Opinion

Ross-Hime Designs, Inc. v. United States

Court: United States Court of Federal Claims
Filed: Sep 19, 2018
Status: Published
Cited by: 0 cases
Authority: More cited than 5.3%

finding that fact-finding is proper when considering a motion to dismiss where the jurisdictional facts are challenged.

How later courts described this case

finding that fact-finding is proper when considering a motion to dismiss where the jurisdictional facts are challenged.
letter from the plaintiff asserting infringement and offering to discuss a license “stated the elements of an administrative claim”
“[F]or each particular device only one right to recovery can arise, and that right must occur upon the first manufacture or use by or for the government of that specific device.”
when a patent is issued after an item has been procured by the Government, the claim for infringement accrues at the time of “the first use of the item subsequent to the issuance of the patent”

Written by the judges who cited it.

The opinion

In the United States Court of Federal Claims

No. 11-201C

(Filed: September 19, 2018)1

************************** *

Patent Infringement; Motion

to Dismiss; Statute of

ROSS-HIME DESIGNS, INC., *

Limitations; Claim Accrual;

Accrual Suspension; Tolling;

Plaintiff, *

35 U.S.C. § 286.

v. *

THE UNITED STATES, *

Defendant. *

************************** *

Vytas M. Rimas, Rimas Law Firm, PLLC, 5101 Thimsen Ave., Suite 204, Minnetonka,

MN, 55345, for Plaintiff.

Chad A. Readler, Gary L. Hausken, and Conrad J. DeWitte, Jr., U.S. Department of

Justice, Civil Division, Commercial Litigation Branch, P.O. Box 480, Ben Franklin Station,

Washington, D.C. 20044, for Defendant. Kurt G. Hammerle, Office of the Chief Counsel, NASA

Johnson Space Center, Of Counsel.

_________________________________________________________

OPINION AND ORDER GRANTING IN PART

DEFENDANT’S MOTION TO DISMISS

_________________________________________________________

WILLIAMS, Senior Judge.

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

some claims as time-barred. In this action, Plaintiff, Ross-Hime Designs, Inc. (“Ross-Hime”)

asserts that the National Aeronautics and Space Administration (“NASA”) infringed two of Ross-

Hime’s patents through NASA’s use and manufacture of robotic hand-like manipulators in two

anthropomorphic robotics systems, designated Robonaut 1 and Robonaut 2. Ross-Hime filed suit

on April 1, 2011, asserting that Robonaut 1 infringes claims 1, 3, 4, 5, 7, 8, 10, and 14 of the ’580

The Court issued this opinion under seal on August 24, 2018, and directed the parties to

file proposed redactions by September 7, 2018. Neither party has proposed redactions.

Accordingly, the Court publishes this opinion correcting errata.

patent and that Robonaut 2 infringes claims 1, 5, 14 and 15 of the ’580 Patent and claims 11, 14,

and 16 of the ’962 patent. Defendant seeks dismissal of Ross-Hime’s infringement claims with

respect to two iterations of Robonaut 1—Robonaut 1A and Robonaut 1B.2 Defendant contends

that these claims are time-barred because Ross-Hime’s cause of action accrued no later than June

16, 2003, and this suit was not filed until almost eight years later on April 1, 2011.

Because Ross-Hime submitted an administrative claim regarding Robonaut 1A on

September 1, 2001, the statute of limitations was tolled for six years while that administrative

claim was pending, and its infringement claim as to that device is timely. However, Ross-Hime’s

claim against Robonaut 1B accrued later—in 2002—was not the subject of an administrative

claim, and is time-barred. As such, Ross-Hime’s claim as to Robonaut 1B is dismissed as time-

barred.

Findings of Fact3

Ross-Hime is a Minnesota corporation specializing in the design of humanoid robotic

systems, including robotic manipulators and is the assignee of United States Patents 5,967,580

(“the ’580 patent”) and 6,658,962 (“the ’962 patent”). The inventions of the ’580 and ’962 patents

relate to anthropomorphic robotic manipulators in which the robot mimics the movements

performed by a human operator. Only the ’580 patent is asserted against Robonaut 1. The

invention of the ’580 patent more specifically “relates to controlled motion mechanical members

used as a mechanical manipulator and, more particularly, to a motion controllable,

anthropomorphic mechanical manipulator providing some of the capabilities of an upper human

torso.” ’580 Patent 1:8-12. Plaintiff asserts that the hands of Robonaut 1 infringe on independent

Claims 1 and 5 of the ’580 patent, and dependent Claims 3, 4, 7, 8, 10, 14, and 15, all of which

depend on Claim 1. Compl. ¶¶ 5-11; Ross-Hime Designs, Inc. v. United States, 126 Fed. Cl. 299,

314 (2016).

The asserted claims of the ’580 patent aim to robotically simulate a gripping mechanism,

and describe various actuators using differential movement to achieve the dexterous motion of a

thumb and forefinger and grasping motion of a human palm. Claim 1 of the ’580 patent is

illustrative:

1. An articulated manipulating system for mounting on a base in a robotic

manipulator and capable of engaging selected objects, and said system comprising:

a support frame having a base support for mounting on said base with said base

support having a first frame extension so as to extend therefrom in a first direction

Robonaut 1A’s right hand was assembled, attached to a robotic frame, and tested in 1999,

and its left hand was assembled, combined with the right hand on the robotic frame, and tested in

2000. J. Ex. 38, at 5. Robonaut 1B was built and tested in 2002. Id. NASA’s first Robonaut was

referred to as simply “Robonaut” until NASA built the second unit in 2002, and the units were

then called Robonaut A and Robonaut B. After NASA began developing a second Robonaut series

in 2006, the first two Robonaut models were renamed Robonaut 1A and Robonaut 1B.

These findings of fact are based upon evidence adduced at a hearing on Defendant’s motion

to dismiss. “Tr.” refers to that evidentiary hearing, and “J. Ex.” refers to joint exhibits.

and a second frame extension rotatable connected to said base support and

extending therefrom in a second direction at an angle to said first direction;

a first effector base rotatably connected to said first frame extension so as to be

rotatable with respect thereto in plural different directions;

a second effector base rotatable connected to said second frame extension so as to

be rotatable with respect thereto in plural different directions;

first pair of base linear actuators each having an end thereof rotatably connected to

said first frame extension at corresponding extension connection locations thereon,

and each having that opposite end thereof rotatably connected to said first effector

base at corresponding effector connection locations thereon so that any substantial

differentials in movement of these actuators cause corresponding substantial

motions of said first effector base towards a corresponding one of said extension

connection locations and so that substantial common movements of these actuators

causes substantial motions of said first said effector toward or away from both of

said extension connection locations; and

a second pair of base linear actuators each having an end thereof rotatable

connected to said second frame extension at corresponding extension connection

locations thereon, and each having that opposite end thereof rotatably connected to

said second effector base at corresponding effector connections locations thereon.

’580 Patent 27:42-28:9.

The hand-like manipulator of Claim 1 is depicted in Figure 11 of the ’580 patent:

’580 Patent Fig. 11.

The ’580 Patent issued on October 19, 1999, named Ross-Hime Designs, Inc., as the

assignee, and Mark Rosheim, Ross-Hime’s founder, as the inventor. Id. at 1. Mr. Rosheim initially

submitted the application for the ’580 patent on November 25, 1997, and that application was a

continuation of an abandoned application dated September 8, 1995, and a continuation-in-part of

another abandoned application dated June 30, 1995. ’580 Patent. In addition to the ’580 patent

and ’962 patent, Mark Rosheim is the named inventor on numerous other patents in the field of

robotic manipulators and has published several articles and books on the topic. Ross-Hime claims

that the Robonaut 1 hands infringe on the ’580 patent, in part, because the “differential drive of

the thumb and dexterous finger” of the Robonaut 1 are effectuated using “actuators,” as in the

invention described in the ’580 patent. See, e.g., J. Ex. 7.

Development of the Robonaut

NASA developed the Robonaut hand to assist with extravehicular activity on the then-in-

progress International Space Station. J. Ex. 25. Because many space station systems and tools

were designed for human operators, it was essential that this robotic system have a high degree of

anthropomorphic dexterity. Id. The Robonaut hand was one of several robotic hands that were

being developed to reduce the number of instances where astronauts were forced to leave the space

vehicle and expose themselves to the dangers of space. Id. In order to limit an astronaut’s

extravehicular time, the Robonaut hand needed to possess the dexterity equal to that of an astronaut

wearing a pressurized spacesuit. J. Ex. 26. This would allow the robotic hand to work with human-

rated tools and interface with systems on the space vehicle that were designed for human operation.

J. Ex. 17.

Work on the Robonaut hand began in Fiscal Year 1997, at NASA Johnson Space Center

in Houston, Texas, and was initially funded by NASA and later by the Defense Advanced Research

Projects Agency. J. Ex. 38, at 4. In the fall of 1998, NASA assembled the first Robonaut hand

for testing, and manufactured an arm to attach the hand to a torso. Id. at 5; Tr. 93 (Sept. 26, 2017).

On January 25, 1999, Dr. Myron Diftler, who was at the time an employee of Lockheed

Martin and is currently employed by NASA, and Mr. Christopher Lovchik, who was at the time a

NASA employee, filed for a patent on the technology utilized in the Robonaut hand listing NASA

as assignee. ’644 Patent. The United States Patent and Trademark Office issued U.S. Patent No.

6,244,644 (“the ’644 patent”) entitled “Compact Dexterous Robotic Hand,” on June 12, 2001,

listing NASA as assignee and naming Dr. Diftler and Mr. Lovchik as the inventors. Id. The

invention of the ’644 patent “relates to a compact, rugged, dexterous robotic hand that closely

resembles the function of a human hand . . . . Force is mechanically transmitted from drive

components in a forearm portion through the wrist section to operate the plurality of fingers and

thumbs.” Id. 1:10-17. The ’644 specification goes on to describe the operation of the hand, and

the patent includes the following model of the hand:

FIG. 2

Id. Fig. 2. “Fig. 2 [above] is an exploded view of the robotic hand including the flexible fingers,

palm member, palm housing, and lead screw assemblies.” Id. 7:52-54.

The Robonaut hand was publicly presented at the 1999 International Conference on

Robotics and Automation of the Institute of Electrical and Electronics Engineers. Tr. 84-85 (Sept.

26, 2017). At that conference, which took place in May in Detroit, Michigan, Dr. Diftler and Mr.

Lovchik presented the assembled hand with an accompanying paper entitled The Robonaut Hand:

A Dexterous Robot Hand for Space, subsequently published in the proceedings of the conference.

J. Ex. 25; Tr. 84-85, 272 (Sept. 26, 2017). The paper explained the purpose, design philosophy

and the resulting design, challenges faced, and the next steps to be taken, and included a

photograph of the hand and a figure breaking out the components:

Figure 1: Robonaut Hand Figure 2: Hand components

J. Ex. 25, at 1-2.

The paper also featured exploded views of the models and detailed descriptions of the

finger drive train, the dexterous fingers, grasping fingers, thumb, palm, and wrist/forearm. Id. at

2-5. The paper described the hand as “consist[ing] of a forearm which houses the motors and drive

electronics, a two degree of freedom wrist, and a five finger, twelve degree of freedom hand . . . .

The hand itself is broken down into two sections [Figure 2, above]: a dexterous work set which is

used for manipulation, and a grasping set which allows the hand to maintain a stable grasp while

manipulating or actuating a given object.” Id. at 2. The figures in the paper displaying the finger

leadscrew assembly, dexterous finger, decoupling links, grasping fingers, forearm base cam,

forearm assembly, and wrist mechanism are identical to drawings in the ’644 Patent. Compare

’644 Patent Figs. 2-14 with J. Ex. 25, at 2-5.

In the fall of 1999, after Dr. Diftler and Mr. Lovchik had presented the paper at the IEEE

conference, NASA integrated the hand with a partial torso and head mechanism. Tr. 93 (Sept. 26,

2017). The assembled unit was videotaped as part of an educational NASA video entitled

“Robonaut,” released on December 29, 1999. J. Ex. 11. In that video, a voice-over narrates as the

hand demonstrates several capabilities, including using tools intended for human operation and

dexterously manipulating objects. Id. The following stills taken from the video show the

Robonaut hand operating a power drill similar to a space torque wrench used to loosen or tighten

bolts on a spacecraft, and manipulating a tether of the sort used by astronauts to anchor themselves

to a spacecraft:

Id.

The video concluded with contact information:

J. Ex. 11.

The content of the video was taken from a resource reel dated December 1, 1999. See

Green Decl. ¶¶ 6-7 (stating that her search of NASA’s video archive “revealed a resource reel from

which content was taken to be used” in the December 29, 1999 video, and “the production date of

the resource reel . . . is December 1, 1999”).4

NASA added a second arm to Robonaut in October 2000, and a second hand to Robonaut

between October and December 2000. Tr. 93-95 (Sept. 26, 2017). NASA published a video

entitled “Robonaut: The Next Step in Robotics” on March 13, 2001, which showed both hands

working together, performing tasks such as stripping wire, opening packages, hooking and

unhooking tethers, tying a knot, and digging through simulated Martian soil. Id. at 40-45; J. Ex.

12; Green Decl. ¶ 5. The following still taken from the March 2001 video shows the Robonaut

“working with two tools, a simulated space screw driver and a hand drill”:

Ms. Green is a NASA employee “responsible for overseeing preservation projects,

providing oversight for cataloging support, and ensuring the successful maintenance of [Johnson

Space] Center imagery repositories.” Green Decl. ¶ 1. She “authorized and reviewed a search” of

NASA’s video archives regarding the subject Robonaut videos, and she “personally reviewed”

NASA’s records of the video and resource reel. Id. at ¶¶ 3, 9.

Tr. 41 (Sept. 26, 2017); J. Ex. 12. The video ended with the same slide as the previous video

advising the viewer on how to obtain additional information.

NASA began work on a second generation Robonaut unit in the fall of 2002, which was

given the moniker Robonaut B; the original unit was then renamed Robonaut A. J. Ex. 38, at 5.

Later, NASA would begin development of an operational Robonaut unit to be launched into orbit

for work aboard the International Space Station. That unit was designated as Robonaut 2, and

Robonauts A and B were renamed Robonaut 1A and 1B. Tr. 154-55 (Sept. 26, 2017).5

During the week of June 16, 2003, NASA conducted Human-Robot Spacewalk Squad

Tests, to evaluate Robonauts 1A and 1B in the role of assisting a human astronaut. J. Ex. 2. During

the experiment both Robonaut units, under the control of human teleoperators, helped NASA

astronaut Colonel Nancy Currie assemble a simulated truss structure. Id. In the video taken of

those tests, Robonaut 1A and Robonaut 1B can each be seen using both hands to assist in the

construction of the truss. Id. One of the gripping fingers on Robonaut 1B can be seen

malfunctioning and locked in an open position, but otherwise all four hands adequately perform

the required tasks, including picking up truss components and handing them to Astronaut Currie

and manipulating flexible cables. Id. In the 2003 video NASA had added tactile gloves over the

Robonaut hands in order to improve the grip and give enhanced feedback to the teleoperators. Tr.

35 (Sept. 26, 2017). The following stills taken from the June 2003 video show Colonel Currie

working with Robonaut 1A and Robonaut 1B to raise the truss structure and the Robonauts

“working to take a cable with a connector and hand it to [Colonel] Currie so she can connect it to

the truss, simulating assembly operations in space”:

In addition to Robonaut 1A and 1B, Defendant constructed two test fingers referred to as

the “Robonaut 1C finger[s].” Tr. 154 (Sept. 26, 2017). These fingers were used for vacuum

chamber testing designed to mimic the conditions of space. This testing was performed at the

Johnson Space Center from September 26, 2006, to September 30, 2006. Def.’s Ex. V. The 1C

fingers were not part of a complete hand or wrist assembly, and no complete Robonaut 1C device

was ever constructed. Tr. 71-72 (Sept. 26, 2017).

J. Ex. 2; Tr. 24, 28 (Sept. 26, 2017).

Technical Articles and Publications

In addition to the 1999 paper presenting the Robonaut hand, the Robonaut was the subject

of several technical publications throughout its development. A July 9, 2000 article published in

The Daily News of Galveston County, Texas, contained close-up pictures of the Robonaut hand

and discussed the grip strength, degrees of dexterity, and functions of the hand. J. Ex. 18. Articles

detailing the progress NASA had made on the Robonaut were featured in Volume 14 of

Autonomous Robots, published in 2003, in the 2005 and 2007 Proceedings of the IEEE

International Conference on Robotics and Automation, and in the Proceedings of the 2004

Conference on Human-Computer Interaction. J. Exs. 15-17, 26.

Correspondence Between Ross-Hime and NASA

From June 24, 2000, to October 1, 2001, NASA and various representatives of Ross-Hime

exchanged a series of six letters. In a June 24, 2000 letter to Chris Culbert6 at NASA Johnson

Space Center, Mr. Rosheim wrote:

Thank you for speaking with me regarding the fate of the Robotic Surrogate and

other matters.

Regarding the Robonaut Hand I believe that NASA is infringing on one of our basic

patents (see enclosure). This was made clear to Edith Taylor, Charles Price and

Chriss Lovchik when we delivered the Surrogate a few years ago. It is my

understanding that Chriss based his hand on drawings delivered under our NASA

contract for a direct drive hand.[7] A [sic] approach that still offers higher forces,

greater simplicity and lighter weight.

The addressee’s name is misspelled as “Chriss Culvert,” but Mr. Rosheim intended the

letter to be sent to Chris Culbert. J. Ex. 4; Tr. 348 (Sept. 27, 2017). Mr. Rosheim recalled that

Mr. Culbert was an engineer in NASA’s robotics group. Tr. 349 (Sept. 27, 2017).

Ross-Hime began developing robotic hands under a NASA contract in the late 1980s, and

produced a second generation of its robotic hand design under a subcontract with Lockheed

I would appreciate a response regarding the above at your earliest convenience. We

are very interested in granting NASA a license to continue this work and please

don’t misconstrue this letter in any other light.

J. Ex. 4. NASA did not respond to this letter. While the parties could not locate the referenced

enclosed patent, Mr. Rosheim testified that the reference was likely to the ’580 patent. Tr. 349,

386-88 (Sept. 27, 2018).

David Jasper, Ross-Hime’s CEO, sent a letter on July 22, 2001, to Walter Guy, “the

manager of an umbrella group” at the Johnson Space Center that “encompassed all robotics,”

according to Mr. Rosheim’s recollection. J. Ex. 5; Tr. 359 (Sept. 27, 2017). In that letter, Mr.

Jasper stated Ross-Hime’s belief that the ’644 Patent recently issued to NASA “reads on patents

held by Ross-Hime Designs” and that due to that perceived “overlap of our existing patents” Ross-

Hime was “seeking restitution including license fees and possible damages.” J. Ex. 5. Mr. Jasper

testified that Ross-Hime’s purpose in sending this letter was to “negotiate a license.” Tr. 315 (Sept.

27, 2017). He continued: “we felt they were using our technology and they should be paying for

it.” Id.

Hardie Barr, an attorney in NASA’s Office of Patent Counsel at Johnson Space Center,

responded in the following letter on August 16, 2001, seeking clarification about Ross-Hime’s

concerns:

We were somewhat surprised by the overall tone of subject letter which suggests a

feeling by Ross-Hime-Designs, Inc. that NASA has somehow acted improperly to

the detriment of Ross-Hime-Designs, Inc. Let me assure you, Mr. Jasper, that we

have no intention of depriving Ross-Hime Designs, Inc. of any rights to which it is

entitled. Perhaps you could help us understand your concern by expressing more

clearly what is the nature of any perceived impropriety.

As noted in subject letter, a patent (specifically, U.S. Patent No. 6,244,644,

Compact Dexterous Robotic Hand) issued to NASA (on June 12, 2001) naming

Christopher Lovchik and Myron Diftler as inventors. Subject letter suggests,

generally, that there are similarities between the screw drive of the fingers and

thumb of that patent and patents held by Ross-Hime Designs, but the nature of any

perceived similarities is not given.

***

Subject letter concludes with references to several legal concepts, including

“restitution,” “license fees,” and “damages,” but we are at a loss to understand why

Ross-Hime Designs, Inc. feels that these concepts are pertinent.

Engineering Sciences Company. Tr. 333-34 (Sept. 27, 2017). Ross-Hime’s subcontract was

completed on October 1, 1994. Id.

Mr. Jasper, we earnestly solicit your support in helping us resolve the perceived

conflict that your letter alludes to. Please provide us with more specific information

regarding the reason for your concern.

J. Ex. 6.

The parties agree that Ross-Hime responded to this letter with a letter dated September 1,

2001, but neither Ross-Hime nor NASA has been able to locate a copy of that letter. Tr. 319-22,

336-37, 416 (Sept. 27, 2017). NASA responded to this missing letter on September 13, 2001, “Re:

Letter: David P. Jasper, Ross-Hime Designs, Inc. to Hardie Barr, NASA Johnson Space Center,

dated September 1, 2001,” stating:

I wish to again express a desire on the Part of NASA to resolve any perception that

NASA has, somehow, deprived Ross-Hime Designs, Inc. of any rights.

In my response to your earlier letter (dated July 22, 2001), I requested (by letter

dated August 16, 2001) more specific information regarding why you felt that

NASA’s hand violated any of Ross-Hime Design’s patent rights. Subject letter

suggests that without “direct knowledge of [NASA’s] implementation of a hand,

[you] cannot be very specific.” In Subject letter you also suggested that we should

supply you with drawings and photographs of our “implementation of a hand” and

thus enable you to “elucidate” all of your claims.

***

Subject letter refers to your previous letter that mentioned a “differential drive of

the thumb and dexterous finger [that] is a very basic concept protected by [your]

patent #5967580 (specifically claim #1).” Rather than discuss general similarities,

I would like to point out some specific differences between Claim 1 of your Patent

No. 5,967,580 (‘580) and our implementation of the hand as described in our ‘644

patent.

***

While both patents involve “differential drives” as you suggest, they are vastly

dissimilar in the way they operate. The similarities: (a) Claim 1 of your ‘580 patent

claims “differentials in movement” of actuators that cause a desired movement of

the finger and (b) the actuators used in the NASA hand move cables in a

“differential manner” thus effecting a desired movement of the finger. The

differences: (a) As pointed out above; the ‘580 patent uses linear actuators, the

NASA hand (as described in the ‘644 patent) uses rotary actuators;[8] (b) in the ‘580

patent, the linear actuators are connected directly to the finger segment, whereas in

the NASA hand as described in the ‘644 patent, there are three intermediate

Defendant’s expert witness at the claim construction hearing, Dr. J. Kenneth Salisbury, Jr.,

testified that the difference between a rotary actuator and a linear actuator is that a rotary actuator

“causes rotation, and [a linear actuator] causes translation, straight line translation.” Tr. 342 (May

28, 2015). Plaintiff’s expert, Mr. Theodore F. Neils, testified that a rotational actuator “only goes

in a rotational mode.” Id. at 399.

elements between a rotary actuator and the finger segment. In summary, the

differential drive aspects of the ‘580 patent and the implementation of the NASA

hand as described in the ‘644 patent are different in kind and in manner of operation.

Accordingly, I cannot agree that the Ross-Hime Designs, Inc. patent (U.S. Patent

No. 5,967,580 reads on any implementation of the NASA hand as described in U.S.

Patent No. 6,244,644.

J. Ex. 7.

In an October 1, 2001 letter to Hardie Barr, Ross-Hime’s David Jasper responded to

NASA’s September 13, 2001 letter, and stated that “the purpose of our communication [was] to

seek proper licensing agreements for those implementations that read on our issued patents.” J.

Ex. 8. Mr. Jasper continued that “[w]e assert that the ‘644 patent provides differential movement

of the dextrous fingers and thumb in the same manner as the finger-like segments in our ‘580

patent. The distinctions in actuator methods that you emphasize are not the only point of overlap.”

Id.

In this October 1, 2001 letter Mr. Jasper further addressed NASA’s “interpretations of

actuator differences,” stating:

1. A linear actuator is nothing more than a powered device having an end output

which is a linear motion. Linear actuators are typically a package which

consists of a electric motor which can rotate in either direction that has been

connected to a mechanical system that converts the motion to back and forth

or in/out action. Some form of screw drive is the typical mechanical system

but the use of cams and levers also produces linear from rotary motion.

NASA’s dexterous hand is no different in that regard. In Col. 10 of ‘644 patent

in the paragraph beginning at line 28 where it clearly states that a rotary

actuator [91] is connected to a lead screw assembly to translate rotational

movement into linear movement to operate the fingers. In other words, the

packaging of the screw drive does not change its essential function, there is no

difference in kind.

2. The actuators set out in claim 1 of the ‘580 patent describe those actuators as

being connected to a structure consisting of bases, frames, and extensions,

none of which are limited to simulating a palm portion of a hand. Any other

structure supporting the manipulating system in that claim serves as a base

including palm-like portions, wrist-like portions, arm-like portions, or other

structures supporting the manipulating system. In patent ‘644 your location of

the actuators on/in the forearm is not different from our claim 1.

3. The actuators set out in claim 1 of the ‘580 patent are stated to be rotatably

connected to what you term the first finger segments, but there is no

requirement in our claims as to direct or indirect attachment. It is obvious in

both the ‘580 and ‘644 patents that the thumb and finger segments can rotate

with respect to the actuators. Such a connection is necessarily a rotatable

connection of the actuators and the dexterous finger and thumb segments for

purposes of claim 1. A flexible shaft is not different in kind and would be

included in our more broadly stated claim 1.

In other words, the ‘644 patent provides differential movement of the dexterous

fingers and thumb in the same manner as the finger-like segments in the ‘580 patent

by mounting those dexterous fingers on a two-degree of freedom joint just as the

finger-like segments in the ‘580 patent. Although the ‘644 patent device moves the

actuators further from those dexterous fingers and thumb, this is done by merely

using a longer drive to rotatably connect them to the effective linear actuators.

Id. (emphasis in original).

Mr. Jasper concluded the letter by stating that “[w]hile this discussion is stimulating it is

not moving us forward toward a license agreement.” Id. NASA did not respond to Ross-Hime’s

October 1, 2001 letter, and there is no further correspondence in the record.

Procedural History

Ross-Hime filed suit on April 1, 2011, asserting that Robonaut 1 infringes claims 1, 3, 4,

5, 7, 8, 10, and 14 of the ’580 patent and that Robonaut 2 infringes claims 1, 5, 14 and 15 of the

’580 Patent and claims 11, 14, and 16 of the ’962 patent. The Court held a claim construction

hearing and construed three terms common to the ’580 and ’962 patents and one term that appears

only in the ’962 patent. Ross-Hime Designs, Inc., 126 Fed. Cl. at 327. Defendant then moved to

dismiss the infringement claims directed against Robonaut 1 under Rule 12(b)(1)—namely, that

Robonaut 1 infringes on independent claims 1 and 5 and dependent claims 3, 4, 8, and 14

(dependent on claim 1), 7 (dependent on claim 3), and 10 (dependent on claim 4) of the ’580 patent.

The Court conducted an evidentiary hearing in St. Paul, Minnesota, on September 26-27, 2017, on

Defendant’s motion to dismiss.9

Discussion

Defendant asserts that Plaintiff’s claims with respect to Robonaut 1 are time-barred under

this Court’s six-year statute of limitations, 28 U.S.C. § 2501. Plaintiff counters that its claims are

timely because Robonaut 1 was not available for use until the six-year period before Plaintiff filed

suit. Plaintiff further argues that the statute of limitations was suspended under the accrual

suspension doctrine or tolled under 35 U.S.C. § 286.

Dismissal Under Rule 12(b)(1)

The Government waived its sovereign immunity and consented to be sued for patent

infringement in this Court under 28 U.S.C. § 1498(a), but that waiver is limited to claims of

infringement that are brought within the six-year jurisdictional time limit of § 2501. MacLean v.

United States, 454 F.3d 1334, 1336 (Fed. Cir. 2006) (holding that the jurisdictional limits of §

Because Plaintiff elected not to purchase a transcript of the evidentiary hearing, the parties

jointly requested that the post-hearing briefs be submitted 45 days after the transcript became

publically available. The Court granted the parties’ request and ordered that post-hearing briefs

would be due on March 1, 2018. The parties subsequently moved for several extensions to

complete post-hearing briefing, until May 18, 2018.

2501 are a condition on the Government’s waiver of sovereign immunity); Unitrac, LLC v. United

States, 113 Fed. Cl. 156, 160 (2013). Such waivers of sovereign immunity must be construed

narrowly and in favor of the Government. Lane v. Pena, 518 U.S. 187, 192 (1996). Subject-matter

jurisdiction is a threshold requirement and cannot be waived by the parties. Arbaugh v. Y&H

Corp., 546 U.S. 500, 514 (2006); Starobin v. United States, 662 F.2d 747, 750 (Ct. Cl. 1981) (per

curiam). The Court lacks subject-matter jurisdiction over claims that are barred by § 2501, and

such claims must be dismissed. John R. Sand & Gravel Co. v. United States, 552 U.S. 130, 133-

34 (2008).

Once subject-matter jurisdiction has been challenged, the plaintiff bears the burden of

establishing the Court’s jurisdiction by a preponderance of the evidence. Reynolds v. Army & Air

Force Exch. Serv., 846 F.2d 746, 748 (Fed. Cir. 1988). To carry that burden, the plaintiff must

present “competent proof” and affirmatively show that the Court has jurisdiction. McNutt v. Gen.

Motors Acceptance Corp., 298 U.S. 178, 189 (1936). The Court may consider this evidence and

resolve factual disputes when evaluating whether it has jurisdiction over the challenged claims.

Unitrac, 113 Fed. Cl. at 159; see Moyer v. United States, 190 F.3d 1314, 1318 (Fed. Cir. 1999)

(finding that fact-finding is proper when considering a motion to dismiss where the jurisdictional

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

Accrual of Causes of Action for Patent Infringement

Under the statute of limitations in 28 U.S.C. § 2501, a patent infringement claim against

the Government must be brought within six years after that claim “first accrues.” A patent owner’s

cause of action for infringement under 28 U.S.C. § 1498(a) accrues when the accused device is

“first used or manufactured by the Government.” Decca Ltd. v. United States, 640 F.2d 1156,

1166 (Ct. Cl. 1980). An accused device is deemed to have been “manufactured” when it is “made

to include each limitation in the thing invented and is therefore suitable for use.” FastShip, LLC

v. United States, 892 F.3d 1298, 1306 (Fed. Cir. 2018). “Generally, infringement can occur only

when the claimed combination has been assembled and is used or is available for use.” Lemelson

v. United States, 752 F.2d 1538, 1548 (Fed. Cir. 1985). “A device may be ‘used’ in many different

ways, and all uses that rely on the teachings of a patent constitute infringement.” Hughes Aircraft

Co. v. United States, 29 Fed. Cl. 197, 226 (1993). “[N]either complete assembly nor complete

testing” is necessary in order for a device to be “available for use.” Id. at 218 (citing Paper

Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 19-20 (Fed. Cir. 1984)).

For the purposes of 28 U.S.C. §1498(a) the Government effects a one-time taking of a

license to a specific device the instant that it is first available for use. Starobin, 662 F.2d at 749;

see also Decca Ltd. v. United States, 544 F.2d 1070, 1082 (Ct. Cl. 1976) (cause of action “arises

when the accused equipment is first available for use”). Alleged ongoing infringement does not

extend or restart the limitations period. Rather, once the device is available for use, the license is

taken, the patent owner’s cause of action accrues, and the patent owner has six years to bring its

case. Starobin, 662 F.2d at 749; Unitrac, 113 Fed Cl. at 160-61.

The first hand of what was later referred to as Robonaut 1A was assembled and presented

to the public at the May 1999 IEEE International Conference on Robotics and Automation. In an

accompanying paper, Dr. Diftler and Christopher Lovchik explained the mechanisms of the robotic

hand and included exploded views of the various components and described “[s]everal novel

mechanisms . . . . that allow the Robonaut hand to achieve capabilities approaching that of an

astronaut wearing a pressurized space suited glove.”10 J. Ex. 25, at 6. For example, the paper

described the hand as “[having] a total of fourteen degrees of freedom. It consists of a forearm

which houses the motors and drive electronics, a two degree of freedom wrist, and a five finger,

twelve degree of freedom hand.” Id. at 2. The paper elaborated that “the motors are mounted

outside the hand, and mechanical power is transmitted through a flexible drive train” and that “[t]o

avoid the problems associated with using tendons, the hand uses flex shafts to transmit power from

the motors in the forearm to the fingers. The rotary motion of the flex shafts is converted to linear

motion in the hand using small modular leadscrew assemblies.” Id.

The ’580 patent issued on October 19, 1999. Any claim for infringement of the ’580 patent

could accrue only after that date. Starobin, 662 F.2d at 750 (when a patent is issued after an item

has been procured by the Government, the claim for infringement accrues at the time of “the first

use of the item subsequent to the issuance of the patent”); see 28 U.S.C. § 1498(a) (2012)

(“Whenever an invention described in and covered by a [U.S.] patent . . . . is used or manufactured

by or for the United States . . . .”) (emphasis added). While the extent of the functionality of the

hand at the time of the May 1999 conference is uncertain, it is clear that the hand was functional

when it was videotaped performing several core functions in an educational video NASA released

on December 29, 1999. J. Ex. 11. This video, and the 2001, 2003, and 2006 videos that also show

the Robonaut hand, were released by NASA to “let people know what [NASA was] working on.”

Tr. 39 (Sept. 26, 2017). In the December 1999 video, entitled “Robonaut,” the hand can be seen

turning the page of a book, opening and closing its dexterous fingers and gripping fingers

independently, manipulating a nut and bolt combination and a screwdriver, gripping and lifting a

15-pound dumbbell, operating a standard household power drill, clipping a tether to an anchor

using a carabiner, removing and replacing Velcro strips, using tweezers to pick up small objects,

and being teleoperated by a human operator. J. Ex. 11.

The asserted claims of the ’580 patent describe the mechanics for “[a]n articulated

manipulating system for mounting on a base in a robotic manipulator and capable of engaging

selected objects,” and aim to robotically simulate a gripping mechanism. ’580 Patent 27:42-44.

In the December 1999 video, the first Robonaut 1A hand is seen performing a core function as it

relates to the asserted claims of the ’580 patent—anthropomorphically manipulating objects. J.

Ex. 11. Because the first Robonaut 1A hand was available to the Government for its use no later

than the time NASA filmed the December 29, 1999 video on December 1, 1999, Ross-Hime’s

claim that the first Robonaut 1A hand infringed the ’580 patent accrued no later than December 1,

1999.

NASA built a second Robonaut 1A hand in 2000. J. Ex. 38, at 5; Tr. 93-95 (Sept. 26,

2017). The record does not reflect the precise dates NASA built and assembled the second

Robonaut 1A hand. According to a tutorial NASA created in 2014, for the claim construction

hearing in this case—which was admitted into evidence without objection—in “Fall 2000,” NASA

added to Robonaut 1A the “right wrist,” “left arm,” “left hand,” “waist and torso,” “left limb

Dr. Myron Diftler is a NASA employee and one of the two named inventors, along with

Christopher Lovchik, on the ’640 Patent. J. Ex. 24. He testified on NASA’s behalf at the

evidentiary hearing. Dr. Diftler has a doctorate in mechanical engineering from Rice University,

a master’s degree in electrical engineering from Yale University, and a bachelor’s degree in

mechanical and aerospace engineering from Princeton University. Tr. 9 (Sept. 26, 2017).

control,” “voice interface,” and “tested force feedback.” J. Ex. 38, at 7. Dr. Diftler testified that

based on a picture in the tutorial dated October 10, 2000, Robonaut 1A had two arms by that date,

and based on another photo labeled “Fall 2000,” that it had a second hand later in 2000, “as in

November or December . . . or maybe even later in October.” Tr. 94-95 (Sept. 26, 2017). NASA

did not order any additional parts for Robonaut 1A after December 2000. Id. at 158.

NASA later manufactured an additional Robonaut 1 device, Robonaut 1B. As with the

second Robonaut 1A hand, the record does not clearly reflect Robonaut 1B’s stages of

development. NASA’s 2014 claim construction tutorial provides a “Robonaut development

history” that lists a date of “Fall 2002” for “Unit B,” and includes photos of Robonaut 1B dated

“October 2002.” J. Ex. 38, at 5, 10. Dr. Diftler testified that Robonaut 1B was fully operational

no later than October 2002, when Dr. Diftler himself displayed the Robonaut 1B “performing

simple motions” at the 2002 World Space Conference in Houston, Texas. Tr. 95-96 (Sept. 26,

2017) (Dr. Diftler testifying he is “very confident” of October 2002 date); see J. Ex. 38, at 10

(photo of completed Robonaut 1B dated October 2002). Dr. Diftler also testified that NASA did

not order any additional parts for Robonaut 1B after December 2002, although it may have ordered

spare parts in 2003. Tr. 158-60 (Sept. 26, 2017).

NASA’s manufacture of the second Robonaut 1A hand and Robonaut 1B gave rise to new

causes of action. Starobin, 662 F.2d at 749 (“[F]or each particular device only one right to recovery

can arise, and that right must occur upon the first manufacture or use by or for the government of

that specific device.”). The second Robonaut 1A hand was available for the Government’s use in

“Fall 2000,” between October 10, 2000, and December 2000. Robonaut 1B was available for the

Government’s use in “Fall 2002,” between September and October 2002. Accordingly, Ross-

Hime’s causes of action for infringement by the second Robonaut 1A hand and Robonaut 1B

accrued at latest in December 2000, and October 2002, respectively.11

Accrual Suspension

Although NASA completed the first Robonaut 1A hand by December 1999, the second

Robonaut 1A hand by December 2000, and Robonaut 1B by October 2002, Ross-Hime argues that

NASA’s “lawful concealment” of the Robonaut technology should trigger the accrual suspension

doctrine. Ross-Hime does not articulate when it believes the limitations period began to be

Relying on the fact that NASA mounted the completed Robonaut 1 hands and torso on

various lower bodies after 2002, Ross-Hime asserts that its claims regarding Robonaut 1 did not

accrue until 2006, because Robonaut 1 was in development until then. Pl.’s Post-Hearing Br. 7-9.

The critical question is whether subsequent development of the device created substantial

differences with respect to those aspects of the device that allegedly infringe on the patent. Unitrac,

LLC v. United States, 113 Fed. Cl. 156, 162 (2013). The asserted claims of the ’580 patent

describe the mechanics of a robotic hand, and in particular, the differential movement of the

dexterous fingers and thumb. ’580 Patent 27:42-28:9. NASA’s mounting of the completed upper

body and hands on different robotic lower bodies had no impact on the ability of the device to

interact with and manipulate objects as described by the ’580 patent. Tr. 242-43, 284-85 (Sept.

26, 2017). As such, the fact that NASA mounted the completed Robonaut 1 hands on different

robotic lower bodies does not affect the accrual of Ross-Hime’s claims with respect to Robonaut

suspended or was reinstated, although it suggests that the limitations period was suspended at least

until this case was filed in April 2011.

“[A]ccrual of a claim against the United States is suspended, for purposes of 28 U.S.C.

§ 2501, until the claimant knew or should have known that the claim existed.” Martinez v. United

States, 333 F.3d 1295, 1319 (Fed. Cir. 2003) (en banc). To invoke this rule, a plaintiff “must either

show that defendant has concealed its acts with the result that plaintiff was unaware of their

existence or it must show that its injury was inherently unknowable at the accrual date.” Id.

(internal citation and quotation marks omitted); see also Ingrum v. United States, 81 Fed. Cl. 661,

667 (2008), aff’d 560 F.3d 1311 (Fed. Cir. 2009) (citing Japanese War Notes Claimants Ass’n of

Phil., Inc. v. United States, 373 F.2d 356, 358-59 (Ct. Cl. 1967)). “The accrual suspension rule is

strictly and narrowly applied.” Ingrum, 560 F.3d at 1315 (internal citations and quotation marks

omitted).

Ross-Hime does not allege that the infringement was inherently unknowable. Rather,

Ross-Hime argues that NASA “kept the development of Robonaut 1 secret,” “restricted any public

disclosures of Robonaut 1,” and “has continued to restrict” information regarding the Robonaut 1

technology “throughout this litigation.” Pl.’s Post-Hearing Br. 16-18. The record provides no

support for Ross-Hime’s contention. The first Robonaut 1A hand was featured in a public

educational video in December 1999, the complete Robonaut 1A was featured in a video in March

2001, and Robonaut 1A and Robonaut 1B were shown working side-by-side in a video in June

2003. All three videos specifically listed a NASA contact for additional information. J. Exs. 2,

11, 12; see Tr. 34, 39, 46 (Sept. 26, 2017) (Dr. Diftler explaining that videos of Robonaut were

prepared in 1999, 2001, and 2003 for public affairs purposes “to let people know what we were

working on” and that the videos were publicly released). NASA’s Robonaut hands were discussed

in scholarly and news articles and technical papers released in July 2000, 2003, April 2004, April

2005, and April 2007. J. Exs. 15-18, 25-26.

Additionally, NASA filed its ’644 patent application on January 25, 1999, and the patent

issued on June 12, 2001. J. Ex. 24. The ’644 patent further disclosed the technology used in the

Robonaut 1, as evidenced by the identical drawings in the ’644 patent and Dr. Diftler’s 1999

technical paper regarding the Robonaut. Compare ’644 Patent Figs. 2-14 with J. Ex. 25, at 2-5;