Key Points

• Parties asserting patent infringement claims must ordinarily own asserted patents or otherwise hold legal title.
• Where asserted patents are assigned to a limited liability company, that entity may not proceed pro se.
• Filings by pro se parties are subject to Rule 11 and may be required to substantiate cited authorities.

A plaintiff asserting patent infringement must hold enforceable title to the patent at issue. A recent 13-page opinion by U.S. District Judge Edward S. Kiel of the District of New Jersey is a practical reminder that ownership and representation issues can end a case early, before the court reaches the merits.

Judge Kiel dismissed patent infringement claims after finding that the individual inventors who filed suit had previously assigned their rights in the asserted patents to a limited liability company and therefore could not sue in their own names.

Background

The case, Al "Bubba" Baker, et al. v. Rastelli Foods LLC, et al., Civil No. 24-cv-08882, is the latest iteration of a long-running dispute between the parties. Plaintiffs Al "Bubba" Baker and Brittani Bo Baker, proceeding pro se, claim they are co-inventors of a patented process for removing bones from pork ribs, marketed as "Bubba's Boneless Ribs."

Their complaint asserted that the defendants, which included the Rastelli entities, Daymond John, DF Ventures LLC, and Lawrence Fox, had infringed on the plaintiffs' patents by manufacturing, marketing, and selling competing products under the name "Rastelli's Boneless Ribs" without authorization. Plaintiffs also alleged breach of a 2019 settlement agreement, fraud, and other state law claims, seeking damages that they estimated could reach as high as $120 million on a trebled basis.

A critical fact underlying the dispute was that the relevant patents had been assigned to JabezBaker LLC, an Ohio limited liability company, in November 2015. JabezBaker had originally been a co-plaintiff in the action, but because a limited liability company cannot proceed pro se in federal court, the Court had previously dismissed JabezBaker's claims without prejudice and provided the plaintiffs an opportunity to retain counsel on JabezBaker's behalf. The plaintiffs elected not to do so.

Standing Analysis

The Court addressed standing as a threshold jurisdictional question before reaching the merits. The defendants argued that because the patents had been assigned to JabezBaker, the individual plaintiffs no longer held legal title and therefore lacked standing to bring infringement claims.

The Court agreed. Under the federal Patent Act, the right to exclude others from making, using, or selling a patented invention belongs to the patentee or their assigns. As the Court explained, "constitutional standing to sue for patent infringement is established by ownership of and injury to the exclusionary rights bestowed by the patent grant," and infringement actions "must ordinarily be brought by a party holding 'legal title' to the patent." Courts have consistently held that a patent assignor who has transferred all rights loses standing to assert infringement claims.

The complaint itself pleaded that the patents had been assigned to JabezBaker, and a copy of the assignment attached to the complaint confirmed that the plaintiffs had assigned "all of [their] worldwide right, title[,] and interest in and to the [p]atents." The plaintiffs did not identify any other interest, such as an exclusive license, that might independently confer standing.

Because the plaintiffs had assigned their patent rights to JabezBaker and declined to retain counsel to allow JabezBaker to pursue the claims, the Court dismissed the patent claims without prejudice.

Dismissal of State Law Claims

In addition to patent infringement, the plaintiffs asserted state law claims including breach of the 2019 settlement agreement and related fraud. The Court found that it lacked diversity jurisdiction because both plaintiff Al Baker and defendant Daymond John were alleged in the complaint to be citizens of Florida, defeating complete diversity. Although supplemental jurisdiction was not asserted by plaintiffs, the Court also declined to exercise supplemental jurisdiction over the remaining state law claims, noting that courts generally decline to do so when federal claims are dismissed at the pleading stage. The state law claims were accordingly dismissed without prejudice.

Conditions on Future Filings

In a page-long footnote, the Court addressed concerns regarding the accuracy of case citations in the pro se plaintiffs' filings.

The Court observed that multiple cases cited by plaintiffs in the complaint were "so inaccurately cited that the Court is unable to locate them, assuming they exist at all," and that one quotation attributed to a case did not appear in the cited source. The Court also noted that these issues had arisen in prior proceedings under separate dockets, where plaintiffs had characterized problematic citations as "inadvertent placeholder references."

Although the Court did not impose sanctions at this stage, it emphasized the application of Rule 11 to pro se plaintiffs and ordered that any future amended complaint or new filing by plaintiffs must be accompanied by PDF copies of every cited case, with the supporting text highlighted, and that failure to comply could result in sanctions.

Takeaways

This opinion underscores that patent infringement claims require the plaintiff to hold enforceable title to the patent at the time the action is initiated.

An individual or entity that has assigned all patent rights to another party — even a closely related entity — lacks standing to assert infringement claims in its own name. Where patent rights have been transferred to an LLC, that entity must be represented by licensed counsel in federal court and cannot proceed pro se.

Paul W. Kalish and Jonathan J. Madara are members of the IP Litigation team in Fox Rothschild’s Princeton, NJ office and write about patent litigation decisions in the District of New Jersey. Contact Paul at pkalish@foxrothschild.com or 609.895.6751 and Jonathan at jmadara@foxrothschild.com or 609.844.7428.

This information is intended to inform firm clients and friends about legal developments, including the decisions of courts and administrative bodies. Nothing in this alert should be construed as legal advice or a legal opinion. Readers should not act upon the information contained in this alert without seeking the advice of legal counsel. Views expressed are those of the authors and not necessarily this law firm or its clients.