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Leitner-Wise v. Iredale Clark

United States District Court, District of Columbia

December 26, 2018

PAUL ANDREW LEITNER-WISE, Plaintiff,
v.
ROBERT BERNARD IREDALE CLARK, et ah, Defendants.

          MEMORANDUM OPINION

          BERYL A. HOWELL, Chief Judge

         The 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.

         The 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 defendant.[1]

         I. BACKGROUND

         By the 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.

         Since 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.

         In 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.

         Meanwhile, 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¶¶ 78-79, 86.

         Historically, "[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[2], 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.

         Based 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.[3] 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.

         Those two motions to dismiss are now ready for resolution.

         II. LEGAL STANDARD

         A. Federal Rule of Civil Procedure 12(b)(2)

         To 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" ...


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