Maryland District Court Affirms that Patent Inventor Lacks Standing After Assigning Patent Rights to Third Party

Mar 10, 2017

Reading Time : 2 min

Plaintiff is the sole inventor of U.S. Patent No. 7,461,581 (the “’581 Patent”), titled “Self-Cleaning Gas Operating System for a Firearm” and founded the Leitner-Wise Rifle Company (LWRC) in 2004 to commercialize his invention. In 2005, Plaintiff sold LWRC, but was retained by the company as an executive, subject to an employment agreement that paid Plaintiff a royalty on each unit of the patented product sold. In 2006, Plaintiff ended his employment with LWRC. As part of the termination of his employment with LWRC, Plaintiff assigned “[his] entire right, title, and interest” in the ’581 Patent to LWRC and signed an agreement relinquishing his rights to any further royalties associated with the ’581 Patent.

Plaintiff subsequently filed suit against LWRCI and Sig Sauer on June 26, 2016, alleging infringement of the ’581 Patent. The complaint also included claims for breach of contract and unjust enrichment relating to Plaintiff’s contention that he retained royalty rights to the ’581 Patent. Defendants filed motions to dismiss the patent infringement claim for lack of standing and to dismiss the breach of contract and unjust enrichment claims on summary judgment. Ruling on Defendants’ motions, the court dismissed all of Plaintiff’s claims, finding that the 2006 agreement between Plaintiff and LWRC relinquished all of Plaintiff’s rights in the ’581 Patent and terminated any royalty rights that Plaintiff previously had to products including the patented invention.

With respect to the patent infringement claim, the court found that the 2006 assignment agreement transferring Plaintiff’s “entire right title and interest” in the ’581 Patent to LWRC unambiguously demonstrated “an intent to transfer, without reservation, all rights in the ’581 Patent.” The court further noted that the Federal Circuit has “implied that this exact language signifies a transfer of all substantial rights in the patent to the assignee.” Even if Plaintiff had retained a royalty right in the ’581 Patent, the court found that such a provision would not limit the assignment to LWRC, unless the reservation was of a “substantial right, such as the right to exclude others from making the patented product.” Since the court found that Plaintiff had assigned his entire right in the ’581 Patent to LWRC and retained no substantial right, the court found that Plaintiff lacked standing and dismissed the patent infringement case.

Leitner-Wise v. LWRC International, LLC et al, 8:16-cv-02430 (D. Md., Feb. 28, 2017)

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.