GOLDEN v. USA, No. 1:2013cv00307 - Document 94 (Fed. Cl. 2016)
Court Description: REPORTED MEMORANDUM OPINION and ORDER denying 88 Motion to Dismiss - Rule 12(b)(1) and (6).. Signed by Judge Susan G. Braden. (dls) Copy to parties. (Plaintiff served via certified mail; Article No. 7014 1200 0000 9093 9843)
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GOLDEN v. USA Doc. 94 OREGE[{AL l|n tbeMnrte|. $rtstes @ourt of ;feUersl No.13-307c Filed: November 30, 2016 *,1. 'r.+** x *.*r!*t!*,** ***{.+**** +*****,r*** *** @[g.itgg FILED Nov 3 0 2016 U.S. COURT OF FEDERAL CLAIMS 28 U.S.C. $ 1498(a) (Patent Infringement); 35 U.S.C. g 251 (Reissue); RCFC 12(bxl) LARRY GOLDEN, Pleintiff nvn (Jurisdiction); RCFC 12(b)(6) (Failure to State a Claim); RCFC 12(e) (More Definite Statement); RCFC 15(a)(2) (Amended Complaint, With Court's Leave); Manual of Patent Examining Procedure (9th ed. 2015). ea THE LINITED STATES, Defendant. *************** *** * * * * * * * * *:*:i * * * ** *** Larry Golden, Greenville, South Carolina, pro se. Lindsay Kate Eastman, United States Department of Justice, Civil Division, Washington, D.C. MEMORANDUM OPINION AND ORDER DEI{YING THE GOVERNMENT'S MOTION TO DISMISS BRADEN,.radge. I. RXLEVANTFACTUAI,BACKGROUND.' On April 5,2006, Mr. Larry Golden filed Patent Application No. 1tl397,118 (..the'118 Application"), titled "Multi sensor Detection, stall ro stop And Lock Disabling System," with the united states Patent and rrademark office ("usPTo"). 2112116 Am. compl. Ex. B. on June 10, 2008, the '118 Application resulted in the issuance of U.S. patent No. 7,3g5,497 (,,the'497 Patenf). 2112/16 Arn. Compl. Ex. B. Several days prior, on June 6, 2008, Mr. Golden filed a continuation-in-part application,2 No. 12l155,573 ("the'573 Application"), of the ,118 Application. 2/12/16 Am. Compl. Ex. C. I The facts discussed herein are derived from the May 1,2013 Complaint (.,Compl.',); and the February 12,2016 Amended complaint ("2112/16 Am. compl.") and attached Exhibits A-K ("2/12/16 Am. Compl. Ex. A-K"). 2 "A continuation-in-part is an application frled during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional ?01'{ 1,e00 0000 t0!l 1893 Dockets.Justia.com On December 22 ,2009,the '573 Application resulted in the issuance of U.S. Patent No. 7,636,033 ("the '033 Patent"). 2/12/16 Am. Compl. Ex. C. On January 20, 2010, Mr. Golden filed a continuation application, Application No. 121657,356 ("the '356 Application"), ofthe '573 Application. Thereafter, Mr. Golden filed several continuation applications ofthe '356 Application, resulting in: . . r o o U.S. Patent No. 8,106,752 ("the'752 Patent"), issued on January 31,2012; U.S. Patent No. 8,334,761 ("the '761 Patenf'), issued on December 18, 2012; U.S. Patent No. 8,53 1,280 ('the '280 Patent"), issued on September 10,2013; U.S. Patent No. 9,096,189 ("the '189 Patent"), issued on August 4,2015; and Published Patent Application No. 2076-0027273 Al ("the'273 PG-PUB). 2/12/16 Am. Compl. Exs. D, E, F, I. On March 31,2011, Mr. Golden filed a reissue application for the '033 Patent that, on January 1, 2013, issued as U.S. Reissue Patent No. RE43,891 ("the '891 patenf).3 2/12116 Am. Compl. Ex. G. On September 9, 2011, Mr. Golden filed a second reissue application for the '033 Patent. 12, 2013, the application resulted in the issuance of U.S. Reissue patent No. RE43,990 ("the'990 Patent"). 2ll2l16 Am. Compl. Exs. G, H. on February The patents listed above disclose inventions for the detection and automated isolation of dangerous chemical, biological, and radiological agents in shipping containers, tractor trailers, mail caniers, mail boxes and lockers. see, e.g.,2112116 Am. compl. Ex. B at 2. Mr. Golden is the owner, and sole inventor, of these patents. 2/12/16 Am. Compl. Exs. A-I. application and adding matter not disclosed in the said earlier nonprovisional application.,' Manual of Patent Examining Procedure (.'MPEP') $201.8 (9th ed. 2015). 3 . under 35 u.s.c. $ 251, defective patents may be corrected through a process known as "reissue." Section 25 1(a) provides: [w]henever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reaion of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment ofthe fJe required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended apptication, for the unexpired fart ofthe term of the original patent. No new matter shall be introduced into the application for relssue. 35 U.S.C. $ 251(a). II, PROCEDURALHISTORY. On May 1,2013,Mr. Golden ("Plaintiff') filed a Complaint in the United States Court of Federal Claims alleging that the Govemment infringed the '990 Patent, based on three solicitations published by the United States Deparhnent of Homeland Security (.'DHS") seeking to develop technology for sensing biological and chemical substances. Compl. at 1-2. The Complaint alleges that the DHS solicitations directly infringed, inftinged under the doctrine of equivalents, or infringed by inducement claims 11, 74 and 8l ofthe '990 Patent. Compl,at3. On August 15, 2013, Plaintiff frled a "Notice of Supplement" that the court considers an Amended Complaint. ECF No. 6. On September 5,2013, the Governrnent filed a Motion For A More Definite Statement, pursuant to Rule of the United States Court of Federal Claims ("RCFC") 12(e), requesting that Plaintiff further amend the May 1, 2013 Complaint to incorporate numbered paragraphs, enumerate with particularity the Govemment devices or processes that allegedly infringe Plaintiffs patents, and identifu the party in interest. ECF No. 9. On September 20,2013, Plaintiff filed: a Motion To Strike (ECF No. 10); a Motion To Amend Complaint (ECF No. 11); a Motion To Supplement Complaint @CF No. 14); a Response to the september 5,2013 Motion For A More Definite statement @cF No. 12); and a Motion For Summary Judgment (ECF No. 13). on october 15,2013, Plaintiff filed a second Response to the september 5, 2013 Motion For A More Definite Statement that the court considers a Second Amended Complaint. The October 15, 2013 Second Amended Complaint advised the court that Plaintiff is iepresentine himself, not the company ATPG Technology. ECF No. 20. On October 21,2013, the court ganted the September lO, 2013 Motion For A More Definite statement, because t}'e May l, 2013 complaint, the August 15, 2013 Amended complaint, and the october 15,2013 Second Amended complaint were so vague and ambiguous that the Govemment could not prepare an informed Answer. ECF No. ihat same day, the Govemment filed a Response To Plaintiff s Motion For Summary Judgment. ECF No. 22. zt. On November 22,2013, Plaintiff filed a More Definite Statement. ECF No. 24. on December 20, 2013, the court denied plaintiffs September 20, 2013 Motion For Summary Judgment, without prejudice, because the Govemment had not filed an Answer. ECF No. 28. on December 30, 2013, Plaintifffiled a Motion To Amend And Supplement pleadings The More Definite Statement, pusuant to RCFC 15(a)(2). ECF No. 29. of on January r0,2014, the Govemment filed an Answer to the December 30. 2013 Motion To Amend Pleadings. ECF No. 30. The Govemment treated the December 30,2013 Motion To Amend Pleadings as filed by leave of court and, therefore, superseding plaintifps November 22, 2013 More Definite Statement. ECFNo.30 atn.1. On February 7, 2014, the court granted the December 30, 2013 Motion to Amend Pleadings and ordered the parties to treat that motion as a Third Amended Complaint, superseding all prior complaints submitted by Plaintiff. ECF No. 32. On April 30,2014, DHS filed a petition for inter pdrtes review ("lPP|') of the '990 Patent before the USPTO Patent Trial and Appeal Board ("PTAB"). On May 28,2014, Mr. Ha Kung Wong informed the court that he was counsel of record for Plaintiff (ECF No. 42) but, on September 12,2014, he withdrew (ECF Nos. 49, 50). On October 8, 2014, the PTAB filed a Decision To lnstitute IPR of claims 11, 74, and 81 of the '990 Patent. See Department of Homeland Security v. Golden, IPR2014-00714,2014 WL 6999625, at " 1 (P.T.A.B. Oct. 8, 2014). With the exception of a sixty-day stay for Plaintiff to seek legal representation, the court did not stay this case while PTAB proceedings were ongoing. The court, however, did not take any substantive action during those proceedings. On October 1,2015, the PTAB issued a final decision "grant[ing] Patent Owner's Motion to Amend . . . claims 11,74, and 81 of the '990 Patent, and den[ying] the Motion to Amend . . . claims 154-156." See Department of Homeland Security v. Golden, IPR2014-00714, 2015 WL 5818910, at *17 (P.T.A.B. Oct. 1, 2015). On November 17,2015, the pTAB denied plaintifps request for rehearing. see Depqrtment of Homeland securily v. Golden,lpR20l4-00714, 2015 WL 10381775 (P.T.A.B. Nov. 17,2015). On December 22, 2015, the court convened a telephone status conference to discuss how the case should proceed in light of the PTAB's final decision. on December 23,2015, the court granted Plaintiff leave to file anotler amended complaint. ECF No. 65. on February 12, 2016, Plaintiff filed a Fourth Amended complaint ("2/12/16 Am. compl.") alleging that, the Govemment: (1) was liable for the infringement of plaintifls '497, '752,'891, '990, and '189 Patents under 28 u.s.c g 1498(a); and (2) violated the Fifth Amendment of the United States Constitution by taking plaintiffs ,497,,033,'752,'761, '290, ,g91, ,990, 'l89Patentsandrelated'2T3Application,withoutjustcompensation.2/12/16Am.compl.atflfl 68-127. The February 12, 2016 Amended complaint identifies over thirfy devices that were developed or procured, as a result of Govemment solicitations, Govemment contracts. or National Science Foundation ("NSF") gy.arlts.4 2/12/16 Am. compl. atflf,6g-127 . These devices allegedly * The relevant devices. are: M-Lock; High-power Electomagnetic System (..HpEMS',); Smartphone Microscope; Biophone; Smartphone Biosensor cradle; iFhone Biodetector smartphone; Pathtracker; the center of Integrated Nanomechanical Systems (,.coINS') NanoEmbedded sensors; Smartphone-Based Rapid Diagnostic Tests; Lockheea uu.tin K-Max Unmarured self-flying Helicopter; Boeing MH-6 Little Bird Helicopter; sIN-vApoR I Smartphone system; samsung Galaxy s6 Microscope Smartphone; vockef System; Nett warrior Smartphone System; Northrop Grumman x-47B ucAS r x-478 control Display unit; GammaPix; NFC Samsung Galaxy s6 smartphone Sensor; cell-All Synkera Iltinorera ultra: infringe claims in Plaintiff s '497,'752,'891,'990, and'189 Patents. 2112116 Am' Compl. at flfl 68-127. On April 8,2016, the Govemment filed an Answer to the February 12,2016 Amended Complaint. ECF No. 74. On June 3,2016, Plaintiff filed a Motion For Summary Judgment [On] Validity and, on June 8, 2016, Plaintiff filed a Motion For Entry Of Estimated Damages And Accounting Report. On June L0,2016 the court convened a telephone status conference. OnJune 13,2016, based on the arguments raised during the status conference, the court ordered that the Govemment file a Motion To Dismiss, and stayed the June 3, 2016 Motion For Summary Judgment and June 8, 2016 Motion For Entry Of Estimated Damages And Accounting Report. ECF No. 85. On June 24,2016, tle Govemment filed a Motion To Dismiss Certain Accused Devices ("Gov't Mot."). On July 5, 2016 Plaintiff frled a Response ("P1. Resp."). On July 18, 2016, the Government filed a Reply ("Gov't Reply"). UI. STANDARD OFRXVIEW. A. Standing. Federal trial courts have been advised to "decide standing questions at the outset of a case. That order ofdecision (firstjurisdiction then the merits) helps better to restrict the use ofthe federal courts to those adversarial disputes that Article III defines as the federal judiciary's business." Steel Co. v. Citizensfor a Better Env't,523 U.S. 83, 111 (1998) (Breyer, J., concurring). The parfy invoking federal jurisdiction has the burden ofproofto satisfy the constitutional requirements of Article III standing. See FWPBS, Inc. v. Dallas,493U.5.215,23l (1990) (holding that the burden is on the party seeking to exercise jurisdiction to clearly allege facts sufficient to establish jurisdiction). "A patentee shall have remedy by civil action for infringement of his patent." 35 U.S.C. $ 281; see a/so 35 U.S.C. $ 100(d) ("The word 'patentee' includes not only the patentee to whom the patent was issued but also the successors in title to the patentee."); Paradise Creations, Inc. v. sales, lnc.,315 F.3d 1304, 1308 (Fed. cir. 2003) ("[T]his court has determined that in order to assert standing for patent infringement, the plaintiff must demonstrate that it held enforceable titie to the patent at the inception of the lawsuit.") (emphasis in original). w Biotouch System; iPhone Biodetector Smartphone; Navy Marine Corps Intranet; FLIR identiFINDER R300; Aoptix stratus MX Peripheral; MultiRae Pro wireless portable Multi Threat Radiation and chemical Detector; PositivelD's M-BAND; positivelD's Firefly DX;1,'x2', Detection Device Samsung Galaxy s6 smartphone; 2"x2" Detection Device Samsung Galaxy s6 smartphone; NetS2 Smartshield G300 Radiation Detector Samsung Galaxy s6 Smartphone; NetS2 SmartShield G500 Radiation Detector samsung Galaxy s6 Smartphone; and the passport systems Base control unit; oshkosh Defense Autonomous Unmanned Ground vehicle TerraMax; and the Variable NODE+Oxa. 2/72/76 Am. Compl. at,lffl 68-127. The standard set forth by the United states supreme court over a century ago in watetman v. MacKenzie, 138 U.S. 252 (1891) still govems: There can be no doubt that he is "the party interested, either as patentee, assignee, or grantee," and as such entitled to maintain an action at law to recover damages for an infringement; and it carurot have been the intention of [C]on$ess that a suit in equity against an infringer to obtain an injunction and an account of profits, in which the court is authorized to award damages, when necessary to fully compensate the plaintifi and has the same power to treble the damages as in an action at law, should not be brought by the same person. Id. at 260-6I (intemal citations omitted). Plaintiffis the sole owner of the'497 ,'033, '752,"761,'280,'891,'990,and'189Patents.2/12/16An,.Compl.attffl6-7. Therefore,Plaintiff has standing to seek an adjudication of the claims alleged in the February 12, 2016 Amended The February 12,2016 Complaint alleges that Complaint. B. Jurisdiction. The United States Court ofFederal Claims has jurisdiction to adjudicate ciaims alleging. fthat] an invention described in and covered by a patent ofthe United States is used or manufactured by or for the United States without license ofthe owner thereof or lawful right to use or manufacture the same . . . [seeking] recovery of. . . reasonable and entire compensation for such use and manufacture. [T]he use or manufacture of [a patenred] invention by a contractor, a subconiractor, or any person, firm, or corporation /or the Government and with the authorization or consent ofthe Government, shall be construed as use or manufacture for the United States. 28 U.S.C. $ 1498(a) (emphasis added). Infringing activity is "for the Govemment" under section 1498(a) if it is "for the benefit of the Govemment." Advanced Software Design Corp. v. Federal Reserve Bank of St. Louis, 583 F.3d 1371, 1378 (Fed. Cir.2009); see also Madeyv Duke University,4l3 F. Supp.2d,601,607 (M.D.N.C. 2006) ("A use is 'for the Govemment' if it is 'in furtherance and fulfillment of a stated Govemment policy' which serves the Government's interests and which is 'for the Govemment's benefit."' (quoting Riles v. Amerada Hess, Corp.,999 F. Supp. 938,940 (S.D. Tex. 1998)). In Hughes Aircraft Co. v. United States, 534 F.2d 889 (197 6), for example, the court held that a satellite program to advance the military defense and security of the United States was "for the Govemment." Id. at898. Moreover, "authorization or consent of the Govemment," does not need to be expressly stated. See TVI Energt Corp. v. Blane,806 F.2d 1057, 1060(Fed. Cir. 1986) ("[a]uthorizarion or consent by the Govemment can be express [or] [i]n proper circumstances, Government authorization can be implied."). Indeed, "authorization or consent . . . may be glven m many ways other than by . . . direct form of communication--e.g., by contracting offrcer instructions, [or] by specifications . . . which impliedly sanction and necessitate infringement[.]" Hughes Aircraft co, 534 F.2d at 901. The February 12,2016 Amended Complaint alleges that various nongovemment entities, including a number ofcorporations and public research universities, infringed the '497,'033,'752, '761,'280, '891,'990, and'189 Patents. Whether the court has jurisdiction over those claims is the subject of this Memorandum Opinion And Order. C. Standard Of Review For Pro ^Se Litigants. Pro se plaintiffs' pleadings are held to a less stringent standard than those of litigants represented by counsel. See Haines v. Kerner,404 U.S. 519, 520 (1972) (holding that pro se complaints, "however inartfully pleaded," are held to "1ess shingent standards than formal pleadings drafted by lawyers"). The United States Court ofFederal Claims traditionally examines the record "to see if la pro sel plaintiff has a cause of action somewhere displayed." Ruderer v. United States,4I2F.2d, 1285,1292 (Ct. Cl. 1969). Nevertheless, while the court may excuse ambiguities inapro se plaintifPs complaint, the court "does not excuse [a complaint's] failures." Henke v. United gtates,60F.3d795,799 (Fed. Cir. 1995). ("The fact that [the plaintiff] acted pro se in the drafting ofhis complaint may explain its ambiguities, but it does not excuse its failures, if such there be."). Apro plaintiff, however, is not excused from his burden ofproving, by a preponderance of the evidence, that the court possesses jurisdiction. See McNutt v. Gen. Motors Acceptance Corp.,298 U.S. 178, 189 (1936) ("[The plaintiff] must allege in his pleading the facts essential to show jurisdiction."); see also Reynolds v. Army & Air Force Exch. Serv., 846F.2d746,748 (Fed. Cir. 1988) (fThe pro se plaintiffl bears the burden of establishing subject matter jurisdiction by a preponderance of the evidence."). The plaintiff cannot rely solely on aliegations in the complaint, but must bring forth relevant, adequate proofto establish jurisdiction. See Reynolds,846 F.3d at 748 ("Ilt was incumbent upon [the pro se plaintiff] to come forward with evidence establishing the court's jurisdiction."). D. se Standard Of Review For A Motion To Dismiss, Pursuant To RCFC l2(bxl). A challenge to the United States Court of Federal Claims' "general power to adjudicate in specific areas of substantive law . . . is properly raised by a [Rule] 12(b)(1) motion;' Palmer 1). united stat$, 168 F.3d 1310, 1313 (Fed. cir. 1999); see also RCFC l2(b)(l) (allowing a party to assert, by motion, "lack of subject-matter jurisdiction"). When considering a motion to dismiss for lack of subject-matter jurisdiction, the court must take the facts alleged in the complaint as true. See Erickson v. Pardus,55l U.S. 89,93-94 (2007). The court may consider evidence beyond the pleadings, however, when the motion to dismiss challenges the jurisdictional facts alleged in the complaint. See Moyer v. US., 190 F.3d 1314, 1318 (Fed. Cir. 1999). If the court determines that it does not have subject-matter jurisdiction, the court must dismiss the complaint. See RCFC 12(bX1). E. Standard of Review For Motion To Dismiss, Pursuant To RC['C 12(bX6)' A claim is subject to dismissal under RCFC 12(bX6), if it does not provide a basis for the courr to grant relief. see Bell Atl. corp. v. Twombl/, 550 u.s. 544, 555-56 (2007) ("[A wellpleaded complaint] requires more than labels and conclusions, and a formulaic recitation of the ofa cause of action will not do. Factual allegations must be enough to raise a right of "I"-".rtr the speculative level, on the assumption that all the allegations in the complaint are relief above true (even if doubtfirl in fact)." (intemal citations omitted)); see also Lindsay v. united states,295 F.3d 1252, 1257 (F ed.Cit.2002) ("A motion to dismiss . . . for failure to state a claim upon which reliefcan be granted is appropriate when the facts asserted by the claimant do not entitle him to a legal remedy."). A complaint must "contain suffrcient factual matter, accepted as true, to 'state a claim to reliefthat is plausible on its face."' Ashcrofi v. lqba|,556U.5.662,679 (2009) (qtotingTwombly, 550 U.S. at 570). The allegations contained in a complaint also must indicate to the court that there is "more than a sheer possibility that a defendant has acted unlawfully. Id. "Tbreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." 1d. To determine whether a complaint states a plausible claim for relief, a court must judicial experience and common sense." 1d. at 678-:79. The court, however, must construe the allegations of the complaint in the light most favorable to the plaintiff. See Henke v. UnitedStates,60F.3d795,797 (Fed. Cir.1995). engage in a context-specific analysis and "draw on its IV. DISCUSSION. A. The Government's June 24,2016 Motion To Dismiss The February 12,2016 Amended Complaint's M-Lock And HPEMS Claims, Pursuant To RCFC 12(b)(6). 1. The Government's Argument. The Government argues that, under section 1498(a), a patent owner can sue the United States for patent infringement only if the United States, a contractor, a subconhactor, a person, or a corporation uses or manufactures the patented invention (1) for the Govemment and (2) with the authorization or consent of the Govemment. Gov't Mot. at 3. The February 12,2016 Amended Complaint alleges that iControl, Inc. ("iControl"), a Govemment contactor, used and manufactwed a device called M-Lock that ffiinged Plaintiff s '752 md '990 Patents. Gov't Mot. at 3. The Amended Complaint, however, fails to allege sufficient facts to establish that the Govemment was directly involved in the manufacture or use of M-Lock or that t}te device was manufactured for the benefit of the Govemment. Gov't Mot. at 4. Similarly, the February 12, 2016 Amended Complaint alleges that Eureka Aerospace, another Government contractor, used and manufactured a device called the High-Powered Electromagnetic System ("HPEMS") that infringed Plaintiff s '891 Patent. Gov't Mot. at 4. Plaintiff alleges that the United States Air Force ("USAF") issued a request related to IIPEMS ard that the United States Marines ("Marines") are a potential customer of the device, but otherwise fails to allege any manufacture or use "by or for the Govemment." Gov't Mot. at 4. Accordhgly, the February 12,2016 Amended complaint's M-Lock and HPEMS claims do not assert sufficient facts to entitle Plaintiffto a remedy under section 1498(a). Gov't Mot. at 4. Those claims should therefore be dismissed, pursuant to RCFC 12(bX6). Gov',t Mot. at 4. 2. Plaintiff s Response' Plaintiffargues that the Govemment's manufacture or use of an infringing device generally results from procurement contracts. Pl. Resp. at 6. Moreover, when purchasing goods and services from a contractor, the Government seeks to acquire the best product without delay and "will not refuse to award a contract on the grounds that the prospective contactor may infringe a patent." Pl. Resp. at 6 (quoting 48 C.F.R. 27 .l02bD. Plaintiff does not explicitly apply these ruies to the facts alleged in the February 12,2016 Amended complaint. Bu! his argument appears to be that the existence of a contract between the Govemment and iControl and Eureka Aerospace for the development of infringing devices supports a reasonable inference that the manufacture and use of the devices was "for the Govemment" and "with the authorization and consent of the Government." 28 U.S.C. $ 1498(a). 3. The Government's RePlY. The Government replies that Plaintiff did not address "[the Amended Complaint's] failue to state with particularity a cause of action for which reliefcan be granted relating to the M-l.ock Device or the [HPEMS]." Gov't Reply at 2' 4. The Court's Resolution. a. The Government's June 24' 20!6 Motion To Dismiss The February 12, 2016 Amended Complaint's M-Lock Claims, Pursuant To RCFC 12(bX6)' Is Denied. The Govemment argues that the M-Lock claims should be dismissed, pursuant to RCFC 12(bX6), because the February 12,2016 Amended complaint does not allege that M-Lock was manufactured for the benefit of the Govemment. Gov't Mot. aI4. The court disaglees. viewed in the light most favorable to Plaintiff, the February 12,2016 Amended complaint alleges sufficient facts to raise a plausible right of relief rurder section 1498(a). See Iqbal' 556 IJ .5. at 677 . "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. at 678. The February 12,2016 Amended Complaint alleges that DHS, a federal agency, contracted with iControl "for the development[,] commercialization [and purchase] of . . . MLock," an automated locking device that contains "a movement sensor, a tempelature sensot, a humidity sensor, an infrared sensor, a radioactivity detection sensor, an acoustic sensor, [and/or] a chemical detection sensor;' 211212016 Am. Compl. nn74-'15. The February 12,2016 Amended complaint alleges that M-Lock infringes several claims of Plaintiff s '752 md '990 Patents, disclosing inventions that that automatically detect chemical, biological, and radiological agents so that tenorist activity can be prevented. See 2112/16 Am. Compl. Ex. D at 16; see also 2 112116 Am. Compl. Ex. H at 17. And the February 12, 2016 Amended Complaint alleges that the infringing device is being used and manufactured without license or legal right. 211212016 AmCompl. fl 75. Based on the alleged facts, the court can reasonably infer that iControl is a governrnent contractor and that the manufacture and use of M-Lock was "for tlle benefit of [DHS]." see Advanced Software Design Corp.,583 F.3d at 1378. In light ofthe allsgation that the inventions disclosed in patents '752 and '990 were designed to prevent terrorist activity, it is plausible that iConhol manufactured an infringing device for the benefit ofDHS to promote national security' see, e.g., Hughes Aircraft Co.,534 F.2d at 898 (finding that the government's participation in a satelG progiam was "for the Government," because the program was vital to the military defense and security ofthe United States). Moreover, under section 1498(a), "Government authorization or consent" can be implied by circumstances . See TVI Energt Corp , 806 F.2d at 1060' In this case, the February 12,2016 Amended Complaint alleges that DHS contracted with iControl to develop and commercialize M-Lock. This contractual relationship supports a reasonable inference that the Govemment authorized the manufacture and use of the infringing device. b. The Government's June 24, 2016 Motion To Dismiss The February 12, 2016 Amended Complaint's HPEMS Claims, Pursuant To RCf'C 12(bX6), Is Denied' The Govemment also argues that the February 12,20t6 Amended complaint's HPEMS claims should be dismissed, because they do not allege that Eureka Aerospace manufactured or used the HPEMS "for the Govemment." Gov't Mot. at 4. Again, the court does not agree with the Govemment's contention. The February 12, 2016 Amended Complaint alleges that "as a result of [] contracts with [USAF] . . . for the development and commercialization of the Eureka Aerospace HPEMS, tle United states has used, authorized the use, and manufactured, without license or legai right, to Plaintiff s inventions [disclosed in patent'891]." 2112116 Am. lompl. fl 87. The HPEMS is a device that shoots an electromagnetic pulse so that vehicles can be disabled, without using firearrns. ,See 2112116 Arn Compl fl 86. In light of these allegations, the court can reasonably infer that Eureka Aerospace's manufacture and use of the HPEMS advances the military defense and security of the United States and is thus..for the benefit of the Govemment." see, e.g., Hughes Airoaft co.,534 F.2d at 898. Moreover, construed in the light most favorable to Plaintiff, the February 12,2016 Amended Complaint alleges that USAF contracted with Eureka Aerospace to develop and commercialize tn" fipgntS-*fficient facts to support a reasonable inference that USAF implicitly authorized the manufacture and use ofthe infringing device. See TVI Energy Corp.,806 F.2d at 1060.5 5 While the February 12, 2016 Amended Complaint does not clearly state whether USAF issued a solicitation for the HPEMS or awarded Eureka Aerospace a contract to develop that device, the court must interpret a complaint in the iight most favorable to the plaintiff, when ruling on a motion to dismiss, pursuant to 12(bx6). see Henke,60 F.3d at 797. Therefore, the court reads the February 12, 2016 Amended Complaint to allege that the Govemment awarded Eureka Aerospace a contract to develop and commercialize the HPEMS' 10 For these reasons, the court denies the Govemment June24,20l6 Motion To Dismiss the February 12, 2016 Amended complaint's M-Lock and HPEMS claims, pursuant to RCFC 12(b)(6). B. The Government's June 24,2016 Motion To Dismiss The February 12' 2016 Amended Complaint's National Science Foundation Clairns, Pursuant To RcFc u(b)(l) and 12(b)(6). 1. The Government's Argurnent. The Govemment contends that, under section 1498(a), "merely funding an activity does not establish the Govemment's authorization and consent [to manufacture or use an infringing The February 12, 2016 Amended complaint alleges that the devicel.,' Gov,t Mot. at Govemment funded the development of multiple infringing devices through a series of NSF grants (,NSF claims"), but does not allege any other facts 1o establish the Government's authorization or consent to the manufacture oruse ofthose devices.6 Gov'tMot. at 5. Moreover' the February 12, 2016 Amended Complaint does not allege that the NSF-funded devices were used or manufactured "by or for the Government." Gov't Mot. at 5. Therefore, the February 12' 2016 Amended Complaint's NSF claims should be dismissed for failure to state a claim upon which relief can be granted. Gov't Mot. at 5. 5. The Govemment also argues-without additional explanation-that the court should dismiss the NSF ciaims for lack of subject matter jurisdiction' Gov't Mot. at 5. 2. Plaintiff s Response. Plaintiff responds that "[g]rant related agreements [are] contracts within Tucker Act jurisdiction when all the requisite elements of a contract were present, including a government representative with actual authority to bind the govemment in contract." Pl. Resp. at 7 (quoting Pennsylvania Dep't ofPub. llelfare v. United States,48 Fed. Cl. 785,790 (2001) ("[g]rant related agreements have been held to be contracts within Tucker Act jurisdiction when all the requisite elements of a contract were present, including a govemment representative with actual authority to bind the goverffnent in contract.")). The February 1.2,2016 Amended Complaint's NSF claims facially involve grant related agreements. Pl. Resp. at 8-9. Therefore, the United States Court of Federal Claims has jurisdiction, under the Tucker Act, to adjudicate those claims. Pl. Resp. at 8. Plaintiff also argues that the Govemment's award of NSF grants for the development of infringing devices supports a reasonable inference that the manufacture and use ofthose devices was "for the Government" and "with the authorization and consent of the Govemment." Pl. Resp. at I 0-l 1. The accused devices are: the Smartphone Microscope, Gov't Mot. at 5; Biophone, Gov't Mot. at 6; Smartphone Biosensor "Cradle", Gov't Mot. at 6; iPhone Biodetector Smartphone, Gov't Mot. at 7; Pathtracker, Gov't Mot. at 7; COINS, Gov't Mot. at 8; and Smartphone-Based Rapid Diagnostic Test Devices, Gov't Mot. at 8. 6 1i 3. The Government's RePlY. The Govemment concedes that NSF Research Grant Awards may be treated as contacts to establish jurisdiction under the Tucker Act, but argues that the existence of a contract is not sufficient to establish liability under section 1498(a). Gov't Reply at2. Section 1498(a) allows a patent holder to sue the Government only if the infringing manufacture or use of the relevant invention was "for the Govemment" and "with the authorization or consent of the Govemment " Some courts have found that the terms ofaNSF grant can satisfy section 1498(a). Gov't Reply at 2 (citing McMullen Assoc., Inc. v. State Bd. Of Higher Ed.,268 F. Supp. 735 (D Or' 1967))' The gants ;t issue in those cases, however, reserved property rights in the infiinging device to the Govemment. Gov't Reply at 2. The Febru ary 12,2016 Amended complaint does not allege that the Govemment retained a property right in any ofthe accused devices and fails to allege any other facts that could plausibly establish that the manufacture or use ofthe patented invention was "for the Govemmenti'and "with the authorization or consent of the Govemment." Gov't Reply at 23. 4. The Court's Resolution. a, The June 24,2016 Motion To Dismiss The X'ebruary 12,2016 Amended Complaint's National Science Foundation Claims, Pursuant To RCFC 12(b)(1)' Is Denied. Under the Tucker Act, the United States Court of Federal Claims has jurisdiction to adjudicate a claim if the statute, regulation, or constitutional provision that is the basis for that claim "can fairly be interpreted as mandating compensation by the Federal Govemment for the damage sustaine d,,' united states v. Mitchell,463 rJ.s.206,217 (1983), and the plaintiff is "within the class of plaintiffs entitled to recover under the statute if the elements of [the] cause of action are established," Greenlee County, Arizona v. (Inited States,487 F.3d 871,876 (Fed. Cir. 2007). "There is no firther jurisdictional requirement that plaintiff make [] additional nonfrivolous allegation[s] that [he] is entitled to relief under the relevant money-mandating source." .,rdn 's Helicopter Serv., Inc. v. Federal Aviation Agency. 525 F.3d 1299,1307 (Fed. Cir. 2008). Instead, "the consequence ofa ruling by the court . . . that plaintiff s case does not fit within the scope of the [money-mandating] source . . . is simply fthat] plaintiff loses on the merits for failing to state a claim on which relief can be granted." Fisher v. United States,402F.3d116'7,1I75-76 (Fed. Cir.2005). Here, the February 12, 2016 Amended Complaint's NSF claims are based on section 1a98(a), a statute that is money-mandating on its face' See 28 U.S.C. $ 1498(a) ("Whenever an invention described in and covered by a patent ofthe United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.") (emphasis added). Furthermore, Plaintiffis the owner of the United States patents asserted in this case and is therefore entitled to recover under section 1498(a). See 28 U.S.C. $ 1498(a). 12 Accordingly, the court has jurisdiction to adjudicate the February 12,20t6 Amended complaint's NSF claims. The Government's June 24, 2016 Motion To Dismiss, pursuant to 12(bX1), is denied. b. The June 24,2016 Motion To Dismiss The February 12,2016 Amended Complaint's National Science Foundation Claims, Pursuant To RCF'C 12(bX6), Is Denied. The February 12,2016 Amended Complaint's NSF claims allege sufficient facts to support a reasonable inference that the manufacture and use of the accused devices was "for the Govemment." see lqbat,556 U.S. at 678. The NSF claims allege that the Govemment awarded research grants to develop portable devices that can: (1) identify dangerous chemical, radiological, and bacte;ial agents; and (2) track the spread of disease.T Based on the alleged facts, it is plausible that the accused devices were used to further the military defense, national security, and public health interests of the United States: policies that the Govemment has a fundamental interest in advancing. Accordingly, the court can reasonably infer that the use of the NSF-funded devices was ..for the Govemment;' see, e.g., Hughes Aircrafi co., 534 F.2d at 898 (finding that the govemment's participation in a satellite program was "for the Govemment," because the program was vital to the military defense and security ofthe United States); see also Madey,413 F. Supp. 2d at 607 (M.D.N.C. 2006) (explaining that a use is "for the Govemment" if it is in furtherance and fulfillment of a stated Govemment poiicy and for the Govemment's benefit). The February 12, 2016 Amended Complaint's NSF claims also allege suffrcient facts to plausibly establish that the use of the accused devices was "with the authorization or consent of the Government." Authorization or consent can be implied from the circumstances-"e.g., by contracting officer instructions, [or] specifications or drawings which impliedly sanction and necessitate infringement." Hughes Aircraft Co., 534 F.2d at 901. For example, in TVI Energt Corp., the United States Court of Appeals for the Federal Circuit held that the Government impliedly sanctioned the use of a patented invention when it issued a solicitation that required bidders to submit for inspection, and perform live demonstrations of, the accused device. See TVI Energy Corp.,806 F.2d at 1060. In this case, the relevant NSF grants anticipate that the awardees will develop and test the devices proposed in their applications. See, e.g., NSF Award No. 1444240 ('Annual and Final 7 The relevant NSF grants are being used to develop: "a portable smartphone attacbment that can be used to perform sophisticated field testing to detect viruses and bacteria," 2112116 Am. Compl. tl78; "[a device] that derives biological signals from your smartphone's acceierometer . . . [and] [t]his informalion is useful to base medical diagnoses in rcal-life conditions and to help track chronic health conditions and effects of therapeutic interventions," 2/12/16 Am' Compl. fl80; "a cradle and app for the iPhone to make a handheld biosensor that uses the phone's own camera and processing power to detect any kind of biological molecules or cells," 2112116 An'. Compl. !f92; a handheld instrument to help contain the spread of Ebola, Hlv, Tuberculosis, andMalaia,2ll2/16 Am. Compl. '1f 102; "[a portable device for] real-time detection of explosives, toxicants, and radiation," 2112/16 Am. Compl. lfl22; "highly sensitive rapid medical diagnostic tests," 2112/16 Am. Compl. fl126. IJ project reports, as required in the NSF Grant Conditions, should document all efforts and outcomes, whether or not they are successful."). Govemment funding of research that will lead to the development and testing of an accused device supports a reasonable inference that the Govemment impliedly sanctioned infringing activity. v. coNcLUsIoN. For the reasons discussed herein, the Govemment's Jlur:.e 24,2016 Motion To Dismiss Certain Devices, pursuant to RCFC 12(bX1) and 12(b)(6), is denied. Plaintiff, however, is cautioned that the court's ruling today is based on the standard of review on sufficiency ofthe pleading alone and is not to be construed as a ruling on the substantive merits of the patent infringement claims alleged in the February 12, 2016 Amended Complaint. The court will convene a telephone status conference in the next few days to discuss a schedule to move this case towards adiudication. IT IS SO ORDERED. An \At ' J--- .''...........................|SUSAN G/BRADEN Judge 14
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