Patents

• Author: International Law Group
• Pages: 74-75

Page 74

The U.S. government contracted with Lockheed Martin Corporation (Lockheed) to design and build the F-22 fighter. Lockheed subcontracted for two types of silicide fiber products, (1) a preimpregnated material made from Nicalon Silicon carbide fibers, and (2) silicide fiber made from Tyranno fibers. A factory in Japan partially carbonizes the Nicalon silicon carbide fibers and makes it into sheets which it then imports into the U.S. The Japanese are the sole makers of the raw Tyranno fibers but a U.S. company locally turns them into silicide fiber mats.

The Zoltek Corporation (plaintiff) is the assignee of U.S. Reissue Patent No. 34, 162 (the Re '162 patent). The patent claims certain methods of manufacturing carbon fiber sheets with controlled surface electrical resistivity. Plaintiff brought suit against the U.S. in the Court of Federal Claims under ß 1498(a), alleging that the U.S. and Lockheed used the methods claimed in the Re '162 patent for the F-22 without paying the owner thereof.

Section 1498 (a) states, in relevant part: "Whenever an invention described in and covered by a patent of the United States is used . . . 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. . . ."

The government moved for partial summary judgment. It contended that 28 U.S.C. ß1498(c)(2000) barred plaintiff's ß1498(a) claims because they arose in Japan. Section 1498(c) limits the scope of claims under ß1498(a) by disallowing "claim[s] arising in a foreign country". The trial court denied the motion. Though it agreed that ß1498(c) did block plaintiff's claims under ß1498(a), the court directed plaintiff to amend its complaint to allege an uncompensated taking under the Fifth Amendment.

Both sides sought permission to lodge an interlocutory appeal. The U.S. Court of Appeals for the Federal Circuit accepts the appeals. The Court affirms the trial court's ruling that ß 1498(a) does preclude the infringement allegations On the other hand, it reverses and remands because the lower court had erred in holding that plaintiff could allege patent infringement as a Fifth Amendment taking.

As a sovereign, the federal government is ordinarily immune from any legal action though Congress can waive this...