Petition for Writ of Certiorari — Paul Andrew Leitner-Wise, Petitioner v. LWRC International, LLC, et al.

No. 18- |

IN THE

Supreme Court of the Gunited States

PAUL ANDREW LEITNER-WISE,

Petitioner,

LWRC INTERNATIONAL, LLC, et al.

Respondents.

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

PETITION FOR A WRIT OF CERTIORARI

MATTHEW AUGUST LEFANDE

ATTORNEY AT LAw PLLC

Counsel of Record

4585 North 25” Road

Arlington VA 22207

(202) 657-5800

matt@lefande.com

Attorney for Petitioner

WILSON-EPES PRINTING Co., INC. — (202) 789-0096 — WASHINGTON, D. C. 20002

QUESTIONS PRESENTED

The plain language of 35 U.S.C. § 100 (d)

identifies a “patentee” as “to whom the patent was

issued but also the successors in title to the

patentee.”

1. If the original inventor of the patent “to

whom the patent was issued” is expressly included in

the definition of “patentee” under 35 U.S.C. § 100

(d), does that person maintain statutory standing to

sue for infringement under 35 U.S.C. § 281 ([al

patentee shall have remedy by civil action for

infringement of his patent’)?

2. If the original inventor of the patent

assigns such patent to another party subject to a

royalty agreement, is such assignment, and any

subsequent assignment, contingent upon payment of

the agreed upon royalties?

3. If no royalties are ever paid in

furtherance of the assignment agreement, is the

assignment devoid of consideration, illusory and

unenforceable?

4. If an assignment of a patent misidentifies the inventor to defraud that inventor of

royalties, is that assignment void and unenforceable?

5. If the Federal Circuit is presented with

a fundamental issue of law as to the standing of an

inventor to sue under Title 35 and that court does

not provide any explanation for its affirmance, does

it violate or undermine its mandate under 28 U.S.C.

§ 1295 “to reduce the widespread lack of uniformity

1

and uncertainty of legal doctrine that exist[ed] in the

administration of patent law’? H.R. Rep. No. 97-312,

p. 23 (1981).

ill

TABLE OF CONTENTS

QUESTIONS PRESENTED... eeeee cree ee ee 1

TABLE OF CONTENTS... cee ecccceeeeeeceeeeeeeeeeeees 111

TABLE OF AUTHORITIES... ee ceeeeeeneeeeees V

PETITION FOR A WRIT OF CERTIORARL.............. 1

OPINIONS BELOW... cece cceeeeceeeeeeeeneeeeeeees 1

JURISDICTION 200... ecccceeeceteeeceeeeeeeeeneeeeeees 1

STATUTES INVOLVED... eeeccccneeeeeeneeeeeeneees 1

INTRODUCTION... eeccccccneeseeeececeeeeeeeeenaeeees 2

STATEMENT OF THE CASE 1.0.0. ceeeeeeee ees 3)

REASONS FOR GRANTING THE WRIT

I. 35 U.S.C § 100 (d) expressly confers standing

upon Leitner-Wise as the original inventor.....9

II. Leitner-Wise conferred rights to his patent but

only in consideration a royalty agreement....12

III. The subsequent assignment of Leitner-Wise's

patent was fraudulent and without

CONSICELV ATION. ..........ccccec ccc eeceeceeccececceceecsceeeeseees 14

IV. The Federal Circuit's failure to explain its

decision in obvious conflict with the plain

language of the statute perpetuates a lack of

uniformity and certainty in the administration

Of patent Law... ccc ceccecceccesceseeseeseeseeees 16

CONCLUSION ..000. eee cceeeccceeeeeceeeeeeeenaeeeceenneeeees 21

1V

APPENDIX A

Denial of the Petitioner’s Motion for Rehearing en

DANG wocecccccccccccceccucceccscuscuccscscesceceeceeceseecessessesseuss App. la

APPENDIX B

Judgment of the United States Court of Appeals

APPENDIX C

Decision of the United States District Court

TABLE OF AUTHORITIES

Cases

Abbott Laboratories v. Diamedix Corp.,

A7 F.3d 1128 (Fed. Cir. 1995)......... eee 9

Advanced Video Techs. LLC v. HTC Corp.,

879 F.3d 1314 (Fed. Cir. 2018).........0c ce. 14

Alfred EL. Mann Foundation for Science Research v.

Cochlear Corporation,

604 F.3d 1354 (Fed. Cir. 2010)...........000000.. 9-10

Alice Corp. Pty. Ltd. v. CLS Bank Int'l,

1384S. Ct. 2347 (2014)... cece eee 20, 21

Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,

841 F.3d 1288 (Fed. Cir. 2016)..........00 ee. 20

Arachnid, Inc. v. Merit Industries, Inc.,

939 F.2d 1574 (Fed. Cir. 1991).......0000000000.. 9,11

AsymmetRx, Inc. v. Biocare Medical,

582 F.3d 13814 (Fed Cir. 2009)......... ee. 9

Bank Markazi v. Peterson,

186 S. Ct. 1810 (2016)... ee cece ees 17

Board of Trustees of the Leland Stanford Junior

Univ. v. Roche Molecular Sys.,

563 U.S. 776 (2011)... cece cece eeececeeeeeeeees 10

Vi

Bowtie v. Maddox,

642 F.3d 1122 (D.C. Cir. 2011)... ee. 17

Bybee v. City of Paducah,

22 Fed. Appx. 387 (6™ Cir. 2001)..........0......0.. 17

Cascades Projection LLC v. Epson America, Inc.,

864 F.3d 1309 (Fed. Cir. 2017).......... ee. 19

Chan v. Yang,

673 Fed. Appx. 1009 (Fed. Cir. 2017)............. 18

Christianson v. Colt Industries Operating Corp.,

486 U.S. 800 (1988)... eee ceece eee eeeeeeeees 18

Couveau v. American Airlines, Inc.,

218 F.3d 1078 (9 Cir. 2000)...........ceeeeeeeeeeeee 17

Crown Die & Tool Co. v. Nye Tool & Machine Works,

261 U.S. 24 (1928)... ccc ceecceccesseeeeeeeeees 11

DaimlerChrysler Corp. v. Cuno,

547 U.S. 8382 (2006)... cece ceccc sec eceeeeeeeees 17

Derfiny v. Pontiac Osteopathic Hosp.,

106 Fed. Appx. 929 (6 Cir. 2004)... 17

Elec. Power Group, LLC v. Alstom S.A.,

830 F.3d 1350 (Fed. Cir. 2016)..........00 ec. 20

Evident Corp. v. Church Dwight Co., Inc.,

399 F.3d 1310 (Fed. Cir. 2005)........0.0c ee. 10

Vil

Gayler v. Wilder,

51 U.S. 477 (1881)... ccc ees cseceecceceeeeees 10

Griffin v. Oceanic Contractors, Inc.,

458 U.S. 564 (1982)... ccc eecceecc eee eeeeeeeees 11

Indep. Wireless Tel. Co. v. Radio Corp. of Am..,

269 U.S. 459 (1926)... eee ceecc eee eeeeeeeees 11

INS v. Yueh-Shato Yang,

519 U.S. 26 (1996)... ccc eeceecceeeeeceeeeees 21

Intellectual Property Dev. v. TCI Cablevision,

248 F.3d 1333 (Fed. Cir. 2001).........0000.0... 10-13

Leak Surveys, Inc. v. FLIR Systems, Inc.,

672 Fed. Appx. 995 (Fed. Cir. 2017)......... 18-19

LWRC International, LLC v. SIG Sauer, Inc.,

1:11-cv-00152-WDQ (D. Md. 2011)........000000.. 6

Marbury v. Madison,

5 U.S. 187 (1808)... cece cece eeceeceeceeeeeenens 17

Memorylink Corp. v. Motorola Solutions, Inc.,

773 F.3d 1266 (Fed. Cir. 2014)....0.c ee. 14

Morrow v. Microsoft Corp.,

499 F.3d 1382 (Fed. Cir. 2007).............0.... 10, 11

My First Shades v. Baby Blanket Suncare,

914 F. Supp. 2d 339 (E.D.N.Y. 2012)........ 12-13

Vill

NLRB v. Enterprise Leasing Co. Southeast, LLC,

722 F.3d 609 (4° Cir. 2018)... eee cece eee 17

Noel Canning v. NLRB,

705 F.3d 490 (D.C. Cir. 2018)... eee 17

Pratt v. Paris Gas Light & Coke Co.,

168 U.S. 255 (1897)).... cece cece ceecceeseeeceeeeee 18

Prima Tek IT v. A-Roo Co..,

222 F.3d 1372 (Fed. Cir. 2000).........0c ee. 9

Rates Technology, Inc. v. Mediatrix Telecom, Inc.,

688 F.3d 742 (Fed. Cir. 2012)... eee 19

Ridge Runner Forestry v. Veneman,

287 F.3d 1058 (Fed. Cir. 2002)... 15

SGS-Thomson Microelectronics, Inc. v. International

Rectifier Corp.,

31 F.3d 1177 (Fed. Cir. 1994).....0000 0... 10, 16

Six Wheel Corp. v. Sterling Motor Truck Co.,

50 F.2d 568 (9 Cir. 1981)... eeeeeeeecce eee ee 11

Solomons v. United States,

187 U.S. 3842 (1890)... cc cec eee eseeseeeees 10

Speedplay, Inc. v. Bebop, Inc.,

211 F.3d 1245 (Fed. Cir. 2000)..........000 ee. 9

1X

TecSec, Inc. v. International Business Machines

Corp.,

731 F.3d 13386 (Fed. Cir. 2018).......00 19

United States v. Dubilier Condenser Corp..,

289 U.S. 178 (1988) ooo cccceecceeceeeeeee ees 10

United States v. Woods,

885 F.2d 352 (6 Cir. 1989)... ceeeeeeceeeeeee 17

United States National Bank of Oregon v.

Independent Insurance Agents,

508 U.S. 489 (1998)... eee ceecceeeeceeeeeenees 11

Vadino v. A. Valey Engineers,

903 F.2d 253 (8d Cir. 1990) ...... eee 17

Vaupel Textilmaschinen KG v. Meccanica Euro Italia

SPA,

944 F.2d 870 (Fed. Cir. 1991)... eee 12

Statutes

28 U.S.C. § L295... cccccccceeeececeeeceeeeeeeeeeeeneeseaaees 1

28 U.S.C. § 1882... ccccccecccceeeeeeceeeeaaeeeeeeeeeeeeees 8

28 U.S.C. § 1888.0... cccccceececceeeeeeeeeeeeesseeneeeeeeeeees 18

28 U.S.C. § 2201... ccccccceccceeeeseeeceeeeseeeseeeeeeeees 8

85 U.S.C. § 100... eccccceeeeeeeeeees 1, 3, 9, 11, 19, 20

35 U.S.C. § 14d. cccccccccccscssssescecsesessescecsesesssecacseseseeeesees 18

35 U.S.C. § 2 Lecccccccccccscsssscscscsesesecscecscsssesevavseseseaveceees 8

35 U.S.C. § 28] cccccccccccccscscssescscsscscseescsessvseseee i, 3, 9, 20

Court Rules

FED. CIR. R. 36.0... ee ccc ececcccececectcsceceecees 19, 20, 21

Legislative Materials

H.R. REP. NO. 97-312... ccc ccecceecceeeceeeeeeeeeeeeeees 1-11, 18

Treatises

Karl N. Llewellyn, THE COMMON LAW TRADITION:

DECIDING APPEALS (1960).............cccc ccc cc cee eceeeeceseeeeenees 20

PETITION FOR A WRIT OF CERTIORARI

Petitioner seeks a writ of certiorari to review

the judgment of the United States Court of Appeals

for the Federal Circuit.

OPINIONS BELOW

The Judgment of the Court of Appeals, App.

3a, 1s reported at 711 Fed. Appx. 646. The order

denying a petition for rehearing en banc, App. la, is

unreported. The decision of the United States

District Court for the District of Maryland, App. 5a,

is unreported.

JURISDICTION

The Judgment of the Court of Appeals was

entered on February 12, 2018. App. 3a. A petition for

rehearing en banc was denied on March 380, 2018.

App. la.

STATUTES INVOLVED

28 U.S.C. § 1295

35 U.S.C. § 100 (d)

35 U.S.C. § 281

INTRODUCTION

Petitioner Paul Leitner-Wise is the named

inventor in United States Patent No. 7,461,581 (the

'581 patent). Leitner-Wise entered into a contract in

which he agreed to assign his patent rights in the

'581 patent to his employer in exchange for royalties

as a percentage of sales for the products utilizing the

patent. His employer subsequently assigned this

patent to Respondent LWRC International, LLC.

Respondent LWRC International, LLC has made

millions off of the '581 patent and even sued

Respondent Sig Sauer, Inc. for infringement.

Leitner-Wise has never received compensation for his

assignment from any party.

Any assignment of Leitner-Wise's intellectual

property was solely pursuant to, and in consideration

of, this royalty contract. At no point has either

Respondent demonstrated any additional consideration paid to excuse this contractual obligation

to pay lLeitner-Wise royalties on his invention.

Absent such a demonstration of compensation or

consideration, such subsequent assignments would

be necessarily the product of illusory contracts and

Leitner-Wise remains the rightful owner of his

invention.

35 U.S.C. § 100 (d) identifies the inventor of

the patent “to whom the patent was issued” as a

“patentee”. The plain language of 35 U.S.C. § 281

confers standing upon Leitner-Wise as such a

“patentee” to sue for infringement of his invention.

STATEMENT OF THE CASE

In 2004, Leitner-Wise invented a “Self-

Cleaning Gas Operating System for a Firearm’,

United States Patent No. 7,461,581 (the '581 patent),

a self-regulating short-stroke piston operating

system for AR-15 type self-loading rifles. Leitner-

Wise is the founder of the Leitner-Wise Rifle

Company, Inc., a Virginia Corporation known as

LWRC formed for the purposes of manufacturing and

selling rifles of his design. In 2005, Leitner-Wise

sold LWRC and entered into an Employment

Agreement with the new owners of the company.

Such Employment Agreement provided

Leitner-Wise would be paid a royalty of one half of

one percent on the net sale price of each product

containing the invention. App.6a-7a. The agreement

further provided payment of royalties would not be

withheld or terminated for any reason. Id.

Leitner-Wise left employment with LWRC. on

October 31, 2006. On that date, Leitner-Wise

assigned the pending '581 patent to LWRC. Such

assignment was made solely in furtherance of the

royalty agreement described above. Such

consideration for the assignment was the ongoing

compensation due to Leitner-Wise described above.

Following cessation of his employment with

LWRC, unknown persons removed all copies of

Leitner-Wise's contracts from his possessions at the

company's offices and all copies of the employment

agreement were thereafter believed by Leitner-Wise

to be lost. On information and belief, such removal of

the contracts from Leitner-Wise's possessions was

intended to deprive him of evidence of this

Employment Agreement and the residual benefits of

the agreement following his departure from LWRC.

On April 18, 2008, LWRC. assigned the '581

patent to Respondent LWRC International, LLC.

Such assignment falsely identified the inventor as

the ASSIGNOR, Leitner-Wise Rifle Company, Inc.

Because of the false representations therein, the

assignment was defective on its face. Because of the

false representations therein, the assignment was,

and is, null and void. Such (re-)assignment in 2008

was made without the knowledge or authority of the

inventor, Leitner-Wise. Such (re-)assignment in

2008 was made without due consideration of the

existing compensation agreement with royalties due

to Leitner-Wise.

On information and_ belief, such false

identification of the inventor within the 2008

assignment was for the sole purpose of avoiding

disclosure of Leitner-Wise's ongoing right to royalties

on the patent and to further deprive Leitner-Wise of

the residual benefits of his Employment Agreement

with LWRC which survived his termination of

employment.

On January 18, 2011, Respondent LWRC

International, LLC filed suit in the United States

District Court in Maryland against Respondent SIG

Sauer, Inc. Within this lawsuit, Respondent LWRC

International, LLC alleged, inter alia:

6. LWRCI is the owner of United

States Patent No. 7,461,581 (‘the '581

patent’), entitled “Self-Cleaning Gas

Operating System For A Firearm” and has the

right to sue for infringement and _ collect

damages for such infringement...

7. Defendant Sig Sauer has been

and is infringing, contributing to the

infringement of, and/or inducing’ the

infringement of the '581 patent by, among

other things, making, using, selling, and/or

offering for sale autoloading rifles with their

associated gas operating system, including

rifle models #SIG516 PATROL and #SIG516

PRECISION MARKSMAN, ~ within — the

territorial boundaries of the United States

and this judicial District without the consent,

license or authorization of LWRCI, and will

continue to do so unless enjoined by this

Court.

8. Upon information and_ belief,

Defendant Sig Sauer's infringement of the '581

patent has been and is willful.

Complaint, LWRC International, LLC v. SIG Sauer,

Inc., 1:11-cv-00152-WDQ (D. Md. 2011).

On information and belief, attorneys for, or

employees of, Respondent SIG Sauer, Inc. in the

course of investigating Respondent LWRC

International, LLC's claims in the 2011 case,

discovered the fraud committed in the 2008

assignment of the '581 patent. On information and

belief, attorneys for, or employees of, Respondent

SIG Sauer, Inc. in the course of investigating

Respondent LWRC International, LLC's claims in

the 2011 case determined that the 2008 assignment

of the '581 patent was invalid. In Respondent SIG

Sauer, Inc.'s Answer and Counterclaim, SIG claimed

the '581 patent to be invalid. On information and

belief, attorneys for Respondent SIG Sauer, Inc. then

informed Respondent LWRC International, LLC of

the evidence of the fraud committed in the 2008

assignment of the '581 patent and the now evident

mutual infringement of Leitner-Wise's patent. On

information and belief, the Respondents conspired to

discontinue such litigation amicably as to avoid

further disclosure of the fraudulent 2008 assignment

and to continue such infringement unimpeded.

On June 17, 2011, the Respondents stipulated

to a protective order before the United States District

Court. On information and belief, the Respondents

employed such protective order for the sole purpose

of protecting the fraudulent assignment from public

disclosure and from disclosure to Leitner-Wise. On

information and belief, such stipulation to the

protective order was an _ affirmative act in

furtherance of the conspiracy between the

Respondents to hide the fraudulent 2008 assignment

from the public and Leitner-Wise and to continue

their mutual infringement on the '581 patent. On

August 1, 2011, the Respondents stipulated to the

dismissal of their case before the United States

District Court. On information and belief, such

stipulation to the dismissal was an _ additional

affirmative act in furtherance of the conspiracy

between the Respondents to hide the fraudulent 2008

assignment from the public and Leitner-Wise and to

continue their mutual infringement on the '581

patent. Neither Respondent has ever paid Leitner-

Wise for the value received from the ongoing use of

this intellectual property.

In late November 2014, an attorney working

for Leitner-Wise on immigration matters, discovered

a copy of the lost Employment Agreement. The

attorney later provided the agreement to Leitner-

Wise. Leitner-Wise filed this lawsuit in the United

States District Court for the District of Maryland on

June 29, 2016, asserting jurisdiction under 35 U.S.C.

§ 271, 28 U.S.C. § 13832 and 28 U.S.C. § 2201.

Leitner-Wise asserted claims for Patent Infringement, Unjust Enrichment and Breach of Contract.

Both Respondents moved for summary dismissal on

September 6, 2016. Leitner-Wise timely opposed

both Motions. The District Court granted summary

dismissal on February 28, 2017. Leitner-Wise timely

appealed.

The Federal Circuit ordered briefing and

conducted an oral argument on February 7, 2018.

Five days later, the Federal Circuit affirmed without

opinion. lLeitner-Wise made a timely petition for

rehearing. That petition was denied again without

opinion on March 380, 2018.

REASONS FOR GRANTING THE WRIT

I. 35 U.S.C § 100 (d) expressly confers

standing upon Leitner-Wise as_ the

original inventor.

“The Patent Act of 1952 provides that a civil

action for infringement may be brought by ‘a

patentee.” Abbott Laboratories v. Diamedix Corp.,

47 F.8d 1128, 1182 (Fed. Cir. 1995) (quoting 35

U.S.C. § 281). “The statute defines 'patentee' to

include the party to whom the patent was issued and

the successors in title to the patent, 35 U.S.C. § 100

(d), and has been interpreted to require that a suit

for infringement ordinarily be brought by a party

holding legal title to the patent.” Abbott

Laboratories, 47 F.3d at 1132 (citing Arachnid, Inc.

v. Merit Industries, Inc., 939 F.2d 1574, 1578-79

(Fed. Cir. 1991)). Accord, AsymmetRx, Inc. v.

Biocare Medical, 582 F.3d 1814, 13818 (Fed Cir.

2009).

Leitner-Wise 1s not a successor or predecessor

licensee. See Speedplay, Inc. v. Bebop, Inc., 211 F.3d

1245 (Fed. Cir. 2000) and Prima Tek II v. A-Roo Co.,

222 F.8d 1872 (Fed. Cir. 2000) (both cases only

addressing standing of successor licensees). He is

the original inventor and a patentee as named as

such under 35 U.S.C. § 100 (d). The majority of

authorities which have been recited in this case

speak to the ability of a predecessor licensee to

maintain standing. See Alfred E. Mann Foundation

for Science Research v. Cochlear Corporation, 604

F.3d 13854, 13859 (Fed. Cir. 2010) (“[t]ypically, we are

confronted with cases in which an exclusive licensee

sues an accused infringer, and we must decide

whether the licensee has been granted rights

sufficient to confer standing.”) See also SGS-

Thomson Microelectronics, Inc. v. International

Rectifier Corp., 31 F.8d 1177 (Fed. Cir. 1994)

(unpublished case primarily relied upon by the

District Court to find Leitner-Wise's lack of standing,

also involving the standing of a successor assignee,

not an inventor). None of these cases negate the

express statutory standing of the original inventor,

particularly where he asserts an ongoing interest in

royalty payments on his invention. “[R]ights in an

invention belong to the inventor.” Board of Trustees

of the Leland Stanford Junior Univ. v. Roche

Molecular Sys., 563 U.S. 776, 786 (2011) (quoting

Gayler v. Wilder, 51 U.S. 477, 493 (1851) (‘the

discoverer of a new and useful improvement is vested

by law with an inchoate right to its exclusive use,

which he may perfect and make absolute by

proceeding in the manner which the law requires’);

Solomons v. United States, 137 U.S. 342, 346 (1890)

(“whatever invention [an inventor] may thus conceive

and perfect is his individual property”); United

States v. Dubilier Condenser Corp., 289 U.S. 178, 188

(1933) (an inventor owns “the product of [his]

original thought”). “As the grantee of exclusionary

rights, this plaintiff is injured by any party that

makes, uses, sells, offers to sell, or imports the

patented invention.” Morrow v. Microsoft Corp., 499

F.3d 138382, 13840 (Fed. Cir. 2007) (citing Hvident

Corp. v. Church Dwight Co., Inc., 399 F.3d 13810,

1313 (Fed. Cir. 2005); Intellectual Property Dev. v.

TCI Cablevision, 248 F.3d 1333, 13846 (Fed. Cir.

2001). “[T]hese exclusionary rights 'must be enforced

10

through or in the name of the owner of the patent,’

and the patentee who transferred these exclusionary

interests is usually joined to satisfy prudential

standing concerns.” Morrow, 499 F.3d at 1340

(quoting Indep. Wireless Tel. Co. v. Radio Corp. of

Am., 269 U.S. 459, 467, 469 (1926)).

“The word 'patentee' includes not only the

patentee to whom the patent was issued but also

the successors in title to the patentee.” 35 U.S.C. §

100 (d) (emphasis added). “A statute’s plain meaning

must be enforced... and the meaning of a statute will

typically heed the commands of its punctuation.”

United States National Bank of Oregon v.

Independent Insurance Agents, 508 U.S. 4389, 454

(1993). “This law's plain meaning is not ‘'demonstrably at odds with the intentions of its

drafters”. United States National Bank, 508 U.S. at

463 n.11 (quoting Griffin v. Oceanic Contractors,

Inc., 458 U.S. 564, 571 (1982)). “[T]he act of

invention itself vests an inventor with a common law

or ‘natural’ right to make, use and sell his or her

invention absent conflicting patent rights in others

(and in certain circumstances, may similarly vest

such rights in an employer of the inventor), a patent

on that invention is something more.” Arachnid,

Inc., 939 F.2d at 1578. “A patent in effect enlarges

the natural right, adding to it the right to exclude

others from making, using or selling the patented

invention.” Id. (citing Six Wheel Corp. v. Sterling

Motor Truck Co., 50 F.2d 568, 571 (9% Cir. 1931)

(emphasis in Arachnid)). See also Crown Die & Tool

Co. v. Nye Tool & Machine Works, 261 U.S. 24, 40-41

(1923).

11

IT. Leitner-Wise conferred rights to his

patent but only in consideration a royalty

agreement.

The license of a patent may be subject to

conditions and provisions. A patent is “a bundle of

rights which may be divided and assigned, or

retained in whole or part.” Vaupel Textilmaschinen

KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 875

(Fed. Cir. 1991). If an inventor licenses the use of a

patent conditioned on the payment of royalties, he

retains an interest “in all substantial rights” to that

patent sufficient to maintain standing to defend that

interest and to sue for infringement. The conclusion

that “Leitner-Wise waived all of his rights to the

royalty payments anticipated by the Employment

Agreement when, in 2006, he signed the severance

documents associated with his departure from

LWRC”, App. 20a-21a, is flatly contradicted by the

language of the Employment Agreement, which

expressly states his rights to royalties would survive

such severance.

“The title of the transfer in the agreement

does not determine what type of agreement it is,

rather a court looks to the kinds of rights that are

transferred to determine the licensor and licensee's

status.” My First Shades v. Baby Blanket Suncare,

914 F. Supp. 2d 339, 347 (E.D.N.Y. 2012) (quoting

Intellectual Prop., 248 F.3d at 1344 (‘The title of the

agreement at issue, which uses the term ‘license’

rather than the term 'assignment,' is not determinative of the nature of the rights transferred

under the agreement; actual consideration of the

rights transferred is the linchpin of such a

12

determination.”)). In this case, the assignments of

intellectual property already occurred in the same

document which spoke to Leitner-Wise's right to

royalty payments. “[T]he Executive hereby irrevocably signs and transfers to the Employer any

and all right, title, or interest that the Executive may

have in the Intellectual Property under copyright,

patent, trade secret and trademark law...” and “[t]he

Executive further agrees. to... execute such

documents as may be necessary or appropriate (1) 1n

the event that the Employer desires to seek

copyright, patent or trademark protection, or other

analogous protection relating to the Elected

Intellectual Property...”. Contract dated April 11,

2005.

Any subsequent execution of assignments was

an existing obligation under the April 11, 2005

agreement, the same agreement which provided the

royalty payments... Compare the words of the

contract “[playment of royalties under this section

shall not be withheld or terminated regardless of any

Termination of the Executive for any reason” and

App. 24a, the District Court's opinion, which simply

ignored this express provision of survival to state

“the release provision is unambiguous and the relief

' In subsequent litigation with a different party, an assignment

dated August 5, 2005 of the same pending patent was produced

for the first time in discovery this year. The Respondents'

claim that Leitner-Wise gave up any right to royalties in the

2006 assignment is wholly defeated by the fact that Leitner-

Wise could not somehow assign the same rights a second time

under different terms. See App. 20a, 24a-25a. The first

assignment was not produced until after the one year limitation

on newly discovered evidence had already expired in this case.

This matter should be remanded for discovery and trial on this

point alone.

13

that Plaintiff seeks now, enforcement of a royalty

provision in his 2005 employment contract, is clearly

foreclosed by the 2006 termination letter.” The

royalty agreement expressly survived his leaving

employment with the company and there is no

mention whatsoever that any consideration was paid

for his royalty interests. Any kind of claim of waiver

of Leitner-Wise's rights to royalties for the '581

patent again leads to an illusory obligation devoid of

consideration thereof. “Consideration is a_ basic

requirement of a contract”. Memorylink Corp. v.

Motorola Solutions, Inc., 773 F.3d 1266, 1270 (Fed.

Cir. 2014) (citing Melena v. Anheuser-Busch, Inc.,

847 N.E.2d 99, 109 (Ill. 2006).

In the absence of a valid license, Leitner-Wise

was entitled to sue for infringement. If the royalty

agreement Leitner-Wise executed provided for such

assignment in furtherance of the agreement, it

cannot be reasonably interpreted that Leitner-Wise

forfeited such royalties by fulfilling such obligations

under the agreement. What is unclear now is why

were the parties in, for example, Advanced Video

Techs. LLC v. HTC Corp., 879 F.3d 1314 (Fed. Cir.

2018), afforded such a straightforward analysis of

contract law in an extensive opinion by this Court,

but the issue was completely ignored by both the

District Court and the Federal Circuit.

III. The subsequent assignment of Leitner-

Wise's patent was fraudulent and without

consideration.

On April 18, 2008, Leitner-Wise Rifle

Company, Inc. assigned the '581 patent to Appellee

14

LWRC International, LLC. Such assignment falsely

identified the inventor as the ASSIGNOR, Leitner-

Wise Rifle Company, Inc. Jd. Because of the false

representations therein, the assignment was

defective on its face. Because of the false

representations therein, the assignment was, and 1s,

null and void. Such (re-)assignment in 2008 was

made without the knowledge or authority of the

inventor, Leitner-Wise. “Such (re-)assignment in

2008 was made without due consideration of the

existing compensation agreement with royalties due

to Leitner-Wise. Pl.'s Ex. B.” Compl. at 6. “On

information and belief, such false identification of the

inventor within the 2008 assignment was for the sole

purpose of avoiding disclosure of Leitner-Wise's

ongoing right to royalties on the patent and to

further deprive Leitner-Wise of the residual benefits

of his Employment Agreement with Leitner-Wise

Rifle Company, Inc. which survived his termination

of employment.” Jd. “Any assignment of the '581

patent by Leitner-Wise was for compensation on an

ongoing basis, including the payment of royalties to

Leitner-Wise.” Compl. at 9.

Absent such a demonstration of compensation

or consideration, such subsequent assignments

would be necessarily the product of illusory

contracts. To say that Leinter-Wise bargained for

good and valuable royalties on the '581 patent and

agreed that Leitner-Wise Rifle Company, Inc.

“desires to exercise ownership rights” over the '581

patent would render any subsequent relinquishment

of those royalty rights for assignment of the same

patent, without additional consideration, unilateral

and illusory. An illusory promise is “words in

15

promissory form that promise nothing; they do not

purport to put any limitation on the freedom of the

alleged promisor, but leave his future action subject

to his own future will, just as it would have been had

he said no words at all.” Ridge Runner Forestry v.

Veneman, 287 F.3d 1058, 1061 (Fed. Cir. 2002).

The Respondents offered nothing which would

indicate that Leitner-Wise was somehow obligated to

assign his rights to the '581 patent other than in

exchange for the royalties bargained for in the April

11, 2005 employment agreement.

IV. The Federal Circuit's failure to explain

its decision in obvious conflict with the

plain language of the statute perpetuates

a lack of uniformity and certainty in the

administration of patent law.

In affirming the District Court's decision

without any opinion whatsoever, the Federal Circuit

ignored the plain language of 35 U.S.C. § 100 (d)

identifying the original inventor as a patentee with

standing to sue for infringement. The District Court

itself acknowledged itself to be on unsteady ground

in denying Leitner-Wise standing in conflict with the

statute.

Here, while both Defendants ultimately

prevailed, the Court's decision on the patent

infringement claim turned on an unpublished

decision by the Federal Circuit, finding that

the retention of royalty rights does not provide

a former patent holder with standing to bring

a claim.

16

App.3la (apparently referencing SGS-Thomson

Microelectronics, 31 F.3d 1177).

In the face of such uncertainty, the Federal

Circuit eschewed its own obligations incumbent to its

non-discretionary appellate jurisdiction to explain its

decision, particularly given the importance of the

issues and the extensive argument offered by the

parties.

“It 1s emphatically the province and duty of

the judicial department to say what the law is.

Those who apply the rule to particular cases, must of

necessity expound and interpret that rule.” Noel

Canning v. NLRB, 705 F.3d 490, 506 (D.C. Cir. 20138)

(quoting Marbury v. Madison, 5 U.S. 137, 177

(1803)). Accord, Bank Markazi v. Peterson, 136 8. Ct.

1310, 1822-23 (2016); DaimlerChrysler Corp. v. Cuno,

547 U.S. 332, 340-341 (2006); NLRB v. Enterprise

Leasing Co. Southeast, LLC, 722 F.3d 609, 639 (4"

Cir. 2013). “This is of the very essence of judicial

duty.” Marbury, 5 U.S. at 177. See Derfiny uv.

Pontiac Osteopathic Hosp., 106 Fed. Appx. 929, 936

(6" Cir. 2004) (unpublished, quoting United States v.

Woods, 885 F.2d 352, 354 (6 Cir. 1989) (noting that

“when a motion for summary judgment is granted.,|]

without any indication as to the specific facts and

rules of law supporting the court’s decision, it 1s

difficult, except in the simplest of cases, for an

appellate court to review such a decision.”). Accord,

Bybee v. City of Paducah, 22 Fed. Appx. 387 (6™ Cir.

2001) (unpublished decision); Bowie v. Maddox, 642

F.3d 1122, 11382 (D.C. Cir. 2011); Couwveau ov.

American Airlines, Inc., 218 F.3d 1078, 1081 (9 Cir.

17

2000); Vadino v. A. Valey Engineers, 903 F.2d 258,

257-259 (3d Cir. 1990)).

Upon Leitner-Wise's presentment of an appeal

in the proper form, and the Federal Circuit's own

decision that the issues merited oral argument, there

can be little dispute that Leitner-Wise raised

significant issues of federal law warranting an

informed decision on the merits. “[A] case 1s one

'arising under’ federal patent law 'the plaintiff must

set up some right, title or interest under the patent

laws, or at least make it appear that some right or

privilege will be defeated by one construction, or

sustained by the opposite construction of these

laws.” Christianson v. Colt Industries Operating

Corp., 486 U.S. 800, 807-08 (1988) (quoting Pratt v.

Paris Gas Light & Coke Co., 168 U.S. 255, 259

(1897)).

[O]ne of Congress' objectives in creating a

Federal Circuit with exclusive jurisdiction

over certain patent cases was “to reduce the

widespread lack of uniformity and uncertainty

of legal doctrine that exist[ed] in the

administration of patent law.” H.R. Rep. No.

97-312, p. 23 (1981)... Congress determined

the relevant focus... when it granted

jurisdiction to the Federal Circuit over “an

appeal from... a _ district court... if the

jurisdiction of that court was based... on

section 1338.” 28 U.S.C. § 1295 (a)(1)

(emphasis added).

Christianson, 486 U.S. at 813-14.

18

There has been considerable controversy

recently over the Federal Circuit's failure to abide by

35 U.S.C. § 144's requirement that the Court provide

an “opinion, which shall... govern further proceedings

in this case.” See, e.g., Chan v. Yang, 673 Fed. Appx.

1009 (Fed. Cir. 2017) cert. denied 199 L. Ed. 2d 528

(2018); Leak Surveys, Inc. v. FLIR Systems, Inc., 672

Fed. Appx. 995 (Fed. Cir. 2017) cert. denied 138 5S.

Ct. 825 (2017); Cascades Projection LLC v. Epson

America, Inc., 864 F.3d 1809 (Fed. Cir. 2017). The

same logic applied to non-PTO appeals remains

equally sound. Leitner-Wise and the public at large

are entitled to an explanation of the panel's refusal to

abide by the plain language of 35 U.S.C. § 100 (d)

otherwise granting the inventing patentee the right

to sue without further qualification.

The Federal Circuit has repeatedly stated that

a Rule 36 Judgment does no more than merely affirm

the result of the District Court’s judgment. See

TecSec, Inc. v. International Business Machines

Corp., 731 F.3d 13836 (Fed. Cir. 2018); Rates

Technology, Inc. v. Mediatrix Telecom, Inc., 688 F.3d

742 (Fed. Cir. 2012). It does not endorse or reject

any specific part of the reasoning below. ARates

Technology, 688 F.3d at 750.

In the underlying decision, the District Court

ignored multiple theories of relief and relied upon a

factual conclusion which Leitner-Wise properly

disputed, that he had assigned all of his rights to the

patent to another party. The District Court never

addressed whether Leitner-Wise had an express

categorical right under 385 U.S.C. § 100 (d), or did

not. It did not address that, by Leitner-Wise's

19

allegations, there was no assignment for consideration and any such assignment was illusory and

unenforceable, that Leitner-Wise remained entitled

to royalties and therefore maintained a justiciable

interest in the patent, and that the subsequent

assignment was defective and fraudulent.

If the District Court never opined upon these

issues, then the Federal Circuit could not claim

without opinion under Rule 36 that the District

Court's “findings [were] not clearly erroneous”, or

that “the record supports summary judgment”. 35

U.S.C. § 100 (d) defines a “patentee” to include the

“patentee to whom the patent was issued”. In this

case, Leitner-Wise was the patentee to whom the

patent was issued. Then why is he not a “patentee”

entitled to sue under 85 U.S.C. § 281? Herein, the

Federal Circuit eschews the definition of a patentee.

We would like to know why.

Instead of a definition, then, the decisional

mechanism courts now apply is to examine

earlier cases 1n which a similar or parallel

descriptive nature can be seen—what prior

cases were about, and which way they were

decided. See, e.g., [Elec. Power Group, LLC uv.

Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir.

2016)]. That is the classic common law

methodology for creating law when a single

soverning definitional context is not available.

See generally Karl N. Llewellyn, THE COMMON

LAW TRADITION: DECIDING APPEALS (1960). This

more flexible approach is also the approach

employed by the Supreme Court. See [Alice

Corp. Pty. Ltd. v. CLS Bank Int'l, 134 8. Ct.

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