Bondyopadhyay v. United States

ORIGINAL

3111 the (Britten $tatez @uurt of feheral @Iaima

No. 14-147C

(Filed: March 20, 2015)

(Not for Publication)

******~k*******************

*

PROBIR K. BONDYOPADHYAY, : FILED

Plaintiff, * MAR 20 2015

v. E

THE UNITED STATES, :

Defendant. *

OPINION AND ORDER GRANTING DEFENDANT’S

PARTIAL MOTION TO DISMISS

This patent infringement case comes before the Court on Defendant’s partial motion to

dismiss for lack of subject-matter jurisdiction and failure to state a claim upon which relief can

be granted. Defendant seeks dismissal on the grounds that one segment of Plaintiff’ s claim is

time-barred and another arose after expiration of the patent-in-suit. Defendant also seeks

dismissal of Plaintiff’s claims for a Fifth Amendment taking, punitive damages, and costs arising

out of other litigation. Defendant’s motion is GRANTED.

Background1

Plaintiff Probir Bondyopadhyay is the named inventor of United States Patent No.

6,292,134 (“the ‘134 Patent”), entitled “Geodesic sphere phased array antenna system.” The

‘ 134 Patent issued on September 18, 2001, and generally covers:

A geodesic sphere phased array antenna system, capable of

scanning the entire omni-directional communication space and

comprising substantially equilateral triangular planar subarrays of

antenna elements arranged in a geodesic sphere configuration.

Icosahedron, one of the five regular solids and truncated

icosahedron, one of the fifteen semi-regular solids are the preferred

basis of the geodesic sphere phased array construction. The entire

Findings of fact relating to jurisdiction are in the Discussion.

communication space is considered as subdivided into a large

number of smaller cells and corresponding to each such cellular

communication space, a contiguous set of the subarrays is

energized and electronically phased to scan the cellular space.

Another contiguous set of subarrays is energized and electronically

phased to scan another cellular space in a similar manner resulting

in limited angle scanning requirements which permit the basic

antenna elements to be connected in a cluster as a unit building

block to which transmit/receive signal distribution and processing

means are connected resulting in lower costs in deployment,

operation and maintenance.

‘134 Patent Abstract.

Plaintiff describes the invention as “a very large, electronically scanned, radar system.”

Compl. fl 18. The ‘134 Patent expired on September 18, 2009, for failure to pay maintenance

fees, according to the Patent Fee Data for the ‘134 Patent retrieved from the USPTO Public

Patent Application Retrieval system and a Notice of Patent Expiration for the ‘134 Patent

included in the patent’s file history. Mot. to Dismiss, Jou Decl., Exs. 3, 4. Plaintiff disputes that

the patent has expired, and claims that it is simply in “sleep mode,” but has not provided

evidence to rebut the evidence of expiration. Second Resp. 1] 8.4.1.

Plaintiff alleges that the United States Department of the Air Force is currently engaged

in developing and manufacturing his radar system invention for public use. Compl. 11 4. He

claims that

[i]ntellectual property thieves at the US. Air Force Research

Laboratory that administers the Small Business Innovation

Research (SBIR) Program of the US. Air Force acquired this said

invention through a procurement fraud. This Plaintiff submitted

this said invention for research and development funding under the

US Air Force SBIR Phase-I solicitation AF-99-244.

I_d.1]11.

Plaintiff has pursued infringement claims through both administrative and judicial

channels. On June 17, 2002, Plaintiff filed a “formal notification of Administrative Claim for

infringement” of the ‘134 Patent with the Air Force. In his administrative claim, Plaintiff cited

five contracts as infringing on the ‘134 Patent: AFRL Contract No. F19628-99—C-0073,

completed Jul. 12, 2000; AFRL Contract No. F19628-00—C-0048, completed Mar. 20, 2001;

AFRL Contract No. F19628-00-C-0053, completed Mar. 30, 2001; AFRL Contract No. F19628-

01-C-0029, set to be completed by April 19, 2003; and AFRL Contract No. Fl9628—01-C—0038,

set to be completed by April 9, 2003. Mot. to Dismiss, Chiang Decl., Ex. 1, 2. On July 30,

2002, Air Force Colonel Francis J. Lamir sent Plaintiff a letter denying his claim for

compensation for the alleged infringement of his patent by these contracts. Mot. to Dismiss,

Chiang Decl., Ex. 2.

Plaintiff alleges that

“[t]his Claim has three parts. The first or the main part arises out

of Title 28 US Code, Section 1498(a). The second part arises out

of Title 35 US Code Section 284 under special circumstances

described below. The third part covers the Court costs of the

plaintiff in pursuing this case as is further detailed below.”

Compl. 11 17. Plaintiff alleges that his claim “covers the fourteen year time span” from July 1,

1999 to June 30, 2013, and further alleges:

This financial claim first accrued formally on 1St July 2009 with a

finite amount calculated from 1St July 1999 when under the said

US. Constitutional Provision of Article 1, Section 8, Clause -8, this

Plaintiff inventor would have begun developing this said invention

as a Small Business Innovation Research (SBIR) entity under the

‘exclusive Right’ guaranteed by the US. Constitution.

I_d. 1111 12-13 (emphasis omitted).

Plaintiff seeks “JUST COMPENSATION for public use of the Plaintiff’s invention.” I_(L

11 16. Plaintiff claims that he is entitled to the monetary value of the property taken and claims

that he would have earned:

[A] total of $900,000 in the first three years ($100,000 from SBIR

Phase-I, $750,000 from the SBIR Phase—II second year and the

third year combined and $50,000 during the gap period between

SBIR Phase-I and Phase-11D]. The average yearly Claim is

therefore $300,000 during the first three years (1St July 1999

through 30th June 2002) that would have been earned by this

plaintiff under Article 1, Section 8, Clause 8, of the US.

Constitution under the ‘exclusive Right’ provision.

Id. 11 19 (emphasis in original). Plaintiff seeks $300,000 per year from July 1999 to June 2013,

plus interest, totaling $5,088,147. Li. 1 23.

In addition, Plaintiff seeks punitive damages of $1 million on the grounds that the Air

Force intentionally misled the Secretary of Defense by identifying false inventors and caused

Plaintiff prolonged financial hardship. Li. 111124-26. Plaintiff also seeks costs he incurred in four

district court cases that he alleges are “directly related” to the present case. I; 11 29. He seeks

“no less than $6,000 including filing fees, all preparation costs, office costs, transportation cost

and interest.” I_d. 11 30.

Plaintiff s calculation of just compensation is $6,094,147. id: 11 31.

Qiscussion,

S 1 if D. . l

v

When adjudicating a motion to dismiss for lack of subject-matter jurisdiction under Rule

l2(b)(l), the Court assumes all factual allegations in the complaint to be true and construes “all

reasonable inferences in plaintiffs favor.” Henke v. United States, 60 F.3d 795, 797 (Fed. Cir.

1995). The plaintiff bears the burden of establishing subject—matter jurisdiction by a

3

preponderance of the evidence. McNutt V. Gen. Motors Acceptance Corp., 298 US. 178, 189

(1936); see alfl Reynolds v. Army & Air Force Exch. Serv., 846 F.2d 746, 748 (Fed. Cir. 1988);

Naskar V. United States, 82 Fed. Cl. 319, 320 (2008); Bearing Point, Inc. v. United States, 77

Fed. Cl. 189, 193 (2007). When jurisdiction is in dispute, the plaintiff must present “competent

proof” to demonstrate that the Court has jurisdiction. McNutt, 298 US. at 158. Under these

circumstances, the Court may consider relevant evidence to resolve the factual dispute.

Reynolds, 846 F.2d at 747; see al_so Moyer v. United States, 190 F.3d 1314, 1318 (Fed. Cir.

1999) (“Fact-finding is proper when considering a motion to dismiss where the jurisdictional

facts in the complaint . . . are challenged”); Schultz v. United States, 92 Fed. Cl. 213, 218 (2010)

(“When the movant challenges the truth of jurisdictional facts alleged in the complaint, the court

may consider relevant evidence to resolve the factual dispute”).

To survive a motion to dismiss under Rule 12(b)(6), the complaint must contain facts

sufficient to “state a claim to relief that is plausible on its face.” Ashcroft v. Igbal, 556 US. 662,

678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 US. 544, 570 (2007)). To determine

whether a complaint states a plausible claim for relief, a court must engage in a context-specific

analysis and “draw on its judicial experience and common sense.”,_at 679. “When there are

well-pleaded factual allegations, a court should assume their veracity and then determine

whether they plausibly give rise to an entitlement to relief.”,fil,§._1.fl

“A claim has facial plausibility when the plaintiff pleads factual content that allows the

court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”

I_d. at 678 (citinghTwomblfi- '35 550 US. at 556). However, the plausibility standard requires more

than a “sheer possibility” that the defendant has violated the law. 11. (citing Twombly, 550 US.

at 557). “Threadbare recitals of the elements of a cause of action, supported by mere conclusory

statements, do not suffice.” Li, (citing Twombly, 550 US. at 555).

:I‘imejBarred Claims

Defendant argues that claims for damages prior to January 11, 2008, are barred by the

statute of limitations. Section 2501 of Title 28 states that “every claim of which the United

States Court of Federal Claims has jurisdiction shall be barred unless the petition thereon is filed

within six years after such claim first accrues.” Section 286 of Title 35 tolls this period for the

time that a written administrative claim is pending before the relevant Government department or

agency:

Except as otherwise provided by law, no recovery shall be had for

any infringement committed more than six years prior to the filing

of the complaint or counterclaim for infringement in the action.

In the case of claims against the United States Government for use

of a patented invention, the period before bringing suit, up to six

years, between the date of receipt of a written claim for

compensation by the department or agency of the Government

having authority to settle such a claim, and the date of mailing by

the Government of a notice to the claimant that his claim has been

denied shall not be counted as part of the period referred to in the

preceding paragraph.

“The tolling period under 35 U.S.C. § 286 is equal to the shorter of: (i) six years or (ii) the time

between the receipt of the claim by the government and the mailing of a notice of denial of the

claim by that agency or department.” McCreary V. United States, 35 Fed. Cl. 533, 545 (1996).

Whether Plaintiff’s claims are within the statute of limitations is a jurisdictional inquiry.

John R. Sand & Gravel Co. v. United States, 552 US. 130, 134 (2008) (holding that § 2501 is a

jurisdictional statute); Unitrac LLC v. United States, 113 Fed. Cl. 156, 159 (2013) (holding that

the statute of limitations in § 2501 is jurisdictional in the context of a patent infringement action

against the Government).

E‘Thefl‘ollin l__Pe_ri0_d Un_der__ 28_6_3

Defendant asserts that because Plaintiff filed an administrative claim on June 17, 2002,

that was resolved on July 30, 2002, the statute of limitations should have been tolled for the 44

days when this administrative claim was pending. & Custer v. United States, 224 Ct. Cl. 140,

145 (1980) (“35 U.S.C. § 286 extends the time for bringing suit for a period equal to the time an

administrative claim was pending before a department or agency of the Government prior to the

date of filing the petition”). Plaintiff responds with two arguments: (l) the July 30, 2002 letter

was not a final decision and therefore the tolling period did not end on July 30, 2002, and (2) the

statute of limitations should have been tolled under § 286 by another claim submitted on May 18,

2004, which was pending until 2013.2

Plaintiff states that the July 30, 2002 letter from Colonel Lamir was not a final decision

because “[w]ritten authorization from the US. Secretary of the Air Force is needed to claim that

this was a final denial.” Resp. 11 11.1.6 (emphasis omitted). Plaintiff s contention is erroneous.

The Secretary of the Air Force delegated authority to a component of the Office of the Judge

Advocate General of the Air Force to handle activities pertaining to intellectual property law

matters including administrative claims—the Air Force Legal Services Agency, Commercial

Litigation Division, Intellectual Property Branch. Reply Ex. 1 (Air Force Instruction 51-303,

September 1, 1998). Colonel Lamir, the signatory on the July 30, 2002 letter, was the Chief of

the Air Force Legal Services Commercial Litigation Division. E Mot. to Dismiss, Chiang

Decl., Ex. 2 (July 30, 2002 letter from Colonel Lamir to Plaintiff). Colonel Lamir’s letter met

the requirement of § 286, as it clearly stated that Plaintiff’ s claim for infringement of the ‘134

Patent was denied, and Colonel Lamir was an appropriate delegee. & Q Plaintiffs June 17,

2002 administrative claim was denied by Colonel Lamir’s July 30, 2002 letter, and this denial

ended the tolling period.

Plaintiff further argues that he filed another administrative claim that should operate

under § 286 to toll the statute of limitations:

A new administrative claim [Exhibit-20(A)] was submitted to the

US. Air Force on May 18, 2004 on which the Air Force reply was

‘still pending’ before July 1, 2013 when the last US. District Court

2 Plaintiff also appears to argue that tolling the statute of limitations for 44 days pending

resolution of the administrative claim reversed the decision on the administrative claim.

Plaintiffs Further Rebuttal to Defendant’s Submission fl 5.4. The Court rejects this argument.

Tolling under § 286 has no impact on the merits of the administrative decision.

5

was filed. Acquisition of the innovation by procurement fraud was

the main issue in the said latest administrative claim. The

difference between this May 18, 2004 claim and the previous claim

of June 17, 2002 is that the administrative claim of June 17, 2002

was flown in on a “Boeing 777” to Major General Thomas J.

Fiscus, whereas the said later May 18, 2004 claim was flown in on

a “Boeing 52” to the said Major General (Exhibit—20A submitted

here in). The Generals know the difference.

Second Resp. 1] 7.2.2 (emphasis omitted, bracketed material in original). Plaintiff’ s referenced

Exhibit 20A reflects that Plaintiff filed a complaint in the United States District Court for the

Southern District of Texas on May 18, 2004. This complaint initiated a judicial proceeding, and

was not an administrative claim that operated to toll the statute of limitations Within the meaning

of§ 286.

The only claimed period during which the statute of limitations would have been tolled is

the 44 days between June 17, 2002, and July 30, 2002. Section 286 “extends the time for

bringing suit for a period equal to the time an administrative claim was pending before a

department or agency of the Government prior to the date of filing the petition.” Custer, 224 Ct.

Cl. at 145. The six-year statute of limitations is therefore extended by 44 days in light of

Plaintiff’s administrative claim, and the time period for any damages award, if proven, would

commence on January 11, 2008. Any claims prior to January 11, 2008, are time-barred and

dismissed.

Expired.

Defendant next asks that the Court dismiss any claims “arising on or after September 18,

2009,” because the ‘134 Patent expired on that date for failure to pay maintenance fees. In

support, Defendant attaches to its Motion the Declaration of Alice Suh J ou, Trial Attorney with

the Department of Justice, authenticating a copy of the Patent Fee Data for the ‘134 Patent,

retrieved from the USPTO Public Patent Application Retrieval system, and a Notice of Patent

Expiration for the ‘134 Patent included in the patent’s file history. Mot. to Dismiss, Jou Decl.,

Exs. 3, 4. Both documents state that the ‘134 Patent expired on September 18, 2009, for failure

to pay maintenance fees. Li.

Plaintiff neither challenges the accuracy of Defendant’s exhibits, nor proffers evidence

that the patent is still active. Instead, Plaintiff contends “the question of the patent’s expiration

should NOT arise” because “Plaintiff had assigned his Patent . . . to the Air Force Space

Command which will be using it.” Resp. 1111 11.2.1, 11.2.2. If Plaintiff were correct that he had

assigned the ‘134 Patent to the Air Force, he would lack standing to bring this suit. E Ms

gong. Berhgd v. United States 82 Fed. Cl. 488, 495-96 (2008) (“Only the entity or entities that

own or control all substantial “rights in a patent can enforce rights controlled by that patent, lest

an accused infringer be subjected to multiple suits and duplicate liability.” (quoting IpYenturek

Inc. v. ProStar Computer, Inc., 503 F.3d 1324, 1325 (Fed. Cir. 2007))). However, the

Government does not claim that Plaintiff assigned the patent to Air Force Space Command, there

is no proof that Plaintiff actually assigned his patent, and Plaintiff asserts that he still owns the

patent. As such, the Court rejects Plaintiffs suggestion that the question of patent expiration

need not be addressed.

Plaintiff further argues that his patent is “NOT expired (dead) as the Defendant’s attorney

tries to portray,” but is rather “currently in SLEEP MODE.” Second Resp. 1184.1. Plaintiffs

distinction between “expired” and “sleep mode” does nothing to resuscitate his expired patent.

As Defendant’s evidence demonstrates, Plaintiffs failure to pay maintenance fees caused the

‘134 Patent to expire as a matter of law. E 35 U.S.C. § 41(b)(2) (2014) (“Unless payment of

the applicable maintenance fee under paragraph (1) is received in the Office on or before the date

the fee is due or within a grace period of 6 months thereafter, the patent shall expire as of the end

of the grace period”).3 The ‘134 Patent has been expired since September 18, 2009. “Because

the rights flowing from a patent exist only for the term of the patent, there can be no

infringement once the patent expires.” Kearns V. Chgsler Corp, 32 F.3d 1541, 1550 (Fed. Cir.

1994). This is true even if the patent expires for failure to pay maintenance fees. E

Demodulation Inc. v. United States, 118 Fed. Cl. 69, 75 (2014).4 Plaintiff is not entitled to

damages for alleged acts of infringement after the expiration of his patent.

.IhisCOurtLaeksglmisdicflonmsgeLalatent fringement Claim Asserted as a Fifth

Amendment Takingh

Defendant seeks dismissal of Plaintiffs Fifth Amendment Taking claim. Defendant

correctly asserts that a claim for patent infringement against the Government is considered under

§ 1498 rather than the Fifth Amendment. Demodulation, 118 Fed. Cl. at 73 (“Count IV is

dismissed to the extent that Plaintiff attempts to fashion its patent infringement claim as a Fifth

Amendment takings claim. A patent infringement claim is a tort claim and therefore is excluded

by the Tucker Act’s prohibition on ‘cases sounding in tort.’ The only way to bring a patent

infringement claim in this Court is to assert the claim under 28 U.S.C. § 1498(a) . . . .”); Keehn

v. United States, 110 Fed. Cl. 306, 355 (2013) (“[P]laintiffs Fifth Amendment takings theory is

without merit. It is 28 U.S.C. § 1498(a), not the Fifth Amendment to the United States

Constitution, that provides the waiver of sovereign immunity that enables a plaintiff to file suit

against the government for patent infringement”). To the extent Plaintiffs claim of patent

infringement is brought as a Fifth Amendment taking, the claim is dismissed.

Plaintiff Is Not Entitled to Punitive Damages Under § 1498.

Defendant seeks to dismiss Plaintiffs claims for punitive damages. Plaintiffs are not

entitled to punitive damages in patent infringement suits against the Government. Leesona Corp.

v. United States, 220 Ct. Cl. 234, 252 (1979). As the Leesona Court held, a patent holder suing

under § 1498 “is not entitled to be the recipient of increased damages heaped on other parties as

punishment or deterrence.” I_d.

Plflltiff ligt Entitle_d_ to Costs .4... .14. . A”

Defendant argues that Plaintiff is not entitled to costs he allegedly incurred in district

court cases for two reasons. First, the costs recoverable under § 1498 are only “costs in this

3 There is no suggestion in the record that the PTO Director accepted late payment of

maintenance fees. Sfi Q § 41(c).

4 Although Plaintiff alluded to his bankruptcy, he has not demonstrated that the PTO

should have excused his failure to pay the maintenance fee due to his financial circumstances.

E Respfl 11.2.4.

7

action,” and the district court costs were incurred in separate actions. Reply at 6. Second, all of

Plaintiff 5 district court cases were dismissed, and, as he is not the prevailing party, he is not

entitled to costs. Mot. to Dismiss 11-12. Defendant is correct. “A judgment for costs when

taxed against the United States shall . . . be limited to reimbursing in whole or in part the

prevailing party for the costs incurred by such party in the litigation.” 28 U.S.C. § 2412 (2014)

(emphasis added). Plaintiffs claim for costs incurred in district court actions is dismissed.

Ad Hominem Attacks

Plaintiffs papers contain numerous ad hominem attacks against Defendant’s declarant

Mr. Chiang and Defendant’s counsel. Resp. 1m 1, 3.1, 11.1.5, 11.1.6, 11.5.5, 12.5; Second Resp.

1H 1, 3.1, 4.3, 7.2.1, 7.2.9, 7.2.11, 8.4.3, 11.5; Plaintiffs Further Rebuttal to Defendant’s

Submission 1H] 1, 3.1, 3.4, 3.5, 5.6, 6.6. For instance, in his response to Defendant’s motion to

dismiss, Plaintiff accuses Defendant’s counsel of “lack[ing] professional integrity,” and of

drafting “a deceptive and fraudulent affidavit.” Resp. fl 1, 3.1; see also Second Resp. 1] 7.2.11.

Plaintiff also characterizes a portion of Defendant’s factual background as a lie, fabricated by

Defendant’s counsel, and describes counsel as “definitely lying to this Honorable Court.” Resp.

1m 11.1.6, 11.5.5; Second Resp. 11 11.5.

Plaintiffs ad hominem attacks against Defendant’s declarant and counsel of record are

baseless and frivolous. Plaintiff is hereby ordered to cease making personal attacks on

Defendant’s declarants and counsel. If Plaintiff persists in such conduct, he may be sanctioned.

E Rule 11(b), (c).

Conclusion

Defendant’s partial motion to dismiss is GRANTED. Defendant shall file its Answer on

or before April 3, 2015.5

On or before April 17, 2015, each party shall file a proposed schedule suggesting

calendar dates and times for further proceedings, including any motions or discovery. Any party

requesting a trial shall propose the dates and location of trial.

No other filings or discovery are authorized until further order of the Court.

M RY LLEN COSTER WILLIAMS

Judge

5 Plaintiffs Motion for Hearing and “leave application to file the following motion in

response to Defendant’s two rule 12(a) and 12(c) motions of September 8, 2014” have been

rendered moot by this decision.

8