Owning a Design Patent Is Enough to Sue, Court Tells Treadmill Inventor
Photo: julianestanczyk / Pixabay
Patent ownership and inventorship are two different things, and a settlement that hands over one does not promise the other. That was the core of an order issued on 22 October 2026 by Judge Eric Komitee, sitting in the federal court in Brooklyn (E.D.N.Y.), in Astilean v. Woodway USA, Inc., No. 22-cv-7993.
The dispute concerns US Design Patent D736,866, which protects the ornamental design of a curved, non-motorized treadmill sold by Woodway. Aurel Astilean, who runs Speedfit LLC, has long said he invented that treadmill and shared a prototype with Woodway years ago. Woodway disputes this.
Background
Speedfit and Astilean sued Woodway in 2013 and 2017, partly to correct inventorship on several patents, including the D736,866 design. Before trial in the earlier case, the parties signed a settlement. Woodway agreed to assign the design patent to Speedfit, and it did. The agreement also had a cooperation clause and mutual no-challenge, non-disparagement, confidentiality and release terms.
Astilean then returned to court. In his view, the cooperation clause obliged Woodway to have him listed as an inventor, because he believed he could not sue third parties for infringing the design unless he was listed.
The ruling on inventorship
The court called that argument a conflation of ownership and inventorship. Citing Beech Aircraft v. EDO, it explained that inventorship asks who actually conceived the claimed subject matter, while ownership asks who holds legal title. Assignees, and exclusive licensees holding all substantial rights, may sue in their own name. Speedfit, as assignee, already had what it needed to enforce the design patent.
Astilean also worried that accused infringers might attack the patent for failing to name him as inventor. The court accepted that nonjoinder of a true inventor can invalidate a patent if proved by clear and convincing evidence. But the settlement assigned the patent "as is," with no warranty of validity or enforceability, so that risk was his to bear. The court granted Woodway summary judgment on Astilean's claims for breach, rescission and an injunction.
The rest of the order
The court dismissed Woodway's president from the case for lack of personal jurisdiction. It declined to stretch New York's "closely related" doctrine to bind an officer who signed only on the company's behalf.
On Woodway's own claims, the court found only one breach: filing the confidential settlement on a public docket in another case. It refused to order specific performance, since the document was already sealed. It found no breach of the no-challenge clause, reading "challenge" to mean a formal legal challenge rather than statements in unrelated filings, and ordered Woodway to show cause by 29 October why summary judgment should not go the other way on the remaining claims.
Why it matters
Design patents are often traded in settlements, especially in product categories where rivals sell look-alike goods. Parties that care about credit as inventors, or about the patent's future validity, should say so expressly in the agreement. A general cooperation clause will not fill the gap, and an "as is" assignment leaves the buyer carrying the validity risk.
The distinction exists in Indonesia too. Indonesia protects designs under a separate Industrial Design Law (Law No. 31 of 2000), and its register records both the designer and the right holder, which may be different people or companies.
Sources
Do you or your clients need trademark, patent, annuity or industrial design work in Indonesia? We handle filings, prosecution and renewals, with updates in English. Email us for a quote.
Contact UsIf you enjoyed this article on our portal, you can buy me a coffee via the PayPal link below.
PayPal
