Background

• Florida Supreme Court addresses whether Florida recognizes a bright-line rule distinguishing assignment from sublicense in a patent license transfer, based on Eleventh Circuit certified question in a patent dispute between Nordion/Best and Rad Source.
• Core issue centers on transfer of the licensee’s entire interest save for one day and whether that constitutes an assignment or a sublicense.
• License prohibits assignment without consent; Nordion may sublicense; Nordion and Best engaged in a post-consent attempt to transfer, ultimately without Rad Source’s consent.
• District court treated Nordion-to-Best transfer as an assignment; Eleventh Circuit certified the question and discussed potential assignment or sublicense characterization.
• Court analyzes Florida contract-law factors, including the agreement’s language, subject matter, and whether substantial rights were transferred, without applying a strict bright-line test.
• Court ultimately holds that Florida has no bright-line rule and leaves ultimate characterization to the Eleventh Circuit based on case-specific factors.

Issues

Key Cases Cited

• C.N.H.F., Inc. v. Eagle Crest Dev. Co., 128 So. 844 (Fla. 1930) (form vs. legal effect; assignment’s legal effect governs)
• Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336 (Fed. Cir. 2006) (exclusive license may be tantamount to an assignment if all substantial rights conveyed)
• Waterman v. Mackenzie, 138 U.S. 252 (Supreme Court) (transfer of patent rights depends on legal effect, not label)
• Lauren Kyle Holdings, Inc. v. Heath-Peterson Construction Corp., 864 So.2d 55 (Fla. 5th DCA 2003) (real property context; distinguishable facts; not controlling for patent licenses)
• Continental Casualty Co. v. Ryan Inc. Eastern, 974 So.2d 368 (Fla. 2008) (distinguishable subrogation context; unpersuasive for this issue)