United States District Court, District of Columbia
A. HOWELL, Chief Judge
plaintiff, Paul Andrew Leitner-Wise, invents firearm
technology. Two of the plaintiffs inventions, however,
allegedly have been wrongly identified as the work of a
fellow-inventor, defendant Robert Bernard Iredale Clark.
According to the plaintiff, Clark conspired with a second
defendant, Eugene L. Flanagan III, a patent attorney, to
apply for patents that misattributed the plaintiffs
inventions to Clark. That misattribution, the plaintiff
alleges, freed defendant Southern Gun Company, Ltd.
("Southern Gun")-Clark's company-to use the
patented technology in its products without the plaintiffs
consent and without compensating the plaintiff. The plaintiff
claims that the conduct of these three defendants gives rise
to several common-law claims and requires correcting the
named inventor on two patents.
merits of the plaintiffs allegations will be for another
court to decide. None of the defendants-Clark, Flanagan, or
Southern Gun- and none of the alleged misconduct, is
connected to the District of Columbia. Thus, Flanagan's
Mot. Dismiss Am. Compl. ("Flanagan Mot. Dismiss"),
ECF No. 18, and Clark & Southern Gun's Mot. Dismiss
Am. Compl. & Mot. Summ. J. ("Joint Mot.
Dismiss"), ECF No. 19, are granted as this Court cannot
exercise personal jurisdiction over any
plaintiffs account, he is "a prolific inventor in the
field of small arms design." Am. Compl. ¶ 30, ECF
No. 16. The multitude of patents listing the plaintiff as an
inventor substantiate that claim. Id. ¶ 31.
This case, in which the pertinent events "largely
occurred in Cornwall, United Kingdom, Westminster, Maryland,
and Alexandria, Virginia," id. ¶ 13,
pertains to two such patents: (1) U.S. Patent No. 7, 735, 410
(issued on June 15, 2010) (" '410 Patent ") and
(2) U.S. Patent No. 8, 997, 622 (issued on Apr. 7, 2015)
(" '622 Patent "), id. ¶ 2.
at least 2004, the plaintiff, who is a citizen of the United
Kingdom and a resident of the District of Columbia, Am.
Compl. ¶¶ 7, 18, has been developing "a
firearm bolt assembly with a fully-supported bolt face,"
id. ¶ 35. In 2005, Clark, who, like the
plaintiff, is a citizen of the United Kingdom, id.
¶¶ 8, 19, was "contracted to manufacture parts
for prototype bolts," id. ¶ 39. On October
20, 2006, an application to patent a "Firearm Bolt
Assembly with Fully-Supported Bolt Face" was submitted
to the United States Patent and Trademark Office
("USPTO"). Id. ¶ 41; see
also U.S. Patent Application No. 11/583, 784 (filed Oct.
20, 2006) (" '784 Application "). The
application listed the plaintiff, Clark, and a third-party as
the three inventors, see '784 Application, but
was abandoned prior to the award of any patent, Am. Compl.
¶¶ 42, 56.
2008, the plaintiff was looking for a new patent attorney,
and was introduced to Flanagan, a Connecticut resident.
Id. ¶¶ 9, 43-44. Unbeknownst to the
plaintiff, Flanagan also was working with Clark on a separate
patent application. Id. ¶ 45-48. On February
23, 2009, Flanagan helped Clark apply to patent a
"Firearm Bolt." Id. ¶¶ 45-48,
61-62; see also U.S. Patent Application No. 12/390,
839 (filed Feb. 23, 2009) (" '839 Application
"). The '839 Application was a divisional
application of the '784 Application, which, according to
the plaintiff, means that the '839 Application did
"not include any subject matter" that was not
"derived from and fully supported by [the '784
Application]." Am. Compl. ¶¶ 56-58; see
also '839 Application (stating that the '839
Application is "[division of application No. 11/583,
784, filed on Oct. 20, 2006, now abandoned"). Although
the plaintiff concedes that the '784 Application was
eventually abandoned, the plaintiff alleges that the '839
Application was "filed prior to the abandonment, thereby
establishing proper continuity with [the '784
Application]." Am. Compl. ¶ 56. Nevertheless, the
'839 Application listed Clark as the sole inventor, a
consequence, the plaintiff claims, of a conspiracy between
Clark and Flanagan to avoid regulations applicable to firearm
technology invented in the United States. Id.
¶¶ 36-37, 59-60; see also '839
Application. Based on the '839 Application, Clark was
awarded, on June 15, 2010, the '410 Patent for a
"Firearm Bolt." Am. Compl. ¶ 57; see
also '410 Patent. Clark, the plaintiff alleges, had
contractual arrangements to license that patented technology.
Am. Compl. ¶ 64. The plaintiff first learned of the
'839 Application and resulting '410 Patent in 2016.
Id. ¶¶ 49, 66-67.
Flanagan was preparing a separate patent application for a
"Gas Operating Systems, Subsystems, Components and
Process." Id. ¶¶ 51-54; see
also U.S. Patent Application No. 12/694, 061 (filed Jan.
26, 2010) (" '061 Application "). The claimed
inventions were revisions to technology that the plaintiff
had previously patented. Am. Compl. ¶¶ 34, 38;
see also U.S. Patent No. 7, 461, 581 (issued Dec. 9,
2008) (patenting the plaintiffs invention of a
"Self-Cleaning Gas Operating System for a
Firearm"). Flanagan filed the new application with the
U.S. Patent Office on January 26, 2010. Am. Compl.
¶¶ 51, 54; see also '061 Application.
The '061 Application named the plaintiff and Clark as
co-inventors. Am. Compl. ¶¶ 52-53; see
also '061 Application. While the '061
Application was pending, Flanagan filed, on May 4, 2013, a
divisional application. Am. Compl. ¶¶ 71, 74;
see also U.S. Patent Application No. 13/887, 295
(filed May 4, 2013) (" '295 Application ")
(stating that the application is a "[division of
application No. 12/694, 061"). The '295 Application
also named the plaintiff and Clark as co-inventors. Am.
Compl. ¶¶ 72-73; see also '295
Application. Based on the two applications, U.S. Patent No.
8, 443, 711 (" '711 Patent") was issued on May
21, 2013 and the '622 Patent was issued on April 7, 2015.
Am. Compl. ¶ 87; see also '711 Patent;
'622 Patent. Each patent listed the plaintiff and Clark
as co-inventors and non-party Leitner-Wise Defense, Inc.
("LWDI") as the assignee. Am. Compl. ¶ 75;
see also '711 Patent; '622 Patent. The
plaintiff claims to have invented the only elements that the
'622 Patent covers, and that, notwithstanding the
plaintiffs involvement, Clark and Flanagan later conspired to
deprive the plaintiff of the '622 Patent by submitting an
application to remove the plaintiff as a named inventor. Am.
Compl. ¶¶ 80-85, 87. Again, the object of the
conspiracy was circumventing regulations applicable to
firearm technology developed in the United States and to
deprive the plaintiff of the benefit of his inventions.
Id. ¶ 80-81. Moreover, the plaintiff alleges
that although LWDI was designated as the assignee for the
'622 Patent, LWDI ended operations in 2010. Id.
¶¶ 12, 76. Finally, the plaintiff claims that he
was ignorant of the '622 Patent until 2017. M¶¶
"[t]he Defendants have conducted business in the
District of Columbia through [LWDI], including solicitation
of sales of rifles to United States Government agencies
including the United States Army and the Pentagon Force
Protection Agency." Id. ¶¶ 29. The
plaintiff provides no details about when these alleged
transactions happened. Now, according to the plaintiff,
Southern Gun, a British company owned by Clark, id.
¶¶ 10, 33, "uses" the technology claimed
in each of the '410 and '622 Patent without the
plaintiffs consent and without compensating the plaintiff,
id. ¶¶ 88-91. Moreover, "the
Defendants," through LWDI, have sold firearms containing
the '622 Patent's technology, to the Pentagon Force
Protection Agency and Presidential Airways, id.
¶¶ 92-93, and Clark and Southern Gun "have
subsequently conveyed the technology described in the
'622 and '410 Patents to foreign government entities
without permission of the United States Government,"
id. ¶ 94.
on the foregoing allegations-all of which are accepted as
true at this stage-the plaintiff instituted this action on
April 4, 2018. See Compl., ECF No. 1. After the
defendants filed motions to dismiss, see Clark &
Southern Gun's Mot. Dismiss, ECF No. 12; Flanagan's
Mot. Dismiss, ECF No. 15, the plaintiff amended his
complaint, see Am. Compl. In the Amended Complaint,
the plaintiff brought claims, under 35 U.S.C. § 256,
seeking to correct the named inventors on the '410 and
'622 Patents, see Am. Compl. ¶¶
95-110; a claim, under 35 U.S.C. § 281, alleging patent
infringement, see Id. ¶¶ 111-118; and
common-law claims for unjust enrichment, civil conspiracy,
misappropriation of intellectual property, conversion, breach
of fiduciary duty, tortious interference with business
expectancy, and legal malpractice, see Id.
¶¶ 119-155. The defendants subsequently renewed
their motions to dismiss, seeking dismissal pursuant to
Federal Rules of Civil Procedure 12(b)(1), 12(b)(2), and
12(b)(6), for lack of standing, lack of personal
jurisdiction, and the plaintiffs failure to allege any
plausible claim to relief, respectively. See
generally Flanagan Mot. Dismiss; Joint Mot. Dismiss.
two motions to dismiss are now ready for resolution.
Federal Rule of Civil Procedure 12(b)(2)
survive a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(2), the plaintiff "must make a prima
facie showing of the pertinent jurisdictional
facts." Livnat v. Palestinian Auth., 851 F.3d
45, 56-57 (D.C. Cir. 2017) (quoting First Chicago
Int'l v. United Exch. Co.,836 F.2d 1375, 1378 (D.C.
Cir. 1988)). The prima facie showing requires
specific factual allegations connecting the defendant to the
forum. First Chicago Int'l, 836 F.2d at 1378-
79. Conclusory statements and bare allegations are
insufficient. Livnat, 851 F.3d at 57. Unlike a
motion to dismiss under Federal Rule of Civil Procedure
12(b)(6), the court "may consider materials outside the
pleadings in deciding whether to grant a motion to dismiss
for lack of jurisdiction." Jerome Stevens Pharms.,
Inc. v. FDA,402F.3d 1249, 1253 (D.C. Cir.2005). Indeed,
jurisdictional arguments may be premised on the
"pleadings, bolstered by such affidavits and other
written materials as [the parties] can otherwise
obtain." Mwani v. bin Laden,417 F.3d 1, 7
(D.C. Cir. 2005). "When deciding personal jurisdiction
without an evidentiary hearing-as here-the 'court must
resolve factual disputes in favor of the plaintiff"