"Fact-finding is proper when considering a motion to dismiss where the jurisdictional facts in the complaint ... are challenged."
How later courts described this case
- "Fact-finding is proper when considering a motion to dismiss where the jurisdictional facts in the complaint ... are challenged."
- holding that implied authorization or consent "may be found under the following conditions: (1) the [G]overnment expressly contracted for work to meet certain specifications; (2) the specifications cannot be met without infringing on a patent; and (3
- "[A]uthorization or consent requires explicit acts or extrinsic evidence sufficient to prove the [G]overnment's intention to accept liability for a specific act of infringement."
- determining that, with regard to federal graots, "the [G]overnment does not procure any property or services for its direct use, rather it provides funding"
Written by the judges who cited it.
The opinion
FILED
MAR 2 9 2018
U.S. COURT OF
FEDERAL CLAIMS
3Jn tbe Wntteb ~tates q[:ourt of jfeberal q[:Iatms
No . 13-307C
Filed: March 29, 2018
************************************* 45 C.F.R. § 75.435(h) (Uniform
* Administrative Requirements);
* 48 C.F.R. § 2.lOl(b) (Federal Acquisition
* Regulations Definitions);
* 28 U.S.C. §§ 1491(a) (Tucker Act
* Jurisdiction), 1498(a) (Patent
* Infringement Jurisdiction), 1927
* (Liability for Excessive Costs);
* 31 U.S.C. §§ 6303 (Using Procurement
* Contracts), 6304 (Using Grant
LARRY GOLDEN, * Agreements), 6305 (Using
* Cooperative Agreements);
Plaintiff, pro se, * 35 U.S.C. §§ 102 (Novelty), 103
* (Obviousness), 11 l(a),(b)
v. * (Application for Patent), 120 (Benefit
* of Earlier Filing Date), 251 (Reissue
THE UNITED STATES, * of Defective Patents), 252 (Effect of
* Reissue);
Defendant. * Manual of Patent Examining Procedure
* (9th ed. 2015); and
* Rule of the United States Comt of
* Federal Claims 12(b)(l)
* (Jurisdiction), 12(b)(6) (Failure to
* State a Claim), 12(h)(3) (Lack of
* Subject-Matter Jurisdiction), 15(a)
* (Amendments Before Trial), 41 (b)
* (Dismissal of Actions), 56(e), (f)
* (Summary Judgment).
*************************************
Larry Golden, Greenville, South Carolina, prose .
Nicholas Jae-Ryoung-Kim, United States Department of Justice, Civil Division, Washington,
D.C., Counsel for the Government.
MEMORANDUM OPINION AND ORDER GRANTING-IN-PART AND
DENYING-IN-PART THE GOVERNMENT'S MOTION FOR PARTIAL DISMISSAL
BRADEN, ChiefJudge.
To facilitate review of this Memorandum Opinion And Order, the court has provided the
following outline.
I. RELEVANT FACTUAL BACKGROUND.
A. The Prosecution History Of The Relevant United States Patent Applications.
B. National Science Foundation Grants And Cooperative Agreements.
C. National Institutes Of Health Grants.
II. PROCEDURAL HISTORY.
III. STANDARD OF REVIEW.
A. Jurisdiction.
B. Standard Of Review For A Motion To Dismiss Under RCFC 12(b)(l).
C. Standard Of Review For A Motion To Dismiss Under RCFC 12(b)(6).
D. Standard Of Review For Pro Se Litigants.
IV. DISCUSSION.
A. Whether Certain Patent Infringement Allegations In The August 10, 2017 Fifth
Amended Complaint Should Be Dismissed Under RCFC 12(b)(l) And 12(b)(6).
1. Patent Infringement Allegations In The August 10, 2017 Fifth Amended
Complaint.
2. The Government's Argument.
3. Plaintiffs Response And Motion For Leave To File A Motion For
Summary Judgment.
4. The Government's Reply And Opposition To Plaintiffs Motion For Leave
To File A Motion For Summary Judgment.
5. Plaintiffs Reply.
6. The Court's Resolution.
a. Governing Precedent.
b. Patent Infringement Allegations Concerning National Science
Foundation Grants And Cooperative Agreements Must Be
Dismissed Under RCFC 12(b)(l).
i. Regarding National Science Foundation Grants.
ii. Regarding National Science Foundation Cooperative
Agreements.
c. Patent Infringement Allegations Concerning National Institutes Of
Health Grants Must Be Dismissed Under RCFC 12(b)(l).
d. Patent Infringement Allegations Concerning The Government's
Alleged Use Of"Smartphones And Other Consumer Devices"
Must Be Dismissed Under RCFC 12(b)(l) And 12(b)(6).
2
e. Patent Infringement Allegations Concerning Broad Agency
Announcements Must Be Dismissed Under RCFC 12(b)(6).
f. Patent Infringement Allegations Concerning The '033 Patent Must
Be Dismissed Under RCFC 12(b)(l).
g. Patent Infringement Allegations Concerning Unissued Patent
Applications And Pre-Issuance Use Or Manufacture Must Be
Dismissed Under RCFC 12(b)(l).
h. Patent Infringement Allegations Concerning The '761, '280, And
'189 Patents Must Be Dismissed Under RCFC 12(b)(6).
V. CONCLUSION.
3
I. RELEVANT FACTUAL BACKGROUND. 1
A. The Prosecution History Of The Relevant United States Patent Applications.
On April 5, 2006, Larry Golden filed U.S. Patent Application No. 11/397,118 (the "'118
Application"), entitled "Multi Sensor Detection And Lock Disabling System," with the United
States Patent and Trademark Office (the "USPT0"). 2 2/12/16 Am. Comp!. Ex. B. The '118
Application "pertain[ed] to anti-terrorist detection and prevention systems, and more particularly
pertain[ed] to a disabling lock mechanism combined with a chemical/biological/radiological
detection system for use with products grouped together by similar characteristics in order to
prevent unauthorized entry, contamination[,] and terrorist activity." 2/12/16 Am. Comp!. Ex. B.
On June 6, 2008, Mr. Golden filed a continuation-in-part3 of the '118 Application, U.S.
Patent Application No. 12/155,573 (the "'573 Application"). 2/12/16 Am. Comp!. Ex. C.
On June 10, 2008, the USPTO issued the '118 Application, as U.S. Patent No. 7,385,497
(the '"497 Patent"). 2112/16 Am. Comp!. Ex. B.
1
The relevant facts discussed herein were derived from: exhibits attached to the February
12, 2016 Amended Complaint ("2/12/16 Am. Comp!. Ex. A-I"); the August 10, 2017 Fifth
Amended Complaint ("8/10/17 Am. Comp!."); and exhibits attached to the Government's October
20, 2017 Motion For Partial Dismissal ("10/20/17 Gov't Mot. Ex. 1-22"). See 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."); see also
Ferreira v. United States, 350 F.3d 1318, 1324 (Fed. Cir. 2003) (the trial court "may weigh
relevant evidence when it considers a motion to dismiss that challenges the truth of jurisdictional
facts alleged in a complaint").
2
The examination of a patent application at the USPTO
begins with the applicant filing the application itself. ... [T]his application can be
one of two basic types. The usual course is to file a regular application[, i.e., a
nonprovisional application,] under [35 U.S.C. §] 11 l(a). The statute has
been ... amended, however, to permit the filing of a provisional application as set
out in [35 U.S.C. §] 11 l(b). This latter form of application is not itself subject to
examination, although it can be followed by a regular application within a year.
The provisional application is in the nature of a domestic priority document.
R. CARLMOY,MOY'S WALKER ON PATENTS§ 3:3 (4th ed. 2003).
3
"A continuation-in-part is an application filed during the lifetime of an earlier
nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional
application and adding matter not disclosed in the said earlier nonprovisional application."
MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") § 201.08 (9th ed. 2015).
4
On December 22, 2009, the USPTO issued the '573 Application, as U.S. Patent No.
7,636,033 (the "'033 Patent"). 2/12116 Am. Comp!. Ex. C.
On January 20, 2010, Mr. Golden filed a continuation4 of the '573 Application, U.S. Patent
Application No. 12/657,356 (the "'356 Application"). 2112116 Am. Comp!. Ex. D.
On May 27, 2010, Mr. Golden filed a continuation of the '356 Application, U.S. Patent
Application No. 12/802,001 (the "'001 Application"). 2/12/16 Am. Comp!. Ex. E.
On March 31, 2011, Mr. Golden filed a reissue application 5 of the '033 Patent, U.S. Reissue
Application No. 13/065,837 (the "'837 Application"). 2/12/16 Am. Comp!. Ex. G.
On September 9, 2011, Mr. Golden filed a second reissue application of the '03 3 Patent,
U.S. Reissue Application No. 13/199,853 (the "'853 Application"). 2/12/16 Am. Comp!. Ex. H.
On November 3, 2011, Mr. Golden filed a divisional application6 of the '001 Application,
U.S. Patent Application No. 13/288,065 (the "'065 Application"). 2/12/16 Am. Comp!. Ex. F.
On January 31, 2012, the USPTO issued the '356 Application, as U.S. Patent No. 8,106,752
(the "'752 Patent"). 2/12/16 Am. Comp!. Ex. D.
4
"A continuation application is an application for the invention(s) disclosed in a prior-filed
copending nonprovisional application.... The disclosure presented in the continuation must not
include any subject matter which would constitute new matter if submitted as an amendment to
the parent application." MPEP § 201.07.
Although Mr. Golden filed the '356 Application as a "continuation" of the '573
Application, the '356 Application was filed after issuance of the '573 Application, i.e., when the
'573 Application was no longer pending. See 35 U.S.C. § 120 ("An application for patent for an
invention disclosed ... in an application previously filed in the United States, ... shall have the
same effect, as to such invention, as though filed on the date of the prior application, iffiled before
the patenting or abandonment of or termination of proceedings on the first application or on an
application similarly entitled to the benefit of the filing date of the first application[.]" (emphasis
added)); see also MPEP § 201.07.
5 Defective patents may be corrected by "reissue." See 35 U.S.C. § 25l(a) ("Whenever
any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a
defective specification or drawing, or by reason 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
of the fee required by law, reissue the patent for the invention disclosed in the original patent, and
in accordance with a new and amended application, for the unexpired part of the term of the
original patent.").
6
A divisional application is "[a] later application for an independent or distinct invention,
carved out of a nonprovisional application . . . disclosing and claiming only subject matter
disclosed in the earlier or parent application[.]" MPEP § 201.06.
5
On December 18, 2012, the USPTO issued the '001 Application, as U.S. Patent No.
8,334,761 (the "'761 Patent"). 2112/16 Am. Comp!. Ex. E.
On January 1, 2013, the USPTO issued the '837 Application, as U.S. Reissue Patent No.
RE43,891 (the "'891 Patent"). 2112/16 Am. Comp!. Ex. G.
On February 12, 2013, the USPTO issued the '853 Application, as U.S. Reissue Patent No.
RE43,990 (the '"990 Patent"). 2112/16 Am. Comp!. Ex. H.
On September 9, 2013, Mr. Golden filed a continuation of the '065 Application, U.S. Patent
Application No. 14/021,693 (the "'693 Application"). 2/12/16 Am. Comp!. Ex. I.
On September 10, 2013, the USPTO issued the '065 Application, as U.S. Patent No.
8,531,280 (the "'280 Patent"). 2/12/16 Am. Comp!. Ex. F.
On July 23, 2015, Mr. Golden filed a continuation of the '693 Application, U.S. Patent
Application No. 14/806,988 (the "'988 Application). 8/10/17 Am. Comp!. , 36; see also U.S.
Patent No. 9,589,439.
On August 4, 2015, the USPTO issued the '693 Application, as U.S. Patent No. 9,096,189
(the "'189 Patent"). 2112/16 Am. Comp!. Ex. I.
On March 6, 2017, Mr. Golden filed a continuation of the '988 Application, U.S. Patent
Application No. 15/530,839 (the "'839 Application"). 8/10/17 Am. Comp!., 3.
On March 7, 2017, the USPTO issued the '988 Application, as U.S. Patent No. 9,589,439
(the "'439 Patent"). 8/10/17 Am. Comp!., 36; see also '439 Patent.
On June 29, 2017, the USPTO published the '839 Application, as U.S. Publication No.
2017/0186259. 8/10/17 Am. Comp!. ,3.
As a result of the aforementioned USPTO actions, Mr. Golden became the "sole owner of
the entire right, title, and interest in and to" the '497, '033, '752, '761, '891, '990, '280, '189, and
'439 Patents, as well as the '839 Application. 8/10117 Am. Comp!., 38; see also 2112116 Am.
Comp!. Ex. B-I.
The following Court Exhibit A shows the order in which each of the aforementioned patent
applications was filed by Mr. Golden and issued by the USPTO.
6
COURT EXHIBIT A
PATENT ISSUED PATENTS REISSUE
APPLICATIONS APPLICATIONS
The '118 Application
(Filed: 4/5/2006)
The '573 Application
(Filed: 6/6/2008)
The '497 Patent
(Issued: 6/10/2008)
The '033 Patent
(Issued: 12/22/2009)
The '356 Application
(Filed: 1/20/2010)
The '837 Application
The '001 Application
(Filed: 3/31/2011)
(Filed: 5/27/2010)
The '853 Application
The '065 Application
(Filed: 9/9/20 II)
(Filed: 11/3/2011)
The '752 Patent
(Issued: 1/31/2012)
The '761 Patent
(Issued: 12/18/2012)
The '891 Patent
(Issued: 1/1/2013)
The '990 Patent
(Issued: 2112/2013)
The '693 Application
(Filed: 9/9/2013)
The '280 Patent
(Issued: 9/10/2013)
The '988 Application
(Filed: 7/23/2015)
The '189 Patent
(Issued: 8/4/2015)
The '839 Application
(Filed: 3/6/2017)
The '439 Patent
(Issued: 3/712017)
7
B. National Science Foundation Grants And Cooperative Agreements.
In July 2004, the National Science Foundation (the "NSF")7 issued "Cooperative
Agreement Financial & Administrative Terms and Conditions" (the "2004 CA-FATCs"), to advise
recipients that the "NSF cannot assume any liability for accidents, illnesses, injuries, or claims
arising out of, or related to, any activities supported by an award or for unauthorized use of
patented or copyrighted materials." 10/20/17 Gov't Mot. Ex. 15 (Article 38).
On September 1, 2004, the NSF awarded Cooperative Agreement No. EEC-0425914,
"Integrated Nanomechanical Systems (COINS)," to the University of California, Berkeley ("UC
Berkeley"), incorporating the 2004 CA-FATCs. 10/20/17 Gov't Mot. Ex. 20.
On July 1, 2007, the NSF issued "Cooperative Agreement Financial & Administrative
Terms and Conditions" (the "2007 CA-FATCs"), to advise recipients that the "NSF cannot assume
any liability for accidents, illnesses, injuries, or claims arising out of, or related to, any activities
supported by an award or for unauthorized use of patented or copyrighted materials." 10/20/17
Gov't Mot. Ex. 15 (Article 39).
On September 1, 2009, the NSF awarded Cooperative Agreement No. EEC-0832819, "The
Center of Integrated Nanomechanical Systems (COINS) Renewal Years 6-1 O," to UC Berkeley,
incorporating the 2007 CA-FATCs. 10/20/17 Gov't Mot. Ex. 21.
On January 4, 2010, the NSF issued "Research Terms & Conditions" (the "2010 RT&Cs"),
to advise recipients that the "NSF cannot assume any liability for accidents, illnesses or claims
arising out of any work supported by an award or for unauthorized use of patented or copyrighted
materials." 10/20/17 Gov't Mot. Ex. 15 (Article 25).
On August 19, 2010, the NSF awarded Grant No. CCF-1029585, "Collaborative Research:
Computational Behavioral Science: Modeling, Analysis, and Visualization of Social and
Communicative Behavior," to the Massachusetts Institute of Technology ("MIT"), incorporating
the 2010 RT&Cs. 10/20/17 Gov't Mot. Ex. 6.
On January 14, 2013, the NSF issued "Research Terms & Conditions" (the "2013
RT&Cs"), to advise recipients that the "NSF cannot assume any liability for accidents, illnesses
or claims arising out of any work supported by an award or for unauthorized use of patented or
copyrighted materials." 10/20/17 Gov't Mot. Ex. 15 (Article 32).
7
The NSF is "an independent federal agency created by Congress in 1950 'to promote the
progress of science; to advance the national health, prosperity, and welfare; to secure the national
defense[.]' ... With an annual budget of $7.5 billion (FY 2017), [the NSF is] the funding source
for approximately 24 percent of all federally supported basic research conducted by America's
colleges and universities." About the National Science Foundation, NAT'L Sci. FOUND.,
https://www.nsf.gov/about/ (last visited March 7, 2018).
8
On January 14, 2013, the NSF also awarded Grant No. CBET-1264377, "Multimode
Smartphone Biosensor," to the University of Illinois at Urbana-Champaign ("UIUC"),
incorporating the 2013 RT&Cs. 10/20/17 Gov'tMot. Ex. 7.
On July 16, 2013, the NSF awarded Grant No. EFRI-1332275, "EFRI-BioFlex: Cellphone-
based Digital Immunoassay Platform for High-throughput Sensitive and Multiplexed Detection
and Distributed Spatio-Temporal Analysis of Influenza," to the University of California, Los
Angeles ("UCLA"), incorporating the 2013 RT&Cs. 10/20/17 Gov't Mot. Ex. 11.
On March 7, 2014, the NSF issued "Research Terms & Conditions" (the "2014 RT&Cs"),
to advise recipients that the "NSF cannot assume any liability for accidents, illnesses or claims
arising out of any work supported by an award or for unauthorized use of patented or copyrighted
materials." 10/20/17 Gov'! Mot. Ex. 15 (Article 34).
On June 13, 2014, the NSF awarded Grant No. CBET-1444240, "EAGER: Mobile-phone
based single molecule imaging of DNA and length qualification to analyze copy-number variations
in genome," to UCLA, incorporating the 2014 RT &Cs. 10/20/17 Gov't Mot. Ex. 10.
On July 3, 2014, the NSF awarded Grant No. CBET-1447893, "EAGER: Lab-in-a-
Smartphone," to UIUC, incorporating the 2014 RT&Cs. 10/20/17 Gov't Mot. Ex. 8.
On July 25, 2014, the NSF awarded Grant No. IIP-1450552, "I-Corps: Nanophosphors as
Ultra-Sensitive Lateral Flow Reporters in a Lab-on-Phone Platform," to the University of Houston
("UH"), incorporating the 2014 RT&Cs. 10/20/17 Gov't Mot. Ex. 12.
On August 11, 2014, the NSF awarded Grant No. CBET-1343058, "INSPIRE Track 2:
Public Health, Nanotechnology, and Mobility (PHeNoM)," to Cornell University ("Cornell"),
incorporating the 2014 RT&Cs. 10/20/17 Gov't Mot. Ex. 9.
On December 26, 2014, the NSF issued "Grant General Conditions (GC-1)" (the "2014
GGCs"), to advise recipients that the "NSF cannot assume any liability for accidents, bodily injury,
illness, breach of contract, any other damages or loss, or any claims arising out of activities
undertaken pursuant to the grant, whether with respect to persons or property of the grantee or
third parties." 10/20/17 Gov't Mot. Ex. 15 (Section 45).
On August 6, 2015, the NSF awarded Grant No. 1533983, "PFI: BIC Human-Centered
Smart-Integration of Mobile Imaging and Sensing Tools with Machine Leaming for Ubiquitous
Quantification of Waterborne and Airborne Nanoparticles," to UCLA, incorporating the 2014
GGCs. 10/20/17 Gov'tMot. Ex. 13.
On August 22, 2015, the NSF awarded Grant No. 1534126, "PFI: BIC-Pathtracker: A
smartphone-based system for mobile infectious disease detection and epidemiology," to UIUC,
incorporating the 2014 GGCs. 10/20/17 Gov't Mot. Ex. 14.
9
C. National Institutes Of Health Grants.
On February 18, 2014, the National Institutes of Health (the "NIH") 8 awarded Grant No.
1R43AI107984-01Al, "A Sensitive and Serotype-Specific Dengue Diagnostic Test for Low-
Resource Setting," to AI Biosciences, Inc. 10/20/17 Gov't Mot. Ex. 19.
On January 20, 2015, the NIH awarded Grant No. 1R43CA193096-01, "KS Detect: A
solar-powered and smartphone integrated instrument for point-of-care diagnosis of Kaposi's
sarcoma," to A' AS Inc. 10/20/17 Gov't Mot. Ex. 18. This grant was "subject to"
45 C.F.R. § 75.435(h). 9 10/20/17 Gov't Mot. Ex. 18.
On December 23, 2015, the NIH awarded Grant No. 1R21AI120973-0l, "Field-deployable
Assay for Differential Diagnosis of Malaria and Viral Febrile Illnesses," to Sandia National
Laboratories. 10/20/17 Gov't Mot. Ex. 16. This grant also was "subject to" 45 C.F.R. § 75.435(h).
10/20/17 Gov't Mot. Ex. 16.
On June 20, 2016, the NIH awarded Grant No. 1R01EB021331-01, "FeverPhone: Point of
Care Diagnosis of Acute Febrile Illness using a Mobile Device," to Cornell. 10/20/17 Gov't Mot.
Ex. 17. And, this grant was "subject to" 45 C.F.R. § 75.435(h). 10/20117 Gov't Mot. Ex. 17.
II. PROCEDURAL HISTORY.
On May 1, 2013, Mr. Golden ("Plaintiff') filed a Complaint in the United States Court of
Federal Claims (ECF No. 1) ("5/1/13 Comp!."), alleging that the United States Department of
Homeland Security (the "DHS") infringed the '990 Patent. 5/1/13 Comp!. 1-2.
On August 15, 2013, Plaintiff filed a "Notice of Supplement," 10 providing "supplemental
material" to support Plaintiffs May 1, 2013 Complaint. ECF No. 6.
On September 5, 2013, the Government filed a Motion For A More Definite Statement,
pursuant to RCFC 12(e), requesting that Plaintiff amend Plaintiffs May 1, 2013 Complaint to
incorporate numbered paragraphs, enumerate with particularity the devices or processes that
allegedly infringe Plaintiffs patents, and identify the party-in-interest. ECF No. 9.
8
The NIH is "a part of the U.S. Department of Health and Human Services," and "is the
largest source of funding for medical research in the world[.]" Who We Are, NAT'L INSTS. OF
HEALTH, https://www.nih.gov/about-nih/who-we-are (last visited March 7, 2018).
9
45 C.F.R. § 75.435(h) provides that the "[c]osts of legal, accounting, and consultant
services, and related costs, incurred in connection with patent infringement litigation, are
unallowable unless otherwise provided for in the ... award." 45 C.F.R. § 75.435(h)
10
The court considered Plaintiffs August 15, 2013 "Notice of Supplement" as an
Amended Complaint, filed pursuant to Rule of the United States Court of Federal Claims
("RCFC") 15(a)(l). ECF No. 21 ("On August 15, 2013, Plaintiff filed a Notice of Supplement
that the court interprets as an Amended Complaint.").
10
On September 20, 2013, Plaintiff filed: a Motion To Strike Defendant's Motion For A
More Definite Statement, pursuant to RCFC 12(f) (ECF No. 10); a Motion To Amend Complaint
(ECF No. 11); a Response to the Government's September 5, 2013 Motion For A More Definite
Statement (ECF No. 12); a Motion For Summary Judgment (ECF No. 13); and a Motion To
Supplement Pleadings. ECF No. 14.
On October 15, 2013, Plaintiff filed a second Response to the Government's September 5,
2013 Motion For A More Definite Statement that the court considered as a Second Amended
Complaint, filed with the court's leave, pursuant to RCFC 15(a)(2). ECF No. 19.
On October 21, 2013, the court granted the Government's September 5, 2013 Motion For
A More Definite Statement, because Plaintiffs May 1, 2013 Complaint, August 15, 2013
Amended Complaint, and October 15, 2013 Second Amended Complaint were vague and
ambiguous making it difficult for the Government to prepare an informed Answer. ECF No. 21.
That same day, the Government filed a Response To Plaintiffs Motion For Summary Judgment.
ECFNo. 22.
On November 22, 2013, Plaintiff filed a More Definite Statement. ECF No. 24.
On December 20, 2013, the court denied Plaintiffs September 20, 2013 Motion For
Summary Judgment, without prejudice, since the Government had not filed an Answer. ECF No.
28.
On December 30, 2013, Plaintiff filed a Motion To Amend And Supplement Pleadings Of
The More Definite Statement. ECF No. 29.
On January 10, 2014, the Government filed an Answer to Plaintiffs December 30, 2013
Motion To Amend And Supplement Pleadings. 11 ECF No. 30.
On February 7, 2014, the court granted Plaintiffs December 30, 2013 Motion to Amend
And Supplement Pleadings and ordered the parties to treat that motion as a Third Amended
Complaint, filed by leave of the court, pursuant to RCFC 15(a)(2), superseding all prior
complaints. ECF No. 32.
On March 31, 2014, the court issued an Order staying Plaintiffs Fifth Amendment Takings
Clause claims and directing the parties to "proceed with Plaintiffs claims only as they relate to
the alleged patent infringement by the United States." ECF No. 38.
On April 30, 2014, the DHS filed a petition for an inter partes review ("IPR") 12 of the '990
Patent before the USPTO Patent Trial and Appeal Board (the "PTAB").
11
The Government considered Plaintiffs December 30, 2013 Motion To Amend Pleadings
as filed by leave of the court and, therefore, superseded Plaintiffs November 22, 2013 More
Definite Statement. ECF No. 30 at n. l.
12
IPR is "a trial proceeding conducted at the [USPTO] to review the patentability of one
or more claims in a patent only on a ground that could be raised under [35 U.S.C.] §§ 102 or 103,
11
On October 8, 2014, the PTAB issued a Decision To Institute IPR of claims 11, 74, and 81
of the '990 Patent. See Dep't of Homeland Sec. v. Golden, IPR2014-00714, 2014 WL 6999625,
at *l (P.T.A.B. Oct. 8, 2014). Although the court did not stay this case while the PTAB
proceedings were ongoing, the court did not take any substantive action during that time.
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 Dep't of Homeland Sec. v. Golden, IPR2014-00714, 2015 WL
5818910, at *17 (P.T.A.B. Oct. 1, 2015). On November 17, 2015, the PTAB denied Plaintiffs
request for a rehearing of the PTAB' s decisions. See Dep 't ofHomeland Sec. v. Golden, IPR2014-
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. ECF No. 67 (transcript). On
December 23, 2015, the court issued an Order granting Plaintiff leave to file a fourth amended
complaint, pursuant to RCFC 15(a)(2). ECF No. 65.
On February 12, 2016, Plaintiff filed a Fourth Amended Complaint. ECF No. 68. On
February 19, 2016, Plaintiff filed a Claim Chart. ECF No. 69.
On April 8, 2016, the Government filed an Answer to Plaintiffs February 12, 2016 Fourth
Amended Complaint. ECF No. 74.
On June 3, 2016, Plaintiff filed a Motion For Summary Judgment On Validity. ECF No.
79. On June 6, 2016, Plaintiff filed: a Motion For Response To Claim Charts (ECF No. 80); a
Motion To Stay (ECF No. 81); and a Motion For Entry Of Devices. ECF No. 82. On June 8,
2016, Plaintiff filed a Motion For Entry Of Estimated Damages And Accounting Report. ECF No.
84.
On June 10, 2016 the court convened a telephone status conference. ECF No. 87
(transcript). On June 13, 2016, the court issued an Order directing the Government to file a Motion
To Dismiss and staying Plaintiffs 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, the Government filed a Motion To Dismiss Certain Accused Devices.
ECF No. 88. On November 30, 2016, the court denied the Government's June 24, 2016 Motion
To Dismiss, without prejudice. ECF No. 94.
On December 16, 2016, the court issued a Discovery Order allowing the parties to
exchange jurisdictional discovery. ECF No. 97.
On February 3, 2017, the court issued an Order dismissing the following filings by Plaintiff,
without prejudice: Plaintiffs June 3, 2016 Motion For Summary Judgment On Validity; Plaintiffs
and only on the basis of prior art consisting of patents or printed publications." Inter Partes
Review, U.S. PATENT & TRADEMARK OFFICE, https://www.uspto.gov/patents-application-process/
appealing-patent-decisions/trials/inter-partes-review (last visited March 12, 2018).
12
June 6, 2016 Motion For Response To Claim Charts; Plaintiffs June 6, 2016 Motion To Stay;
Plaintiffs June 6, 2016 Motion For Entry Of Devices; and Plaintiffs June 8, 2016 Motion For
Entry Of Estimated Damages And Accounting Report. ECF No. 100.
On March 1, 2017, and prior to the completion of the court-ordered discovery, Plaintiff
filed a Motion For Response To The February 19, 2016 Claim Chart. ECF No. 102. On March
24, 2017, Plaintiff filed a Motion To Supplement Plaintiffs Claim Chart (ECF No. 107) and a
Motion To Supplement The Amended Complaint. ECF No. 108. On April 11, 2017, Plaintiff
filed a second Motion for Summary Judgment On Validity. ECF No. 111.
On May 15, 2017, Plaintiff filed a "Motion To Supplement The Amended Complaint With
Pleadings Of28 U.S.C. § 1491 'Government Fifth Amendment Takings Of A Patent(s)."' ECF
No. 114.
On May 24, 2017, the court convened a telephone status conference, wherein Plaintiff was
directed "to file a [Fifth A]mended [C]omplaint that include[d] all of [Plaintiffs] concerns, all of
[Plaintiffs] charges against the Government in one document. ... No more supplements, no more
anything else. Whatever is in that document will be what we're going to continue the case on."
ECFNo. 118.
On May 25, 2017, the court issued an Order denying all of Plaintiffs pending motions, i.e.,
Plaintiffs March 1, 2017 Motion For Response To Claim Chart; Plaintiffs March 24, 2017
Motion To Supplement Plaintiffs Claim Chart; Plaintiffs March 24, 2017 Motion To Supplement
The Amended Complaint; Plaintiffs April 11, 2017 Motion for Summary Judgment On Validity;
and Plaintiffs May 15, 2017 Motion To Supplement The Amended Complaint. ECF No. 116.
The May 25, 2017 Order also stated that "Plaintiff may amend his complaint and claim chart one
final time, prior to the court's ruling on jurisdiction. Plaintiff is ordered not to file any other
motions or papers without leave of the court." ECF No. 116 at 2 (emphasis added).
On August 10, 2017, Plaintiff filed a Fifth Amended Complaint ("8/10/17 Am. Comp!.")
(ECFNo. 120) and a Final Claim Chart. ECFNo. 121. Plaintiffs August 10, 2017 Fifth Amended
Complaint alleges that the Government: (1) violated the Fifth Amendment of the United States
Constitution by taking for public use the '497, '033, '752, '761, '280, '891, '990, '189, and '439
Patents, without just compensation; and (2) is liable for infringement of the '497, '033, '752, '761,
'280, '891, '990, '189, and' 439 Patents, as well as the '839 Application under 28 U.S.C. § 1498(a).
8/10/17 Am. Comp!. ifif 87-92.
On August 24, 2017, Plaintiff sent an email to the Department of Justice (the "DOJ")
stating:
As you know my strategy was to continue submitting claims of "takings"
and "infringement" for as long as the Government continued to prolong this case.
(Larry Golden v. The United States: Case # 13-307 C). With that said, of course
you know the claims ha[ve] moved from twelve (12) claims of "takings" and
"infringement" that began in the year 2013, to seventy-two (72) claims of"takings"
and "infringement" as of this year 2017.
13
The Judge has ordered a final complaint and a final claim chart that was due
on August 15. 2017. Because of the Judge order I can no longer continue my
strategy of introducing new "takings" and "infringement" claims or new patents
and patent claims.
Therefore, I have changed my strategy. My new strategy is to file a
complaint(s) in Federal District Court against Apple, Samsung, LG, Panasonic, and
Motorola for Patent infringement on March 1, 2018. The strategy here is to force
Apple, Samsung, and LG to decide between one or two choices: (1) In an effort to
avoid any responsibility for infringement or liability of paying hundreds of billions
of dollars in damages, the companies cho[o]se to throw the Government under the
bus by presenting evidence that they were under contract to develop and
manufacture devices that infringes my communication I monitoring device. If they
cho[o]se this option it makes them a witness for me in my current case (Larry
Golden v. The United States; Case # 13-307 C). (2) Deny the allegations of
infringement. In this case I will present evidence to support the fact that the
companies were under contract with the Government to develop and manufacture
devices that infringe[] my communication I monitoring device, but that the
companies decided to continue to develop and manufacture my communication I
monitoring device beyond the specifications agreed upon with the Government,
even after I notified the companies in 2010 to stop their manufacturing. If they
chos[ o]e this option it opens the companies up to willful infringement and the
possibility of a temporary injunction to stop the manufacturing and development of
my communication I monitoring device. If you were Apple, Samsung, and LG
which option would you cho[o]se.
10/20/17 Gov't Mot. Ex. 1.
On October 20, 2017, the Government filed a Motion For Partial Dismissal ("10/20/17
Gov't Mot."), pursuant to RCFC 12(b)(l) and 12(b)(6). ECF No. 123.
On November 17, 2017, Plaintiff filed a Response And Motion For Leave To File A Motion
For Summary Judgment ("11117117 PL Resp."). ECF No. 124.
On December 18, 2017, the Government filed a Reply And Opposition To Plaintiffs
Motion For Leave To File A Motion For Summary Judgment ("12/18/17 Gov't Reply"). ECF No.
125.
On January 8, 2018, Plaintiff filed a Reply ("1/8/18 PL Reply"). ECF. No. 126.
III. STANDARD OF REVIEW.
A. Jurisdiction.
As a threshold matter, the court must consider jurisdiction before reaching the substantive
merits of a case. See Gonzalez v. Thaler, 565 U.S. 134, 141 (2012) ("When a requirement goes to
subject-matter jurisdiction, courts are obligated to consider sua sponte issues that the parties have
14
disclaimed or have not presented."). The burden of establishing jurisdiction "lies with the party
seeking to invoke the court's jurisdiction." Cedars-Sinai Med. Ctr. v. Watkins, 11F.3d1573, 1583
(Fed. Cir. 1993).
B. Standard Of Review For A Motion To Dismiss Under RCFC 12(b)(l).
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 v. United States, 168 F.3d 1310, 1313 (Fed. Cir. 1999); see also RCFC 12(b)(l) (allowing
a party to assert, by motion, "lack of subject-matter jurisdiction").
If a motion to dismiss for lack of subject-matter jurisdiction "challenges the court's subject
matter jurisdiction based on the sufficiency of the pleading's allegations ... then those allegations
are taken as true and construed in a light most favorable to the complainant." Cedars-Sinai Med
Ctr., 11 F.3d at 1583. But, if such a motion "denies or controverts the pleader's allegations of
jurisdiction, ... the movant is deemed to be challenging the factual basis for the court's subject
matter jurisdiction." Id "In such a case, the allegations in the complaint are not controlling and
only uncontroverted factual allegations are accepted as true for purposes of the motion. All other
facts underlying the controverted jurisdictional allegations are in dispute and are subject to fact-
finding by the ... court." Id at 1583-84 (internal citations omitted); see also Moyer, 190 F.3d at
1318 ("Fact-finding is proper when considering a motion to dismiss where the jurisdictional facts
in the complaint ... are challenged."). The court "may weigh relevant evidence when it considers
a motion to dismiss that challenges the truth of jurisdictional facts alleged in a complaint."
Ferreira, 350 F.3d at 1324; see also Reynolds v. Army &Air Force Exch. Serv., 846 F.2d 746, 747
(Fed. Cir. 1988) ("If a motion to dismiss for lack of subject matter jurisdiction ... challenges the
truth of the jurisdictional facts alleged in the complaint, the [trial] court may consider relevant
evidence in order to resolve the factual dispute."); JAMES WM. MOORE, MOORE'S FEDERAL
PRACTICE§ 12.30[4] (3d ed. 2012) ("[W]hen a court reviews a complaint under a factual attack,
the allegations have no presumptive truthfulness, and the court . . . has discretion to allow
affidavits, documents, and even a limited evidentiary hearing to resolve disputed jurisdictional
facts.").
If the court determines that it does not have subject-matter jurisdiction, the court must
dismiss the complaint. See RCFC 12(h)(3) ("If the court determines at any time that it lacks
subject-matter jurisdiction, the court must dismiss the action.").
C. Standard Of Review For A Motion To Dismiss Under RCFC 12(b)(6).
A claim is subject to dismissal under RCFC 12(b)(6), ifit does not provide a basis for the
court to grant relief. See Bell At!. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007) ("[A well-
pleaded complaint] requires more than labels and conclusions, and a formulaic recitation of the
elements of a cause of action will not do. Factual allegations must be enough to raise a right of
relief above the speculative level, on the assumption that all the allegations in the complaint are
true (even if doubtful in fact)." (internal citations omitted)); see also Lindsay v. United States, 295
F.3d 1252, 1257 (Fed. Cir. 2002) ("A motion to dismiss ... for failure to state a claim upon which
15
relief can be granted is appropriate when the facts asserted by the claimant do not entitle him to a
legal remedy.").
A complaint must "contain sufficient factual matter, accepted as true, to 'state a claim to
relief that is plausible on its face."' Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Twombly,
550 U.S. at 570). "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 The allegations in a complaint also must establish that there is "more than a sheer
possibility that a defendant has acted unlawfully." Id. "Threadbare recitals of the elements of a
cause of action, supported by mere conclusory statements, do not suffice." Id; see also Sioux
Honey Ass'n v. Hartford Fire Ins. Co., 672 F.3d 1041, 1062 (Fed. Cir. 2012) (holding that a
complaint "require[s] more than labels and conclusions"). To determine whether a complaint
states a plausible claim for relief, the court must engage in a context-specific analysis and "draw
on its judicial experience and common sense." Iqbal, 556 U.S. at 679. Therefore, the court is "not
bound to accept as true a legal conclusion couched as a factual allegation." Twombly, 550 U.S. at
555.
D. 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 prose
complaints, "however inartfully pleaded," are held to "less stringent standards than formal
pleadings drafted by lawyers"). The United States Court of Federal Claims traditionally has
examined the record "to see if [a pro se] plaintiff has a cause of action somewhere displayed."
Ruderer v. United States, 412 F.2d 1285, 1292 (Ct. Cl. 1969). Although the court may excuse
ambiguities in a prose plaintiffs complaint, the court "does not excuse [a complaint's] failures."
Henke v. United States, 60 F.3d 795, 799 (Fed. Cir. 1995). ("The fact that [the plaintiff] acted pro
se in the drafting of his complaint may explain its ambiguities, but it does not excuse its failures,
if such there be.").
A pro se plaintiff is not excused from satisfying the burden of proof as to jurisdiction, by
a preponderance of the evidence. 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, 846 F.2d at 748 ([The prose plaintiff! bears the burden of establishing subject
matter jurisdiction by a preponderance of the evidence."). A pro se plaintiff cannot rely solely on
conclusory allegations in the complaint, but must allege "competent proof' to establish
jurisdiction. McNutt, 298 U.S. at 189; see also Reynolds, 846 F.2d at 748 ("[I]t was incumbent
upon [the prose plaintiff! to come forward with evidence establishing the court's jurisdiction.");
Zulueta v. United States, 553 F. App'x 983, 985 (Fed. Cir. 2014) ("[T]he leniency afforded to a
[pro se] litigant with respect to mere formalities does not relieve the burden to meet jurisdictional
requirements." (quotation marks omitted)).
16
IV. DISCUSSION.
A. Whether Certain Patent Infringement Allegations 13 In The August 10, 2017
Fifth Amended Complaint Should Be Dismissed Under RCFC 12(b)(l) And
12(b)(6).
1. Patent Infringement Allegations In The August 10, 2017 Fifth
Amended Complaint.
The August 10, 2017 Fifth Amended Complaint alleges that the Government:
(I) violated the Fifth Amendment of the United States Constitution by taking for public use the
'497, '033, '752, '761, '280, '891, '990, '189, and '439 Patents, without just compensation; and
(2)isliableforinfringementofthe'497, '033, '752, '761, '280, '891, '990, '189,and '439Patents,
as well as the '839 Application under 28 U.S.C. § 1498(a). 8/10/17 Am. Comp!. 'if'il 87-92. The
Fifth Amended Complaint alleges that the court has jmisdiction over the Takings Clause claims
under 28 U.S.C. § 1491(a) and over the patent infringement allegations under 28 U.S.C. § 1498(a).
8/10/17 Am. Comp!. 'if'il 3-20. 14
The August 10, 2017 Fifth Amended Complaint identifies numerous "devices" and
"programs" 15 that allegedly were developed or procured, as a result of "contracts, agreements,
13
Hereinafter, the court refers to the patent infringement claims alleged in the August 10,
2017 Fifth Amended Complaint as "patent infringement allegations" to avoid confusion with the
patent claims that are allegedly infringed.
14
In accordance with the court's March 31, 2014 Order, the court will not rule on the
Government's October 20, 2017 Motion For Partial Dismissal regarding Plaintiffs Fifth
Amendment Takings Clause claims. ECF No. 38 (stating that "Plaintiffs takings claim[s] should
be stayed" and directing the parties to "proceed with Plaintiffs claims only as they relate to the
alleged patent infringement by the United States"). Therefore, those portions of the Government's
October 20, 2017 Motion For Partial Dismissal relating to Plaintiffs Fifth Amendment Takings
Clause claims are denied, without prejudice.
15
The "devices" and "programs" identified include: Alluviam HazMasterG3; Apple
HomeKit; Apple iPhone 5, 5c, 5s, 6, and 6 Plus ("Biodetector"); Apple iPads; Apple Watch;
August Connect; "ATHENA;" August Smart Lock; Biomeme two3; Boeing MH-6 Little Bird;
"Cell All;" '"COINS' Nano-Embedded Sensors;" DreamHammer Ballista; "EAGER;" Emeka
High-Power Electromagnetic System; FePhone; FeverPhone; FLIR identiFINDER R300; Ford
MyFord Mobile App; GammaPix; Kromek D3S-ID; Kromek D3S-NET; iControl mLOCK;
"INSPIRE;" "Lab-on-a-Drone;" LG Electronics G5 Smartphone; LG Electronics VlO
Smartphone; Lockheed Martin K-MAX; MultiRAE Pro; Navy/Marine Corps Intranet; Northrop
Grumman X-47B; NutriPhone; Oshkosk TerraMax; Panasonic Toughbook 31 Laptop; PositiveID
"Firefly DX;" SiN-VAPOR; Samsung Gear s2; Samsung Galaxy s6 ("BioPhone," "Biotouch
System," "Nett Warrior"); Samsung SmartThings Hub; "Smartphone-Based Rapid Diagnostic
Tests;" "VOCket System;" Volkswagen Car-Net e-Remote; and Yale Assme Lock.
17
grants, and procurements" between various federal entities 16 and private parties. 17 8/10/17 Am.
Comp!. irir 91-406. These "devices" and "programs," independently or in combination, allegedly
infringe claims of the '497, '033, '7S2, '761, '891, '990, '280, '189, and '439 Patents, as well as
the '839 Application. 8/10/17 Am. Comp!. iJ 91. For example, regarding the LG Electronics GS
Smartphone, the Fifth Amended Complaint alleges the following:
Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 22 of the '439 Patent, and claims 18, 118, 12, 28, 2S, 30,
22, and 20 of the '990 Patent as a current manufacturer, consumer, and/or user of
the "LG Electronics GS Smartphone". Manufacture for the Government; 2008:
The "Cell-All" initiative. The [DHS-S&T] ... , Cell-All aims "to equip your cell
phone with a sensor capable of detecting deadly chemicals", says Stephen Dennis,
Cell-All's program manager. [DHS-S&T] pursued cooperative agreements with
four cell phone manufacturers: Qualcomm, LG, Apple, and Samsung. Used by the
Government; 2016: Both the LG GS and VlO smartphones can be used by the
[DOD]. The LG smartphones received a security certification from the U.S.
Defense Information Systems Agency [(the "DISA")], as well as a certification by
the National Information Assurance Partnership [(the "NIAP")]. Sensors will
integrate with 261 million cell phones now used in the U.S. [and l]everage billions
of dollars spent each year in sensor, carrier network and cell phone development.
Multiple sensors network for chemical profiling; Cell-All aims "to equip your cell
phone with a sensor capable of detecting deadly chemicals", says Stephen Dennis,
16
The federal entities identified include: the Department of the Army; the Department of
the Air Force; the Department of Defense ("DOD"); the Department of Energy; the DHS; the
Department of Homeland Security Science and Technology Directorate ("DHS-S&T"); the DOJ;
the Department of the Navy; the Air Force Research Laboratory; the Army Communications-
Electronics Research, Development and Engineering Center; the Army Edgewood Chemical
Biological Center; the Army Research Laboratory; the Chemical Biological Radiological Nuclear
Information Resource Center; the Defense Advanced Research Projects Agency; the Defense
Threat Reduction Agency; the Domestic Nuclear Detection Office ("DNDO"); the Environmental
Protection Agency; the Federal Emergency Management Agency; the General Services
Administration; the Homeland Security Advanced Research Projects Agency; the Integrated
Chemical Biological Radiological Nuclear and Explosive Program; the Joint Acquisition Chemical
Biological Radiological Nuclear Knowledge System; the Joint Program Executive Office for
Chemical and Biological Defense; the National Aeronautics and Space Administration; the Naval
Air Systems Command; the Naval Research Laboratory; the NIH; the NSF; the Oak Ridge
National Laboratory; and the Office of Naval Research.
17
The "private parties" identified include: Alluviam LLC; Apple Inc.; Biomeme Inc.;
Boeing Company; California Institute of Technology ("Caltech"); Cornell; Eureka Aerospace;
"Ford;" Holomic LLC; Kromek Group pie; LG Electronics; Lockheed Martin Corporation; MIT;
Motorola, Inc.; Northrop Grumman Corporation; Oshkosh Defense LLC; Panasonic Corporation;
Passport Systems, Inc.; PositiveID Corporation; Qualcomm Inc.; Raytheon Ktech; Samsung;
Stanford University ("Stanford"); UC Berkeley; UCLA; the University of California, Merced
("UC Merced"); UH; UIUC; and "Volkswagen."
18
Cell-All's program manager. Multiple sensor units per phone are possible. Stephen
Dennis envisions a chemical sensor in every cell phone in every pocket, purse, or
belt holster.
As a result of contracts, agreements, and procurements with various
Government Agencies (ifif 49-78), the [DHS], the [DOD], and LG Electronics for
the manufacture, development, commercialization, and/or use of the
communication/ monitoring device "LG Electronics GS Smartphone", the United
States has used, authorized the use, and manufactured, without license or legal
right, Plaintiffs inventions described in and covered by the '43 9, and '990 Patents.
8/10/17 Am. Comp!. ifif 93-97 (bold in original).
2. The Government's Argument.
The Government argues that the patent infringement allegations in ifif 91-406 of the August
10, 2017 Fifth Amended Complaint reflect a "deliberate strategy to multiply the proceedings for
as long as the [G]overnment ... resist[s] settlement on Plaintiffs terms." 10/20/17 Gov't Mot. at
2. According to 28 U.S.C. § 1927, 18 parties are prohibited from "multiply[ing] the proceedings in
any case unreasonably and vexatiously." 10/20/17 Gov't Mot. at 3. Although some leniency
should be afforded a pro se plaintiff, such a plaintiff is not exempt from complying with the court's
rules. 10/20/17 Gov't Mot. at 3. RCFC 41 (b) authorizes the court to dismiss a claim for failure to
comply with the court's rules or a court order. 10/20/17 Gov't Mot. at 3. Accordingly, the patent
infringement allegations in the Fifth Amended Complaint should be dismissed under RCFC 41 (b).
10/20/17 Gov't Mot. at 2-3.
In the alternative, the Government contends that 28 U.S.C. § 1498(a) "provides patent
owners with a remedy of damages" in the United States Court of Federal Claims, but only "when
the claimed invention is 'used or manufactured by ... the United States' without a license."
10/20/17 Gov't Mot. at 7 (quoting 28 U.S.C. § 1498(a)). A private party's "use or manufacture"
of a claimed invention will be considered a "use or manufacture for the Government" if the use or
manufacture is: (1) for the benefit of the Government; and (2) with the Government's
"authorization or consent." 10/20/17 Gov't Mot. at 7 (citing Carrier Corp. v. United States, 534
F.2d 244, 249 (Ct. Cl. 1976)).
18
28 U.S.C. § 1927 provides that
[a]ny attorney or other person admitted to conduct cases in any court of the United
States or any Territory thereof who so multiplies the proceedings in any case
unreasonably and vexatiously may be required by the court to satisfy personally the
excess costs, expenses, and attorneys' fees reasonably incurred because of such
conduct.
28 u.s.c. § 1927.
19
Regarding the "first requirement," private conduct incidentally benefitting the Govermnent
does not constitute use "for the benefit of the Govermnent." 10/20/17 Gov't Mot. at 7 (citing
Sheridan v. United States, 120 Fed. CL 127, 131 (Fed. CL 2015) ("Where benefits to the
Govermnent are merely an incidental effect of private conduct, they do not constitute 'use or
manufacture for the Govermnent' within the meaning of § 1498.")). As to the "second
requirement," authorization or consent may be express or, in limited circumstances, implied.
10/20/17 Gov't Mot. at 8. For example, the Govermnent "can provide express authorization and
consent ... by including [an] operative clause in a contract, or providing other formal, written
authorization." 10/20/17 Gov't Mot. at 8. In addition, implied authorization may be presumed
where there are "contracting officer instructions, [or] ... specifications[,] or drawings which
impliedly sanction and necessitate infringement." 10/20/17 Gov't Mot. at 8 (quoting Hughes
Aircraft Co. v. United States, 534 F.2d 889, 901 (Ct. CL 1976)). Authorization and consent,
however, "may be limited by clauses in a contract." 10/20/17 Gov't Mot. at 8 (citing Carrier
Corp., 534 F.2d at 249 ("Since Section 1498(a) expressly provides that any use of a patented
invention for the Government must be authorized or consented to, it is plain that the Govermnent
can limit ... authorization and consent[.]")).
The court does not have jurisdiction under 28 U.S.C. § 1498(a) to adjudicate patent
infringement allegations concerning NSF and NIH grants and cooperative agreements, because
any benefit to the Govermnent, at best, would be incidental. 10/20/17 Gov't Mot. at 10-16. In
addition, none of the grants or cooperative agreements evidence any "express or implied
authorization and consent by the [G]overmnent." 10/20/17 Gov'! Mot. at 11, 16. In fact, the
"expressly incorporated NSF Research Terms & Conditions" explicitly exempt the NSF from
liability "for unauthorized use of patented ... materials." 10/20/17 Gov't Mot. at 13. Similarly,
the NIH grants include a reference to 45 C.F.R. Part 75, that "disallows [an] awardee from
submitting ' [c]osts of legal, accounting, and consultant services, and related costs, incurred
in connection with patent infringement litigation [. . .] unless otherwise provided for in
the [...] award."' 10/20/17 Gov'! Mot. at 14 (quoting 45 C.F.R. § 75.435(h)). Likewise, the
award of NSF and NIH grants does not evidence implied authorization, because the Govermnent
does not direct or exercise control over the activities of awardees. 10/20/17 Gov't Mot. at 13.
Although the cooperative agreements may involve a measure of Govermnent involvement, they
do not contain any text evidencing Govermnent "authorization [or] consent to infringe another's
patent." 10/20/17 Gov't Mot. at 15-16.
The Govermnent also argues that the Fifth Amended Complaint's "allegations relating
generally to smartphones and other consumer devices should be dismissed" under RCFC 12(b)(1)
and 12(b)(6), because they fail to allege "actual 'use' by the [G]overmnent of the various
combinations of consumer devices, nor would the [G]overmnent's use be plausible." 10/20/17
Gov't Mot. at 16-17. In addition, the Fifth Amended Complaint "fails to allege that any of these
various consumer devices were made for the benefit of the [G]overmnent." 10/20/17 Gov't Mot.
at 17. The companies referenced in the Fifth Amended Complaint "manufacture, develop, and
commercialize their devices in their own economic self-interest." 10/20/17 Gov't Mot. at 17.
Moreover, any benefit that the Govermnent might receive does "not constitute use or manufacture
for the Govermnent within the meaning of§ 1498." 10/20/17 Gov't Mot. at 17-18 (quoting
Sheridan, 120 Fed. CL at 131 (determining that the alleged benefit to the Govermnent of economic
"stimulus, jobs, and revenue" was "merely an incidental effect of private conduct, [that does] not
20
constitute 'use or manufacture for the Government' within the meaning of§ 1498")). In sum, the
Fifth Amended Complaint contains no allegations that the Government actually used or authorized
the use of any of the accused devices at issue. 10/20/17 Gov't Mot. at 20. Instead, the Fifth
Amended Complaint alleges only that the devices "can be used by the [Government]." 10/20/17
Gov't Mot. at 20 (underline in original).
Other allegations of the Fifth Amended Complaint also should be dismissed, under RCFC
12(b)(l) and 12(b)(6). 10/20/17 Gov't Mot. at 21. First, allegations of infringement "based on a
number of devices allegedly developed by third party Passport Systems, Inc. in response to a Broad
Agency Announcement ("BAA")" should be dismissed, because "a BAA is not a contract."
10/20/17 Gov't Mot. at 21 (citing 8/10/17 Am. Comp!. ifif 161-68). A BAA is "a general
announcement of an agency's research interest" and "cannot be said to provide authorization and
consent." 10/20/17 Gov't Mot. at 21-22 (quoting 48 C.F.R. § 2.lOl(b)). Second, patent
infringement allegations concerning the '761, '280, and '189 Patents should be dismissed, because
the Fifth Amended Complaint alleges no infringement of specific claims of these three patents.
10/20/17 Gov't Mot. at 22-23. Third, as to the '033 Patent, "there is no subject matter jurisdiction
under Section 1498, because this patent was surrendered when it was reissued[.]" 10/20/17 Gov't
Mot. at 22 (citing 35 U.S.C. § 25l(a) ("[T]he Director shall, on the surrender of such patent and
the payment of the fee required by law, reissue the patent for the invention disclosed in the original
patent[.]")). Fourth, as to the '839 Application, there can be no infringement ofunissued claims.
10/20/17 Gov't Mot. at 23 (citing Straughter v. United States, 89 Fed. Cl. 755, 762 (Fed. Cl. 2009)
("Because plaintiffs' claims allege the infringement of unissued patents, the court's jurisdiction
under§ 1498 is lacking.")). In addition, the allegations of patent infringement of the '439 Patent
are based on "activities" that occurred prior to issuance of the '4 39 Patent and must be dismissed
as a matter of law. 10/20/17 Gov't Mot. at 23.
3. Plaintiff's Response And Motion For Leave To File A Motion For
Summary Judgment.
Plaintiff responds that "[a]fter ten (10) months of jurisdictional discovery, the Government
has fail[ ed] to introduce any new evidence that supports its 'Motion to Dismiss Certain NSF and
NIH Devices[.]'" l l/17/l 7 Pl. Resp. at 14. The Government's arguments are the same as those
presented in the June 24, 2016 Motion To Dismiss. 11/17/17 Pl. Resp. at 14. In sum, "[t]he
Government has not shown any disagreement, or has [not] tried to overcome [the court's
November 30, 2016] 'Memorandum Opinion and Order Denying Government's Motion To
Dismiss."' 11/17/17 Pl. Resp. at 14. Therefore, "Plaintiff is standing on the [c]ourt's resolution
and decision to dismiss." 11/17/17 Pl. Resp. at 14.
In the alternative, Plaintiff"seeks leave to file a motion for summary judgment," pursuant
to RCFC 56(e) and 56(t). 11/17/17 Pl. Resp. at I. Plaintiff contends that the Government is in
"contempt of court" for "willfully disobey[ing]" the court's order to file a Motion To Dismiss
"based on jurisdiction that was due on October 2, 2017." 11/17/17 Pl. Resp. at 2. Plaintiff "did
not object" to the Government's September 15, 2017 request "for an extension oftime to respond
to Plaintiff's [Fifth] Amended Complaint," because "it was an extension of time ... to file an
answer." 11/17/17 Pl. Resp. at 3 (citing ECF No. 122 (Sept. 19, 2017 Order granting the
Government "an additional 18 days to respond to Plaintiff's [Fifth Amended] Complaint")).
Instead of filing an answer, the "Government has wasted 16 months of taxpayers' dollars
21
questioning this [c]ourt's jurisdiction[.]" 11/17/17 Pl. Resp. at 3. The Government is also in
"contempt of court" for "willfully disobey[ing]" the court's order to "file an answer to Plaintiffs
Complaint." 11117/17 Pl. Resp. at 4-5 (citing ECF No. 122). In addition, the Government is in
"contempt of court" for "willfully disobey[ing]" the court's order "NOT to file any additional
[m]otions before a decision is made on jurisdiction." 11/17/17 Pl. Resp. at 5 (capitalization and
underline in original). But, "[w]ithin the Government's latest 'Motion for Partial Dismissal ... '
filed on 10/20/2017, the Government is asking the [c]ourt to tule on pleadings" that are not related
to jurisdiction. 11117117 Pl. Resp. at 6. Plaintiff has "[s]uffered [p]rejudice," because of the
Government's "[w]illful [c]onduct of [d]elaying." 11117/17 Pl. Resp. at 8.
4. The Government's Reply And Opposition To Plaintiff's Motion For
Leave To File A Motion For Summary Judgment.
The Government replies that "Plaintiff offers no rebuttal to the [Fifth] Amended
Complaint's failure to plead any facts supporting the jurisdictional prerequisite that the newly
accused consumer devices ... were manufactured for the [G]overnment." 12/18/17 Gov't Reply
at 5. "Nor does Plaintiff address the [Fifth] Amended Complaint's failure to allege use by the
[G]overnment of accused devices[.]" 12/18/17 Gov't Reply at 5. In fact, "Plaintiffs attempt to
drastically expand this case by introducing scores of consumer devices actually reinforces the
[G]overnment's arguments for dismissal. Indeed, Plaintiffs bald [allegation] that '[t]he
Government cannot use a smartphone of any kind without infringing Plaintiff's claimed invention'
demonstrates the implausibility of Plaintiffs allegations of infringement." 12/18/17 Gov't Reply
at 5 (underline in original). Plaintiff also "makes no showing that this [c]ourt has jurisdiction over
the NSF and NIH awards[,] based on either express or implied authorization and consent."
12/18117 Gov'! Reply at 6. Although, "Plaintiff faults the [G]overnment for allegedly 'fail[ing] to
introduce new evidence that supports' its argument that this [c]ourt lacks jurisdiction over the NSF
and NIH awards ... , in doing so, Plaintiff improperly reverses the burden of proving jurisdiction,
which remains with Plaintiff." 12/18/17 Gov't Reply at 6 (citing Sheridan, 120 Fed. Cl. at 129
("Subject-matter jurisdiction must be established by the plaintiff at the outset of any case before
the Court proceeds to the merits of the action.")). Finally, "Plaintiffs additional evidence ... and
claim charts ... should be excluded," because "[t]hese exhibits belatedly accuse additional
products ... in contravention of this [c]ourt's May 25, 2017 Scheduling Order, which permitted
Plaintiff 'to amend his complaint and claim chart one final time, prior to the court's rnling on
jurisdiction,' in which the complaint 'will allege all claims asserted against the Government."'
12/18/17 Gov't Reply at 7 (quoting ECF No. 116).
In addition, "Plaintiffs demand for 'summary judgment' is improper," as it violates the
court's May 25, 2017 Scheduling Order that "plainly and repeatedly prohibited Plaintiff from filing
additional motions without first obtaining leave of court." 12/18/17 Gov't Reply at 3 (citing ECF
No. 116 ("Plaintiff is ordered not to file any other motions or papers without leave of the court.")).
"Styling the paper as one 'seek[ing] leave to file' does not undo Plaintiffs overreach." 12/18/17
Gov'! Reply at 3. In addition, "Plaintiff misrepresents the [G]overnment's correspondence with
Plaintiff and the [c]ourt to feign surprise by the [G]overnment's motion to dismiss[.]" 12/18/17
Gov't Reply at 3. Specifically, "[o]n September 15, [2017] the [G]overnment wrote to the [c]ourt,
copying Plaintiff, that the [G]overnment intended to seek an extension 'to file its Motion to
Dismiss."' 12/18/17 Gov't Reply at 4 (underline in original). Therefore, because "Plaintiffs ...
22
motion is premised on this misrepresentation ... , it should be denied." 12/18/17 Gov't Reply at
4. In the alternative, Plaintiffs request for summary judgment is "premature because the case is
in the pleadings stage, merits discovery has not yet opened, and the [c]ourt has not yet construed
the claim terms." 12/18/17 Gov't Reply at 4 (citing RCFC 56(d) ("If a nonmovant shows by
affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its
opposition, the court may ... defer considering the motion or deny it[.]")).
S. Plaintiff's Reply.
Plaintiffs reply did not address the Government's arguments concerning the court's
jurisdiction to adjudicate the patent infringement allegations of the August 10, 2017 Fifth
Amended Complaint.
6. The Court's Resolution.
a. Governing Precedent.
The United States Court of Federal Claims has jurisdiction to adjudicate patent
infringement allegations against the Government alleging that "an invention described in and
covered by a patent of the 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." 28 U.S.C. § 1498(a).
In this context, "the use or manufacture of [a patented] invention . . . by a contractor, a
subcontractor, or any person, firm, or corporation for the Government and with the authorization
or consent of the Government, shall be construed as use or manufacture for the United States." Id.
Accordingly, the United States Court of Federal Claims has jurisdiction to adjudicate patent
infringement allegations against the Government "arising upon either ... of ... two grounds:
(1) unlicensed use or manufacture of a patented invention by the [Government] directly; and/or
(2) unlicensed use or manufacture of a patented invention for the [Government] and with [the
Government's] authorization or consent." Hughes Aircraft Co., 534 F.2d at 897. As to the second
basis for jurisdiction, 28 U.S.C. § 1498(a) "sets forth a two-part test for determining whether th[e]
court has jurisdiction ... over a particular [allegation]." Id "Under this test, a finding of
jurisdiction is conditioned upon a showing that[:] (1) the accused use or manufacture was
undertaken for the Government, i.e., for the Government's benefit; and (2) the Government gave
its authorization or consent for the accused use or manufacture." Id at 897-98.
Regarding the first element, infringing activity has been held to be "for the Government"
under 28 U.S.C. § 1498(a), if it is "for the benefit of the Government." Advanced Software Design
Corp. v. Fed Reserve Banko/St. Louis, 583 F.3d 1371, 1378 (Fed. Cir. 2009). "Incidental benefit
to the [G]overnment is insufficient[.]" IRIS Corp. v. Japan Airlines Corp., 769 F.3d 1359, 1362
(Fed. Cir. 2014) (quotation marks and alterations omitted) (holding that the Government benefited
from the examination of passports in "accord[ance with] federal law," because it "improves the
detection of fraudulent passports and reduces demands on [G]overnment resources"); see also
Advanced Software Design Corp., 583 FJd at 1378-79 (holding that requiring Federal Reserve
Banks to use a certain "seal encoding" system to identify fraudulent bank checks, benefitted the
Government by averting fraud and saving resources through the use of more efficient technology);
Hughes Aircraft Co., 534 F.2d at 897-99 (holding that the Government's participation in the
23
Skynet II satellite program was "for the Government," because the program was vital to the
military defense and security of the United States).
Regarding the second element, "authorization or consent of the Government" may be
express or implied. See TV! Energy Corp. v. Blane, 806 F.2d 1057, 1060 (Fed. Cir. 1986)
("Authorization or consent by the Government can be expressed ... [or i]n proper circumstances,
Government authorization can be implied."); see also Hughes Aircraft Co., 534 F.2d at 901
(holding that implied authorization may be presumed when the Government provides
"instructions, . . . specifications[,] or drawings which impliedly sanction and necessitate
infringement"); IRIS Corp., 769 F.3d at 1362 (holding that "the [G]overnment ... clearly provided
its authorization or consent[,] because [the contractor] ... [could ]not comply with its legal
obligations without engaging in the allegedly infringing activities"); Larson v. United States, 26
Cl. Ct. 365, 370 (Cl. Ct. 1992) (holding that implied authorization or consent "may be found under
the following conditions: (1) the [G]overnment expressly contracted for work to meet certain
specifications; (2) the specifications cannot be met without infringing on a patent; and (3) the
[G]overnment had some knowledge of the infringement"). In addition, the Government "can limit
its authorization and consent" by "inclusion ... of a standard clause [that] limits the Government's
authorization and consent[.]" Carrier Corp., 534 F.2d at 247-49 ("Since Section 1498(a)
expressly provides that any use of a patented invention for the Government must be authorized or
consented to, it is plain that the Government can limit ... authorization and consent[.]").
b. Patent Infringement Allegations Concerning National Science
Foundation Grants And Cooperative Agreements Must Be
Dismissed Under RCFC 12(b)(l).
i. Regarding National Science Foundation Grants.
The Government argues that patent infringement allegations 19 concerning the nine NSF
20
grants should be dismissed under RCFC 12(b)(l), because: (I) in general, grants "by their
nature ... carry out an attenuated public purpose ... instead of acquiring property or services for
the direct benefit or use of the [G]overnment;" and (2) the NSF grants "are entirely devoid of
express or implied authorization and consent by the [G]overnment." 10/20/17 Gov't Mot. at 11
(underline in original).
19
The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations concerning the NSF grants are: iii! 184-85, 199-200, 235-36, 260-61, 265-66,
270-71, 275-76, 280-81, 285-86, 290-91, 295-96, 300-01, 305-06, and 350-51. These
paragraphs are highlighted in yellow in the attached Court Exhibit B.
20
The nine NSF grants are: Grant No. CCF-1029585 (10/20/17 Gov't Mot. Ex. 6); Grant
No. CBET-1264377 (10/20/17 Gov't Mot. Ex. 7); Grant No. CBET-1447893 (10/20/17 Gov'tMot.
Ex. 8); Grant No. CBET-1343058 (10/20/17 Gov't Mot. Ex. 9); Grant No. CBET-1444240
(10/20/17 Gov't Mot. Ex. 1O); Grant No. EFRI-1332275 (10/20/17 Gov't Mot. Ex. 11 ); Grant No.
IIP-1450552 (10/20/17 Gov't Mot. Ex. 12); Grant No. 1533983 (10/20/17 Gov't Mot. Ex. 13); and
Grant No. 1534126 (10/20117 Gov't Mot. Ex. 14).
24
The Fifth Amended Complaint alleges the following with respect to Grant No. CCF-
1029585:
Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 13 of the '439 Patent, and claims 18, 118, 12, 28, 25, 20,
32, and 30 of the '990 Patent as a current manufacturer, consumer, and/or user of
the Samsung Galaxy s6 "BioPhone". The Samsung Galaxy s6 "Bio Phone"
smartphone can measure your heart and breathing rates, even if you're not directly
touching it. Researchers at MIT are working on a project called BioPhone that
derives biological signals from your smaitphone's accelerometer, which they say
can capture the small movements of your body that result from the beating of your
heart and rising and falling of your chest. This information is useful to base medical
diagnoses in real-life conditions and to help track chronic health conditions and
effects of therapeutic interventions. Research is based upon work supported by the
[NSF] (NSF CCF-1029585), Samsung, and the MIT Media Lab Consortium.
As a result of contractsf21 l with the ... [NSF], Samsung Group, and the MIT
Media Lab Consortium for the development and commercialization of the Samsung
Galaxy s6 "BioPhone", and the "Samsung Electronic Communications Device",
the United States has used, authorized the use, and manufactured, without license
or legal right, Plaintiffs inventions described in and covered by the '439, and '990
Patents.
8/10117 Am. Comp!. iii! 199-200.
The Fifth Amended Complaint contains patent infringement allegations arising from the
award of the other NSF grants, each of which repeats the text of 28 U.S.C. § 1498(a) in
conclusively alleging that,"[a]s a result of contracts with the [NSF] ... the United States has used,
authorized the use, and manufactured . . . Plaintiffs inventions" as "a current manufacturer,
consumer, and/or user" of the "devices" or "programs" developed under the NSF grants. 8/10/17
Am. Comp!. iii! 184-85, 199-200, 235-36, 260-61, 265-66, 270-71, 275-76, 280-81, 285-86,
290-91, 295-96, 300-01, 305-06, 350-51. The Fifth Amended Complaint, however, does not
contain "the necessary supporting or primary facts sufficient" to support this conclusion. See
Hebern v. United States, 132 Ct. Cl. 344, 348-49 (Ct. Cl. 1955). Instead, the Fifth Amended
Complaint implies "direct" use or manufacture by the Government, based solely on the
NSF's funding the development of allegedly infringing "devices" or "programs." 8/10/17 Am.
Comp!. if 200 ("As a result of contracts," i.e., the NSF grants, "the United States has used,
authorized the use, and manufactured ... Plaintiffs inventions[.]" (emphasis added)). Funding
alone, however, does not establish "direct" use or manufacture of "Plaintiffs inventions" by the
21
The Fifth Amended Complaint's characterization of a NSF grant as a contract is
incorrect. Compare 31 U.S.C. § 6304 ("An executive agency shall use a grant agreement .. .
when ... substantial involvement is not expected between the executive agency and the .. .
recipient when carrying out the activity contemplated in the agreement."), with 31 U.S.C. § 6303
(describing the circumstances, inapplicable here, under which agencies are required to use
"procurement contracts").
25
NSF, see Capitol Boulevard Partners v. United States, 31 Fed. Cl. 758, 761 (Fed. Cl. 1994)
(determining that, with regard to federal graots, "the [G]overnment does not procure any property
or services for its direct use, rather it provides funding"); aod the Fifth Amended Complaint's
conclusory allegations are not sufficient to establish jurisdiction. See Norton v. Larney, 266 U.S.
511, 515 (1925) ("It is quite true that the jurisdiction of a federal court must affirmatively aod
distinctly appear and cannot be helped by presumptions or by argumentative inferences drawn
from the pleadings.").
The Fifth Amended Complaint also fails to allege that "the accused use or maoufacture
was undertaken ... for the Government's benefit." See Hughes Aircreft Co., 534 F.2d at 897. The
Fifth Amended Complaint contains no factual allegations establishing anything more than
"incidental benefit" to the NSF. See Advanced Software Design Corp., 583 F.3d at 1379 (holding
that "an interest in [a] program generally, or [where the Government] funds or reimburses all or
part of [a program's] costs, is too remote to make the [G]overnment the program's beneficiary for
the purposes underlying § 1498" (quoting Larson, 26 Cl. Ct. at 369)); see also IRIS Corp., 769
F.3d at 1362 ("Incidental benefit to the [G]overnment is insufficient" to satisfy the requirements
of28 U.S.C. § 1498(a).).
Nor does the Fifth Amended Complaint allege that "the Government gave its authorization
or consent for the accused use or manufacture." See Hughes Aircraft Co., 534 F.2d at 897. The
Fifth Amended Complaint does not contain any factual allegations establishing that the NSF, at
any time, authorized or consented to infringing use or maoufacture. For example, the Fifth
Amended Complaint does not cite any portions of the NSF graots or communications between the
NSF and grant awardees "expressly" or "implicitly" authorizing infringing conduct. See Larson,
26 Cl. Ct. at 369-70 ("[A]uthorization or consent requires explicit acts or extrinsic evidence
sufficient to prove the [G]overnment's intention to accept liability for a specific act of
infringement."). Nor does the Fifth Amended Complaint include any factual allegations that could
be construed as "express" or "implicit" authorization or consent by the NSF to infringe Plaintiffs
patents. See Hughes Aircraft Co., 534 F.2d at 901 (holding that implied authorization may
be presumed when the Government provides "instructions, ... specifications[,] or drawings
which impliedly sanction aod necessitate infringement"); see also IRIS Corp., 769 F.3d at 1362
(holding that "the [G]overnment ... clearly provided its authorization or consent[,] because [the
contractor] ... cannot comply with its legal obligations without engaging in the allegedly
infringing activities"). Instead, each of the NSF grants incorporated a standard clause advising
that the NSF "cannot assume aoy liability for ... claims arising out of aoy work supported by
an award for unauthorized use of patented ... materials" or, more generally, "with respect
to ... property of ... third parties." 10/20/17 Gov't Mot. Ex. 15. Therefore, awardees were
warned that the use of "property of ... third parties," including "patented ... materials," was
"unauthorized." See Carrier Corp., 534 F.2d at 247-49 (holding that the Government "cao
limit ... authorization aod consent" by "inclusion ... of a standard clause [that] limits the
Government's authorization and consent").
For these reasons, the court has determined that the patent infringement allegations
contained in ifif 184-85, 199-200, 235-36, 260-61, 265-66, 270-71, 275-76, 280-81, 285-86,
290-91, 295-96, 300-01, 305-06, and 350-51 of the August 10, 2017 Fifth Amended Complaint
26
failed to satisfy Plaintiffs burden to establish jurisdiction under 28 U.S.C. § 1498(a). Accordingly,
these paragraphs of the Fifth Amended Complaint must be dismissed under RCFC 12(b)(l).
ii. Regarding National Science Foundation Cooperative
Agreements.
The Govermnent also argues that patent infringement allegations22 concerning the two NSF
cooperative agreements 23 should be dismissed under RCFC 12(b)(l). 10/20/17 Gov't Mot. at 15.
The Fifth Amended Complaint alleges the following with respect to the NSF cooperative
agreements:
Upon information aod belief, the United States has infringed, and continues
to infringe, at least claim 13 of the '439 Patent, and claims 18, 118, 12, 28, 25, 20,
32, and 30 of the '990 Patent as a current manufacturer, consumer, and/or user of
the "COINS" Nano-Embedded Sensors for Smartphones: The Center oflntegrated
Nanomechanical Systems (COINS) is a multidisciplinary naooscale science aod
engineering center (NSEC) funded by the [NSF] with its headquarters at
[UC Berkeley] and satellite campuses at Stanford, Caltech, and [UC Merced]. The
goal of COINS is to develop aod integrate cutting-edge naootechnologies into a
versatile platform with various ultra-sensitive, ultra-selective, self-powering,
mobile, wirelessly communicating detection applications; develop novel low-
power, low-cost, selective naoomaterials-enable sensing systems for real-time
detection of explosives, to xi cants, aod radiation and interface Nano-enable sensors
with smart phones, eventually becoming embedded in the device.
As a result of contracts[24l with the [NSF], the Center of Integrated
Nanomechanical Systems (COINS), [UC Berkeley], Stanford, Caltech,
[UC Merced], aod Apple Inc. for the development and commercialization of the
"COINS" Naoo-Embedded Sensors for Smartphones, aod the "Apple Inc.'s
Electronic Communications Device", the United States has used, authorized the
22
The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations concerning the NSF cooperative agreements are: ifif 194-95. These paragraphs are
highlighted in green in the attached Court Exhibit B.
23
The two NSF cooperative agreements are: Award No. 0425914 (10/20117 Gov't Mot.
Ex. 20) and Award No. 0832819 (10/20/17 Gov't Mot. Ex. 21).
24
The Fifth Amended Complaint's characterization of a NSF cooperative agreement as a
contract is incorrect. Compare 31 U.S.C. § 6305 (describing the circumstaoces under which
agencies are required to use a "cooperative agreement"), with 31 U.S.C. § 6303 (describing the
circumstaoces, inapplicable here, under which agencies are required to use "procurement
contracts").
27
use, and manufactured, without license or legal right, Plaintiffs inventions
described in and covered by the '439 and '990 Patents.
8/10/17 Am. Comp!. iii! 194--95.
The Fifth Amended Complaint, however, does not contain "the necessary supporting or
primary facts sufficient to allege" that the Government "used, authorized the use, and
manufactured ... Plaintiffs inventions," as a result of the NSF cooperative agreements. See
Hebern, 132 Ct. Cl. at 348-49. Instead, the Fifth Amended Complaint implies "direct" use or
manufacture by the Government, based solely on the NSF's funding the development of allegedly
infringing "devices" or "programs." 8/10/17 Am. Comp!. if 194 ("The Center of Integrated
Nanomechanical Systems (COINS) is a multidisciplinary nanoscale science and engineering
center (NSEC) funded by the [NSF.]" (emphasis added)). Funding alone, however, does not
establish "direct" use or manufacture of "Plaintiffs inventions" by the NSF. See Capitol
Boulevard Partners, 31 Fed. Cl. at 761. Although cooperative agreements entail some greater
involvement by the NSF than grants, that fact also does not establish "direct" use or manufacture
by the NSF; and the Fifth Amended Complaint failed to allege any other involvement by the NSF.
Compare 31 U.S.C. § 6305 ("An executive agency shall use a cooperative agreement ...
when ... substantial involvement is expected between the executive agency and the ... recipient
when carrying out the activity contemplated in the agreement."), with 31 U.S.C. § 6304 ("An
executive agency shall use a grant agreement ... when ... substantial involvement is not expected
between the executive agency and the ... recipient when carrying out the activity contemplated in
the agreement."). Nor does the Fifth Amended Complaint cite any portions of the NSF cooperative
agreements or communications between the NSF and cooperative agreement awardees from which
the court reasonably could infer "direct" use or manufacture by the NSF; and the Fifth Amended
Complaint's conclusory allegations are not sufficient to establish jurisdiction. See Norton, 266
U.S. at 515 ("It is quite true that the jurisdiction of a federal court must affirmatively and distinctly
appear and cannot be helped by presumptions or by argumentative inferences drawn from the
pleadings.").
The Fifth Amended Complaint also fails to allege that "the accused use or manufacture
was undertaken ... forthe Government's benefit." See Hughes Aircraft Co., 534 F.2d at 897. The
Fifth Amended Complaint contains no factual allegations establishing anything more than
"incidental benefit" to the Government. See Advanced Software Design Corp., 583 F.3d at 1379
(holding that "an interest in [a] program generally, or [where the Government] funds or reimburses
all or part of [a program's] costs, is too remote to make the [G]overnment the program's
beneficiary for the purposes underlying§ 1498" (quoting Larson, 26 CL Ct. at 369)); see also IRIS
Corp., 769 F.3d at 1362 ("Incidental benefit to the [G]overnment is insufficient" to satisfy
the requirements of 28 U.S.C. § 1498(a).). Moreover, although cooperative agreements entail
some greater involvement by the NSF than grants, the purpose is the same, i.e., "to transfer a
thing of value ... instead of acquiring ... property or services for the direct benefit or use of
the . .. Government." 31 U.S.C. § 6305 (emphasis added); see also 31 U.S.C. § 6304 ("[T]he
principal purpose of [a grant agreement] is to transfer a thing of value ... instead of acquiring ...
property or services for the direct benefit or use of the ... Government.").
Nor does the Fifth Amended Complaint allege that "the Government gave its authorization
or consent for the accused use or manufacture." See Hughes Aircraft Co., 534 F.2d at 897. The
28
Fifth Amended Complaint does not contain any factual allegations establishing that the NSF, at
any time, authorized or consented to infringing use or manufacture. For example, the Fifth
Amended Complaint does not cite any portions of the NSF cooperative agreements or
communications between the NSF and cooperative agreement awardees "expressly" or
"implicitly" authorizing infringing conduct. See Larson, 26 CL Ct. at 369-70 ("[A]uthorization
or consent requires explicit acts or extrinsic evidence sufficient to prove the [G]overnment's
intention to accept liability for a specific act of infringement."). Nor does the Fifth Amended
Complaint include any factual allegations that could be construed as "express" or "implied"
authorization or consent by the NSF to infringe Plaintiffs patents. See Hughes Aircraft Co., 534
F.2d at 901 (holding that implied authorization may be presumed when the Government provides
"instructions, . . . specifications[,] or drawings which impliedly sanction and necessitate
infringement"); see also IRIS Corp., 769 F.3d at 1362 (holding that "the [G]overnment ... clearly
provided its authorization or consent[,] because [the contractor] ... cannot comply with its legal
obligations without engaging in the allegedly infringing activities"). Instead, each of the
NSF cooperative agreements incorporated a standard clause advising that the NSF "cannot
assume any liability for ... claims arising out of, or related to, ... [the] unauthorized use of
patented ... materials." 10/20117 Gov't Mot. Ex. 15. Therefore, awardees were warned that the
use of "patented ... materials" was "unauthorized." See Carrier Corp., 534 F.2d at 247-49
(holding that the Government "can limit ... authorization and consent" by "inclusion ... of a
standard clause [that] limits the Government's authorization and consent").
For these reasons, the court has determined that the patent infringement allegations
contained in iii! 194-95 of the August 10, 2017 Fifth Amended Complaint failed to satisfy
Plaintiffs burden to establish jurisdiction under 28 U.S.C. § 1498(a). Accordingly, these
paragraphs of the Fifth Amended Complaint must be dismissed under RCFC 12(b)(l).
c. Patent Infringement Allegations Concerning National
Institutes Of Health Grants Must Be Dismissed Under RCFC
12(b)(l).
The Government also argues that patent infringement allegations25 concerning the four
NIH grants 26 should be dismissed under RCFC 12(b)(l). 10/20/17 Gov't Mot. at 14-15.
The Fifth Amended Complaint alleges the following with respect to Grant No.
1R21AI120973:
Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 20 of the '439 Patent, claim 34 of the '752 patent, and
25
The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations concerning the NIH grants are: iii! 335-36, 355-56, 360-61, and 365-66. These
paragraphs are highlighted in blue in the attached Court Exhibit B.
26
The four NIH grants are: Grant No. 1R21AI120973-0l (10/20/17 Gov't Mot. Ex. 16);
Grant No. 1R01EB021331-01 (10/20/17 Gov't Mot. Ex. 17); Grant No. 1R43CA193096-01
(10/20/17 Gov't Mot. Ex. 18); and Grant No. 1R43AI107984-01Al (10/20117 Gov't Mot. Ex. 19).
29
claims 118, 18, 92, 25, and 124 of the '990 Patent as a current manufacturer,
consumer, and/or user of the "FeverPhone" that is interconnected to the Apple
iPhone. Cornell['s] David Erickson, a mechanical engineer, and Saurabh Mehta, a
physician and nutrition researcher. The [NIH] ... has awarded to Cornell a four-
year, $2.3 million grant to develop FeverPhone, which will diagnose six febrile
diseases in the field: dengue, malaria, chikungunya, typhoid fever, leptospirosis and
Chagas' disease. FeverPhone-hardware and software, working in combination
with a smartphone or tablet-will provide a real-time, rapid and accurate diagnosis
using a drop of blood to differentiate and identify specific pathogens. While the
Zika virus was not included in this specific grant, as the application was submitted
before the current outbreak, the technology potentially can be expanded to include
it. "FeverPhone," a smartphone based molecular diagnostics platform for point-of-
care differential diagnosis of six common causes of acute febrile illness includes:
(!) a specialized 6-plexed colorimetric IgM/IgG assay cartridge that exploits color
discrimination assay on mobile devices, (2) associated iPad based hardware that
allows rapid interpretation of the cartridge results, and (3) software that combines
differential molecular diagnosis with a confirmatory symptomatic interface.
As a result of contracts[271with the [NIH] ... , Cornell ... , and Apple Inc.
for the development and commercialization of the "FeverPhone" and the "Apple
Inc.'s Electronic Communications Device" the United States has used, authorized
the use, and manufactured, without license or legal right, Plaintiffs inventions
described in and covered by the '439, '752, and '990 Patents.
8/10/17 Am. Comp!. ifif 355-56.
The Fifth Amended Complaint contains patent infringement allegations arising from the
award of the other NIH grants, each of which repeats the text of 28 U.S.C. § 1498(a) in
conclusively alleging that,"[ a]s a result of contracts with the [NIH] ... the United States has used,
authorized the use, and manufactured . . . Plaintiffs inventions" as "a current manufacturer,
consumer, and/or user" of the "devices" or "programs" developed under the NIH grants. 8/10/17
Am. Comp!. ifif 336, 356, 361, 366. The Fifth Amended Complaint, however, does not contain
"the necessary supporting or primary facts sufficient" to support this conclusion. See Hebern, 132
Ct. Cl. at 348-49. Instead, the Fifth Amended Complaint implies "direct" use or manufacture by
the Government, based solely on the NIH's funding the development of allegedly infringing
"devices" or "programs." 8/10/17 Am. Comp!. if 356 ("As a result of contracts," i.e., the NIH
grants, "the United States has used, authorized the use, and manufactured . . . Plaintiffs
inventions[.]" (emphasis added)). Funding alone, however, does not establish "direct" use or
manufacture of "Plaintiffs inventions" by the NIH, see Capitol Boulevard Partners, 3 l Fed. Cl.
at 761 (determining that, with regard to federal grants, "the [G]ovemment does not procure any
property or services for its direct use, rather it provides funding"); and the Fifth Amended
Complaint's conclusory allegations are not sufficient to establish jurisdiction. See Norton, 266
27
As previously explained, the Fifth Amended Complaint's characterization of a NIH grant
as a contract is incorrect. See 31 U.S.C. §§ 6303-6304 (distinguishing between grant agreements
and procurement contracts).
30
U.S. at 515 ("It is quite true that the jurisdiction of a federal court must affirmatively and distinctly
appear and cannot be helped by presumptions or by argumentative inferences drawn from the
pleadings.").
The Fifth Amended Complaint also fails to allege that "the accused use or manufacture
was undertaken ... for the Government's benefit." See Hughes Aircraft Co., 534 F.2d at 897. The
Fifth Amended Complaint contains no factual allegations establishing more than "incidental
benefit" to the Government. See Advanced Software Design Corp., 583 F.3d at 1379 (holding that
"an interest in [a] program generally, or [where the Government] funds or reimburses all or part
of [a program's] costs, is too remote to make the [G]overnment the program's beneficiary for the
purposes underlying§ 1498" (quoting Larson, 26 CL Ct. at 369)); see also IRIS Corp., 769 F.3d
at 1362 ("Incidental benefit to the [G]overnment is insufficient" to satisfy the requirements of 28
U.S.C. § 1498(a).).
Nor does the Fifth Amended Complaint allege that "the Government gave its authorization
or consent for the accused use or manufacture." See Hughes Aircraft Co., 534 F.2d at 897. The
Fifth Amended Complaint does not contain any factual allegations establishing that the NIH, at
any time, authorized or consented to infringing use or manufacture. For example, the Fifth
Amended Complaint does not cite any portions of the NIH grants "expressly" or "implicitly"
authorizing infringing conduct. See Larson, 26 CL Ct. at 369-70 ("[A]uthorization or consent
requires explicit acts or extrinsic evidence sufficient to prove the [G]overnment's intention to
accept liability for a specific act of infringement."). Nor does the Fifth Amended Complaint
include any factual allegations that could be construed as "express" or "implied" authorization or
consent by the NIH to infringe Plaintiffs patents. See Hughes Aircraft Co., 534 F.2d at 901
(holding that implied authorization may be presumed when the Government provides
"instructions, . . . specifications[,] or drawings which impliedly sanction and necessitate
infringement"); see also IRIS Corp., 769 F.3d at 1362 (holding that "the [G]overnment ... clearly
provided its authorization or consent[,] because [the contractor] ... cannot comply with its legal
obligations without engaging in the allegedly infringing activities"). Instead, three of the NIH
grants were "subject to" 45 C.F.R. § 75.435(h), that provides that "[c]osts of legal ... services,
and related costs, incurred in connection with patent infringement litigation, are unallowable
unless otherwise provided for in the ... award." 45 C.F.R. § 75.435(h). Although the text of
45 C.F.R. § 75.435(h) does not directly pertain to the NIH's authorization or consent, it does
bolster the conclusion that the NIH grants are devoid of express or implied authorization or
consent.
For these reasons, the court has determined that the patent infringement allegations
contained in ifif 335-36, 355-56, 360-61, and 365-66 of the August 10, 2017 Fifth Amended
Complaint failed to satisfy Plaintiffs burden to establish jurisdiction under 28 U.S.C. § 1498(a).
Accordingly, these paragraphs of the Fifth Amended Complaint must be dismissed under RCFC
12(b)(l).
31
d. Patent Infringement Allegations Concerning The
Government's Alleged Use Of "Smartphones And Other
Consumer Devices" Must Be Dismissed Under RCFC 12(b)(l)
And 12(b)(6).
The Government argues that patent infringement allegations28 "relating generally to
smartphones and other consumer devices" should be dismissed under RCFC 12(b)(1 ), because the
Fifth Amended Complaint "fails to sufficiently allege actual 'use' by the [G]overnment of the
various combinations of consumer devices, nor would the [G]overnment's use be plausible."
10/20/17 Gov't Mot. at 17.
The Fifth Amended Complaint alleges the following with respect to the "LG Electronics
GS Smartphone":
Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 22 of the '439 Patent, and claims 18, 118, 12, 28, 2S, 30,
22, and 20 of the '990 Patent as a current manufacturer, consumer, and/or user of
the "LG Electronics GS Smartphone". Manufacture for the Government; 2008:
The "Cell-All" initiative. The [DHS-S&T] ... , Cell-All aims "to equip your cell
phone with a sensor capable of detecting deadly chemicals", says Stephen Dennis,
Cell-All's program manager. [DHS-S&T] pursued cooperative agreements with
four cell phone manufacturers: Qualcomm, LG, Apple, and Samsung. Used by the
Government; 2016: Both the LG GS and VlO smartphones can be used by the
[DOD]. The LG smartphones received a security certification from the [DISA], as
well as a certification by the [NIAP]. Sensors will integrate with 261 million cell
phones now used in the U.S. [and l]everage billions of dollars spent each year in
sensor, carrier network[,] and cell phone development. Multiple sensors network
for chemical profiling; Cell-All aims "to equip your cell phone with a sensor
capable of detecting deadly chemicals", says Stephen Dennis, Cell-All's program
manager. Multiple sensor units per phone are possible. Stephen Dennis envisions
a chemical sensor in every cell phone in every pocket, purse, or belt holster.
As a result of contracts, agreements, and procurements with various
Government Agencies (~~ 49-78), the [DHS], the [DOD], and LG Electronics for
the manufacture, development, commercialization, and/or use of the
communication/monitoring device "LG Electronics GS Smartphone", the United
States has used, authorized the use, and manufactured, without license or legal
right, Plaintiffs inventions described in and covered by the '4 39, and '990 Patents.
8/10/17 Am. Comp!. ~~ 96-97 (bold in original).
28
The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations "relating generally to smartphones and other consumer devices" are: ~~ 96-97,
101-02, 106-07, 111-12, 116-17, 121-22, 126-27, 131-32, 136-37, 141-42, 146-47, and
1Sl-S2. These paragraphs are highlighted in orange in the attached Court Exhibit B.
32
The Fifth Amended Complaint includes patent infringement allegations concerning the
Government's alleged "use" and "manufacture" of other "smartphones [and] consumer devices,"
each of which repeats the text of 28 U.S.C. § 1498(a) in conclusively alleging that, "[a]s a
result of contracts, agreements, and procurements with various Government Agencies
(iii! 49-78) ... the United States has used, authorized the use, and manufactured ... Plaintiffs
inventions[.]'" 8/10/17 Am. Comp!. iii! 97, 102, 107, 112, 117, 122, 127, 132, 137, 142, 147, 1S2.
To support this allegation, the Fifth Amended Complaint repeatedly cites to iii! 49-78 of the Fifth
Amended Complaint. These paragraphs describe the Government's intent to "allow" or "approve"
the "use" of various "smartphones and other consumer devices," e.g., "the iPhone Sc and Ss."
8/10/17 Am. Comp!. ii 7S. For example, ii S3 of the Fifth Amended Complaint states:
2012: "The [DOD] expects in coming weeks to grant two separate security
approvals for Samsung's Galaxy smartphones, along with iPhones and iPads
running Apple's latest operating system-moves that would boost the number of
U.S. government agencies allowed to use those devices. An approval by the
Pentagon is considered as the highest standard[] in security."
8110/17 Am. Comp!. ii S3 (emphasis added).
Similarly, if 72 of the Fifth Amended Complaint states:
2014: "By opening its networks to Samsung and Apple devices, [DISA] ... intends
to broaden the variety of mobile computers that troops and civilian [DOD]
employees can use in the field, on bases, in offices and elsewhere to receive and
send information and work almost anywhere at any time."
8/10/17 Am. Comp!. if 72 (emphasis added).
The Fifth Amended Complaint, however, does not allege that the Government's intent to
"allow" or "approve" the use of "smartphones and other consumer devices" infringes Plaintiffs
patents. Instead, the Fifth Amended Complaint alleges that the Government's use of these devices
in combination with other "devices" or "programs," e.g., the '"Cell-All' initiative," infringes
Plaintiffs patents. 8/10/17 Am. Comp!. iii! 96-97. No factual allegations, however, support
assuming that the Government used or authorized the use of these other "devices" or "programs"
to infringe Plaintiffs patents.
For example, although the Fifth Amended Complaint alleges that the "LG Electronics GS
Smartphone . . . can be used" by the Government, such an allegation does not support the
conclusion that the Government used or authorized the use of these devices to run the '"Cell-All'
initiative." 8/10117 Am. Comp!. iii! 96-97. Nor do such allegations imply that the Government's
use of the "LG Electronics GS Smartphone" infringes Plaintiffs patents, since the Government
may simply use these devices to make calls. Without supporting factual allegations, however, the
court cannot assume infringing use or manufacture by the Government. See Norton, 266 U.S. at
Sl S ("It is quite true that the jurisdiction of a federal court must affirmatively and distinctly appear
and cannot be helped by presumptions or by argumentative inferences drawn from the
pleadings."); see also SB CHARLES A. WRIGHT & ARTHUR R. MILLER, FED. PRACTICE &
PROCEDURE § 13SO (3d ed. 2004) ("[A]rgumentative (as opposed to reasonable) inferences
33
favorable to the pleader will not be drawn and conclusory allegations or conclusions of law will
not be credited."). In sum, although the factual allegations of the Fifth Amended Complaint may
support a conclusion that the Government "allowed" or "approved" the "use" of various
"smartphones and other consumer devices," they do not support the conclusion that the
Government used or authorized the use of these devices in an infringing manner.
For these reasons, the court has determined that the patent infringement allegations
contained in iii! 96-97, 101-02, 106-07, 111-12, 116-17, 121-22, 126-27, 131-32, 136-37,
141-42, 146-47, and 151-52 of the August 10, 2017 Fifth Amended Complaint failed to satisfy
Plaintiff's burden to establish jurisdiction under 28 U.S.C. § 1498(a). Accordingly, these
paragraphs of the Fifth Amended Complaint must be dismissed under RCFC 12(b)(l).
In the alternative, the Government argues that the same allegations should be dismissed
under RCFC 12(b)(6), for "improperly alleg[ing] infringement by or for the [G]overnment in
irreconcilably vague and omnibus fashion by repeatedly citing 'contracts, agreements, and
procurements with various Government Agencies."' 10/20/17 Gov't Mot. at 17.
The Government's position is correct, because the Fifth Amended Complaint does not
contain factual allegations supporting that, "[a]s a result of contracts, agreements, and
procurements with various Government Agencies ... the United States has used, authorized the
use, and manufactured ... Plaintiffs inventions[.]" 8/10/17 Am. Comp!. if 97 (emphasis added).
The Fifth Amended Complaint fails to identify the "contracts, agreements, and procurements" at
issue. Without more, the Fifth Amended Complaint has not met the requirements of Twombly and
Iqbal. Nor does the Fifth Amended Complaint provide anything other than conclusory allegations
that the Government used or authorized the use of "smartphones and other consumer devices" in
a manner that infringes Plaintiff's patents. Such "[t]hreadbare recitals of the elements ofa cause
of action, supported by mere conclusory statements, [however,] do not suffice." Iqbal, 556 U.S.
at 678; see also Sioux Honey Ass 'n, 672 F.3d at 1062 (holding that a complaint "require[s] more
than labels and conclusions").
For these reasons, the court has determined that even ifthe August 10, 2017 Fifth Amended
Complaint established jurisdiction as to the patent infringement allegations contained in iii! 96-97,
101-02, 106-07, 111-12, 116-17, 121-22, 126-27, 131-32, 136-37, 141-42, 146-47, and
151-52 of the Fifth Amended Complaint, the allegations contained therein failed to state a claim
upon which relief may be granted and must be dismissed under RCFC 12(b)(6).
e. Patent Infringement Allegations Concerning Broad Agency
Announcements Must Be Dismissed Under RCFC 12(b)(6).
The Government argues that patent infringement allegations29 concerning a DNDO BAA
should be dismissed under RCFC 12(b)(6), because the Fifth Amended Complaint "fails to
29
The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations concerning the DNDO BAA are: iii! 161-67. These paragraphs are highlighted in red
in the attached Court Exhibit B.
34
plausibly allege that the Government either used or manufactured any technologies described in
the BAA." 10/20/17 Gov't Mot. at 22.
In relevant part, the Fifth Amended Complaint alleges:
Upon information and belief, the United States has infringed, and continues
to infringe, at least claims 1, 2, and 4 of the '497 Patent, claims 34, and 37 of the
'752 Patent, claims 13, and 14 of the '439 Patent, and claims 119, 29, 18, 118, 12,
28, 25, 20, 124, 32, and 30 of the '990 Patent as a current manufacturer, consumer,
and/or user of the l"x2" Detection Device (DD) Samsung Galaxy s6 Smartphone;
2"x2" Detection Device (DD) Samsung Galaxy s6 Smartphone; NetS2 SmartShield
G300 Radiation Detector Samsung Galaxy s6 Smartphone; NetS2 SmartShield
G500 Radiation Detector Samsung Galaxy s6 Smartphone; and the Passpoti
Systems Base Control Unit (BCV) "TOUGHBOOK 31" Panasonic Laptop:
2"x2" Detection Device (DD) Samsung Galaxy s6 Smartphone: In response
to the [DNDO's] BAA 09-102 Passport Systems, Inc. of Billerica, MA has
developed a system of networked portable spectroscopic radiation detectors to
improve the detection, localization, and identification of radiological threats.
* * *
NetS2 SmartShield G500 Radiation Detector Samsung Galaxy s6
Smartphone: Passport Systems Inc. G500 Radiation Detector alarms when radiation
levels are detected; used as a standalone device or as part of a network; is the same
size, form factor and weight as a smartphone and easily added to the belt of safety
personnel; is paired with a smartphone via Bluetooth, and automatically joins a
SmartShield Network.
* * *
As a result of contracts with the [DNDO], Passport Systems, Inc., Panasonic
Corporation, and the Samsung Group for the development and commercialization
of the l"x2" Detection Device (DD) Samsung Galaxy s6 Smartphone; 2"x2"
Detection Device (DD) 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 (BCU) "TOUGHBOOK 31" Panasonic Laptop the United States
has used, authorized the use, and manufactured, without license or legal right,
Plaintiffs inventions described in and covered by the '497, '439, '752, and '990
Patents.
8/10/17 Am. Comp!. ifif 161-62, 165, 167.
But, the conclusion that, "[a]s a result of contracts with the DNDO ... the United States
has used, authorized the use, and manufactured . . . Plaintiffs inventions,"' is not plausibly
supported by factual allegations in the Fifth Amended Complaint. 8/10/17 Am. Comp!. if 167
35
(emphasis added). Indeed, the Fifth Amended Complaint fails to identify a single "contract" with
the DNDO. Instead, it alleges only that the DNDO issued a BAA; a BAA, however, is not a
"contract." See 48 C.F.R. § 2.lOl(b) (defining a "BAA" as "a general announcement of an
agency's research interest including criteria for selecting proposals and soliciting the participation
of all offerors capable of satisfying the Government's needs"). Again, without more, the Fifth
Amended Complaint has not met the requirements of Twombly and Iqbal. And, conclusory
allegations that the Government used or authorized the use of the "Samsung Galaxy s6
Smartphone" in a manner that infringes Plaintiffs patents are likewise insufficient, as such
"(t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
statements, do not suffice." Iqbal, 556 U.S. at 678; see also Sioux Honey Ass 'n, 672 F.3d at 1062
(holding that a complaint "require[s] more than labels and conclusions").
For these reasons, the court has determined that the patent infringement allegations
contained in ifif 161-67 of the August 10, 2017 Fifth Amended Complaint must be dismissed under
RCFC 12(b)(6).
f. Patent Infringement Allegations Concerning The '033 Patent
Must Be Dismissed Under RCFC 12(b)(l).
The Government argues that patent infringement allegations concerning the '033 Patent
should be dismissed under RCFC 12(b)(l), because "this patent was surrendered when it was
reissued as [the '891 Patent] and [the '990 Patent]." 10/20/17 Gov't Mot. at 22.
An application for reissue of a patent constitutes an offer to surrender the patent. See 35
U.S.C. § 25 l(a) ("[T]he Director shall, on the surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention disclosed in the original patent[.]").
"The surrender of the original patent ... take[s] effect upon the issue of the reissued patent." 35
U.S.C. § 252. Therefore, as a matter oflaw, "[a]n original patent cannot be infringed once a reissue
patent has issued, for the original patent is surrendered ... [and t]he original claims are dead."
Seattle Box Co., Inc. v. Indust. Crating & Packing, Inc., 731F.2d818, 827 (Fed. Cir. 1984).
In this case, on two occasions, Plaintiff applied for reissuance of the '033 Patent via the
'837 Application and the '853 Application, thereby offering to surrender the '033 Patent in
accordance with 35 U.S.C. § 25l(a). 2/12/16 Am. Comp!. Ex. G, H. Thereafter, the USPTO
issued both of these reissue applications, as the '891 Patent and the '990 Patent, respectively, on
January 1, 2013 and February 12, 2013. 2/12116 Am. Comp!. Ex. G, H. As such, the '033 Patent
was surrendered as of January 1, 2013, i.e., the earliest reissue date. See 35 U.S.C. § 252 ("The
surrender of the original patent ... take[ s] effect upon the issue of the reissued patent."). Therefore,
the court does not have jurisdiction to adjudicate patent infringement allegations concerning
the '033 Patent, because the '033 Patent is no longer a "patent of the United States." See 35
U.S.C. §§ 25l(a), 252; see also 28 U.S.C. § 1498(a) (requiring "an invention described in and
covered by a patent of the United States").
36
For these reasons, the court has determined that patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the '033 Patent30 failed to satisfy Plaintiffs
burden to establish jurisdiction under 28 U.S.C. § 1498(a). Accordingly, these allegations of the
Fifth Amended Complaint must be dismissed under RCFC 12(b)(l).
g. Patent Infringement Allegations Concerning Unissued Patent
Applications And Pre-Issuance Use Or Manufacture Must Be
Dismissed Under RCFC 12(b)(l).
The Government argues that patent infringement allegations concerning the '839
Application and pre-issuance use or manufacture of the '439 Patent should be dismissed under
RCFC 12(b)(l). 10/20/17 Gov'tMot. at23.
The '839 Application has not issued, nevertheless the Fifth Amended Complaint alleges
that the Government "infringed, and continues to infringe" claims of the '839 Application. 8/10/17
Am. Comp!. if 91. In addition, the '439 Patent issued on March 7, 2017, but the Fifth Amended
Complaint alleges infringement of the '439 Patent, based on Government "programs" that were
cancelled in April 2014, almost three years prior to issuance of the '439 Patent. Compare 8/10/17
Am. Comp!. ifif 315-16, with 10/20/17 Gov't Mot. Ex. 22 (a June 10, 2014 United States
Government Accountability Office Report, explaining the DHS's decision to cancel the
"Bio Watch Gen-3" program in April 2014). In addition, the Fifth Amended Complaint alleges
infringement of the '439 Patent, based on NSF grants that expired prior to issuance of the '439
Patent. Compare 8/10/17 Am. Comp!. ifif 184-85, 199-200, 260-61, 275-76, 280-81, 295-96,
305-06, with 10/20117 Gov't Mot. Ex. 6-8, 10, 12.
The court's jurisdiction under 28 U.S.C. § 1498(a) is limited to allegations "against the
[G]overnment arising out of post-issuance [G]overnment use [or manufacture] of an invention."
Hornback v. United States, 601 F.3d 1382, 1386 (Fed. Cir. 2010) ("The language of section
1498(a) is mandatory, and therefore grants the [United States] Court of Federal Claims exclusive
jurisdiction to hear all claims against the [G]overnment arising out of post-issuance [G]overnment
use of an invention.").
For these reasons, the court has determined that patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the '839 Application31 and pre-issuance
30
Infringement of the '033 Patent is alleged in ifif 91-92 of the August 10, 2017 Fifth
Amended Complaint, the relevant portions of which the court has highlighted in purple in the
attached Court Exhibit B. These paragraphs, however, contain patent infringement allegations
concerning other patents and therefore are dismissed to the extent they concern the '033 Patent.
31
Infringement of the '83 9 Application is alleged in ifif 91-92 of the August 10, 2017 Fifth
Amended Complaint, the relevant portions of which the court also has highlighted in purple in the
attached Court Exhibit B. These paragraphs, however, contain patent infringement allegations
concerning other patents and therefore are dismissed to the extent they concern the '839
Application.
37
use or manufacture of the '439 Patent32 failed to satisfy Plaintiffs burden to establish jurisdiction
under 28 U.S.C. § 1498(a). Accordingly, these allegations of the Fifth Amended Complaint must
be dismissed under RCFC 12(b)(l).
h. Patent Infringement Allegations Concerning The '761, '280,
And '189 Patents Must Be Dismissed Under RCFC 12(b)(6).
Finally, the Government argues that patent infringement allegations concerning the '761,
'280, and '189 Patents should be dismissed under RCFC 12(b)(6), because the Fifth Amended
Complaint "alleges no infringement of any claims of these patents." 10/20/17 Gov't Mot. at 23.
With regard to the '761, '280, and '189 Patents, the Fifth Amended Complaint alleges:
Upon information and belief, the United States has infringed, and continues
to infringe, ... Plaintiffs Tangible Patented Claimed Inventions of ... [the '761,
'280, and '189 Patents.]
* * *
As a result of contracts, agreements, procurements, and grants, for the
development and commercialization of Plaintiffs tangible patented claimed
inventions, the United States ... has used, authorized the use, manufactured
and developed, without license or legal right, or authorization and consent,
Plaintiffs tangible patented claimed inventions as described in and covered by the
Plaintiffs ... '761, '280, ... [and] '189 ... [P]atents.
8/10/17 Am. Comp!. ifif 91-92.
To survive a motion to dismiss under RCFC 12(b)(6), "[t]here must be some allegation of
specific services or products of the defendants which are being accused." Addiction and
Detoxification Inst. L.L.C. v. Carpenter, 620 F. App'x 934, 937 (Fed. Cir. 2015). The Fifth
Amended Complaint, however, does not contain any allegation about how the '761, '280, and' 189
Patents were infringed and by what action of the Government.
32
Infringement of the '439 Patent is alleged in ifif 91-92, 96-97, 101-02, 106-07, 111-12,
116-17, 121-22, 126-27, 131-32, 136-37, 141-42, 146-47, 151-52, 156-57, 161-67, 171-72,
176-80, 184-85, 189-90, 194-95, 199-200,204-05,209-10,214-15,219-20,224-26,230-31,
235-36, 240-41, 245-46, 250-51, 255-56, 260-61, 265-66,270-71, 275-76,280-81, 285-86,
290-91, 295-96, 300-01, 305-06, 310-11, 315-16, 320-21, 325-26, 330-31, 335-36, 340-41,
345-46, 350-51, 355-56, 360-61, and 365-66 of the August 10, 2017 Fifth Amended Complaint,
the relevant portions of which the court has highlighted in pink in the attached Court Exhibit B, if
not otherwise highlighted in a difference color. These paragraphs, however, contain patent
infringement allegations concerning other patents and therefore are dismissed to the extent they
concern the '439 Patent. If Plaintiff can identify post-issuance activity incorporated within these
paragraphs that is not otherwise dismissed, the court will reconsider dismissal of those relevant
portions.
38
For these reasons, the court has determined that the patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the '761 , '280, and '189 Patents must be
dismissed under RCFC 12(b)(6).33
V. CONCLUSION.
For the reasons discussed herein, the Government's October 20, 2017 Motion For Partial
Dismissal, pmsuant to RCFC 12(b)(l) and 12(b)(6), is granted-in-part and denied-in-part.
Plaintiffs November 17, 2017 Motion For Leave To File A Motion For Summary Judgment,
is denied, as the Government "has not had an oppo1tunity to make full discovery." Celotex
Corp. v. Catrett, 477 U.S. 317, 326 (1986).
The court will convene a telephone status conference within the next two weeks to identify
what, if any, patent infringement allegations are viable and may be adjudicated, and how the parties
propose proceeding.
IT IS SO ORDERED.
33
Infringement of the '761, '280, and '189 Patents is alleged in~~ 91-92 of the August 10,
2017 Fifth Amended Complaint, the relevant portions of which the comt also has highlighted in
purple in the attached Court Exhibit B. These paragraphs, however, contain patent infringement
allegations concerning other patents and therefore are dismissed to the extent they concern the
'761, '280, and '189 Patents.
39
Court Exhibit B
IN THE UNITED STATES COURT OF FEDERAL CLAIMS
IDGHLIGHfED
COLOR LEGEND:
LARRY GOLDEN,
Plaintill~
V.
1: 13-cv-307-SGB
Judge Susan G. Braden
RED:
ORANGE:
YELLOW:
-
-
UNITED STA TES, GREEN:
Defondant. August 8, 2017 BLUE:
PURPLE:
PINK:
FINAL AMENDED COMPLANT
On May 24, 2017, tJ1c court convened a telephone status con ferencc. Pursuant to
the status conference, tJ1e court grants Plaintiff leave to file a Final Amended Complaint and a
Final Amended Claim Chart by August 15, 2017. The court ordered the Plaintiff in the telephone
status conforencc: ''to file a clean amended complaint that includes all of your lPlainti fll
concerns, all of your [Plaintifl] charges against the Government in one docu1nent" ..... You' re
going to put together a whole fifth and final complaint and a final claim chart, two documents...
PLAfNTfff LARRY GOLDEN makes the following allegati~ns in support or its
claim for relief.
PARTIES
I. Plaintiff Larry Golden is a citizen of South Carolina and has a principal
place of business at 740 Woodruff Road, # 1102, Greenville, S.C. 29607.
2. The United States is the Defendant to this action based upon the actions
and conduct of its agents, including at least the following agencies: Department of Homeland
Security (OHS), Domestic Nuclear Detection Oflice (ONDO), Department of Defense (DoD).
U.S. Defonse Advanced Research Projects Agency (DARPA), National Science foundation
RECEIVED - USCFC
AUG 10 2017
(NSF), Department of Air Force (DOAF), National Institutes of Health (NIH), National
Aeronautics and Space Administration (NASA), Department of Energy (DOE), Department of
the Army (DOA), U.S. Army Edgewood Chemical Biological Center (ECBC), Army Research
Laboratory (ARL), Department of the Navy (DON), U.S. Naval Air Systems Command
(NAVAIR), Otlice of Naval Research's (ONR), U.S. Naval Research Laboratory (NRL), U.S.
Army Communications-Electronics Research, Development and Engineering Center (CERDEC),
Defense Threat Reduction Agency (DTRA), Environmental Protection Agency (EPA), and
Federal Emergency Management Agency (FEMA), General Services Administration (GSA),
Department of Justice (DOJ), Joint Program Executive Otlice for Chemical and Biological
Defense (JPEO-CBD); Joint Acquisition Chemical Biological Radiological Nuclear Knowledge
System (JACKS); Chemical Biological Radiological Nuclear Information Resource Center
(CBRN-IRC), Defense Advanced Research Project Agency (DARPA), Homeland Security
Advanced Research Project Agency (HSARPA), Department of Homeland Security Science &
Technology Directorate (DHS/S&T), Department of Energy; Oak Ridge National Laboratory
(DOE/ORNL), The Air Force Research Laboratory (AFRL), Department of Homeland Security
Integrated Chemical Biological Radiological Nuclear Explosives (DHS/ICBRNE), and all other
Government Agencies and personnel named in this pleadings.
JURISDICTION
3. This is a claim pursuant to 28 U.S.C. §§ 1491(a) and 1498(a) for recovery
of Plaintiff's reasonable and entire compensation for the unlicensed use and manufacture, for and
by the United States, of inventions described in and covered by United States Patent Numbers:
7,385,497; 7,636,033; 8,106,752; 8,334,761; 8,531,280; RE43,891; RE43,990; 9,096,189;
2
9,589,439, and the Continuation Patent Application 15/530,839 filed March 06, 2017 that
published on 06/29/2017 under Publication No: US 2017-0186259 Al.
4. The jurisdiction of this Court is based on the provisions of28 U.S.C. §§
149l(a) and 1498(a).
5. 28 U.S.C. § 149l(a): The United States Court of Federal Claims shall have
jurisdiction to render judgment upon any claim against the United States founded either upon the
Constitution, or any Act of Congress or any regulation of an executive department, or upon any
express or implied contract with the United States, or for liquidated or unliquidated damages in
cases not sounding in tort.
6. The Fifth Amendment of the United States Constitution includes a
provision known as the Takings Clause, which states that "private property [shall not] be taken
for public use, without just compensation."
7. 28 U.S.C. § 1498(a): Whenever an invention described in and covered by
a patent of the 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.
28 u.s.c. §§ 1491
8. When the Government takes property without following the eminent
domain procedure, the affected property owner (Plaintiff) has the right to bring an inverse
condemnation "Takings" lawsuit against the Government entity(s) that has taken his property
The "Government Fifth Amendment Takings" lawsuit that is filed under 28 U.S.C. § 1491 by the
Plaintiff is "inverse" rather than "direct" because it is brought by the patent owner, not by the
3
Government agency(s) or other entities having eminent domain power. Therefore, the Plaintiff
understands he carries the burden of proof that his property rights were taken without the
payment of compensation. This differs from a direct condemnation following eminent
domain procedures which places the burden of proof upon the Government.
9. Inverse condemnation is not limited to the permanent physical taking of
the Plaintiff's property. Rather, it can include a temporary taking or occupation of private or
personal property that includes government regulation which burdens the property in such a way
that the Patent Owner cannot derive any economical use out of it. When Government regulation
significantly burdens private or personal property the inverse condemnation may be referred to
as a "regulatory taking." Most importantly, in an inverse condemnation or regulatory taking
scenario the government has failed to pay just compensation for the private property rights that
have been taken.
10. Pursuant to the guidelines of a "Government Fifth Amendment Takings"
of a Patent, the Government was given notice, made aware of, and told or signaled that the
intangible private and personal property subject matter as outlined in the Plaintiff's patent(s)
specifications and patent claims that was taken by the Government and used with the public, are
significantly the same or equivalent to the claimed inventions of the patent owner (Plaintift).
Fifth Amendment Government Takings: Intellectual Property as Intangible Assets
11. Intangible assets are non-physical assets (such as franchises, trademarks,
patents, copyrights, and goodwill) that grant the potential for certain rights and privileges as well
as the possibility for economic benefits to the owner. The subject matter of a patented invention
is considered intangible.
4
12. In Ruckelshaus v. Monsanto Company, 467 U.S. 986 (1984) the Court
held that a trade secret is constitutionally protected property, and a claim for its taking is within
Tucker Act cognizance:
Although this Court never has squarely addressed the question whether a person can have
a property interest in a trade secret, which is admittedly intangible, the Court has found
other kinds of intangible interests to be property for purposes of the Fifth Amendment's
Taking Clause." See, e.g., Armstrong v. United States, 364 U.S. 40, 44, 46 (1960)
(materialman's lien provided for under Maine law protected by Taking Clause);
Louisville Joint Stock Land Bank v. Radford, 295 U.S. 555, 596 -602 (1935) (real estate
lien protected); Lynch v. United States, 292 U.S. 571, 579 (1934) (valid contracts are
property within meaning of the Taking Clause)....
13. 467 U.S. at 1003. That patent rights are property rights, entitled to just
compensation when taken by the United States, is not subject to revision at this late date. The
premises as explained in 1910 remain intact, as explained in the record of that enactment:
Rep. Dalzell. But if the Government, through an authorized officer, has seen fit to
appropriate a patent of a citizen without making any contract with him, or under
circumstances that no implied contract can be inferred, then this law proposes to give him
a remedy. It proposes to put him on the same footing that every other citizen is on who is
not a patentee; that is, to give him the right to recover for property that has been taken
from him by due process oflaw. And every time that the United States Government
assumes to take forcibly, without the consent of the owner, a patented process, it violates
the constitutional provision which says no man's property shall be taken without
compensation and without due process of law. 45 Cong. Rec. 8755 at 8780.
5
14. For patent lawyers, however, an invention is not something physical, but a
concept. Indeed, in his 1933 book Double Patenting, patent law author Emerson Stringham goes
so far as to state that an invention is an abstraction:
"The difficulty which American courts ... have had ... goes back to the primitive
thought that an "invention" upon which the patent gives protection is something tangible.
The physical embodiment or disclosure, which, in itself is something tangible is confused
with the definition or claim to the inventive novelty, and this definition or claim or
monopoly, also sometimes called "invention" in one of that word's meanings is not
something tangible, but is an abstraction. Definitions are always abstractions. This
primitive confusion of"invention" in the sense of physical embodiment with "invention"
in the sense of definition of the patentable amount of novelty, survives to the present day,
not only in the courts, but among some of the examiners in the Patent Office. There is no
possibility of clear thinking, says Stringham, until it is understood that an invention as
protected by a patent is an abstraction, thus an intangible asset. Patent practitioners refer
to that abstraction as the "inventive concept."
28 u.s.c. §§ 1498
15. Whenever an invention described in and covered by a patent of the 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.
Government Infringement: Intellectual Property as Tangible Assets
6
16. Developed or manufactured products, devices, or apparatus are all
physical or tangible assets.
17. In interpreting the terms of Section 271 (f), it is critical to recall what a
"patented invention" consists of when method patents are at issue. We have noted "the
distinction between a claim to a product, device, or apparatus, all of which are tangible items,
and a claim to a process, which consists of a series of acts or steps." In re Kollar, 286 F .3d 1326,
1332 (Fed.Cir.2002); see also NTP, 418 F.3d at 1322 ("The invention recited in a method claim
is the performance of the recited steps."). Thus, a component of a tangible product, device, or
apparatus is a tangible part of the product, device, or apparatus, whereas a component of a
method or process is a step in that method or process.
18. Intellectual property (IP) is defined as original creative work manifested in
a tangible form that can be legally protected. IP includes patents, trademarks, and copyrights.
19. The U.S. Patent and Trademark Office (USPTO) issues three different
kinds of patents: utility patents, design patents, and plant patents. To qualify for a utility patent --
by far the most common type of patent - an invention must be: a process or method for
producing a useful, concrete, and tangible result. The purpose of the "useful, concrete and
tangible result" requirement was to limit patent protection to inventions that possess a certain
level of "real world" value, as opposed to subject matter that represents nothing more than an
idea or concept (which is not patentable), or is simply a starting point for future investigation or
research.
20. When the court focuses on a tangible result rather than the principles
behind the invention, it is easier to determine whether the patentee is claiming an abstract idea or
an application of that idea. Instead of drawing the unmanageable line between the idea and its
7
application, the court instead can look at the result of the invention and determine whether the
result is concrete and tangible.
PROCEDURAL msTORY
21. 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.
22. On December 23, 2015, an Order was signed by Judge Susan G. Braden
granting Plaintiff leave to file an Amended Complaint by February 16, 2016 and directing the
Plaintiff to submit a Claims Chart by March 15, 2016 (Dkt. No. 65).
23. On February 12, 2016, Plaintiff filed an Amended Complaint (Dkt. No.
68) alleging that, the Government: (1) was liable for the infringement of Plaintiff's '497, '752,
'891, '990, and '189 Patents under 28 U.S.C. § 1498(a); and (2) violated the Fifth Amendment of
the United States Constitution by taking Plaintiffs '497, '033, '752, '761, '280, '891, '990, '189
Patents and related '273 Application, without just compensation.
24. On February 19, 2016, Plaintiff filed its Claim Chart (Dkt. No. 69)
identifying forty ( 40) devices that were developed or procured, as a result of Government
solicitations, Government contracts, or National Science Foundation ("NSF") grants. The devices
allegedly infringe independent and dependent claims in Plaintiffs '497, '752, '891, '990, and '189
Patents.
25. On April 8, 2016, the Government filed an Answer to the February 12,
2016 Amended Complaint (Dkt. No. 74), but fail to respond to Plaintiff Claim Chart filed on
February 19, 2016.
8
26. On June 6, 2016, Plaintiff filed a Motion for Response to Claim Chart
(Dkt. No. 80) and, also on June 6, 2016, Plaintiff filed a Motion for Entry of Devices Supplied to
the Government (Dkt. No. 82).
27. On June 13, 2016, based on the arguments raised during the telephone
status conference that convened on June 10, 2016, the court Ordered that the Government file a
Motion To Dismiss; and stayed the Plaintiff's June 6, 2016 Motion for Response to Claim Chart
and, Plaintiff's Motion for Entry of Devices Supplied to the Government (Dkt. No. 85).
28. On June 24, 2016, the Government filed a Motion to Dismiss Certain
Accused Devices (Dkt. No. 88).
29. On July 5, 2016, Plaintiff filed a Response to the Government's Motion to
Dismiss Certain Accused Devices (Dkt. No. 90).
30. On July 18, 2016, the Government filed a Reply to the Plaintiff's
Response to the Government's Motion to Dismiss Certain Accused Devices (Dkt. No. 93).
31. On November 30, 2016, Judge Susan G. Braden signed a Memorandum
Opinion and Order Denying the Government's Motion to Dismiss-Rule 12(b)(l) and Rule
12(b)(6) (Dkt. No. 94). "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
Government for the damage sustained," United States v. Mitchell, 463 U.S. 206, 217 (1983). The
NSF claims allege that the Government awarded research grants to develop portable devices that
can: (I) identify dangerous chemical, radiological, and bacterial agents; and (2) track the spread
of disease. 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
9
that the Government has a fundamental interest in advancing." The Court's Resolution to the
"'Government's Motion to Dismiss" (Dkt No. 88): The June 24, 2016 Motion To Dismiss the
February 12, 2016 Amended Complaint's National Science Foundation Claims, Pursuant To
RCFC l 2(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
Government for the damage sustained 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. United States,487 F.3d
871,876 (Fed. Cir. 2007). "There is no further jurisdictional requirement that plaintiff make[]
additional nonfrivolous allegation(s] that [he] is entitled to relief under the relevant money-
mandating source." Run's Helicopter Serv., Inc. v. Federal Aviation Agency. 525 F.3d 1299,
1307 (Fed. Cir. 2008). Instead, "the consequence of a ruling by the court ... that plaintiffs case
does not fit within the scope of the [money-mandating] source ... is simply if that] plaintiff loses
on the merits for failing to state a claim on which relief can be granted." Fisher v. United States,
402F.3dl 16'7, 1175-76 (Fed. Cir.2005). Here, the February 12, 2016 Amended Complaint's NSF
claims are based on section 1498(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 of the 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, Plaintiff is the
owner of the United States patents asserted in this case and is therefore entitled to recover under
10
section 1498(a). See 28 U.S.C. $ 1498(a). Accordingly, the court has jurisdiction to adjudicate
the February 12, 2016 Amended complaint's NSF claims. The Government's June 24, 2016
Motiou to Dismiss, pursuant to 12(b)(l), 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(b)(6), ls 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 Government." see 556 U.S. at 678. The NSF claims allege that the
Government awarded research grants to develop portable devices that can: (I) identify dangerous
chemical, radiological, and bacterial 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 Government
has a fundamental interest in advancing. Accordingly, the court can reasonably infer that the use
of the NSF-funded devices was for the Government;' see, e.g., Hughes Aircraft co., 534 F.2d at
898 (finding that the government's participation in a satellite program was "for the Government,"
because the program was vital to the military defense and security of the United States); see also
Madey,413 F. Supp. 2d at 607 (M.D.N.C. 2006) (explaining that a use is "for the Government" if
it is in furtherance and fulfillment of a stated Government policy and for the Government's
benefit). The February 12, 2016 Amended Complaint's NSF claims also allege sufficient 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 Energy
Corp., the United States Court of Appeals for the Federal Circuit held that the Government
11
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
TV! 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 project reports, as required in the NSF Grant Conditions, should
document all efforts and outcomes, whether or not they are successful."). Government funding of
research that will lead to the development and testing of an accused device supports a reasonable
inference that the Government impliedly sanctioned infringing activity. (Dkt. No. 94).
32. On December 16, 2016, Judge Susan G. Braden signed a Discovery Order
(Dkt. No. 97) for the Plaintiff to provide to the Government all relevant documents that is in
Plaintifl's possession related to claims filed in the February 12, 2016 Amended Complaint, and
that the Government produce documents related to the devices entered into the Government's
Motion to Dismiss.
33. On February 3, 2017, Judge Susan G. Braden signed an Administrative
Order (Dkt. No. 100) dismissing Plaintifl's Motion for Response to Claim Chart (Dkt. No. 80)
filed on June 6, 2016, and Plaintiff's Motion for Entry of Devices Supplied to the Government
(Dkt. No. 82), also filed on June 6, 2016. The court issued an order staying these Motions until
resolution of the Government's Motion to Dismiss certain Devices. On June 24, 2016, the
Government filed a Motion to Dismiss certain Devices and on November 30, 2016 the court
entered an order denying the Government's Motion to Dismiss. On December 16, 2016, the court
entered a Discovery order, ordering the Government to provide Plaintiff with documents related
to the claims alleged in the February 12, 2016 Amended complaint, and ordering Plaintiff to
provide the Government copies of all documents in his possession that are relevant to the claims
12
alleged in the February 12, 2016 complaint. The Motions stayed by the June I2, 2016 Order are
moot' Therefore, these motions are dismissed without prejudice to being renewed.
34. On February I 7, 20I7, Plaintiff filed a Status Report (Dkt. No. IOI).
Plaintiff provided the Government with over 5000 pages of discovery documents that includes a
Claim Chart of the alleged infringing devices.
35. On May 26, 2017, the Court issued an order for the Plaintiff to file a Final
Amended Complaint and a Final Claim Chart on August 15, 20I7. Only two documents. (Dkt.
No. 116).
FACTURALBACKGROUNG
36. The patents asserted in this 28 U.S.C. § I49I(a), "Government Fifth
Amendment Takings ofa Patent(s)" and 28 U.S.C. § 1498(a), "Government Infringement"
Complaint are U.S. Patent No. 7,385,497 ("'497 Patent"), U.S. Patent No. 7,636,033 ("'033
Patent"), U.S. Patent No. 8,106,752 ("'752 Patent"), U.S. Patent No. 8,334,761 ("761" Patent),
U.S. Patent No. 8,531,280 ("280" Patent), U.S. Reissue Patent No. RE43,891 ("'891 Patent"),
U.S. Reissue Patent No. RE43,990 ("'990 Patent"), U.S. Patent No. 9,096, 189 ('" 189 Patent"),
U.S. Patent No. 9,589,439 ("'439 Patent) and the Continuation Patent Application 15/530,839
filed March 06, 2017 that published on 06/29/2017 under Publication No: US 2017-0186259 Al.
37. The above listed patents are lawfully issued, valid, and enforceable U.S.
Patents.
38. Plaintiff is the sole owner of the entire right, title, and interest in and to the
above listed patents.
39. Under the protection of the United States "Government", who has waived
its "sovereign immunity" for claims resulting out of expressed or implied contracts; at least
I3
Apple Inc., Samsung, LG, Qualcomm, Panasonic, and Motorola have entered into expressed
contracts, agreements, and procurements with the "Government" for the manufacture,
development, commerciali7..ation, and/or use of the Plaintiff's communication/monitoring device.
(Refer to paragraphs 49- 78). As a result of the parties actions, their conduct, and their assumed
intentions, an implied contract has been drawn between all the Government's departments,
branches, agencies, institutions, and government affiliates, and the "communication/monitoring
device" manufacturers and developers of at least Apple Inc., Samsung, LG, Qualcomm,
Panasonic, and Motorola
40. The Patent Owner has narrowed the amended complaint to primarily that
of Government infringement of the Plaintiff's communication device I monitoring equipment
(e.g. 95%) of at least one of the products grouped together by common features in the product
groupings category of design similarity (i.e. computer terminal, personal computer (PC), laptop,
desktop, notebook, tablet, handheld, cell phone, PDA or smart phone); claims that are directed to
the utility of:
41. A communication device I monitoring equipment that has an embedded
(built-in) biometric fingerprint scanner as a security feature designed to deny access to the device
by unauthorized individuals.
42. A communication device I monitoring equipment that has an embedded
(built-in) lock disabler device designed to lock the device after a certain number of unsuccessful
attempts to open (use) the device.
43. A communication device I monitoring equipment that has an embedded
(built-in) near-field communication (NFC) sensor for very short range radio frequency (RF)
communication with a near-field communication (NFC) tag or device that is near-field
14
communication (NFC) capable. Support for the Smartphone used as a stand-a/one scanner:
"Still, another objective of the present invention is to provide a multi sensor detection and
disabling lock system wherein the interchangeable detectors that comprise part <~fthe system can
be used as stand-alone scanners" (Patent No. 9,589, 439 (" '439 Palen/); Col. #5; Lines 25-28).
"FIG. 12 is a representalive schematic view of the multi sensor detection and lock disabling
system of the present invention illustrating the sequence ofsteps undertaken by one detector
when functioning as a standalone scanner for detecting an agent or compound" (Patent No.
9,589,439 (" '439 Patent); Col. #6; Lines 26-30). "As shown in FIGS. I. 2 and 9-13, the multi
sensor detection and lock disabling system JO includes a plurality ofdetectors 46 with each
detector 46 adapted for and set up to sample for a specific agent or compound (biological,
chemical, or radiological); and the de/eclors 46 are interchangeable for adapting to the needs
and demands offature technology. The detectors 46 can also be used as standalone scanners. "
(Patent No. 9,589,439 (" '439 Patent); Col. #9; Lines 54-56). "The detector 46/unctions as a
stand-alone scanner and can be wirelessly interconnected ... " (Patent No. 9,589,439 (" '439
Patent); Col. #9; Lines 54-56).
44. A communication device I monitoring equipment that has a physical
interface that is at least in, on, upon, or adjacent the communication device I monitoring
equipment for interconnecting the communication device I monitoring equipment to at least one
of a sensor, a detector case, a multi-sensor detection device, a locking device, a cell phone
detection device, a stall-to-stop vehicle slowdown system, or any of the products listed in any of
the product grouping categories.
45. A communication device I monitoring equipment that has a software
application interface that is at least in, on, upon, or adjacent the communication device I
15
monitoring equipment for interconnecting the communication device I monitoring equipment to
at least one of a sensor, a detector case, a multi-sensor detection device, a locking device, a cell
phone detection device, a stall-to-stop vehicle slowdown system, or any of the products listed in
any of the product grouping categories.
46. A communication device I monitoring equipment that comprises at least
one satellite connection, Bluetooth connection, WiFi connection, internet connection, radio
frequency (RF) connection, cellular connection, broadband connection, long and short range
radio frequency (RF) connection, or GPS connection.
47. "FIG. 17 is a perspective view of the multi sensor detection and lock
disabling system of the present invention illustrating the incorporation of the features and
elements of the detector case to a cell phone and cell phone case"; (Patent No. 9,589,439 ('"439
Patent); Col. #6; Lines 59-62).
48. "FIGS. 18 and 19 illustrate representative examples of the integration of
portable electronic communication or telecommunication devices such as a cell phone l 87a
and/or a laptop computer 187b with the monitoring equipment 138"; (Patent No. 9,589,439
("'439 Patent); Col. #13; Lines 8-11).
Unauthorized Use of Plaintiff's Communication I Monitoring Devices and Equipment
49. The U.S. Government Accountability Office: According to the most recent
OMB estimate, the federal government spends about $1.2 billion annually on about 1.5 million
mobile devices and associated services. View GA0-15-431. For more information, contact Carol
R. Cha at (202) 512-4456 or chac@gao.gov.
50. Beginning in year 2008 and continuing, the "Government" has given
authorization and consent through contracts, agreements, grants, and procurements, to at least the
16
mobile device manufacturers and developers of Apple, Samsung, Qualcomm, LG, Motorola, and
Panasonic for the development and manufacture of mobile devices to be used by and for the
"Government". All contracts, agreements, and procurements were made with the mobile device
manufacturers Apple, Samsung, Qualcomm, LG, Motorola, and Panasonic after the Patent
Owner gave notice to the "Government" between the years 2006 and 2007. See Plaintiff's
discovery production at Section VIL, A-E; and Docket No. I 0 l for the following:
51. 2008: "OHS S&T is pursuing what's known as cooperative research and
development agreements with four cell phone manufacturers: Qualcomm, LG, Apple, and
Samsung. These written agreements, which bring together a private company and a government
agency for a specific project, often accelerate the commercialization of technology developed for
government purposes." Quote taken directly from the Department of Homeland Security's
website.
52. 2008: "During the demonstration, chemical readings captured from the
simulated scenarios as well as location data are transmitted to the test network. The cell phone
number is also transmitted; however this information is scrubbed by the cell phone provider (per
agreements with S&T) and is not displayed in the final output."
53. 2012: "The U.S. Department of Defense expects in coming weeks to grant
two separate security approvals for Samsung's Galaxy smartphones, along with iPhones and
iPads running Apple's latest operating system-moves that would boost the number of U.S.
government agencies allowed to use those devices. An approval by the Pentagon is considered as
the highest standards in security."
54. 2013: Smartphones and Handheld Devices for Defense and Homeland
Security Strategies, Plans, Challenges & Opportunities Symposium:
17
55. "U.S. Coast Guard Smartphones Needs, Challenges &
Opportunities" Rear Admiral Robert E. Day, Jr., Assistant Commandant for
Command, Control, Communications, Computers & Information Technology,
(C4IT) & Director, Coast Guard Cyber Command, Pre-Commissioning
Detachment, U.S. Coast Guard.
56. "DoD Mobile Strategy" Mr. Mark Norton, Senior Engineer,
Department of Defense, Office of the Chieflnformation Officer, Office of the
Under Secretary of Defense (CIO/OSD).
57. "Update on Spectrum Sharing for Mobile Devices at the Tactical
Edge" Mr. Julius Knapp, Chief Engineer, Office of Engineering and Technology,
Federal Communications Commission (FCC).
58. "Secure Smartphone Computing, Needs and Opportunities for a
Secure yet Mobile Platform" Mr. Keith Trippie, Executive Director, Enterprise
System Development, Office of the Chieflnformation Officer, Department of
Homeland Security (OHS).
59. "DISA's Strategic Mobility Vision" Mr. Gregory Youst, Chief
Mobility Engineer, Technology and Integration Division, Chief Technology
Officer, Defense Information Systems Agency (DISA) (invited).
60. "Content-Based Mobile Edge Networking (CBMEN)" Dr. Keith
Gremban, PhD., Program Manager, Content Based Mobile Edge Networking
(CBMEN), Defense Advanced Research Project Agency (DARPA).
61. "Transformative Apps Program" Mr. Doran Michaels, Program
Manager, Transformative Apps, DARPA.
18
62. "Windshear II Update" Mr. John-Isaac Clark, Chief Innovation
Officer, Thermopylae Sciences & Technology & Mr. Lenwood Washington,
Senior Systems Engineer, Mission Integration Directorate, Acquisition and
Engineering, National Reconnaissance Office (NRO).
63. "Advancements in Mobile Devices for Chem-Bio Detection and
Characterization" Dr. Calvin CHUE, PhD., Research Biologist, U.S. Army
Research, Development and Engineering Command (RDECOM).
64. "ADAPT Unattended Ground Sensor Using Android Operating
System and Original Design Manufacturers" Mr. Mark Rich, Program Manager,
Strategic Technology Office, DARPA.
65. 2013: "The U.S. Department of Defense confirmed in a statement on
Friday that Apple'
This text is long and has been trimmed here. Open the source document for the complete record.