Facts

This case involves alleged patent and trademark infringement between a plaintiff and defendant who share the same name, involving enmeshed parties, several agreements and a note. Plaintiff, NextEngine Inc., is a New York based corporation. Defendant, NextEngine Inc., a California-based company, is involved in the research, development, manufacturing and sale of three-dimensional laser scanners. Its flag ship product is the "3D Ultra HD" laser scanner. During the course of business and to protect the laser scanner's technology, character mark and logos, defendant obtained several patent and trademark registrations (IP). Between 2002 and 2005, Bigfoot Ventures Ltd made a series of loans to defendant that used the IP as collateral. This series of loans was later restructured and included several documents: a 2008 promissory note; an assignment and license agreement; a share mortgage agreement; a shareholders agreement; a mutual release agreement; and a pledge agreement. A series of lawsuits ensued starting with Bigfoot suing defendant for breach of the 2008 promissory note. As for this particular case, plaintiff initiated the action proposing that, as a result of the purported trademark and patent assignments, plaintiff had become the IP's owner. At issue was the effect of several agreements on the ownership of the subject IP. The parties stipulated to a bench trial and agree that the material facts were undisputed.

PLAINTIFF'S CONTENTIONS: Plaintiff contended that the 2008 agreements validly assigned defendant's IP to plaintiff, giving plaintiff the right to sue for infringement.

DEFENDANTS' CONTENTIONS: Defendant contended that plaintiff was merely a custodian of the rights and held them only as collateral for the loan.

Result

Generally, plaintiff could only establish standing to sue if it established that the 2008 loan agreement created an assignment or provided an exclusive license. However, the court found that, at best, the 2008 loan agreements did not grant any rights beyond that of a secured creditor. Therefore, plaintiff failed to establish standing for any of its claims and therefore its request for relief was denied.