# Petition for Writ of Certiorari — Zoltek Corp. v. United States, 127 S. Ct. 2936 (2007) (No. 06-1155) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386016_2200%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 2007 ## Text on Suprams Court U. 1 Z : eee 3611 , No. 7 ad | OC fe Ci IN THE Supreme Court of the United States ZOLTEK CORPORATION, Petitioner, UNITED STATES OF AMERICA. Respon lent. On Petition for Writ of Certiorari to the United States Court of Appeals for the Federal Circuit PETITION FOR WRIT OF CERTIORARI CHARRY S. GROSSMAN DEAN AV. Mosco Scullp FIARDIN LEP Counsel of Record loo66 K Street. \.W JOHN S. MORTIMER Washington. D.C. 20006 BRAD R. BERTOGELIO (202) 778-6400 Woob PHILLIPS S00 W. Nadisen Street. ERIKS. Jaret Suite 3800 ERIK'S. Jarre. Pa . Chieage, IL. 60661 50} 34° Street. NW (312) 876-1] S00 Washington, DLC) 20008 Bs | Be 737 15 j @) , Cawmine! for Peoentione: Dated Februar 20. 20" * ~ -— QUESTIONS PRESENTED Patent infringement under 35 U.S.C. § 271(a) includes “us[ing] * * * any patented invention, within the United States.” Patent infringement under 35 U.S.C. § 271(g) in- cludes “import[ing] into the United States or * * * us[ing] within the United States a product which is made by a process patented in the United States.” Where a patented invention is “used or manufactured by or for the United States” 28 U.S.C. § 1498(ay provides that the “owner’s remedy shall be by ac- tion against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use or manufacture.” Under 28 U.S.C § 1498(c), § 1498 does “not apply to any claim arising in a foreign country.” Where a government-authorized contractor performed some or all of the steps of a patented process outside the United States, but the products of that process were imported into and used in the United States by and for the United States, the questions presented by this Petition are: 1. Whether conduct by the government through its authorized contractors that would otherwise constitute patent infringement under § 271(g) or § 271(a) is a tak- ing of property subject to the Fifth Amendment? 2. Whether a patent-holder can seek compensation in the Court of Federal Claims for such otherwise infring- ing conduct either: (A) under § 1498, notwithstanding that some or all steps of the process were performed out- side the United States; or, if not, (B) as a claim for just compensation under the Fifth Amendment cognizable pursuant to the Tucker Act, 28 U.S.C. § 1491(a)? ii PARTIES TO THE PROCEEDINGS BELOW Petitioner Zoltek Corporation (“‘Zoltek”) was the appellee and cross-appellant in the Court of Appeals and the plaintiff in the Court of Federal Claims. Zoltek Corporation is 100% owned by Zoltek Companies, Inc., a publicly traded company. Respondent the United States (“Government” or “U.S.”) was the appellant and cross-appellee in the Court of Appeals and the defendant in the Court of Federal Claims. ill TABLE OF CONTENTS Pages CFR BAPE FIT ees sccsnies teins ivcmhenthocintinigliaiieasopenendiies i PARTIES TO THE PROCEEDINGS BELOW ..............::0006+ il SPE CRT Petite sivklisnacieintdinnmebieguoanetiigbuniadins ili SP IE FT CR FOR sinied cthocecestainh ects teciinbesiaplincisniatihins Vv PETITION FOR WRIT OF CERTIORARI ............ccsceeeeeeeees ] Fee Ra AF icossiccnseschssidibkiaiesnikceitiniensedenauidencniabaiiabesaaaabiaes ] EPG TAIT scsitphissnnciilhedicshininanala den dicialigeracias ecpoanaaiaes l CONSTITUTIONAL AND STATUTORY PIRI V LeeRT ee BE ley O OEED ies neccersdsnessesebeineeiciseounticoeonies ] EP ERIC CO BRR CI a osoieccicscsnsctretcavscanvenenrvebivrtwens 3 REASONS FOR GRANTING THE WRIT..............cceeseeeees 13 I. This Petition Raises Important National Issues that Should Be Decided by this Court. ..................004 14 I]. The Decision Below Conflicts with Numerous Decisions of this Court and Others, which Hold that Patents Are Property Protected by the Takings Clause of the Fifth Amendment.................... 17 A. Patent Rights Are Property..........- See 35 U.S.C. § 271(a)(2000) (“Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, in- fringes the patent.”). * Although N7P merges the question of conduct (the use) and location (within the United States) in this explanation of § 271(a), the court plainly adopts the proposition that an infringing use requires practicing every step of a claimed method. App. A24 ted part is supplied by an equivalent *1360 device or instru- mentality.” Hubbell v. United States, 179 U.S. 77, 82, 21 S.Ct. 24, 45 L.Ed. 95 (1900). Nothing in the text of § 1498 warrants a contrary interpretation of an infringing use here. Indeed, the result is consistent with the narrow reading that a court must assign § 1498. Because § 1498(a) waives sovereign immunity for in- fringement actions against the government, a court must give the statute a strict construction. See Lane v. Pena, 518 U.S. 187, 192, 116 S.Ct. 2092, 135 L.Ed.2d 486 (1996); United States v. Sherwood, 312 U.S. 584, 590, 61 S.Ct. 767, 85 L.Ed. 1058 (1941) (citing Schillinger v. United States, 155 U.S. 163, 30 Ct.Cl. 480, 15 S.Ct. 85, 39 L.Ed. 108 (1894)); Sho- shone Indian Tribe v. United States, 364 F.3d 1339, 1346 (Fed.Cir.2004); RHI Holdings, Inc. v. United States, 142 F.3d 1459, 1461 (Fed.Cir.1998). The waiver “must be unequivo- cally expressed in statutory text” and the courts will not imply exceptions. Lane, 518 U.S. at 192, 116 S.Ct. 2092 (citing United States v. Nordic Village, Inc., 503 U.S. 30, 33-34, 37, 112 S.Ct. 1011, 117 L.Ed.2d 181 (1992) and /rwin v. Dep't of Veterans Affairs, 498 U.S. 89, 95, 111 S.Ct. 453, 112 L.Ed.2d 435 (1990)). Consistent with these principles a court must resolve any ambiguity in the statute “in favor of immunity.” See United States v. Williams, 514 U.S. 527, 531, 115 S.Ct. 1611, 131 L.Ed.2d 608 (1995). Applying these principles to § 1498(a) makes the narrowest interpretation of an infringing “use” presumptively correct. Because I must narrowly con- strue the breadth of the statutory language, the sovereign im- munity analysis confirms that the “use” of a claimed method under § 1498(a) requires practicing every step in the claim. B. Assuming Zoltek alleges an infringing use, the question becomes where the § 1498(a) claim arises. Under § 1498(c), Congress curtailed its sovereign immunity waiver to preclude § 1498(a) claims “arising in a foreign country.” The question App. A25 here is the extent of this curtailment when the government practices a patented process having multiple steps. In addressing this question, it is useful to imagine four factual scenarios. The first and easiest scenario is where all of the steps of the process were performed in this country-a situation in which there is no question that a claim, if any, must arise in the United States. The second scenario is where all of the steps were performed abroad, as is true in this case with the alleged infringement of the Nicalon fiber claims. (I address these claims in the next section.) Later in the opinion, I will address the meaning of 1498(c) in the con- text of the third and fourth scenarios, in which some, but not all steps were performed abroad; in the third scenario, the last step of the process is practiced abroad, and in the fourth sce- nario (as with the Tyranno fiber claims), the last step is prac- ticed in the United States. i. I shall start with the Nicalon fiber claims, in which all of the infringing steps were performed abroad. Clearly the in- fringing activity is entirely outside the United States from a geographical perspective. Therefore, it does not occur “within” the United States as required by § 271(a), as the law has long recognized that patent infringement claims arise where the infringing activity is consummated. See, e.g., Deepsouth, 406 U.S. at 527, 92 S.Ct. 1700 (holding that final assembly abroad of a patented device cannot be an infringing manufacture within the meaning of § 271(a)). But this is not a *1361 § 271(a) action, and there is therefore no a priori reason why this court must interpret the “arising in a foreign country” language of § 1498(c) as being antonymous with the phrase “within the United States,” as used in § 271(a). However, based on a review of the legislative history and a broad construction of § 1498(c)-a construction necessary to limit the scope of Congress' waiver of sovereign immunity under § 1498(a)-I would hold that § 1498(c) precludes at a App. A26 minimum those actions premised on infringing activity in which all steps of the infringing process are performed abroad. Congress enacted § 1498(c) in 1960 as part of its amendments providing an action against the government for copyright infringement. See Pub.L. No. 86-726, 74 Stat. 855 (1960). While Congress considered various drafts, the State Department suggested the language eventually codified at § 1498(c).° The discussion accompanying the suggestion indi- cates that the Department specifically intended the language of subsection (c) to remedy concerns that the proposed bill would allow suit for actions abroad, by the United States, which infringed copyrights. See H. Rep. No. 86-624, at 6-7 (1959) (reprinting June 5, 1958 letter from William B. Macomber, Jr., Assistant Secretary of State, to James O. East- land, Chairman of the Senate Judiciary Committee). Recog- nizing that the patent provisions of § 1498(a) had the same ambiguity “with respect to infringements occurring abroad,” the State Department suggested making the foreign country exception applicable to both patent and copyright infringe- ment. Jd. at 7. The Commerce Department agreed that there was ambiguity concerning “an act of infringement in a for- eign country,” and endorsed the State Department suggestion. See id. at 5-6 (reprinting Feb. 27, 1959 letter from Frederick H. Mueller, Under Secretary of Commerce, to Emanuel Cel- ler, Chairman of the House Judiciary Committee). The for- eign country exception at § 1498(c) adopts the State Depart- ment suggestion without change. See Pub.L. No. 86-726, 74 Stat. 855 (1960) (codified in relevant part at § 1498(c)). In short, the legislative history confirms that Congress intended § 1498(c) to foreclose actions on § 1498(a) violations taking place in, or arising in, a foreign country. ‘ The State Department comments were directed to H.R. 8419, a predeces- sor bill to H.R. 4059. H.R. 4059 was enacted on September 8, 1960. See Pub.L. No. 86-726, 74 Stat. $55 (1960) (codified at 28 U.S.C. § 1498). App. A27 In construing statutory language, it is prudent to be cogni- zant of constructions that courts have accorded to identical language, where it occurs in other statutes. Here I recognize that Congress took the language of § 1498(c) from identical language found at 28 U.S.C. § 2680(k), adopted twelve years earlier.” Normally, where Congress borrows language from one statute in enacting another, the meaning accorded terms in the source statute can be taken as probative of the meaning in the borrowing statute. See Lorillard v. Pons, 434 U.S. 575, 580-81, 98 S.Ct. 866, 55 L.Ed.2d 40 (1978); *1362 id. at 581, 98 S.Ct. 866 (“[W]here ... Congress adopts a new law incorporating sections of a prior law, Congress normally can be presumed to have had knowledge of the interpretation given to the incorporated law, at least insofar as it affects the new statute[.]’’). Plainly, many determinants of the borrowed statute canon are satisfied here. The statutes serve similar purposes. Both provisions limit the potential government liability occurring abroad by curtailing Congress's sovereign immunity waiver for tort liability. Moreover, during Senate sub-committee hearings, the testimony made clear that § 1498(c) was in- tended to provide an exclusion analogous to § 2680(k).’ In ° The Federal Tort Claims Act (“FTCA”) waives sovereign immunity for certain tort claims against the United States. See 28 U.S.C. § 1346(b). The statute contains a foreign country exception that precludes § 1346(b) liability for “[aJny claim arising in a foreign country.” 28 U\S.C. § 2680(k). Congress enacted this provision in 1948. See 62 Stat. 984, 985 (1948). Twelve years later, Congress used the same language when enacting § 1498(c). See Pub.L. No. 86-726, 74 Stat. 855 (1960) (codified at § 1498(c)). ” See Infringement of Copyrights: Hearings on H.R. 4059 Before the Sen- ate Subcommittee On Patents, Trademarks, and Copyrights of the Senate Committee on the Judiciary, 86th Cong. 12-13 (1960) (statement of Arthur Fisher, U.S. Registrant of Copyrights) (“[I]t was originally felt that [§ 1498(c) ] was unnecessary, that a tort committed abroad would not be subject to suit under the act.... [I]t is quite clear that whatever is the situa- tion with respect to infringements committed abroad, this act leaves the App. A28 this case, however, the meaning of § 2680(k) has limited value for interpreting § 1498(c). This is true because the bor- rowed statute canon is not absolute, and it does not justify re- sults either inconsistent with the statutory scheme at bar, or leading to functional absurdity in application. Consequently, for the reasons given below, I conclude that the borrowed statute canon does not compel us to interpret § 1498(c) in light of § 2680(k). In Sosa v. Alvarez-Machain, 542 U.S. 692, 124 S.Ct. 2739, 159 L.Ed.2d 718 (2004), the Supreme Court held that a “claim arising in a foreign country,” under § 2680(k), re- ferred to where tortious injury is suffered. “[T]he FTCA's foreign country exception bars all claims based on any injury suffered in a foreign country, regardless of where the tortious act or omission occurred.” Jd. at 2754. A patent infringe- ment claim, however, is different in kind from the tortious injuries contemplated by § 2680(k). Though patent infringement claims may be viewed as species of tort claims, they are subject to a territoriality re- striction unknown in general tort law. Determining the li- abilities of the United States for patent infringement under 28 U.S.C. § 1498(a) requires the application of only United States law, because section 1498 conditions the government's liability on the existence of patent rights granted by the United States. In contrast, the FTCA requires application of local law to determine the liability of the United States, and under governing choice of law principles, the local law to be applied is typically the law of the place where the injury oc- curred. 28 U.S.C. § 1346(b)(1) (2000). situation in status quo; it does not affect it. [§ 1498(c) ] simply says that this [section] shall not apply to torts committed abroad [.]_ ... [O}ther agencies have not felt safe in operating under the Government Tort Claims Act, and ... we should simply follow along with a substantially parallel position to the patent law.”). App. A29 Allowing recovery for foreign injury where the causative acts occurred in the United States thus raised the specter that the liability of the United States would be governed by for- eign law. No similar problem exists under the patent laws because United States law will apply to the infringing acts occurring in the United States. Under thcse circumstances, construing the “arising in” language of section 1498(c) to look to the place of the infringing act rather than the place of the injury is perfectly*1363 consistent with the Congres- sional objectives.* Although Zoltek urges the court to read § 1498(c) as lim- ited to claims arising under foreign patent laws, neither Zoltek's suggestion nor the Supreme Court's rationale in Sosa sensibly applies here. First, § 1498(a) plainly provides for actions concerning “invention{s] described in and covered by a patent of the United States[.]” 28 U.S.C. § 1498(a). Zoltek's analysis would read this provision, in view of § 1498(c), as waiving sovereign immunity to allow infringe- ment actions under a foreign patent if the asserted claim coin- cided with protections under an issued U.S. patent. | find that reading stylized and unpersuasive. If Congress intended to allow suit against the government for infringing a foreign patent, it would have so stated, and not limited the possible actions by reference to parallel U.S. patents. Moreover, Zoltek's suggestion is inconsistent with the plain language of § 1498(c) and the structure of § 1498. It would make little * Our cases concerning personal jurisdiction in patent cases, which look to “the location ... at which the infringing activity directly impacts on the interests of the patentee,” Beverly Hills Fan Co. v. Sovereign Corp., 21 F.3d 1558, 1571 (Fed.Cir.1994), address where suit may be brought to enforce an existing substantive claim, but those cases do not define the substantive claim itself. The question of whether a patent infringement claim can be maintained at all (controlled by sections 1498(a) and 1498(c) where the alleged infringer is the government) is analytically distinct from the personal jurisdiction issue. Any uncertainty as to the scope of the patent law must be determined before addressing personal jurisdiction over the claim. App. A30 sense for Congress to curtail the sovereign immunity waiver at § 1498(c) if the underlying action in § 1498(a) allowed suit “under foreign law.” In short, § 1498 is consistent with a provision to vindicate a U.S. patent right, not a foreign pat- ent right. Second, for similar reasons, unlike § 2680(k), § 1498(a) does not require a choice of law analysis and the Sosa consideration of place of injury is simply inapplicable here. In sum, the § 1498(a) claim arises where the infring- ing activity is consummated. This analysis precludes Zoltek's Nicalon fiber allegations. Where all the steps of a process patent are performed abroad, the claim “arises in a foreign country,” and the action is barred by § 1498(c). The record evidences that the accused Nicalon fiber products were made entirely in Japan. Zoltek's contention that the government violated § 1498(a) when Lockheed's Japanese subcontractors “used” Zoltek's method claims to make the Nicalon products, therefore, fits squarely within our interpretation of § 1498(c). The same holds for the Tyranno fiber allegations, insofar as the fibers were made in Japan. The Court of Federal Claims correctly determined that it lacked jurisdiction to decide those allegations. 2. The infringement allegations concerning the Tyranno fi- ber products, however, cannot be tethered to any single loca- tion. This presents the difficult question. Although the fi- bers were made overseas, the record shows that the final products were made in the United States. According to Zoltek's infringement allegations, some of the claimed method steps were practiced in Japan, and some in the United States. The allegedly infringing conduct, in short, was not confined within national boundaries. Does such conduct “arise in a foreign country” within the meaning of § 1498(c)? As explained herein I conclude that it *1364 does, with the effect of barring Zoltek's Tyranno fiber product allegations. Put differently, | read “claims arising App. A31 abroad” expansively, as capturing any claim that does not arise entirely through domestic infringing conduct. In doing so, I reject any contention that the analysis depends on where any individual step of the claimed method was practiced. Two longstanding interpretative principles support the conclusion that the language at § 1498(c), limiting the sover- eign immunity waiver at § 1498(a), includes within its pro- scription the conduct disputed in this action. First, the courts generally disfavor extraterritorial application of United States law. See EEOC v. Arabian Am. Oil Co., 499 U.S. 244, 248, 111 S.Ct. 1227, 113 L.Ed.2d 274 (1991) (“It is a long- standing principle of American law that legislation of Con- gress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States.”). The principle rests on sound policy, including a concern to avoid conflict with other national laws, regard for international comity, choice of law analysis, and separation of powers. Thus, in Deepsouth, the Supreme Court expressly refused to extend the scope of § 271(a) to capture an extra-territorial manufacture of an infringing device absent express guidance from Congress. “Our patent system makes no claim to extra- territorial effect ... and we correspondingly reject the claims of others to such control over our markets.” 406 U.S. at 531, 92 S.Ct. 1700 (citing Brown v. Duchesne, 60 U.S. (19 How.) 183, 195, 15 L.Ed. 595 (1856) and Boesch v. Graff, 133 U.S. 697, 703, 10 S.Ct. 378, 33 L.Ed. 787 (1890)). In narrowing the reach of actions under § 1498(a), § 1498(c) manifests a Congressional intent to limit infringement actions where con- duct by or for the government sounded abroad. Reading § 1498(c) to foreclose the action at bar is consistent with a strict view of the extra-territoriality principle.’ Second, this view comports with the narrow construction that a court must afford sovereign immunity waivers. A ” The dissent suggests that we have ignored the Fifth Amendment in de- termining the proper jurisdictional scope provided by § 1498. App. A32 court must resolve textual ambiguity in a statutory waiver in favor of immunity. As noted above, the waiver must be clear, and ambiguities resolved in favor of immunity. Since the waiver must be construed narrowly, the § 1498(c) exclu- sion-serving to narrow the waiver at § 1498(a)-must be con- strued broadly. Cf Shoshone Indian, 364 F.3d at 1346. Given an expansive reading, these principles indicate that a claim “arises in a foreign country” under § 1498(c) if, as with the Tyranno product allegations, some steps of a claimed method are practiced abroad.’ Although this court has never decided how § 1498(c) ap- plies to transnational conduct in practicing a patented method, on one occasion our predecessor court was confronted with allegations of infringing use of a transnational device. In Decca Ltd. v. United States, 210 Ct.Cl. 546, 544 F.2d 1070 (1976), as in this case, the government argued that § 1498(c) was a dispositive bar to jurisdiction. The Court of *1365 Claims, however, neither expressly interpreted nor applied the statute.'' Instead, as explained below, it crafted a test for de- termining an effective “location” of the accused, internation- ally disposed, device. The Decca court then determined that if such a device could be said to be located “within the United States,” the § 1498(a) claim for infringing use would arise where the device was “located.” For several reasons I con- 10 While not a basis for my interpretation of § 1498, I note that any rule that allowed sovereign immunity, and liability, to tum on where a defen- dant practiced any given step of a claimed method would simply invite strategic manipulation and prove unworkable. Potential infringers would simply move their conduct offshore-if only for the last step of the process- in order to avoid the specter of § 1498(a) liability. '! Indeed, although the United States briefed the issue in conjunction with a motion to dismiss, the trial division of the Court of Claims specifically noted in its pretrial order that “[jJurisdiction is not disputed and is hereby determined to be present.” Decca, No. 299-70, Pre-Trial Order J | (Ct.Cl. Mar. 20, 1975). App. A33 clude that no comparable test should apply to the facts in this case. To understand why, it bears reviewing the case in detail. Decca involved the Omega long range radio navigation sys- tem. Certain components of the system-broadcast stations- were located overseas. The plaintiff, Decca, owned U.S. Patent No. 2,844,816, which claimed radio navigation sys- tems.” It alleged that the Omega system infringed certain device claims in the '816 patent and that the government vio- lated § 1498(a) by using the Omega system. The govern- ment sought dismissal, arguing that because some broadcast towers were located in Norway and other overseas locations, the action arose in a foreign country and was barred by § 1498(c). The court disagreed. The Court of Claims defined the “location” of the Omega system to be “in United States terri- tory,” implicitly reasoning that an infringing use “within the United States,” a fortiori, does not give rise to an infringe- ment claim “arising in a foreign country” under § 1498(c). In sum, Decca stands for the narrow, and collateral, proposi- tion that under § 1498(a) the infringing use of a claimed de- vice “arises” where an accused device is “located.” There are, however, no “use of device” claims at issue in this action, and Decca is therefore inapposite. In Decca, the elements of a patented device were assembled, one by one and in different countries, and the device was therefore made. Likewise, in this case, the steps of a patented process were practiced, one by one and in different countries, and the proc- ess was therefore performed. However, these cases are not analogous, because the concept of the “use” of a device is * The trial court found the government liable for an infringing use of claim 11, which claimed a hyperbolic radio navigation system. See '816 patent, col. 12, 1. 63-col. 13, 1. 34 (claim 11); Decca, 544 F.2d at 1083. With minor changes in the factual findings, the three judge panel adopted the trial court's analysis. Decca, 544 F.2d at 1072. App. A34 fundamentally different from the use of a process. Whereas utility can be extracted from a device only after it has been “made,” utility is extracted from a process concurrent with its being “practiced.” See NTP, 418 F.3d at 1318 (“Because a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves do- ing or performing each of the steps recited. This is unlike use of a system as a whole, in which the components are used collectively, not individually.”). As a consequence of this failure in the analogy, Decca is neither on point nor particu- larly instructive. Consequently, I would decline any invitation to extend Decca's rationale beyond its intended context of device claims to practicing the steps of a claimed method. In particular, the Decca rationale for characterizing the accused Omega radio navigation* 1366 system as “located ... within the United States” threatens to swallow the § 1498(c) limitation if ap- plied to the process claim at bar. Decca's infringement analy- sis placed “particular emphasis on the ownership of the equipment by the United States, the control of the equipment from the United States and on the actual beneficial use of the system within the United States.” 544 F.2d at 1083. Relying on these observations, both the trial court and the appellate panel concluded that the “location of the infringement is within United States territory.” Jd. at 1074. The panel relied, in particular, on the fact that the infringing broadcast equip- ment “is designed and built by the United States Govern- ment,” and that the “location of the whole ... is where the ‘master’ station or stations are, which is in the United States of America, and where all the stations are monitored, pres- ently in Washington, D.C.” /d. Were a court to extend Decca's reasoning here, it could conclude that where the government, or a contractor acting at the government's direction, commissions or directs the con- duct later accused of infringing a method patent, the resulting claim for infringing use under § 1498(a) “arises” within the App. A35 United States, and not abroad, under § 1498(c). Applying the Decca reasoning out of its intended context of device claims, however, would effectively read the plain language of § 1498(c) out of existence. The statute concerns allegations of infringement against the government, and it is difficult to imagine circumstances where such conduct would not be traceable back to the federal government, thus completely avoiding the narrowing effect of § 1498(c) on Congress's waiver of sovereign immunity. In short, if the accused con- duct is always traceable to decision making in the United States, proximately causing otherwise “infringing” conduct abroad, then such claims will never be restricted by the prohi- bition at § 1498(c). IIT. In sum, the infringing use of a patented method under § 1498(a) consists of practicing all steps in the claimed method, Because the injury from infringement is intangible and not amenable to geographical reference, the cause of ac- tion cannot be said to arise where injury is suffered, and the § 2680(k) cases are of limited value in interpreting § 1498(c). I would thus look to where the infringing conduct occurred to ascertain where the claim arises. In the first analysis, no par- ticular step has primacy. But since a court must give the sovereign immunity waiver at § 1498 narrow construction, I must view the exclusion at § 1498(c) broadly and resolve am- biguity in favor of immunity. For that reason, § 1498(c) pre- cludes an action premised on infringing use of a method claim if some steps of the method are practiced abroad. Since Zoltek's Tyranno product claims falls within this construction, they are barred. Thus, the trial court properly concluded that it lacked jurisdiction over those infringement allegations. The dissent argues that I must be careful to construe § 1498 in a manner that does not somehow run afoul of the Fifth Amendment. Its concern is fundamentally misguided, however, even if one assumes, for sake of argument, that a App. A36 patent is a type of property to which Fifth Amendment protec- tions apply. Section 1498 is a waiver of sovereign immunity, the scope of which is completely within the discretion of *1367 Congress.” In fact, there is no Fifth Amendment re- quirement that § 1498 exist at all; it is the responsibility of Congress, and of Congress alone to decide whether, and to what extent, it will permit the courts to help it fulfill its Con- stitutional obligations under the Takings Clause.'* A court '3 See Lynch v. United States, 292 U.S. 571, 582, 54 S.Ct. 840, 78 L.Ed. 1434 (1934) (“The sovereign's immunity from suit exists whatever the character of the proceeding or the source of the right sought to be en- forced... [including] those arising from some violation of rights conferred upon the citizen by the Constitution .” (citing Schillinger v. United States, 155 US. at 166, 168, 15 S.Ct. 85, 39 L.Ed 108 (“The United States cannot be sued in their courts without their consent, and in granting such consent Congress has an absolute discretion to specify the cases and contingencies in which the liability of the Government is submitted to the courts for judicial determination. Beyond the letter of such consent the courts may not go, no matter how beneficial they may deem, or in fact might be, their possession of a larger jurisdiction over the liabilities of the Government.”))). 4 Indeed, before the passage of the Tucker Act, ch. 359, § 1, 24 Stat. 505 (1887) (codified as amended at 28 U.S.C. § 1491), Congress had sole re- sponsibility for paying takings claims. No judicial relief was available. See, e.g., Langford v. United States, 101 U.S. 341, 343, 25 L.Ed. 1010 (1879) (holding that notwithstanding the obligation of the United States to pay just compensation, there existed no remedy in the courts because “Congress has made no provision by any general law for ascertaining and paying this just compensation”). In Lynch v. United States, the Supreme Court reaffirmed the discretion of Congress to reserve to itself the pay- ment of just compensation for Fifth Amendment takings. 292 U.S. 571, 54 S.Ct. 840, 78 L.Ed. 1434. In that case, the Court started by recogniz- ing that “{rJights against the United States arising out of a contract with it are protected by the Fifth Amendment.” Id: at 579, 54 S.Ct. 840. It held, however, that Congress may elect to retain the sole power to remediate alleged “takings” of these contractual rights. See id. at 582, 54 S.Ct. 840 (“When the United States creates rights in individuals against itself, it is under no obligation to provide a remedy through the courts. It may limit the individual to administrative remedies. And withdrawal of all remedy, administrative as well as legal, would not necessarily imply repudiation. So long as the contractual obligation is recognized, Congress may direct App. A37 need not concern itself with whether § 1498, construed nar- rowly in recognition of Congress’ sole power to waive sover- eign immunity, provides a compensation scheme that is com- pliant with the requirements of the Takings Clause. It is not our place to interpret sovereign immunity waivers with an eye toward their Takings Clause sufficiency vel non, because the Constitution does not require Congress to create remedies in the courts at all. If Congress did not create a statutory scheme for compensation as provided under § 1498, it would follow that without such a provision, compensation would need to be obtained through legislative action. IV. For the aforegoing reasons, | believe that there exists an additional, and independent, basis for reaching the decision of the court today that § 1498(a) liability for the use of process claims requires all the steps to have been practiced in the United States. In my view, therefore, our decision today could have been reached without relying on N7P. DYK, Circuit Judge, concurring. its fulfillment without the interposition of either a court or an administra- tive tribunal.” (emphasis added) (citing United States v. Babcock, 250 U.S. 328, 331, 39 S.Ct. 464, 63 L.Ed. 1011 (1919) and Tutun v. United States, 270 U.S. 568, 576, 46 S.Ct. 425, 70 L.Ed. 738 (1926))). App. A38 I join the court's per curiam opinion but write separately to express my view that *1368 the court correctly held in NTP. Inc. v. Research in Motion, Lid., 418 F.3d 1282, 1316 (Fed.Cir.2005), that the government can only be liable for in- fringement under section 1498(a) if the same conduct would render a private party liable for infringement under section 271(a).' I Section 1498(a) provides, in pertinent part: 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. In my view, the purpose of section 1498(a) was to make the United States and its contractors liable for “use” of a patented invention that would in similar circumstances constitute direct infringement by a private party. Patent rights are nothing more than the rights to exclude others. See 35 U.S.C. § 154(a) (2000) (defining the patent grant in terms of its exclusionary powers). In the case of pri- vate parties that right is cabined to infringement occurring within the United States. Congress could not have intended to confer broader rights against the United States than against private parties. ' Under 28 U.S.C. § 1292(d)(2), “the nature and scope of our review are not limited to the certified question but [rather] we are free to consider all questions material to the trial court's order ....” United States v. Connolly, 716 F.2d 882, 885 (Fed.Cir. 1983). App. A39 The omission of the “within the United States” language (appearing in section 271(a)) from section 1498(a) does not suggest that the government's liability for infringement is broader than that of private parties. Section 271(a) broadly defines the rights of patent holders against all persons who utilize the patented invention; the language of the section is broad enough to cover the United States. Section 271(a) does not, however, waive the government's sovereign immunity. That was the purpose of the original section 1498, which was designed to provide a remedy against the government for the infringement described in section 271(a). In other words, unlike section 271(a), section 1498(a) was not designed to define what constitutes infringement (terminology that does not appear in section 1498(a)). Rather, it was intended to define the “owner's remedy” against the United States, when the United States did not have a license or the “lawful right to use” the patented invention. The question whether the United States had a lawful right to use the invention turned on whether a private party would have had such a right, as the history of section 1498 confirms. The additional purpose of section 1498, as amended in 1918, was to substitute a remedy against the United States for a remedy against private parties working for the government. Legislation in 1910 first conferred the right to sue the United States for infringement. Pub.L. No. 61-305, 36 Stat. 851 (1910). That legislation was simply designed to waive the sovereign immunity of the United States for preexisting causes of action conferred by the patent statute *1369 (what is now section 271(a)).? As the House committee explained, “Our only purpose is to extend the jurisdiction of [the Court of Claims] so that it may entertain suits and award compensa- * The 1910 enactment provided: “That whenever an invention described in and covered by a patent of the United States shall hereafter be used by the United States without license of the owner thereof or lawful right to use the same, such owner may recover reasonable compensation for such use by suit in the Court of Claims.” Pub.L. No. 61-305, 36 Stat. 851. App. A40 tion to the owners of patents in cases where the use of the in- vention by the United States is unauthorized and unlawful ....” H.R.Rep. No. 61-1288, at 3 (1910). In considering the 1910 legislation, Congressman Crumpacker stated that the bill “simply gives consent of the Government to these parties to sue in the Court of Claims for this class of liabilities that it would be liable to suit for if it were not for its sovereignty.” Congressman Currier, who introduced the bill, agreed, ex- plaining that the bill “does not create any liability; it simply gives a remedy upon an existing liability.” 45 Cong. Rec. 8755, 8756 (1910). The 1918 amendments, Pub.L. No. 65-182, 40 Stat. 704, 705 (1918), similarly confirm that the purpose of the statute was simply to obligate the United States to the same extent as private parties. Congress was concerned that when patented inventions were used or manufactured by others for the United States, suit was being brought against government employees or contractors individually. Thus in 1918, Con- gress changed the language of the 191 0 statute to read: That whenever an invention described in and covered by a patent of the United States shall hereafter be used or manufactured by or for the United States without li- cense of the owner thereof or lawful right to use or manufacture the same, such owner's remedy shall be by suit against the United States in the C ‘ourt of Claims for the recovery of his reasonable and entire compensation for such use and manufacture. Id. (emphasis added). Congress intended the 1918 amendment “to relieve the contractor entirely from liability of every kind for the in- fringement of patents in manufacturing anything for the gov- ernment, and to limit the owner of the patent ... to suit against the United States in the Court of Claims for the recovery of App. A41 his reasonable and entire compensation ....”? Richmond Screw Anchor Co. v. United States, 275 U.S. 331, 343, 48 S.Ct. 194, 72 L.Ed. 303 (1928). Congress in taking this ac- tion could hardly have intended that the substituted rights against the United States would be broader than the original rights against the employee or contractor. Indeed, in constru- ing the 1910 legislation (as amended in 1918) to resolve the question whether infringement claims against the government were assignable, the Supreme Court expressly held that the Statute is an attempt to take away from a private citizen his lawful claim for damage to his property by another pri- vate person which but for this act he would have against the private wrongdoer.... We must presume that Con- gress in the passage*1370 of the act of 1918 intended to secure to the owner of the patent the exact equivalent of what it was taking away from him. Id. at 345, 48 S.Ct. 194 (emphasis added). See also Coakwell v. United States, 178 Ct.Cl. 654, 372 F.2d 508, 511 (1967) (“[Section 1498] was not intended to change the basic inci- dents to which liability would attach for the purposes of seek- ing comprehensive compensation for the unlicensed use of a patented invention.”). The “exact equivalent” of section 271(a) limits liability to infringement occurring “within the United States.” * Accord- ingly, the government cannot be responsible for an infringing * What is now the second paragraph of section 1498(a), originally part of 35 U.S.C. § 94, was added in 1942 to further clarify that actions against United States employees or contractors were barred and replaced by an action against the United States. See Pub.L. No. 77-768, § 6, 56 Stat. 1013, 1014 (1942); S.Rep. No. 77-1640, at 5 (1942). * There is no occasion here to determine whether claims for infringement liability under 271(f) and 271(g) may be brought in suits against the gov- ernment. App. A42 “use” under section 1498(a) unless the act constitutes a di- rectly infringing “use within the United States” under section 271(a), as Research in Motion correctly held. There is no need to decide the scope of section 1498(c) in this case. II Finally, I note that Judge Plager's interesting discourse on takings jurisprudence completely fails to explain how taking of a property right could possibly have occurred here. Patent rights are creatures of federal statute.© They do not exist in the abstract. If, as I urge, the patent holder's right to sue the government for infringement under 1498(a) is no broader than the rights of the patent holder against private parties under section 271(a), then there can be no taking resulting from the refusal to recognize a greater right against the government. And if, on the other hand, section 1498 is construed to give the patent holder greater rights against the government than against private parties, that right is necessarily defined by both sections 1498(a) and 1498(c) taken together. It makes no sense to say that section 1498(a) confers rights that are “taken” by section 1498(c). Under these circumstances there can be no taking by the government under any interpretation of section 1498, quite apart from the barrier posed by the Su- preme Court's decision in Schillinger v. United States, 155 U.S. 163, 30 Ct.Cl. 480, 15 S.Ct. 85, 39 L.Ed. 108 (1894). There is thus no basis for a Fifth Amendment takings claim in this case even if Schillinger were overruled. PLAGER, Senior Circuit Judge, dissenting. There are two separate though related issues in this case, both matters of first impression. One is of major significance to our understanding of the constitutional obligations of the * Unlike the situation in Ruckelshaus v. Monsanto Co., 467 U.S. 986, 104 0g, 2862, 81 L.Ed.2d 815 (1984), we deal here with a property right erepted by federal law. App. A43 United States (“United States” or “Government”); both relate as well to important rights of patent owners.° The first issue is, may an owner of a United States patent bring a cause of action under the Fifth Amendment to the Constitution ’ against the United States for a ‘taking’ as all other owners of property*1371 rights may; or is a patent right somehow less of a property interest, not worthy of such constitutional pro- tection? Until this case, this issue has never been addressed directly by this or any other court. The second issue, dealing with a cause of action for in- fringement of a United States patent, is raised in the context of a method or process patent claim involving multiple steps. When an owner of such a patent sues the United States for infringement under the provisions of 28 U.S.C. § 1498, the statute that authorizes such suits against the Government, does the fact that some or all of the steps are performed in a foreign country preclude recovery? If so, is this because of some inherent limitation in § 1498(a), or is it because of the express statutory exception in § 1498(c) for a claim “arising ina foreign country”? (The relevant statutory language is set out in the footnote below.*) This is not only a new question of statutory interpretation, but because of the way the Su- ® The term “patent owner” as used throughout this opinion includes as- signees of a patent. ” “[NJor shall private property be taken for public use, without just com- pensation.” U.S. Const. amend. V. * The relevant portion of 28 U.S.C. § 1498(a) reads: 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 en- tire compensation for such use and manufacture. Section 1498(c) reads in its entirety: “The provisions of this section shall not apply to any claim arising in a foreign country.” App. A44 preme Court and this court have understood § 1498, there are significant constitutional overtones as well. I. Introduction Plaintiff invented and patented a process for manufactur- ing a carbon fiber sheet product, a product that is used in making military aircraft with a low radar signature, the so- called ‘stealth’ aircraft. Defendant, the United States, so plaintiff alleges, caused the use of plaintiff's patented inven- tion in the course of having a new fighter plane, the F22, built, and, according to plaintiff, did it without permission and in violation of plaintiff's rights. For this plaintiff seeks dam- ages. In the trial court, the United States argued that, on the un- disputed facts, plaintiff did not have a cause of action against the Government under either the statutes of the United States or under the Constitution. The argument before the trial court, and again on appeal, largely focused on 28 U.S.C. § 1498. That statute grants an owner of a United States pat- ent the right to damages if the patented invention is used or manufactured by or for the United States without license or lawful right, and, if it applies, it is understood that the statute both waives the sovereign's immunity and gives the Court of Federal Claims jurisdiction to hear the cause. The trial court concluded that, because of the limitations imposed by § 1498(c), plaintiff on the facts of this case could not state a claim for relief for patent infringement, and so granted the Government partial summary judgment on that issue. On the other hand, the trial court concluded that plain- tiff does have a cause of action under the Fifth Amendment to the Constitution for a ‘taking’ of its patent rights by the Gov- ernment, a cause of action separate and distinct from the in- fringement claim.” The trial court denied the Government ° The trial court and the majority opinion both treat the problem of the taking claim as one of establishing jurisdiction in the Court of Federal App. A45 *1372 summary judgment on that issue. We accepted inter- locutory appeal on both rulings. Although my panel colleagues cannot agree why, they do agree that (1) an owner of a United States patent can be de- nied the basic protections of the Constitution, and that (2) if any one step of a multi-step patented process occurs outside the United States, the Government is immune from liability under § 1498 for its infringement of the patent. They are wrong on both propositions. I would uphold the trial court's conclusion that the taking claim states a cause of action enti- tling plaintiff to a full trial of the issue, and reverse the trial court's erroneous conclusion regarding § 1498. Since this is the exact opposite of what my colleagues are ruling, I respect- fully dissent. Il. Overview As there are three other ovinions in this case, I begin by summarizing the problems I have with my colleagues’ collec- tive and separate views. First, in their per curiam opinion, my colleagues’ analysis of the § 1498 liability issue consists of one brief paragraph that concludes, “where, as here, not all steps of a patented process have been performed in the United States, government liability does not exist pursuant to section Claims. This is incorrect, since a well-pleaded complaint establishes ju- risdiction; the legal issue is whether plaintiff has stated a claim for which relief can be granted. Further, with regard to the infringement issue, as the trial court explained, the Government's defense under § 1498(c) is an affirmative defense, and the pleadings clearly establish a well-pleaded complaint. Again, a more accurate description of the issue is whether plaintiff has stated a claim for which relief can be granted. See Palmer v. United States, 168 F.3d 1310, 1313 (Fed.Cir.1999) (“[A] court's general power to adjudicate in specific areas of substantive law ... is a question of a court's subject matter jurisdiction,” whereas “the question of whether in a specific case a court is able to exercise its general power with regard to the facts peculiar to the specific claim ... is properly addressed as a ques- tion of whether the plaintiff has stated a claim upon which relief can be granted,”’), App. A46 1498(a).” Per curiam op. at 1350. They base this conclu- sion on the erroneous assumption that a cause of action for infringement of a patent by the United States under § 1498 is governed by the limitations of 35 U.S.C. § 271(a), the statute that defines infringement among private litigants, and not by the express terms of 28 U.S.C. § 1498(a), the exclusive statute that defines the Government's liability in similar circum- stances. In his concurring opinion, Judge Gajarsa acknowledges the problem with trying to incorporate the terms of § 271(a) into § 1498(a), but he has been persuaded that we are bound by brief language on the subject found in this court's N7P opinion, decided last year, suggesting that incorporation is established law. Though he believes N7P is wrong on this point, Judge Gajarsa nevertheless feels bound. Judge Dyk, on the other hand, in his concurring opinion argues that the comment in N7P is or should be controlling law. Because of the way the majority in their per curiam opin- ion resolve the issues in this case, applying the magical incor- poration doctrine to § 1498(a), the trial court's decision that plaintiff's infringement claim is barred by the express terms of subsection (c) dealing with causes that “arise in a foreign country”-the issue that was certified to us-is not addressed at all in the per curiam opinion, nor by J udge Dyk in his concur- rence. Judge Gajarsa, however, does address it in his concur- ring opinion, see Gajarsa concurring op. at *1373 1360 - 1366, even though, on his view of the statute as stated in the per curiam opinion, subsection (c) has no bearing on the out- come. Since I do not dispose of plaintiff's infringement claim by rewriting § 1498(a) as the majority chooses to do, I must ad- dress the subsection (c) exception. In part IV of this opinion I will explain both why the majority's incorporation assump- tion has no basis in law, and why the assumed ‘binding effect’ of the N7P precedent is neither binding nor precedent. I will App. A47 then explain that, at least with regard to the Tyranno process, the subsection (c) exception does not apply here. And finally I will comment on why the majority's view of the limitations imposed by § 1498 raises significant constitutional concerns. Second, regarding the takings issue, the per curiam opin- ion does provide somewhat more analysis, but the analysis is on the wrong subject. According to the per curiam opinion, the takings issue in this case turns on the meaning of an 1894 Supreme Court case, Schillinger v. United States, 155 U.S. 163, 30 Ct.Cl. 480, 15 S.Ct. 85, 39 L.Ed. 108 (1894). The meaning of Schillinger is then stated in the opinion in one summary sentence, without reference to the facts of the case or the Supreme Court's actual holding. The remainder of the per curiam takings discussion goes off into a lengthy dis- course about why other cases decided some years later did not sub silentio overrule Schillinger. Interesting, but irrelevant. The key is Schillinger. As I shall explain next, Schillinger does not stand for what the per curiam opinion tells us it does, and thus the majority's conclusion based on their reading of it is wrong. (The concurrences add little to the takings discus- sion, but where relevant will be addressed below.) IH. The Fifth Amendment Taking Issue The Fifth Amendment to the Constitution provides a se- ries of protections for the individual against governmental abuses, and concludes: “nor shall private property be taken for public use, without just compensation.” This provision has a long and noble history of protecting and preserving property rights against unfettered Governmental seizure, and in so doing of protecting individual freedom and personal in- tegrity from undue government authority.'° 10 [T]he only dependable foundation of personal liberty is the personal eco- nomic security of private property... There is no surer way to give men the courage to be free than to insure them a competence upon which they App. A48 It is well understood that this constitutional provision does not preclude the Government from taking private property for public use. Rather, the Constitution guarantees that the citi- zen will be fully compensated for such a taking. By requir- ing just compensation the Constitution makes the property owner whole, and it also places a constraint on government action by imposing the cost of such action on the Govern- ment’s fisc, thus subjecting administrative action to the disci- pline of public decision-making and legislative authorization. In recent years the Supreme Court has extended the salutary protection of the Fifth Amendment to excessive governmen- tal*1374 regulation-the ‘regulatory taking’ issue’! -in addi- tion to the traditional takings area in which the government actually acquires private property interests for its own use-the ‘physical taking” issue. In the case before us, the matter falls into the traditional acquisition area. Plaintiff alleges that the Government took its property-its government-granted patent right-when the Government's subcontractors used the patented method in the production of certain products employed in the F-22 produc- tion.2 On its face, the claim seems straightforward. Prop- can rely. Men cannot be made free by laws unless they are in fact free because no man can buy and no man can coerce them. That is why the Englishman's belief that his home is his castle and that the king cannot enter it ... [is] the very essence of the free man’s way of life. Walter Lippmann, The Method of F reedom 101-02 (1934). " See, e.g., Lucas v. S.C. Coastal Council, 505 U.S. 1003, 112 S.Ct. 2886, 120 L.Ed.2d 798 (1992). 12 Section 1498 expressly makes the United States liable for the actions of its contractors and subcontractors: For the purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United States 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 con- strued as use or manufacture for the United States 28 U.S.C. § 1498(a). App. A49 erty rights are created by law. In the ordinary course, the law is state law. In the case of patents, the law is federal, and the patent statute expressly declares that the rights in an issued patent are property. 35 U.S.C. § 261 (“[P]atents shall have the attributes of personal property.”); see also Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92, 96, 24 L.Ed. 68 (1876) (“A patent for an invention is as much property as a patent for land.”). One of the property attributes of a patent grant is the right to exclude all others, including the Government, from“‘mak- ing, using, offering for sale, or selling” the patented invention without the patentee's consent. 35 U.S.C. § 154(a)(1); see Carl Schenck, A.G. v. Nortron Corp., 713 F.2d 782, 786 n. 3 (Fed.Cir.1983) (“The patent right is but the right to exclude others, the very definition of ‘property.’ ”). When a private party uses without authority an invention subject to patent rights, the wrongful use is the tort of infringement. The pat- entee’s judicial remedy is a suit for infringement in accor- dance with Title 35, United States Code. See 35 U.S.C. §§ 271, 281. However, when the wrongful use is committed by the United States Government (or its agents), such suit is not brought under Title 35 but under Title 28, section 1498. (The judicial remedy provided by 28 U.S.C. § 1498 will be discussed in Part IV, below.) Nevertheless, when the Government chooses to acquire a patent right without prior permission of the owner, there is a way, unrelated to infringement law and unique to the Gov- ernment, through which a patentee's right to exclude others may be obtained. The Government can exercise its power of eminent domain and simply seize or, as we say, ‘take’ the property it needs for a public use. In effect, the Government forcibly acquires a licease to use the invention. However, because of the Constitution, the Government may do this only if it pays the just compensation demanded by the Fifth Amendment. The trial court examined the question of whether there could be such a taking independent of the terms App. A50 of § 1498. The court concluded, correctly, that the answer is yes, and that the Court of Federal Claims has jurisdiction un- der the Tucker Act to entertain that claim. The Government's challenge to that conclusion is the first question certified to this court. See Zoltek *1375 Corp. v. United States, No. 96- 166 C (Fed.Cl. Feb. 20, 2004) (order). On appeal, the panel majority in its per curiam opinion disagrees with the trial court. The opinion relies on its un- derstanding of the Schillinger case, in which, according to the per curiam opinion, “the Supreme Court rejected an argument that a patentee could sue the government for patent infringe- ment as a Fifth Amendment taking under the Tucker Act,” per curiam op. at 1350, and, we are told, Schillinger remains good law. That statement is essentially the entire explanation of- fered for the opinion's slavish reliance on Schillinger. The problem with the majority's statement of Schillinger is that it misconstrues the holding in Schillinger, and equates the taking claim with an infringement action, when as a mat- ter of law these are two separate legal claims founded on separate legal bases. The tort of patent infringement is statu- torily based and defined, and exists at the discretion of Con- gress; the right to just compensation for a taking is constitu- tional, it is not a tort, and it requires no legislative blessing. Furthermore, Schillinger, on which the majority bases its re- sult, was not a taking case at all. Schillinger filed a petition in the Court of Claims for damages for alleged unauthorized use of his patent by the Government. At the time (1894), it was understood that the jurisdiction of the Court of Claims for suits against the United States lay in contract, but not in tort. The Court of Claims held that since Schillinger's suit did not involve a contract, either expressed or implied, on the part of the Government for the use of the patent, the petition was outside of the jurisdic- tion of that court. The Supreme Court agreed. App. A51 The Supreme Court said “[t]hat this action is one sound- ing in tort is clear.” 155 U.S. at 169, 15 S.Ct. 85. The Court opined that the Court of Claims has no jurisdiction of claims against the Government for mere torts. “Some element of contractual liability must lie at the foundation of every ac- tion.” /d. at 167, 15 S.Ct. 85. The Court restated “the fre- quent ruling of this court that cases sounding in tort are not cognizable in the court of claims.” Jd. at 169, 15 S.Ct. 85. Since the cause of action was for tort, and not contract, the Court affirmed the trial court's dismissal of the suit. In dissent, Justice Harlan first asked the question, “Can a suit be maintained against the United States in the court of claims, as upon contract, for the reasonable value of such use of the patentee's improvement?” Jd. at 173, 15 S.Ct. 85 (Harlan, J., dissenting). He argued that the constitutional provision for just compensation placed an implied contractual duty on the Government to pay for what it used, and that plaintiff could waive the tort and sue on the contract. He further noted that “[t]here is another view of the case which is independent of mere contract.” Jd. at 179, 15 S.Ct. 85 (Harlan, J., dissenting). The newly enacted Tucker Act of 1887 for the first time gave the Court of Claims jurisdiction to hear and determine “all claims founded upon the constitution of the United States.” '? Justice Harlan observed that “Tijf the claim here made to be compensated for the use of a patented invention is not founded upon the constitution of the United States, it would be difficult to *1376 imagine one that would be of that character.” /d. (Harlan, J., dissenting). But the Court majority gave scant attention to this argument; it dis- missed it with the back of its hand, stating summarily that such a broad reading could be applied to every other provi- sion of the Constitution as well as to every law of Congress. '’ Act of March 3, 1887, 24 Stat. 505. App. A52 What is critical to appreciate is that when Schillinger was decided in 1894, the judicial treatment of the then-new Tucker Act provision cited by Justice Harlan was still in its early stages of development. It was not until some years later, and the Supreme Court's decision in Jacobs v. United States, 290 U.S. 13, 54 S.Ct. 26, 78 L.Ed. 142 (1933), that the identity of a separate, non-statutory, constitutional basis for takings remedies under the Fifth Amendment emerged. Along with that understanding came the understanding that the opening clause of the Tucker Act provides the Court of Claims (now the Court of Federal Claims) with a separate ju- risdictional basis for such actions, separate from its other bases. In Jacobs the Supreme Court left no doubt that a constitu- tional ‘taking’ claim was not simply another version of the typical Tucker Act suit against the Government. The narrow issue before the Court was whether plaintiff, whose Fifth Amendment taking claim against the Government for flood- ing of its land had already been adjudicated in its favor, was entitled to interest on its award. If the taking suit against the Government was limited to traditional statutory remedies, the answer was no, as no statutory provision for interest had been provided. The Court of Appeals had so held. The Supreme Court reversed, and awarded interest, stating that claims for just compensation are grounded in the Constitution itself: The suits were based on the right to recover just com- pensation for property taken by the United States for public use in the exercise of its power of eminent do- main. That right was guaranteed by the Constitution. The fact that condemnation proceedings were not insti- tuted and that the right was asserted in suits by the own- ers did not change the essential nature of the claim. The form of the remedy did not qualify the right. It rested upon the Fifth Amendment. Statutory recognition was not necessary. A promise to pay was not necessary. Such a promise was implied because of the duty to pay App. A53 imposed by the amendment. The suits were thus Sounded upon the Constitution of the United States. Id. at 16, 54 S.Ct. 26 (emphasis added). That has been the law at least since 1933. Today a cause of action under the Fifth Amendment's taking clause is under- stood to be neither a tort claim nor a contract claim, but a separate cause arising out of the self-executing language of the Fifth Amendment. As the Supreme Court recently ex- plained in First English Evangelical Lutheran Church of Glendale v. County of Los Angeles: [G]overnment action that works a taking of property rights necessarily implicates the “constitutional obliga- tion to pay just compensation.” We have recognized that a landowner is entitled to bring an action in inverse condemnation as a result of “ ‘the self-executing charac- ter of the constitutional provision with respect to com- pensation.’ ” ... Jacobs, moreover, does not stand alone, for the Court has frequently repeated the view that, in the event of a taking, the compensation remedy is re- quired by the Constitution. *1377 482 U.S. 304, 315-16, 107 S.Ct. 2378, 96 L.Ed.2d 250 (1987) (citations omitted) (emphasis added). Furthermore, there is no longer any question that the opening clause of the amended Tucker Act covering “all claims founded upon the constitution of the United States” provides the Court of Federal Claims with jurisdiction over such claims. How else could Fifth Amendment actions be brought today in the Court of Federal Claims for inverse con- demnation, see, e.g., Hendler v. United States, 952 F.2d 1364 (Fed.Cir.1991), or for regulatory takings, see, e.g., Fla. Rock Indus., Inc. v. United States, 18 F.3d 1560 (Fed.Cir.1994)? In the case of inverse condemnation takings, such as is the case here, the Government has not used its eminent domain App. A54 power affirmatively, but is alleged by a plaintiff to have committed by Government action a taking of private property without the just compensation required by the Fifth Amend- ment. If these cases are considered to be based on tort, the Court of Federal Claims would be without jurisdiction as it remains well established that that court has no general tort jurisdiction. And, as in regulatory takings cases as well, there is no element of contractual or consensual understand- ing between the owner whose property is taken and the Gov- ernment that takes it. If traditional contract-based jurisdic- tion were required under the Tucker Act, the Court of Federal Claims would be without jurisdiction because there is no con- tract. Nevertheless, for the reasons explained by the Su- preme Court in First English, the Court of Federal Claims today under the Tucker Act hears and decides both inverse condemnation and regulatory takings cases, and we review them on appeal. Whatever relevance the argument in Schillinger may have had to constitutional takings back in 1894 regarding contract and tort jurisdiction in the Court of Claims, it has none now.’ In the case before us, in response to the trial court's in- structions plaintiff amended its pleading to make clear that its Fifth Amendment takings claim was separate and distinct from the statutory infringement claim. It is established law that the Constitution creates its own remedy, and the Tucker Act expressly gives jurisdiction over such constitutional claims to the Court of Federal Claims. — Plaintiff hes eDege® a property interest in its patent, and a taking of that interest by the United States. As the trial court correctly concluded, “ Since Schillinger is not relevant to the question of whether plaintiff has a taking claim, the per curiam's discourse regarding whether Crozier v. Fried. Krupp Aktiengesellschaft, 224 U.S. 290, 32 S.Ct. 488, 56 L.Ed. 771 (1912), decided eighteen years after Schillinger, “effectively over- ruled Schillinger sub silentio,” per curiam op. at 1350, is equally irrelevant to the question of whether a separate cause of action exists for a constitu- tional taking of a patent right. App. A55 plaintiff's non-frivolous allegation of a constitutional taking claim comes within the jurisdiction of the Court of Federal Claims and entitles plaintiff to a trial on the merits. Sum- mary judgment in favor of the Government as the majority dictates is wrong as a matter of law, and is a denial of plain- tiff's constitutional rights. In response to this explanation of established law, the per curiam opinion simply repeats its confusion over statutory remedy and constitutional right. The answer to the takings issue, we are told, “is simple. Unlike regulatory takings and the inverse condemnation of real property, the ‘taking’ of a license to use a patent creates a cause of action under § 1498.” Per curiam op. at 1353. Consequently, since in the majority's*1378 view there is no remedy on these facts under § 1498, there is no constitutional right either. The notion that the constitutional right to just compensation is defined by the terms of a statute- § 1498 in this case-is elaborated in Judge Gajarsa's concurring opinion, in which he opines that “it is the responsibility of Congress, and of Congress alone to decide whether, and to what extent, it will permit the courts to help it fulfill its Constitutional obligations under the Takings Clause.” Gajarsa concurring op. at 1367. This is a remarkable view of the Constitution. Can it be that Congress, by a stroke of the legislative pen, may with- hold the remedies and revoke the protections given to the citi- zenry by the Fifth Amendment, not to mention the other Arti- cles of the Bill of Rights to the Constitution? Fortunately no authority exists for such a radical doctrine of legislative pre- emption over constitutional right. Wisely, Congress has never attempted to establish one, and in fact Congress in the Tucker Act expressly provides for the courts’ jurisdiction over these takings claims. To argue that Congress in enacting § 1498 successfully cabined the Constitution is the reverse of the understanding that the Constitution trumps legislation; it hardly seems appropriate for this court to be the first to an- nounce such a contrary view of constitutional doctrine. App. A56 Judge Dyk in his concurring opinion concludes that, since under his view of the case the Government's conduct was non-infringing (i.e., § 1498(a) was not violated because § 271(a) was not), there was no wrong and thus no basis for a takings claim. Dyk concurring op. at 1370. As a result, we do not know Judge Dyk's view of the takings issue directly, though by joining the per curiam opinion he presumably shares Judge Gajarsa's view of § 1498, whatever it is under- stood to be, as the sole remedy for a taking of a patent right. In my view, the existence of a proper takings claim is an issue wholly independent of whether under § 1498 there is a valid claim that triggers a remedy under that statute. The lat- ter is a question of statutory right granted by Congress under its legislative authority pursuant to the Constitution; the for- mer is a matter of constitutional principle the vindication of which Congress has properly provided for by remedy in the Court of Federal Claims pursuant to the provisions of the Tucker Act. The mixing and merging of these two separate legal concepts in the manner the majority has done is incor- rect as a matter of law, and leads them to an erroneous con- clusion. IV. The Section 1498 Infringement issue The second issue before us is whether plaintiff has stated a separate cause of action under 28 U.S.C. § 1498(a) for dam- ages based on a claim of unauthorized use by the Govern- ment. The answer is yes. The per curiam opinion's decision to the contrary is based on the proposition that there can be no Government liability under § 1498(a) unless the same con- duct, if done by a private party, would constitute infringement under 35 U.S.C. § 271(a). However, that statement, blending the two disparate sections of the statutes into one, has no basis in the statutory language, nor is there binding precedent of this court in support of such a proposition. In his concurring opinion, Judge Gajarsa acknowledges the problem with the incorporation theory, and therefore he App. A57 presents *1379 an alternative argument that reaches the same result based on an interpretation of § 1498(c). For the reasons I shall explain, that interpretation of subsection (c) is not cor- rect. Finally, I conclude this section with a comment about the constitutional concerns raised by the majority's interpreta- tion of § 1498. 1. The per curiam opinion concludes that, for the Govern- ment to be liable under § 1498(a) for the unauthorized use of a patented process, each claimed step must be performed in the United States. Nothing in § 1498(a) speaks about per- formance in the United States; that notion is come to only by incorporating into § 1498(a) the requirement for infringement by a private party under 35 U.S.C. § 271(a): “whoever with- out authority ... uses ... any patented invention, within the United States ..., infringes the patent.” (Emphasis added.) Contrast that with the actual language of § 1498(a): ‘““When- ever a [patented] invention is used ... by or for the United States ... without lawful right ..., the owner's remedy shall be by action against the United States.” Section 1498(a) simply does not contain the same territorial limitation on infringe- ment as § 271(a). Congress obviously knew how to write limiting language when it wanted to; its absence means that there is nothing in subsection (a) of § 1498 that requires that the infringing activity, or any part of it, take place in the United States; that is the role played by subsection (c), dis- cussed below. I do agree with one premise relied on by the majority-that under either § 1498(a) or § 271(a) the use of a method claim in order to infringe requires that each and every step of the claimed process be performed. There is no basis, however, for reading into § 1498(a) the requirement that each step be performed in the United States. 28 U.S.C. § 1498(a) makes no reference to 35 U.S.C. § 271(a), nor does anything in § 1498 suggest any link be- App. A58 tween actions brought under Title 28 and those brought under the authority of Title 35. Indeed, though there may be simi- larities between the two, our cases make it clear that the stat- utes in Title 35 dealing with infringement litigation between private parties have no direct application to infringement liti- gation against the United States under 28 U.S.C. § 1498. See Motorola, Inc. v. United States, 729 F.2d 765, 768 (Fed.Cir.1984) (“Although a section 1498 action may be simi- lar to a Title 35 action, it is nonetheless only parallel and not identical.”); see also Leesona Corp. v. United States, 220 Ct.Cl. 234, 599 F.2d 958, 968-69 (1979). The per curiam opinion, rather than interpreting the rele- vant statutes, relies on what Judge Gajarsa refers to in his concurring opinion as the “N7P proposition,” to the effect that infringement under § 271{a) is necessary for government liability under § 1498. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316 (Fed.Cir.2005). Judge Gajarsa points out that the evolution of this broad statement began with our predecessor court's holding in Decca Ltd. v. United States, 225 Ct.Cl. 326, 640 F.2d 1156 (1980). Decca in- volved a suit against the Government under § 1498, and stated that under that section the Government can be liable only for direct infringement and not inducement of infringe- ment or contributory infringement. Jd. at 1167. Judge Ga- jarsa correctly describes how this court mischaracterized that holding in a footnote in Motorola. See Motorola, 729 F.2d at 768 n. 3. In that case, a Claims Court decision had *1380 purported to incorporate 35 U.S.C. § 287-the patent marking statute-into § 1498 as an additional government defense. The ‘ Federal Circuit reversed, holding that incorporation was in- correct. The Motorola footnote, intended to support the no- incorporation principle by illustrating the various situations in which § 1498 differs from Title 35, at the end of the lengthy footnote managed to confuse the two in a somewhat incoher- ent sentence, a sentence that is at best mere dictum. App. A59 Where I part company with Judge Gajarsa is in the next evolutionary step, in which he concludes that the relationship between § 271(a) and § 1498(a) suddenly became binding precedent of this court in N7P. The parties in NTP were NTP, a U.S. corporation, the patent owner, and Research in Motion, a Canadian corporation, the accused infringer. The suit was under Title 35. The United States was not a party to the suit, and 28 U.S.C. § 1498 was not at issue. In NTP, the accused system consisted of many compo- nents, one of which was a relay component located in Canada. In determining whether the accused infringer used the system “within the United States,” as required for infringement under § 271(a), this court looked for guidance to Decca Lid. v. United States, 210 Ct.Cl. 546, 544 F.2d 1070 (1976), the facts of which were not unlike those of N7P.'° In Decca, the accused infringer was the Government, and the suit was under § 1498. The question was whether § 1498(c)-the subsection exempting claims arising in a for- eign country-precluded Government liability when some parts of the Omega positioning system were used worldwide. The Court of Claims determined that the Government was never- theless liable for the alleged infringing use because control and beneficial use of the system were not foreign-based. Decca, 544 F.2d at 1083. NTP simply applied the same rea- soning to conclude that the presence of RIM's relay compo- nent in Canada did not preclude a jury from finding that use of the accused system took place in the United States, as re- quired under § 271(a). It is not surprising that the N7P panel found the Decca decision “instructive” because of the similarity in fact pat- terns. The result in N7P could have been justified without '° Note that there are two Decca decisions, one in 1976 addressing the liability phase of the case, 210 Ct.Cl. 546, 544 F.2d 1070, and one in 1980 addressing the damages phase, 225 Ct.Cl. 326, 640 F.2d 1156. App. A60 any formal ‘linking’ of the Decca statute and the N7P statute. The precise ‘linking’ statement in N7P is: “Although Decca was decided within the context of section 1498, which raises questions of use by the United States, the question of use within the United States also was implicated because direct infringement under section 271(a) is a necessary predicate for government liability under section 1498.” NTP, 41 8 F.3d at 1316 (citing Motorola, 729 F.2d at 768 n. 3). Since govern- ment liability under § 1498 was not at issue in N7P, the statement is not in any sense necessary to the holding in NTP, and it is at best a passing comment about a statute not before the court. The discussion that precedes and follows the comment makes clear that the N7P court understood this. There exists no binding precedent of this court mandating that § 271(a) be incorporated into § 1498(a). Judge Dyk in his concurring opinion argues for making the dictum in N7P controlling*1381 law. He supports his ipse dixit by piecing together bits of language from legislative history found in the Congressional Record, language from cases on different matters, and broad conclusions about what Congress could not have meant by what it did not say. His position has no basis in the statutory language and, as Judge Gajarsa cogently points out, ignores the role of § 1498(c), which is the only provision addressing the § 1498 extraterrito- riality issue. If § 1498(a) incorporates a “within the United States” territoriality requirement, so that the Government is liable only when its infringing act occurs in the United States, what is the purpose of § 1498(c), the 1960 amendment to § 1498 that exempted Government liability for claims arising in a foreign country? Ifthe Government's infringing act must take place in the United States in order for the Government to be liable under § 1498(a), then exempting Government ac- tions that arise in a foreign country under § 1498(c) is unnec- essary. It is a court's obligation to make every part of a stat- ute have meaning. The position advocated by Judge Dyk renders § 1498(c) meaningless. App. A61 2. Because § 1498(a), properly understood, does not incor- porate the “within the United States” requirement of § 271 (a), I agree with Judge Gajarsa's alternative view that we must look to § 1498(c) to determine how and when the Govern- ment's liability under § 1498(a) is subject to geographical constraints. Section 1498(c) reads in its entirety: “The provi- sions of this section shall not apply to any claim arising in a foreign country.” At the outset it is well to remember that the word “claim” in § 1498(c) means the same as ‘claim’ in a pleading, i.e., a ‘cause of action.’ Thus we are looking for the earmarks of a cause of action, and where it arises. As noted above, I agree with Judge Gajarsa's answer to the first question he poses in Part II of his concurring opinion: a patented method is used within the meaning of § 1498(a) only if all steps of the claimed process are performed. Ga- jarsa concurring op. at 1358 - 1360. That proposition seems clear enough, and correct. It follows that in order for a cause of action to arise under § 1498(a) for use of a method patent all steps of the method must have been practiced by the al- leged infringer. The next question then is how does subsection (c) of § 1498 relate to patent infringement under subsection (a), i.e., when and how does a cause of action for patent infringement against the United States arise in a foreign country? The lan- guage of subsection (c) does not answer the question, nor is there anything in its legislative history that is particularly helpful. To resolve the issue before us we need not answer the question in its broad terms-the issue before us is a narrow one. When the use of a method patent is alleged, and we have concluded that all of the steps of the method must be performed in order for an infringement of the patent to have occurred, what are the requirements, with particular regard to territorial location, for the performance of these steps? App. A62 Where must the steps be performed in order for the cause of action to arise “in a foreign country”? Looking across the range of choices, there are three. The first and easiest case is when each and all of the steps are completed within the United States. ‘iere there is no foreign entanglement whatsoever, so subsection (c) has no application and the Government is subject to the requirements of § 1498(a). That case is not before us, but it is-useful to have it in mind *1382 as we pursue the remainder of the analysis. The second and next easiest case is when each and all of the steps are completed in a foreign country. If the prohibition in subsection (c) is to have meaning in the context of using a method patent, it must apply here. In the case before us, the Nicalon silicon carbide fibers were manufactured into sheets in Japan, the record indicating that all of the steps of the pat- ented invention were performed there. Even though those sheets were imported into the United States and used in the Government's fighter aircraft, summary judgment for the Government under § 1498 would be appropriate because this would constitute a “claim arising in a foreign country,” and subsection (c) affords the Government a complete defense. The interpretive problem becomes more difficult in the third case, in which some of the steps of the method patent are practiced abroad, and some in the United States. That is the situation with the silicide fiber mats made from Tyranno fibers, since the Tyranno fibers are manufactured in Japan and then processed into mats in the United States, allegedly re- quiring use of one or more of the steps of the patente« method in both places. In dealing with this fact pattern, Judge Ga- jarsa in his concurring opinion tells us that each, i.e., all, of the steps must be performed within the United States in order for a cause of action to avoid the arising-in-a-foreign-country exception. Put another way, if any one step occurs outside the United States, it is a cause of action that arises in a foreign country, and thus is barred by § 1498(c). App. A63 That cannot be the law. A cause of action does not ‘arise’ in a place just because any one step of a multi-step process patent occurs there. Beyond that, Judge Gajarsa's position cannot be reconciled with the proposition that all steps must be completed before a compensable use, 1.e., in- fringement of a method patent, occurs under § 1498(a). I understand my colleague's dilemma-there is no guidance in the statute, in the legislative history, or in prior cases as to what to make of this provision when the steps of a method patent have been performed both in and out of the country. But that is no reason to abandon logical analysis in preference for a policy-rooted and result-driven conclusion. The logic of the statute and what seems to me to be the basic policy un- derlying § 1498 is that when the Government has allegedly benefited from infringing conduct by its contractors or sub- contractors, and when fairness decrees that the Government be held responsible for its wrongs-the fundamental principle underlying § 1498(a)-then the fact that one or another step of a process occurred outside the United States should not alone immunize the Government from liability. This case involves patent claims utilizing numerous steps in the manufacture of a specialized high-technology material . of unique interest to the Government. There is no basis in law or policy for absolving the Government from liability, now and forever, for the wrongful conduct of its agents just because any one step of a multi-step patented method can be found to have occurred outside the United States-that is an invitation to strategic conduct if ever there was one. I con- clude that the Government is liable under § 1498(a) for an unauthorized use of a method patent unless al/ steps of the method are practiced abroad. thus causing the claim to be one “arising in a foreign country.” See § 1498(c). *1383 3. Finally, because the per curiam opinion and at least one of the concurring opinions devotes so much time to the cases App. A64 construing § 1498, I cannot, even in the interest of brevity, ignore the offered analyses. The forerunner of § 1498, en- acted in 1910, was a straightforward piece of legislation. The 1910 statute was entitled “An Act to Provide Additional Protection for Owners of Patents of the United States, and for Other Purposes,” and provided that “whenever an invention described in and covered by a patent of the United States shall hereafter be used by the United States without license of the owner thereof or lawful right to use the same, such owner may recover reasonable compensation for such use by suit in the court of claims.” '© A straightforward reading of the stat- ute would be that this is a waiver by Congress of the Gov- ernment's sovereign immunity from the tort of patent in- fringement, and authority to sue the Government for the tort in the Court of Claims. That, however, was not the way the Supreme Court ini- tially viewed the statute when it came before the Court two years later in the case of Crozier v. Fried. Krupp Aktienge- sellschaft, 224 U.S. 290, 32 S.Ct. 488, 56 L.Ed. 771 (1912). Plaintiff Fried. Krupp, the patentee, sought a permanent in- junction against Wm. Crozier, the Chief of Ordnance of the United States Army, for unauthorized use of its patented in- vention regarding guns and gun carriages. The Government demurred on the grounds that the Court of Claims lacked ju- risdiction over the suit. The Supreme Court, after reviewing the history of in- fringement suits against the Government up to and including Schillinger, turned to the new statute: In substance, therefore, in this case, in view of the public nature of the subjects with which the patents in question are concerned and the undoubted authority of the United States as to such subjects to exert the power of eminent domain, the statute, looking at the substance © Act of June 25, 1910, ch. 423, 36 Stat. 851. App. A65 of things, provides for the appropriation of a license to use the inventions, the appropriation thus made being sanctioned by the means of compensation for which the statute provides. 224 U.S. at 305, 32 S.Ct. 488. Working through the prolix language, it seems that the Court chose not to read the new statute as a simple authoriza- tion for suits for the tort of patent infringement against the Government, but instead read the statute as an illustration of the Government's obligations under the Fifth Amendment. Why the Court thought the statute was the one and not the other is not explained. Perhaps it was the long-standing rule, which the Court had only recently reiterated in Schillinger, that the Court of Claims did not have jurisdiction over torts. Perhaps it was discomfort with the permanent injunction be- ing sought against the Army's efforts to modernize its guns- after all Fried. Krupp was a German corporation and the drums of war, though still distant, were beating. Perhaps it was a bow to Justice Harlan's dissent in Schillinger arguing for using the Fifth Amendment to allow a recovery, though if the statute authorized a tort action, a power Congress clearly has,'’ there would be no need for a constitutional justification. Whatever the explanation, *1384 the Court in Crozier was clear: “[Wle think there is no room for doubt that the statute makes full and adequate provision for the exercise of the power of eminent domain for which, considered in its fina] analysis, it was the purpose of the statute to provide.” Jd. at 307, 32 S.Ct. 488. Does it matter which of these underlying theories-tort or constitution-supports a plaintiff's suit under § 1498? In some cases, it would not seem to matter. However. despite the fact that in light of modern cases our adherence to the Crozier ” See Federal Tort Claims Act, 28 U.S.C. § 1346(b). App. A66 theory has been called “at best anachronistic and at worst mis- leading,” 18 + other cases the underlying theory has had an effect on the outcome; such cases continue to recite the tak- ing theory. See, ¢.g., Hughes Aircraft Co. v. United States, 86 F.3d 1566, 1571 (Fed.Cir.1996) (“The government's unli- censed use of a patented invention is properly viewed as a taking of property under the Fifth Amendment through the government's exercise of its power of eminent domain and the patent holder's remedy for such use is prescribed by 28 U.S.C. § 1498(a).”); Leesona, 599 F.2d at 964 (“When the govern- ment has infringed, it is deemed to have ‘taken’ the patent license under an eminent domain theory, and compensation is the just compensation required by the fifth amendment.”). If either the majority's incorporation theory or Judge Ga- jarsa's alternative theory prevails, it will certainly matter. To the extent § 1498 is understood to incorporate into its provi- sions the entitlements provided by the Fifth Amendment's ‘taking’ clause, any statutory limitation providing less than just compensation would be unconstitutional. Reading § 1498 to provide that any one step in a method, no matter how strategically planned, will insulate the Government from its own wrongdoing is hardly consonant with the purposes of the Fifth Amendment. Judge Gajarsa responds to my concerns about the takings issue, and his merger of the constitutional requirement for just compensation with § 1498, by arguing that there is no consti- tutional requirement for a judicial remedy for a taking. See Gajarsa concurring op. at 1366 - 1367 & nn. 13-14. He points out that Congress could choose to provide the remedy directly by legislation. Perhaps; at least so long as the constitution- 8 ‘Thomas F. Cotter, Do Federal Uses of Intellectual Property Implicate the Fifth Amendment?, 50 Fla. L.Rev. 529, 555 (1998) (“[T]he habit, in which both the Federal Circuit and the Court of Federal Claims continue to indulge, of invoking the takings mantra when discussing section 1498 claims is at best anachronistic and at worst misleading.”). App. A67 ally required remedy is provided, that may be true.!? But Congress, *1385 since the creation of the Court of Claims, prefers not to spend its time writing special bills; instead, it has provided a judicial remedy for takings claims through the Tucker Act and that remedy meets the requirements of the Constitution. If the judicial remedy is limited to the provi- sions of § 1498, as my colleagues argue, then that section must also meet the requirements of the Constitution. The argument that Congress could satisfy the Constitution by do- ing it all itself on an individual basis is academically interest- ing, but hardly relevant. * £ * * *k * In sum, plaintiff alleges inter alia that the Government has infringed its United States patent under the terms of United States patent law; on appeal, the issue is whether plaintiff has stated a cause of action under § 1498 for which relief could be granted. I would hold plaintiff has done that, at least with regard to the silicide fiber mats made from Tyr- '° Lynch v. United States, 292 U.S. 571, 54 S.Ct. 840, 78 L.Ed. 1434 (1934), from which Judge Gajarsa seeks support (and which in turn relied for support on the now-overtaken Schillinger opinion), stands on a quite different footing than an inverse condemnation case. Lynch was an insur- ance contract case, in which the plaintiff's decedent, by choosing to con- tract with the Government presumably for his own benefit, had chosen to place his rights in the hands of a sovereign who asserts that it can deter- mine contractual rights as it wants. Whether viewed as a contract remedy or, as Lynch tried to do, as some sort of a taking, the plaintiff's decedent had for good or ill put himself at risk of the Government's claim that it is free to change its policy. In Lynch, the case turned on whether Congress, in revoking the insurance program, had withdrawn its consent to be sued under existing contracts-the Court held it had not. 292 U.S. at 583, 54 S.Ct. 840. Whether the Fifth Amendment is available as a remedy in cases involving mutual rights under Government contracts is not at issue here. The issue here is whether the Fifth Amendment protects the indi- vidual from the unilateral acts of the sovereign, when inverse condemna- tion is called for, and it makes no constitutional sense to say that persons who did not choose in the first instance to deal with the Government are nevertheless at the mercy of the Government's willingness to pay. App. A68 anno fibers, and would remand the matter to the trial court for further proceedings on this issue, as well as on the constitu- tional taking claim. App. B1 APPENDIX B 51 Fed. Cl. 829 United States Court of Federal Claims. ZOLTEK CORPORATION, Plaintiff, V. The UNITED STATES, Defendant. No. 96-166C. March 14, 2002. OPINION DAMICH, Judge. I. Introduction This action is before the Court on Defendant's Motion for Partial Summary Judgment pursuant to Rule 56 of the Court of Federal Claims (RCFC). Defendant contends that 28 U.S.C. § 1498(c) bars Plaintiff from receiving compensation for the use of methods claimed in U.S. Patent No. Re. 34,162 (“the '162 Patent”) in the manufacture of silicon carbide fiber sheet products used by *831 the F-22 fighter program because the claim arises in a foreign country. For the reasons stated herein, the Defendant's Motion for Partial Summary Judgment is STAYED pending additional briefing by the parties on the issues stated herein. II. Background Zoltek Corporation (hereinafter “Plaintiff’) is the owner of the '162 Patent. Plaintiff alleges that the process used by or for the United States Government (hereinafter “Defen- dant”) to manufacture silicon carbide fiber mats! and pre- ' A mat is a fibrous reinforcing material comprised of chopped or swirled filaments bound in order to maintain form. Mat products are typically available in blankets of various weights and sizes. App. B2 pregs’ used in the F-22 fighter aircraft infringes the claims of the '162 Patent either directly or under the doctrine of equiva- lents. According to Plaintiff, the unauthorized use by Defen- dant of the processes claimed in the patent entitles it to com- pensation under 28 U.S.C. § 1498(a). According to 28 U.S.C. § 1498(a), an aggrieved party may recover monetary damages from the United States for the unlicensed manufac- ture or use of that party's patented invention. Section 1498(a) reads in relevant part: 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 .... For the purposes of this section, the use or manufacture of an invention de- scribed in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authoriza- tion or consent of the Government, shall be construed as use or manufacture for the United States. 28 U.S.C. § 1498(a). According to 28 U.S.C. § 1498(c), an otherwise valid claim for damages under 28 U.S.C. § 1498(a) ‘s barred where the “claim aris[es] in a foreign country.” This case arose out of Defendant's alleged use of the in- vention claimed in the '162 Patent. Although originally fo- cused on the development and production of the B-2 Stealth A prepreg, better known as a preimpregnated material, is a materiai typi- cally used in the manufacture of high performance composites. 3 98 U.S.C. § 1498(c) reads: “The provisions of this section shall not ap- ply to any claim arising in a foreign country.” App. B3 Bomber, the litigation now centers on the manufacture and production of the new F-22 fighter. The F-22 fighter is cur- rently under development by the United States Government. Defendant has contracted with Lockheed Martin Corporation (hereinafter “Lockheed” to design and build the F-22 fighter. Lockheed has subcontracted with other companies to provide fiber sheet products for the F-22 fighter. Two fiber sheet products are at issue in the present action. The first product is a prepreg made from Nicalon fiber, which is a product of the Nippon Carbon Company (a Japanese company) and is distributed by COI Ceramics, Inc., in the United States. There is no evidence before the Court that indicates whether the Nicalon fibers are manufactured inside or outside of the United States. The second product is a silicon carbide fiber mat product made from Tyranno fibers. Although Defendant asserts that Tyranno fibers are manufactured exclusively in Japan by Ube Industries, this remains a genuine issue of ma- terial fact. Plaintiff has admitted, however, that all Tyranno fibers used in the mat product were manufactured outside of the United States. There is no evidence before the Court demonstrating the location of the processing of the Tyranno fibers into mat products. This Motion for Partial Summary Judgment was brought by Defendant on July 5, 2001. Oral argument was held on December 13, 2001. The issue before the Court is whether 28 U.S.C. § 1498(c) precludes recovery from the United States for the use of a patented process*832 without a license where at least some elements of the process claim are practiced outside of the United States by a government contractor. Plaintiff argues that the Court should first embrace the idea that section 1498(c) is irrelevant to this inquiry because the silicon carbide sheets manufactured by the accused proc- ess fall squarely within the plain terms of section 1498(a). Plaintiff contends that because the clause found in section App. B4 1498(a) is not expressly limited to domestic contractors or subcontractors, section 1498 must be interpreted to mean that if infringing activity committed in a foreign country falls within the boundaries of section 1498(a), then section 1498(c) does not apply. Alternatively, Plaintiff argues that Congress intended for section 1498 to apply to those forms of direct infringement committed abroad as defined in 35 U.S.C. § 271.’ Plaintiff argues that construing the statute otherwise would result in Plaintiff having no available claim against Lockheed (the government contractor) because it would be barred by section 1498(a) > and no available claim against the United States because it would be barred by section 1498(c). Plaintiff asserts that such a result is against congressional in- tent that infringement liability should not be dependent upon the identity of an infringer, yet Plaintiff fails to identify where Congress expressed this intent. Defendant argues that the Court should interpret the phrase “claim arising in a foreign country” to mean that if any part of the patented invention is practiced in a foreign coun- try, the claim arises in that country. Defendant contends that there is no genuine issue of material fact as to whether Nica- lon and Tyranno are manufactured in a foreign country. Thus, because each product is manufactured in a foreign country, any claim based on the manufacture of these prod- 4 35 U.S.C. § 271 is a statute that defines patent infringement between private parties. Significantly, section 271(g) makes it an infringement to import into the United States a product made from a process patented in the United States. 5 Plaintiff has no cause of action against Lockheed because the allegedly infringing activity is considered “use or manufacture for the United States” under section 1498(a). Section 1498(a) protects contractors or subcontractors from suit for patent infringement if the infringing act is committed “with the authorization or consent of the government ....” In these cases, “[t]he [patent] owner's remedy shall be by action against the United States ....” The parties agree that Lockheed cannot be sued under 35 U.S.C. § 271 for infringement of the '162 Patent. App. B5 ucts must “arise in a foreign country” and is barred by section 1498(c). III. Discussion A. Standard for Summary Judgment Summary judgment is appropriate when there are no genuine issues of material fact and the moving party is enti- tled to judgment as a matter of law. RCFC 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Jay v. Secretary, DHHS, 998 F.2d 979 (Fed.Cir.1993). The party moving for summary judgment bears the initial burden of demonstrating the absence of any genuine issue of material fact, After adequate time for dis- covery and on motion, summary judgment is appropriate against a party who fails to make a showing sufficient to es- tablish the existence of an element essential to that party's case, where that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The court must resolve any doubts about factual issues in favor of the non-moving party, Chi- uminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307 (Fed.Cir.1998), and draw all reasonable inferences in its favor. See Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 773 (Fed.Cir.1995). B. Nicalon Based on the facts before the Court, it is unknown whether Nicalon fibers (and the resultant mats produced from these fibers) have been manufactured outside of the United States. Due to the exclusion of Defendant's Exhibit 18, this Court does not have any evidence available to it regarding the location of the manufacture of Nicalon fibers *833 for pur- poses of summary judgment.® Thus. it is not clear from the * Defendant offered into evidence a facsimile from Mr. Ron Zipprich, Di- rector of New Business & Technology for COI Ceramics. Inc., to show that Nicalon fibers have never been manufactured in the United States. App. B6 evidence before the Court where the claim arises with respect to Nicalon. Because a sufficient record is lacking, the crucial question is whether Plaintiff or Defendant will carry the bur- den of proving at trial that the fibers were or were not manu- factured in a foreign country. If Plaintiff carries the burden of proof with respect to section 1498(c), then it is presently lacking an essential element of its case, and summary judg- ment would be appropriate if there has been adequate time for discovery. If Defendant carries the burden of proof, the lack of evidence in the record will be construed in favor of the non-moving party (Plaintiff), and summary judgment must be denied with respect to claims arising out of the manufacture of Nicalon fibers. An examination of the language and construction of sec- tion 1498 as a whole indicates that section 1498(c) was in- tended as an affirmative defense for the government, rather than as an additional element for a plaintiff to prove in its case. Section 1498(a) clearly describes the circumstances in which the owner of a patent is entitled to sue the government for “reasonable and entire” compensation. 28 U.S.C. § 1498(a). More precisely, section 1498(a) fully sets out what a plaintiff must prove in the Court of Federal Claims in order to be compensated for the use or manufacture by the United States of its patented invention. Section 1498(c), on the other hand, provides that even where a plaintiff meets all of the requirements that establish a claim for compensation under 1498(a), the provisions allowing for the recovery of just and reasonable compensation “shall not apply” if it is demon- strated that the claim arises in a foreign country. Impor- tantly, section 1498(c) is worded negatively. By indicating when section 1498(a) does not apply, rather than indicating The Court found that the letter was hearsay and did not fall under any hearsay exception. However, because the motion has been stayed, the Court invites the parties to submit additional evidence that may establish the absence of a genuine issue of material fact as to the location at which Nicalon fibers are manufactured. App. B7 the instances where section 1498(a) does apply, Congress has signaled that section 1498(c) should be construed as an af- firmative defense for the government rather than an essential element to a plaintiff's case under section 1498(a).’ Had Con- gress wished to make the requirement that the claim not arise in a foreign country part of the plaintiffs burden, it could have chosen two alternatives to clearly indicate its intent. First, Congress could have phrased section 1498(c) as a posi- tive requirement [e.g., “The provisions of this section shall apply only to claims arising in the United States.”]. Second, Congress could have, in lieu of adding section 1498(c), placed the “[not] arising in a foreign country” requirement in the already existing section 1498(a) as an additional element necessary to establish a claim against the government. Either of these alternatives would have clearly indicated that the burden of proving at trial that the ‘claim did not arise in a for- eign country rested on the plaintiff. Thus, the Court agrees with Plaintiff that the government bears the burden of proof in demonstrating that the claim arises in a foreign country. Because Defendant carries the burden of proving at trial that the claim arises in a foreign country, the lack of evidence in the record is construed in favor of Plaintiff Section 1498(c) precludes recovery only in cases where the claim arises in a foreign country. Because there is no evidence in the record that establishes where Nicalon is manufactured, there is a genuine issue of material fact as to where the claim arose with respect to Nicalon. Thus, summary judgment with respect to the Nicalon fibers is inappropriate. ” The fact that the Court later in this opinion holds that “arising in a for- eign country” in 1498(c) means the same thing as “within the United States” in 35 U.S.C. § 271 does not undercut the Court's reasoning with regard to the burden of proof. The burden of proof depends on the struc- ture of section 1498 and the way that the limitation of section 1498(c) is worded. Two phrases may be worded differently and yet have the same meaning. App. B8 C. Tyranno The facts before the Court demonstrate that Tyranno chopped silicon carbide fibers *834 are manufactured outside of the United States. SJ Hr'g 75. The Tyranno chopped sili- con carbide fibers do not of themselves constitute the “sheet products” claimed in the patented processes. Under this Court's adopted claim construction, an additional step of processing the Tyranno fibers into mats is required for them to become “sheet products” within the meaning of the '162 Patent. Claim Constr., at 11. The evidence before the Court does not show where this additional processing step occurs. Therefore, it is not established that the whole patented process is practiced outside the United States. Because the Court must view the evidence in the light most favorable to the non- movant (Plaintiff) in order for summary judgment to be ap- propriate regarding Tyranno fibers, the Court must find: (1) that section 1498(c) precludes governmental liability where all of the elements of the claims at issue are practiced in a foreign country; and (2) that section 1498(c) also precludes governmental liability where only some of the elements of the claims at issue are practiced in a foreign country. This case presents an unusually difficult question of law and statutory interpretation. Strong arguments are available on cither side of this issue. The starting point for statutory interpretation is the plain language of the statute. The lan- guage states that section 1498 shall not apply to “claims aris- ing in a foreign country.” § 28 U.S.C. § 1498(c) (emphasis added). The context of the entire statute indicates that “claim” means the entire legal claim against the United States. This is the sense of “claim” in the title, “United States Court of Federal Claims.” This is also the sense of “claim” in section 1498(a), where the statute precludes a “claim” being brought against the United States for activities occurring before July 1, 1918. Finally, “claim” is also used ® This provision of the law has not been altered since its passage in 1960. App. B9 in section 1498(b), which deals with copyright infringement, where the word does not have the ambiguity that it has in the context of patent law, that is, a “claim” of a patent versus a “claim” against the United States. The second paragraph of section 1498(b) gives the government the authority to settle the (copyright) “claim.” ? Thus, “claim” in the patent context means an infringement claim. For patent infringement to oc- Cur, a patent claim must read on an accused device or method in its entirety, either literally, or under the doctrine of equiva- lents. Thus, for infringement to occur in a foreign country, all elements or processes that comprise infringement must take place in a foreign country. As a result, with respect to a process claim, if any part of the process is not practiced in a foreign country, it would seem that the claim cannot arise in a foreign country. Some ambiguity still remains, however, because of the word “arising.”. “Arising” implies a process, something which is not fully completed. This is the function, after all, of the active participle. Pursuing this logic, the Court could conclude that if the steps that constitute infringement begin in a foreign country and are completed in the United States, then the claim has “arisen” in a foreign country. Unfortunately, there are no cases defining “arising,” and the term does not appear elsewhere in the statute. Because the phrase, “arising in a foreign country” is am- biguous, the Court turns to legislative history, especially since the cases cited by Plaintiff '” and *835 Defendant |! can be easily distinguished. ” Section 1498(b) reads in relevant part: “That before such action against the United States has been instituted ... the [agency head] is authorized to enter into an agreement with the copyright owner ... to settle the claim administratively out of available appropriations.” '° Plaintiff extensively cites Hughes Aircraft Co. v. Messerschmitt- Boelkow-Blohm, GmbH, 437 F.Supp. 75 (N.D.Fla.1977), arguing that the case demonstrates that where the infringing device is manufactured out- App. B10 1. Statutory Authority and Legislative History The legislative history of section 1498 is best understood for the purposes of this case in comparison with 35 U.S.C. § 271 (defining infringement between private parties), since the general purpose of section 1498 was to provide a cause of side the United States and the government plays a very limited role in its development, the government will still be subject to suit under section 1498. Plaintiff notes that a section 1498(c) defense was never raised ei- ther at trial or on appeal to the Fifth Circuit. Contrary to Plaintiff's con- tention, the issue in the case was whether or not the patented product was used by the United States Government. The allegedly infringing article was a control system on a spacecraft used in the Helios space project de- veloped and managed primarily in West Germany. The United States Government played a somewhat limited role in its development. The Fifth Circuit, in conferring exclusive jurisdiction to the Court of Claims under 28 U.S.C. § 1498(a), held that the project as a whole was a joint effort between the two governments for mutual benefit. Hughes Aircraft Co. v. Messerschmitt-Boelkow-Blohm, GmbH, 625 F.2d 580, 584 (Sth Cir.1980). The Helios spacecraft was launched from the United States and was used in its entirety within the United States. This use within the United States clearly constituted a claim arising in the United States, mak- ing section 1498(c) inapplicable to the facts of the case. As a result, any question regarding the location of the spacecraft's manufacture became moot. In the case at bar, a different issue is being considered. There is uncertainty as to where the alleged infringement of Plaintiffs patent oc- curred. Part of the allegedly infringing process was practiced in a foreign country. Under section 1498(c), the question becomes whether the pat- ented process was used in the United States rather than by (or for) the United States. '! Defendant relies chiefly on Leesona Corp. v. United States, 220 Ct.Cl. 234, 599 F.2d 958 (1979), where the court held that “a complete congru- ence between section 1498 and Title 35 would grant plaintiff recovery in excess of the just compensation required by the Fifth Amendment, and in excess of the reasonable and entire compensation contemplated by Con- gress with the passage of section 1498.” Id. at 251-52. Leesona, however, was a case in which the court was overruling a trial judge's holding that treble damages (as provided for in Title 35) were available to plaintiffs in cases arising under section 1498. Thus, Leesona stands merely for the proposition that the damages provisions of Title 35 do not apply in patent cases against the government. App. B11 action against the government for patent and copyright in- fringement that reflected causes of action against private par- ties. The law that later became 28 U.S.C. § 1498 was origi- nally adopted in 1910 for the purpose of providing patent owners with a remedy against the Federal Government for unauthorized use of their patented invention. Act of June 25, 1910, ch. 423, 36 Stat. 851. There was no provision regard- ing claims arising in a foreign country in the law as originally passed. In 1952, Congress codified much of the common law that had developed in the patent field, passing the Patent Act of 1952, Pub.L. No. 82-593, 66 Stat. 792 (codified as amended at 35 U.S.C. §§ 1 et seq.). Infringement was defined at that time as making or using or selling an invention within the United States without a license, 35 U.S.C. § 271(a) (1952). Because the language of the statute limited infringement to within the United States, there was no need to add language regarding non-infringement for use outside of the United States. Section 1498(c) was adopted by Congress in 1960,'° Congress chose to adopt section 1498(c) after the State De- partment opined that 28 U.S.C. § 1498 could be interpreted by the courts as subjecting the Unitéd States to suit for in- fringement committed abroad. Section 271, on the other hand, specifically limited infringement liability to acts com- '? It may be argued that, from the beginning, section 1498 did not match the scope of infringement liability as to private parties, as selling was not included in the statute that eventually became section 1498. Selling was an infringing act in 1910, when the law was originally passed. It may have been, however, that Congress could not envision the government selling a patented invention in 1910, and thus thought it unnecessary to include it in the statute. ' “The provisions of this section shal! not apply to any claim arising in a foreign country.” 28 U.S.C. § 1498(c). App. B12 mitted within the United States. Because section 271 spe- cifically limited infringement to acts occurring “within the United States,” and section 1498 did not provide a similar limitation, the State Department, and Congress as a result, feared that the courts might extend patent infringement liabil- ity against the government beyond the scope to which private parties were subject at that time. Thus, section 1498(c) was proposed and adopted as an amendment to the bill to “remove the possibility of its being interpreted as applying to acts of infringement in foreign countries.” S.Rep. No. 86-1877, at 6 (1960), reprinted in 1960 US.C.C.A.N. 3450. Thus, it is clear that the language of section 1498(c) was intended by Congress to have the same meaning as the language “within *836 the United States” as found in 35 U.S.C. § 271(a). Therefore, in order to ascertain the meaning of “claim arising in a foreign country” the Court must determine the meaning of “within the United States” as written in section 271. There is little case law with respect to the exact mean- ing of the phrase “within the United States.” However, it ap- | pears that when section 1498(c) was adopted in 1960, the lan- guage of 35 U.S.C. § 271 did not prevent a prospective in- fringer from moving merely one step of a patented process to a foreign country, thereby avoiding infringement. * In 1960, at the time section 1498(c) was adopted, if a pri- vate party practiced each step of a patented process within the borders of the United States, infringement liability would re- sult under 35 U.S.C. § 271(a). Similarly, if the Federal Gov- ernment practiced each step of a patented process within the borders of the United States, liability would arise under 28 U.S.C. § 1498. Prior to the adoption of section 1498(c), ac- 435 U.S.C. § 271(a) (1952) was the only clause defining direct infringe- ment at that time. It read in relevant part: “(a) Except as otherwise pro- vided in this title, whoever without authority makes, uses, or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent.” (Emphasis added.) App. [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386016_2200%3A1. Public record. Not legal advice.