Inc.; Cenveo Corp.

MainStory: TopStory Patent MarylandNews

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