Exclusive Sublicense With Fixed Termination Date Was Not Assignment of All Rights Necessary for Standing

Case: Aspex Eyewear, Inc. v. Miracle Optics, Inc., No. 04-1265 (Fed Cir. 1/10/06)


The One Sentence Summary: The licensor retained standing to sue due to a license provision providing for reversion of the patent rights on a date certain.

What They Were Fighting About: Plaintiff Contour had licensed its patent for attaching eye-glass frames with specialized lenses to non-party Chic which in turn assigned its rights to plaintiff Aspex. Defendant challenged Contour's standing, claiming that it had assigned all rights under the patent to Chic.

Federal Circuit Holdings:

• Contour had standing to sue. Contour had retained the right to sue for infringement of the patent because its retention of a reversion was not an assignment of all rights under the patent. Chic did not have all rights in the patent because the assignment expired on a date certain (after the expiration of a fixed time period).


• The district court should consider whether non-party Chic was a necessary party.