Yesterday, Chief Judge Sue L. Robinson issued an interesting decision addressing the ability of what is alleged to be a straw plaintiff’s attempt to prosecute (and fund) an infringement action on behalf of another. The defendants KBC and others claimed that plaintiff was assigned rights to the patent-in-suit solely “to fund and pursue this suit” on behalf of the non-party assignor, who KBC contended was an indispensable party. According to KBC, such an assignment is “champertous and void.”
The Court rejected this argument based on a supplemental brief filed by plaintiff that contained affidavits of the non-party assignor and the original inventors. In those affidavits, the non-parties agreed to be bound by the instant litigation and to refrain from initiating any other actions against the same defendants. The Court found this statement constituted a renunciation of any residual rights to the patent.
Thus, when pursuing or facing a 12(b)(7) motion, an assignor’s (or would-be assignor’s) testimony can be dispositive.
Related Opinions Issued Yesterday: