Nano-Second Technology Co Ltd v. Dynaflex International

Filing 268

Statement of Uncontroverted Facts and Conclusions of Law Re: Defendants' Motion for Partial Summary Judgment of Tort Claims, § 292(A) False Marking Claim, and To Limit Patent Damages Period 235 by Judge Ronald S.W. Lew. SEE DOCUMENT FOR FURTHER AND COMPLETE DETAILS. (jre)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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11 NANO-SECOND TECHNOLOGY CO., )
LTD., a Taiwanese
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12 Corporation,
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Plaintiff,
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v.
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16 DYNAFLEX INTERNATIONAL,
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a California Corporation., )
17 and GFORCE Corp. d/b/a DFX )
SPORTS & FITNESS, a Nevada )
18 Corporation,
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Defendants.
)
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CV 10-9176 RSWL (MANx)
Statement of
Uncontroverted Facts and
Conclusions of Law Re:
Defendants’ Motion for
Partial Summary Judgment
of Tort Claims, § 292(A)
False Marking Claim, and
To Limit Patent Damages
Period [235]

After consideration of the papers and arguments in

21 support of and in opposition to Defendants Dynaflex
22 International and GForce Corporation’s (“Defendants”)
23 Motion for Partial Summary Judgment of Tort Claims, §
24 292(A) False Marking Claim, and To Limit Patent Damages
25 Period [235], this Court makes the following findings
26 of fact and conclusions of law.
27 ///
28 ///
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UNCONTROVERTED FACTS

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1. U.S. Patent No. 5,800,311 (“‘311 patent”),

3 entitled “Wrist Exerciser,” issued on September 1, 1998
4 to Pei-Sung Chuang (“Chuang”).

Defendants’ Statement

5 of Uncontroverted Facts and Conclusions of Law (“SUF”)
6 ¶ 8.
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2.

Based upon an executed assignment dated

8 September 10, 2010, Chuang assigned the ‘311 Patent to
9 Plaintiff.
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3.

Id. ¶ 9.

The assignment states, in relevant part,

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[Chuang has] sold, assigned, transferred, and .

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. . unto [Nano-Second Technology Co., Ltd.],

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its successors or assigns, the entire right,

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title and interest for all countries in and to

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all inventions and improvements disclosed in

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the [‘311 Patent] . . . .

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[Chuang] will testify in all legal proceedings

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and generally do all things which may be

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necessary or desirable more effectually to

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secure to and vest in [Plaintiff] the entire

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right, title and interest in and to the

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improvements, inventions, applications . . .

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hereby sold.

24 Id.
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CONCLUSIONS OF LAW
1.

“The general rule is that one seeking to

27 recover money damages for infringement of a United
28 States patent . . . must have held the legal title to
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1 the patent during the time of the infringement.”
2 Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574,
3 1579 (Fed. Cir. 1991).

A party may sue for

4 infringement occurring before it obtained legal title
5 if a written assignment expressly grants the party a
6 right to do so.

Id. at 1579 n.7. (citing, inter alia,

7 Moore v. Marsh, 74 U.S. (7 Wall.) 515 (1868) (“It is a
8 great mistake to suppose that the assignment of a
9 patent carries with it a transfer of the right to
10 damages for an infringement committed before such
11 assignment.”) (emphasis added); see also Abraxis
12 Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1367
13 (Fed. Cir. 2010).
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2.

Plaintiff did not obtain legal title to the

15 ‘311 Patent until September 10, 2010, and thus cannot
16 claim damages for patent infringement that occurred
17 prior to that date.

Plaintiff’s assignment from Chuang

18 did not grant Plaintiff the right to sue for
19 infringement occurring before September 10, 2010.
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21 IT IS SO ORDERED.
22 DATED: May 1, 2013
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HONORABLE RONALD S.W. LEW
Senior, U.S. District Court Judge

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