The opinion
OREGE[{AL
l|n tbeMnrte|. $rtstes @ourt of ;feUersl @[g.itgg
No.13-307c FILED
Filed: November 30, 2016
Nov 3 0 2016
*,1.
'r.+** x *.*r!*t!*,** ***{.+**** +*****,r*** ***
U.S. COURT OF
FEDERAL CLAIMS
LARRY GOLDEN, 28 U.S.C. $ 1498(a) (Patent Infringement);
35 U.S.C. g 251 (Reissue); RCFC 12(bxl)
Pleintiff nvn ea (Jurisdiction);
RCFC 12(b)(6) (Failure to State a Claim);
RCFC 12(e) (More Definite Statement);
RCFC 15(a)(2) (Amended Complaint,
THE LINITED STATES, With Court's Leave);
Manual of Patent Examining Procedure
Defendant. (9th ed. 2015).
*************** *** * * * * * * * * *:*:i * * * ** ***
Larry Golden, Greenville, South Carolina, pro se.
Lindsay Kate Eastman, United States Department of Justice, Civil Division, Washington, D.C.
MEMORANDUM OPINION AND ORDER DEI{YING THE GOVERNMENT'S
MOTION TO DISMISS
BRADEN,.radge.
I. RXLEVANTFACTUAI,BACKGROUND.'
On April 5,2006, Mr. Larry Golden filed Patent Application No. 1tl397,118 (..the'118
Application"), titled "Multi sensor Detection, stall ro stop And Lock Disabling System," with
the united states Patent and rrademark office ("usPTo"). 2112116 Am. compl. Ex. B. on June
10, 2008, the '118 Application resulted in the issuance of U.S. patent No. 7,3g5,497 (,,the'497
Patenf). 2112/16 Arn. Compl. Ex. B.
Several days prior, on June 6, 2008,
Mr. Golden filed a continuation-in-part application,2
No. 12l155,573 ("the'573 Application"), of the ,118 Application. 2/12/16 Am. Compl. Ex. C.
I The facts discussed
herein are derived from the May 1,2013 Complaint (.,Compl.',); and
the February 12,2016 Amended complaint ("2112/16 Am. compl.") and attached Exhibits A-K
("2/12/16 Am. Compl. Ex. A-K").
2
"A continuation-in-part is an application frled during the lifetime of an earlier
nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional
?01'{ 1,e00 0000 t0!l 1893
On December 22 ,2009,the '573 Application resulted in the issuance of U.S. Patent No. 7,636,033
("the '033 Patent"). 2/12/16 Am. Compl. Ex. C.
On January 20, 2010, Mr. Golden filed a continuation application, Application No.
121657,356 ("the '356 Application"), ofthe '573 Application. Thereafter, Mr. Golden filed several
continuation applications ofthe '356 Application, resulting in:
. U.S. Patent No. 8,106,752 ("the'752 Patent"), issued on January 31,2012;
. U.S. Patent No. 8,334,761 ("the '761 Patenf'), issued on December 18, 2012;
r U.S. Patent No. 8,53 1,280 ('the '280 Patent"), issued on September 10,2013;
o U.S. Patent No. 9,096,189 ("the '189 Patent"), issued on August 4,2015; and
o Published Patent Application No. 2076-0027273 Al ("the'273 PG-PUB).
2/12/16 Am. Compl. Exs. D, E, F, I.
On March 31,2011, Mr. Golden filed a reissue application for the '033 Patent that, on
January 1, 2013, issued as U.S. Reissue Patent No. RE43,891 ("the '891 patenf).3 2/12116 Am.
Compl. Ex. G.
On September 9, 2011, Mr. Golden filed a second reissue application for the '033 Patent.
on February 12, 2013, the application resulted in the issuance of U.S. Reissue patent No.
RE43,990 ("the'990 Patent"). 2ll2l16 Am. Compl. Exs. G, H.
The patents listed above disclose inventions for the detection and automated isolation of
dangerous chemical, biological, and radiological agents in shipping containers, tractor trailers,
mail caniers, mail boxes and lockers. see, e.g.,2112116 Am. compl. Ex. B at 2. Mr. Golden is
the owner, and sole inventor, of these patents. 2/12/16 Am. Compl. Exs. A-I.
application and adding matter not disclosed in the said earlier nonprovisional application.,' Manual
of Patent Examining Procedure (.'MPEP') $201.8 (9th ed. 2015).
3
. under 35 u.s.c. $ 251, defective patents may be corrected through a process known as
"reissue." Section 25 1(a) provides:
[w]henever any patent is, through error, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing, or by reaion of the
patentee claiming more or less than he had a right to claim in the patent, the Director
shall, on the surrender of such patent and the payment ofthe fJe required by law,
reissue the patent for the invention disclosed in the original patent, and in
accordance with a new and amended apptication, for the unexpired
fart ofthe term
of the original patent. No new matter shall be introduced into the application for
relssue.
35 U.S.C. $ 251(a).
II, PROCEDURALHISTORY.
On May 1,2013,Mr. Golden ("Plaintiff') filed a Complaint in the United States Court of
Federal Claims alleging that the Govemment infringed the '990 Patent, based on three solicitations
published by the United States Deparhnent of Homeland Security (.'DHS") seeking to develop
technology for sensing biological and chemical substances. Compl. at 1-2. The Complaint alleges
that the DHS solicitations directly infringed, inftinged under the doctrine of equivalents, or
infringed by inducement claims 11, 74 and 8l ofthe '990 Patent. Compl,at3.
On August 15, 2013, Plaintiff frled a "Notice of Supplement" that the court considers an
Amended Complaint. ECF No. 6.
On September 5,2013, the Governrnent filed a Motion For A More Definite Statement,
pursuant to Rule of the United States Court of Federal Claims ("RCFC") 12(e), requesting that
Plaintiff further amend the May 1, 2013 Complaint to incorporate numbered paragraphs,
enumerate with particularity the Govemment devices or processes that allegedly infringe
Plaintiffs patents, and identifu the party in interest. ECF No. 9.
On September 20,2013, Plaintiff filed: a Motion To Strike (ECF No. 10); a Motion To
Amend Complaint (ECF No. 11); a Motion To Supplement Complaint @CF No. 14); a Response
to the september 5,2013 Motion For A More Definite statement @cF No. 12); and a Motion For
Summary Judgment (ECF No. 13).
on october 15,2013, Plaintiff filed a second Response to the september 5, 2013 Motion
For A More Definite Statement that the court considers a Second Amended Complaint. The
October 15, 2013 Second Amended Complaint advised the court that Plaintiff is iepresentine
himself, not the company ATPG Technology. ECF No. 20.
On October 21,2013, the court ganted the September lO, 2013 Motion For A More
Definite statement, because t}'e May l, 2013 complaint, the August 15, 2013 Amended
complaint, and the october 15,2013 Second Amended complaint were so vague and ambiguous
that the Govemment could not prepare an informed Answer. ECF No. zt.
ihat same day, the
Govemment filed a Response To Plaintiff s Motion For Summary Judgment. ECF No. 22.
On November 22,2013, Plaintiff filed a More Definite Statement. ECF No. 24.
on December 20, 2013, the court denied plaintiffsSeptember 20, 2013 Motion For
Summary Judgment, without prejudice, because the Govemment had not filed an Answer. ECF
No. 28.
on December 30, 2013, Plaintifffiled a Motion To Amend And Supplement pleadings of
The More Definite Statement, pusuant to RCFC 15(a)(2). ECF No. 29.
on January r0,2014, the Govemment filed an Answer to the December 30. 2013 Motion
To Amend Pleadings. ECF No. 30. The Govemment treated the December 30,2013 Motion To
Amend Pleadings as filed by leave of court and, therefore, superseding plaintifps November 22,
2013 More Definite Statement. ECFNo.30 atn.1.
On February 7, 2014, the court granted the December 30, 2013 Motion to Amend Pleadings
and ordered the parties to treat that motion as a Third Amended Complaint, superseding all prior
complaints submitted by Plaintiff. ECF No. 32.
On April 30,2014, DHS filed a petition for inter pdrtes review ("lPP|') of the '990 Patent
before the USPTO Patent Trial and Appeal Board ("PTAB").
On May 28,2014, Mr. Ha Kung Wong informed the court that he was counsel of record
for Plaintiff (ECF No. 42) but, on September 12,2014, he withdrew (ECF Nos. 49, 50).
On October 8, 2014, the PTAB filed a Decision To lnstitute IPR of claims 11, 74, and 81
of the '990 Patent. See Department of Homeland Security v. Golden, IPR2014-00714,2014 WL
6999625, at " 1 (P.T.A.B. Oct. 8, 2014). With the exception of a sixty-day stay for Plaintiff to seek
legal representation, the court did not stay this case while PTAB proceedings were ongoing. The
court, however, did not take any substantive action during those proceedings.
On October 1,2015, the PTAB issued a final decision "grant[ing] Patent Owner's Motion
to Amend . . . claims 11,74, and 81 of the '990 Patent, and den[ying] the Motion to Amend . . .
claims 154-156." See Department of Homeland Security v. Golden, IPR2014-00714, 2015 WL
5818910, at *17 (P.T.A.B. Oct. 1, 2015). On November 17,2015, the pTAB denied plaintifps
request for rehearing. see Depqrtment of Homeland securily v. Golden,lpR20l4-00714, 2015
WL 10381775 (P.T.A.B. Nov. 17,2015).
On December 22, 2015, the court convened a telephone status conference to discuss how
the case should proceed in light of the PTAB's final decision. on December 23,2015, the court
granted Plaintiff leave to file anotler amended complaint. ECF No. 65.
on February 12, 2016, Plaintiff filed a Fourth Amended complaint ("2/12/16 Am.
compl.") alleging that, the Govemment: (1) was liable for the infringement of plaintifls '497,
'752,'891, '990, and '189 Patents under 28 u.s.c g 1498(a); and (2) violated the Fifth Amendment
of the United States Constitution by taking plaintiffs ,497,,033,'752,'761, '290, ,g91, ,990,
'l89Patentsandrelated'2T3Application,withoutjustcompensation.2/12/16Am.compl.atflfl
68-127.
The February 12, 2016 Amended complaint identifies over thirfy devices that were
developed or procured, as a result of Govemment solicitations, Govemment contracts. or National
Science Foundation ("NSF") gy.arlts.4 2/12/16 Am. compl. atflf,6g-127 . These devices allegedly
* The relevant devices. are:
M-Lock; High-power Electomagnetic System (..HpEMS',);
Smartphone Microscope; Biophone; Smartphone Biosensor cradle; iFhone Biodetector
smartphone; Pathtracker; the center of Integrated Nanomechanical Systems (,.coINS') Nano-
Embedded sensors; Smartphone-Based Rapid Diagnostic Tests; Lockheea uu.tin K-Max
Unmarured self-flying Helicopter; Boeing MH-6 Little Bird Helicopter; sIN-vApoR I
Smartphone system; samsung Galaxy s6 Microscope Smartphone; vockef System; Nett
warrior
Smartphone System; Northrop Grumman x-47B ucAS r x-478 control Display unit;
GammaPix; NFC Samsung Galaxy s6 smartphone Sensor; cell-All Synkera Iltinorera ultra:
infringe claims in Plaintiff s '497,'752,'891,'990, and'189 Patents. 2112116 Am' Compl. at flfl
68-127.
On April 8,2016, the Govemment filed an Answer to the February 12,2016 Amended
Complaint. ECF No. 74.
On June 3,2016, Plaintiff filed a Motion For Summary Judgment [On] Validity and, on
June 8, 2016, Plaintiff filed a Motion For Entry Of Estimated Damages And Accounting Report.
On June L0,2016 the court convened a telephone status conference. OnJune 13,2016,
based on the arguments raised during the status conference, the court ordered that the Govemment
file a Motion To Dismiss, and stayed the June 3, 2016 Motion For Summary Judgment and June
8, 2016 Motion For Entry Of Estimated Damages And Accounting Report. ECF No. 85.
On June 24,2016, tle Govemment filed a Motion To Dismiss Certain Accused Devices
("Gov't Mot."). On July 5, 2016 Plaintiff frled a Response ("P1. Resp."). On July 18, 2016, the
Government filed a Reply ("Gov't Reply").
UI. STANDARD OFRXVIEW.
A. Standing.
Federal trial courts have been advised to "decide standing questions at the outset of a case.
That order ofdecision (firstjurisdiction then the merits) helps better to restrict the use ofthe federal
courts to those adversarial disputes that Article III defines as the federal judiciary's business."
Steel Co. v. Citizensfor a Better Env't,523 U.S. 83, 111 (1998) (Breyer, J., concurring). The parfy
invoking federal jurisdiction has the burden ofproofto satisfy the constitutional requirements of
Article III standing. See FWPBS, Inc. v. Dallas,493U.5.215,23l (1990) (holding that the burden
is on the party seeking to exercise jurisdiction to clearly allege facts sufficient to establish
jurisdiction).
"A patentee shall have remedy by civil action for infringement of his patent." 35 U.S.C. $
281; see a/so 35 U.S.C. $ 100(d) ("The word 'patentee' includes not only the patentee to whom
the patent was issued but also the successors in title to the patentee."); Paradise Creations, Inc. v.
w sales, lnc.,315 F.3d 1304, 1308 (Fed. cir. 2003) ("[T]his court has determined that in order
to assert standing for patent infringement, the plaintiff must demonstrate that it held enforceable
titie to the patent at the inception of the lawsuit.") (emphasis in original).
Biotouch System; iPhone Biodetector Smartphone; Navy Marine Corps Intranet; FLIR
identiFINDER R300; Aoptix stratus MX Peripheral; MultiRae Pro wireless portable Multi
Threat Radiation and chemical Detector; PositivelD's M-BAND; positivelD's Firefly DX;1,'x2',
Detection Device Samsung Galaxy s6 smartphone; 2"x2" Detection Device Samsung Galaxy s6
smartphone; NetS2 Smartshield G300 Radiation Detector Samsung Galaxy s6 Smartphone;
NetS2 SmartShield G500 Radiation Detector samsung Galaxy s6 Smartphone; and the passport
systems Base control unit; oshkosh Defense Autonomous Unmanned Ground vehicle
TerraMax; and the Variable NODE+Oxa. 2/72/76 Am. Compl. at,lffl 68-127.
The standard set forth by the United states supreme court over a century ago in watetman
v. MacKenzie, 138 U.S. 252 (1891) still govems:
There can be no doubt that he is "the party interested, either as patentee, assignee,
or grantee," and as such entitled to maintain an action at law to recover damages
for an infringement; and it carurot have been the intention of [C]on$ess that a suit
in equity against an infringer to obtain an injunction and an account of profits, in
which the court is authorized to award damages, when necessary to fully
compensate the plaintifi and has the same power to treble the damages as in an
action at law, should not be brought by the same person.
Id. at 260-6I (intemal citations omitted).
The February 12,2016 Complaint alleges that Plaintiffis the sole owner of the'497 ,'033,
'752,"761,'280,'891,'990,and'189Patents.2/12/16An,.Compl.attffl6-7. Therefore,Plaintiff
has standing to seek an adjudication of the claims alleged in the February 12, 2016 Amended
Complaint.
B. Jurisdiction.
The United States Court ofFederal Claims has jurisdiction to adjudicate ciaims alleging.
fthat] an invention described in and covered by a patent ofthe United States is used
or manufactured by or for the United States without license ofthe owner thereof or
lawful right to use or manufacture the same . . . [seeking] recovery of. . . reasonable
and entire compensation for such use and manufacture. [T]he use or
manufacture of [a patenred] invention by a contractor, a subconiractor, or any
person, firm, or corporation /or the Government and with the authorization or
consent ofthe Government, shall be construed as use or manufacture for the United
States.
28 U.S.C. $ 1498(a) (emphasis added).
Infringing activity is "for the Govemment" under section 1498(a) if it is "for the benefit of
the Govemment." Advanced Software Design Corp. v. Federal Reserve Bank of St. Louis, 583
F.3d 1371, 1378 (Fed. Cir.2009); see also Madeyv Duke University,4l3 F. Supp.2d,601,607
(M.D.N.C. 2006) ("A use is 'for the Govemment' if it is 'in furtherance and fulfillment of a stated
Govemment policy' which serves the Government's interests and which is 'for the Govemment's
benefit."' (quoting Riles v. Amerada Hess, Corp.,999 F. Supp. 938,940 (S.D. Tex. 1998)). In
Hughes Aircraft Co. v. United States, 534 F.2d 889 (197 6), for example, the court held that a
satellite program to advance the military defense and security of the United States was "for the
Govemment." Id. at898.
Moreover, "authorization or consent of the Govemment," does not need to be expressly
stated. See TVI Energt Corp. v. Blane,806 F.2d 1057, 1060(Fed. Cir. 1986) ("[a]uthorizarion or
consent by the Govemment can be express [or] [i]n proper circumstances, Government
authorization can be implied."). Indeed, "authorization or consent . . . may be glven m many ways
other than by . . . direct form of communication--e.g., by contracting offrcer instructions, [or] by
specifications . . . which impliedly sanction and necessitate infringement[.]" Hughes Aircraft co,
534 F.2d at 901.
The February 12,2016 Amended Complaint alleges that various nongovemment entities,
including a number ofcorporations and public research universities, infringed the '497,'033,'752,
'761,'280, '891,'990, and'189 Patents. Whether the court has jurisdiction over those claims is
the subject of this Memorandum Opinion And Order.
C. Standard Of Review For Pro ^Se
Litigants.
Pro se plaintiffs' pleadings are held to a less stringent standard than those of litigants
represented by counsel. See Haines v. Kerner,404 U.S. 519, 520 (1972) (holding that pro se
complaints, "however inartfully pleaded," are held to "1ess shingent standards than formal
pleadings drafted by lawyers"). The United States Court ofFederal Claims traditionally examines
the record "to see if la pro sel plaintiff has a cause of action somewhere displayed." Ruderer
v. United States,4I2F.2d, 1285,1292 (Ct. Cl. 1969). Nevertheless, while the court may excuse
ambiguities inapro se plaintifPs complaint, the court "does not excuse [a complaint's] failures."
Henke v. United gtates,60F.3d795,799 (Fed. Cir. 1995). ("The fact that [the plaintiff] acted pro
se in the drafting ofhis complaint may explain its ambiguities, but it does not excuse its failures,
if such there be.").
Apro se plaintiff, however, is not excused from his burden ofproving, by a preponderance
of the evidence, that the court possesses jurisdiction. See McNutt v. Gen. Motors Acceptance
Corp.,298 U.S. 178, 189 (1936) ("[The plaintiff] must allege in his pleading the facts essential to
show jurisdiction."); see also Reynolds v. Army & Air Force Exch. Serv., 846F.2d746,748 (Fed.
Cir. 1988) (fThe pro se plaintiffl bears the burden of establishing subject matter jurisdiction by a
preponderance of the evidence."). The plaintiff cannot rely solely on aliegations in the complaint,
but must bring forth relevant, adequate proofto establish jurisdiction. See Reynolds,846 F.3d at
748 ("Ilt was incumbent upon [the pro se plaintiff] to come forward with evidence establishing
the court's jurisdiction.").
D. Standard Of Review For A Motion To Dismiss, Pursuant To RCFC l2(bxl).
A challenge to the United States Court of Federal Claims' "general power to adjudicate in
specific areas of substantive law . . . is properly raised by a [Rule] 12(b)(1) motion;' Palmer
1). united stat$, 168 F.3d 1310, 1313 (Fed. cir. 1999); see also RCFC l2(b)(l) (allowing a party
to assert, by motion, "lack of subject-matter jurisdiction"). When considering a motion to dismiss
for lack of subject-matter jurisdiction, the court must take the facts alleged in the complaint as true.
See Erickson v. Pardus,55l U.S. 89,93-94 (2007). The court may consider evidence beyond the
pleadings, however, when the motion to dismiss challenges the jurisdictional facts alleged in the
complaint. See Moyer v. US., 190 F.3d 1314, 1318 (Fed. Cir. 1999). If the court determines that
it does not have subject-matter jurisdiction, the court must dismiss the complaint. See RCFC
12(bX1).
E. Standard of Review For Motion To Dismiss, Pursuant To RC['C 12(bX6)'
A claim is subject to dismissal under RCFC 12(bX6), if it does not provide a basis for the
courr to grant relief. see Bell Atl. corp. v. Twombl/, 550 u.s. 544, 555-56 (2007) ("[A well-
pleaded complaint] requires more than labels and conclusions, and a formulaic recitation of the
ofa cause of action will not do. Factual allegations must be enough to raise a right of
"I"-".rtr
relief above the speculative level, on the assumption that all the allegations in the complaint are
true (even if doubtfirl in fact)." (intemal citations omitted)); see also Lindsay v. united states,295
F.3d 1252, 1257 (F ed.Cit.2002) ("A motion to dismiss . . . for failure to state a claim upon which
reliefcan be granted is appropriate when the facts asserted by the claimant do not entitle him to a
legal remedy.").
A complaint must "contain suffrcient factual matter, accepted as true, to 'state a claim to
reliefthat is plausible on its face."' Ashcrofi v. lqba|,556U.5.662,679 (2009) (qtotingTwombly,
550 U.S. at 570). The allegations contained in a complaint also must indicate to the court that
there is "more than a sheer possibility that a defendant has acted unlawfully. Id. "Tbreadbare
recitals of the elements of a cause of action, supported by mere conclusory statements, do not
suffice." 1d. To determine whether a complaint states a plausible claim for relief, a court must
judicial experience and common sense." 1d.
engage in a context-specific analysis and "draw on its
at 678-:79. The court, however, must construe the allegations of the complaint in the light most
favorable to the plaintiff. See Henke v. UnitedStates,60F.3d795,797 (Fed. Cir.1995).
IV. DISCUSSION.
A. The Government's June 24,2016 Motion To Dismiss The February 12,2016
Amended Complaint's M-Lock And HPEMS Claims, Pursuant To RCFC
12(b)(6).
1. The Government's Argument.
The Government argues that, under section 1498(a), a patent owner can sue the United
States for patent infringement only if the United States, a contractor, a subconhactor, a person, or
a corporation uses or manufactures the patented invention (1) for the Govemment and (2) with the
authorization or consent of the Govemment. Gov't Mot. at 3. The February 12,2016 Amended
Complaint alleges that iControl, Inc. ("iControl"), a Govemment contactor, used and
manufactwed a device called M-Lock that ffiinged Plaintiff s '752 md '990 Patents. Gov't Mot.
at 3. The Amended Complaint, however, fails to allege sufficient facts to establish that the
Govemment was directly involved in the manufacture or use of M-Lock or that t}te device was
manufactured for the benefit of the Govemment. Gov't Mot. at 4.
Similarly, the February 12, 2016 Amended Complaint alleges that Eureka Aerospace,
another Government contractor, used and manufactured a device called the High-Powered
Electromagnetic System ("HPEMS") that infringed Plaintiff s '891 Patent. Gov't Mot. at 4.
Plaintiff alleges that the United States Air Force ("USAF") issued a request related to IIPEMS ard
that the United States Marines ("Marines") are a potential customer of the device, but otherwise
fails to allege any manufacture or use "by or for the Govemment." Gov't Mot. at 4.
Accordhgly, the February 12,2016 Amended complaint's M-Lock and HPEMS claims
do not assert sufficient facts to entitle Plaintiffto a remedy under section 1498(a). Gov't Mot. at
4. Those claims should therefore be dismissed, pursuant to RCFC 12(bX6). Gov',t Mot. at 4.
2. Plaintiff s Response'
Plaintiffargues that the Govemment's manufacture or use of an infringing device generally
results from procurement contracts. Pl. Resp. at 6. Moreover, when purchasing goods and services
from a contractor, the Government seeks to acquire the best product without delay and "will not
refuse to award a contract on the grounds that the prospective contactor may infringe a patent."
Pl. Resp. at 6 (quoting 48 C.F.R. 27 .l02bD. Plaintiff does not explicitly apply these ruies to the
facts alleged in the February 12,2016 Amended complaint. Bu! his argument appears to be that
the existence of a contract between the Govemment and iControl and Eureka Aerospace for the
development of infringing devices supports a reasonable inference that the manufacture and use
of the devices was "for the Govemment" and "with the authorization and consent of the
Government." 28 U.S.C. $ 1498(a).
3. The Government's RePlY.
The Government replies that Plaintiff did not address "[the Amended Complaint's] failue
to state with particularity a cause of action for which reliefcan be granted relating to the M-l.ock
Device or the [HPEMS]." Gov't Reply at 2'
4. The Court's Resolution.
a. The Government's June 24' 20!6 Motion To Dismiss The
February 12, 2016 Amended Complaint's M-Lock Claims,
Pursuant To RCFC 12(bX6)' Is Denied.
The Govemment argues that the M-Lock claims should be dismissed, pursuant to RCFC
12(bX6), because the February 12,2016 Amended complaint does not allege that M-Lock was
manufactured for the benefit of the Govemment. Gov't Mot. aI4. The court disaglees.
viewed in the light most favorable to Plaintiff, the February 12,2016 Amended complaint
alleges sufficient facts to raise a plausible right of relief rurder section 1498(a). See Iqbal' 556
IJ .5. at 677 . "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."
Id. at 678. The February 12,2016 Amended Complaint alleges that DHS, a federal agency,
contracted with iControl "for the development[,] commercialization [and purchase] of . . . M-
Lock," an automated locking device that contains "a movement sensor, a tempelature sensot, a
humidity sensor, an infrared sensor, a radioactivity detection sensor, an acoustic sensor, [and/or] a
chemical detection sensor;' 211212016 Am. Compl. nn74-'15. The February 12,2016 Amended
complaint alleges that M-Lock infringes several claims of Plaintiff s '752 md '990 Patents,
disclosing inventions that that automatically detect chemical, biological, and radiological agents
so that tenorist activity can be prevented. See 2112/16 Am. Compl. Ex. D at 16; see also 2 112116
Am. Compl. Ex. H at 17. And the February 12, 2016 Amended Complaint alleges that the
infringing device is being used and manufactured without license or legal right. 211212016 Am-
Compl. fl 75.
Based on the alleged facts, the court can reasonably infer that iControl is a governrnent
contractor and that the manufacture and use of M-Lock was "for tlle benefit of [DHS]." see
Advanced Software Design Corp.,583 F.3d at 1378. In light ofthe allsgation that the inventions
disclosed in patents '752 and '990 were designed to prevent terrorist activity, it is plausible that
iConhol manufactured an infringing device for the benefit ofDHS to promote national security'
see, e.g., Hughes Aircraft Co.,534 F.2d at 898 (finding that the government's participation in a
satelG progiam was "for the Government," because the program was vital to the military defense
and security ofthe United States). Moreover, under section 1498(a), "Government authorization
or consent" can be implied by circumstances . See TVI Energt Corp , 806 F.2d at 1060'
In this case, the February 12,2016 Amended Complaint alleges that DHS contracted with
iControl to develop and commercialize M-Lock. This contractual relationship supports a
reasonable inference that the Govemment authorized the manufacture and use of the infringing
device.
b. The Government's June 24, 2016 Motion To Dismiss The
February 12, 2016 Amended Complaint's HPEMS Claims,
Pursuant To RCf'C 12(bX6), Is Denied'
The Govemment also argues that the February 12,20t6 Amended complaint's HPEMS
claims should be dismissed, because they do not allege that Eureka Aerospace manufactured or
used the HPEMS "for the Govemment." Gov't Mot. at 4. Again, the court does not agree with
the Govemment's contention. The February 12, 2016 Amended Complaint alleges that "as a result
of [] contracts with [USAF] . . . for the development and commercialization of the Eureka
Aerospace HPEMS, tle United states has used, authorized the use, and manufactured, without
license or legai right, to Plaintiff s inventions [disclosed in patent'891]." 2112116 Am. lompl. fl
87. The HPEMS is a device that shoots an electromagnetic pulse so that vehicles can be disabled,
without using firearrns. ,See 2112116 Arn Compl fl 86.
In light of these allegations, the court can reasonably infer that Eureka Aerospace's
manufacture and use of the HPEMS advances the military defense and security of the United States
and is thus..for the benefit of the Govemment." see, e.g., Hughes Airoaft co.,534 F.2d at 898.
Moreover, construed in the light most favorable to Plaintiff, the February 12,2016 Amended
Complaint alleges that USAF contracted with Eureka Aerospace to develop and commercialize
tn" fipgntS-*fficient facts to support a reasonable inference that USAF implicitly authorized
the manufacture and use ofthe infringing device. See TVI Energy Corp.,806 F.2d at 1060.5
5 While the February 12, 2016 Amended Complaint does not clearly state whether
USAF issued a solicitation for the HPEMS or awarded Eureka Aerospace a contract to develop
that device, the court must interpret a complaint in the iight most favorable to the plaintiff, when
ruling on a motion to dismiss, pursuant to 12(bx6). see Henke,60 F.3d at 797. Therefore, the
court reads the February 12, 2016 Amended Complaint to allege that the Govemment awarded
Eureka Aerospace a contract to develop and commercialize the HPEMS'
10
For these reasons, the court denies the Govemment June24,20l6 Motion To Dismiss the
February 12, 2016 Amended complaint's M-Lock and HPEMS claims, pursuant to RCFC
12(b)(6).
B. The Government's June 24,2016 Motion To Dismiss The February 12' 2016
Amended Complaint's National Science Foundation Clairns, Pursuant To
RcFc u(b)(l) and 12(b)(6).
1. The Government's Argurnent.
The Govemment contends that, under section 1498(a), "merely funding an activity does
not establish the Govemment's authorization and consent [to manufacture or use an infringing
devicel.,' Gov,t Mot. at 5. The February 12, 2016 Amended complaint alleges that the
Govemment funded the development of multiple infringing devices through a series of NSF grants
(,NSF claims"), but does not allege any other facts 1o establish the Government's authorization or
consent to the manufacture oruse ofthose devices.6 Gov'tMot. at 5. Moreover' the February 12,
2016 Amended Complaint does not allege that the NSF-funded devices were used or manufactured
"by or for the Government." Gov't Mot. at 5. Therefore, the February 12' 2016 Amended
Complaint's NSF claims should be dismissed for failure to state a claim upon which relief can be
granted. Gov't Mot. at 5.
The Govemment also argues-without additional explanation-that the court should
dismiss the NSF ciaims for lack of subject matter jurisdiction' Gov't Mot. at 5.
2. Plaintiff s Response.
Plaintiff responds that "[g]rant related agreements [are] contracts within Tucker Act
jurisdiction when all the requisite elements of a contract were present, including a government
representative with actual authority to bind the govemment in contract." Pl. Resp. at 7 (quoting
Pennsylvania Dep't ofPub. llelfare v. United States,48 Fed. Cl. 785,790 (2001) ("[g]rant related
agreements have been held to be contracts within Tucker Act jurisdiction when all the requisite
elements of a contract were present, including a govemment representative with actual authority
to bind the goverffnent in contract.")). The February 1.2,2016 Amended Complaint's NSF claims
facially involve grant related agreements. Pl. Resp. at 8-9. Therefore, the United States Court of
Federal Claims has jurisdiction, under the Tucker Act, to adjudicate those claims. Pl. Resp. at 8.
Plaintiff also argues that the Govemment's award of NSF grants for the development of
infringing devices supports a reasonable inference that the manufacture and use ofthose devices
was "for the Government" and "with the authorization and consent of the Govemment." Pl. Resp.
at I 0-l 1.
6
The accused devices are: the Smartphone Microscope, Gov't Mot. at 5; Biophone, Gov't
Mot. at 6; Smartphone Biosensor "Cradle", Gov't Mot. at 6; iPhone Biodetector Smartphone,
Gov't Mot. at 7; Pathtracker, Gov't Mot. at 7; COINS, Gov't Mot. at 8; and Smartphone-Based
Rapid Diagnostic Test Devices, Gov't Mot. at 8.
1i
3. The Government's RePlY.
The Govemment concedes that NSF Research Grant Awards may be treated as contacts
to establish jurisdiction under the Tucker Act, but argues that the existence of a contract is not
sufficient to establish liability under section 1498(a). Gov't Reply at2. Section 1498(a) allows a
patent holder to sue the Government only if the infringing manufacture or use of the relevant
invention was "for the Govemment" and "with the authorization or consent of the Govemment "
Some courts have found that the terms ofaNSF grant can satisfy section 1498(a). Gov't Reply at
2 (citing McMullen Assoc., Inc. v. State Bd. Of Higher Ed.,268 F. Supp. 735 (D Or' 1967))' The
gants ;t issue in those cases, however, reserved property rights in the infiinging device to the
Govemment. Gov't Reply at 2. The Febru ary 12,2016 Amended complaint does not allege that
the Govemment retained a property right in any ofthe accused devices and fails to allege any other
facts that could plausibly establish that the manufacture or use ofthe patented invention was "for
the Govemmenti'and "with the authorization or consent of the Govemment." Gov't Reply at 2-
3.
4. The Court's Resolution.
a, The June 24,2016 Motion To Dismiss The X'ebruary 12,2016
Amended Complaint's National Science Foundation Claims,
Pursuant To RCFC 12(b)(1)' Is Denied.
Under the Tucker Act, the United States Court of Federal Claims has jurisdiction to
adjudicate a claim if the statute, regulation, or constitutional provision that is the basis for that
claim "can fairly be interpreted as mandating compensation by the Federal Govemment for the
damage sustaine d,,' united states v. Mitchell,463 rJ.s.206,217 (1983), and the plaintiff is "within
the class of plaintiffs entitled to recover under the statute if the elements of [the] cause of action
are established," Greenlee County, Arizona v. (Inited States,487 F.3d 871,876 (Fed. Cir. 2007).
"There is no firther jurisdictional requirement that plaintiff make [] additional nonfrivolous
allegation[s] that [he] is entitled to relief under the relevant money-mandating source." .,rdn 's
Helicopter Serv., Inc. v. Federal Aviation Agency. 525 F.3d 1299,1307 (Fed. Cir. 2008). Instead,
"the consequence ofa ruling by the court . . . that plaintiff s case does not fit within the scope of
the [money-mandating] source . . . is simply fthat] plaintiff loses on the merits for failing to state
a claim on which relief can be granted." Fisher v. United States,402F.3d116'7,1I75-76 (Fed.
Cir.2005).
Here, the February 12, 2016 Amended Complaint's NSF claims are based on section
1a98(a), a statute that is money-mandating on its face' See 28 U.S.C. $ 1498(a) ("Whenever an
invention described in and covered by a patent ofthe United States is used or manufactured by or
for the United States without license of the owner thereof or lawful right to use or manufacture the
same, the owner's remedy shall be by action against the United States in the United States Court
of Federal Claims for the recovery of his reasonable and entire compensation for such use and
manufacture.") (emphasis added). Furthermore, Plaintiffis the owner of the United States patents
asserted in this case and is therefore entitled to recover under section 1498(a). See 28 U.S.C. $
1498(a).
12
Accordingly, the court has jurisdiction to adjudicate the February 12,20t6 Amended
complaint's NSF claims. The Government's June 24, 2016 Motion To Dismiss, pursuant to
12(bX1), is denied.
b. The June 24,2016 Motion To Dismiss The February 12,2016
Amended Complaint's National Science Foundation Claims,
Pursuant To RCF'C 12(bX6), Is Denied.
The February 12,2016 Amended Complaint's NSF claims allege sufficient facts to support
a reasonable inference that the manufacture and use of the accused devices was "for the
Govemment." see lqbat,556 U.S. at 678. The NSF claims allege that the Govemment awarded
research grants to develop portable devices that can: (1) identify dangerous chemical, radiological,
and bacte;ial agents; and (2) track the spread of disease.T Based on the alleged facts, it is plausible
that the accused devices were used to further the military defense, national security, and public
health interests of the United States: policies that the Govemment has a fundamental interest in
advancing. Accordingly, the court can reasonably infer that the use of the NSF-funded devices
was ..for the Govemment;' see, e.g., Hughes Aircrafi co., 534 F.2d at 898 (finding that the
govemment's participation in a satellite program was "for the Govemment," because the program
was vital to the military defense and security ofthe United States); see also Madey,413 F. Supp.
2d at 607 (M.D.N.C. 2006) (explaining that a use is "for the Govemment" if it is in furtherance
and fulfillment of a stated Govemment poiicy and for the Govemment's benefit).
The February 12, 2016 Amended Complaint's NSF claims also allege suffrcient facts to
plausibly establish that the use of the accused devices was "with the authorization or consent of
the Government." Authorization or consent can be implied from the circumstances-"e.g., by
contracting officer instructions, [or] specifications or drawings which impliedly sanction and
necessitate infringement." Hughes Aircraft Co., 534 F.2d at 901. For example, in TVI Energt
Corp., the United States Court of Appeals for the Federal Circuit held that the Government
impliedly sanctioned the use of a patented invention when it issued a solicitation that required
bidders to submit for inspection, and perform live demonstrations of, the accused device. See TVI
Energy Corp.,806 F.2d at 1060.
In this case, the relevant NSF grants anticipate that the awardees will develop and test the
devices proposed in their applications. See, e.g., NSF Award No. 1444240 ('Annual and Final
7
The relevant NSF grants are being used to develop: "a portable smartphone attacbment
that can be used to perform sophisticated field testing to detect viruses and bacteria," 2112116 Am.
Compl. tl78; "[a device] that derives biological signals from your smartphone's acceierometer . . .
[and] [t]his informalion is useful to base medical diagnoses in rcal-life conditions and to help track
chronic health conditions and effects of therapeutic interventions," 2/12/16 Am' Compl. fl80; "a
cradle and app for the iPhone to make a handheld biosensor that uses the phone's own camera and
processing power to detect any kind of biological molecules or cells," 2112116 An'. Compl. !f92; a
handheld instrument to help contain the spread of Ebola, Hlv, Tuberculosis, andMalaia,2ll2/16
Am. Compl. '1f 102; "[a portable device for] real-time detection of explosives, toxicants, and
radiation," 2112/16 Am. Compl. lfl22; "highly sensitive rapid medical diagnostic tests," 2112/16
Am. Compl. fl126.
IJ
project reports, as required in the NSF Grant Conditions, should document all efforts and
outcomes, whether or not they are successful."). Govemment funding of research that will lead to
the development and testing of an accused device supports a reasonable inference that the
Govemment impliedly sanctioned infringing activity.
v. coNcLUsIoN.
For the reasons discussed herein, the Govemment's Jlur:.e 24,2016 Motion To Dismiss
Certain Devices, pursuant to RCFC 12(bX1) and 12(b)(6), is denied.
Plaintiff, however, is cautioned that the court's ruling today is based on the standard of
review on sufficiency ofthe pleading alone and is not to be construed as a ruling on the substantive
merits of the patent infringement claims alleged in the February 12, 2016 Amended Complaint.
The court will convene a telephone status conference in the next few days to discuss a schedule to
move this case towards adiudication.
IT IS SO ORDERED.
An J---
\At '
.''...........................|-
SUSAN G/BRADEN
Judge
14