Case: 19-2360    Document: 47     Page: 1   Filed: 08/03/2020




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

                    FASTSHIP, LLC,
                    Plaintiff-Appellee

                             v.

                    UNITED STATES,
                   Defendant-Appellant
                  ______________________

                        2019-2360
                  ______________________

     Appeal from the United States Court of Federal Claims
 in No. 1:12-cv-00484-CFL, Senior Judge Charles F. Lettow.
                   ______________________

                 Decided: August 3, 2020
                 ______________________

    MARK LEE HOGGE, Dentons US LLP, Washington, DC,
 argued for plaintiff-appellee. Also represented by RAJESH
 CHARLES NORONHA; DONALD EDWARD STOUT, Fitch, Even,
 Tabin & Flannery LLC, Washington, DC.

     SCOTT DAVID BOLDEN, Commercial Litigation Branch,
 Civil Division, United States Department of Justice, Wash-
 ington, DC, argued for defendant-appellant. Also repre-
 sented by ETHAN P. DAVIS, GARY LEE HAUSKEN; ANDREW
 PAUL ZAGER, United States Navy, Arlington, VA.
                   ______________________

     Before DYK, WALLACH, and CHEN, Circuit Judges.
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 2                              FASTSHIP, LLC   v. UNITED STATES



 DYK, Circuit Judge.
     The United States appeals an order of the Court of Fed-
 eral Claims (“Claims Court”) granting a request by Fast-
 Ship, LLC (“FastShip”) for attorney’s fees and expenses.
 Because the Claims Court erred in considering the govern-
 ment’s pre-litigation conduct and in one respect erred in its
 analysis of the government’s litigation conduct, we vacate
 and remand.
                         BACKGROUND
     FastShip is the assignee of two patents, United States
 Patent Nos. 5,080,032 (“the ’032 patent”) and 5,231,946
 (“the ’946 patent”). The patented ship designs “allow a
 large ship to travel at high speeds, despite difficult weather
 and sea conditions,” J.A. 2, by “increas[ing] efficiency of the
 hull,” J.A. 126.
     In the early 2000s, the Navy began a program to design
 and build littoral combat ships (“LCS”) that would achieve
 high speeds. Littoral combat ships “are highly maneuver-
 able vessels designed for operations both in ocean waters
 and near shore.” J.A. 1 n.1. The Navy issued a request for
 proposals in 2003. During the initial phase of the LCS pro-
 curement, FastShip met with and discussed a potential
 hull design with two government contractors subject to
 non-disclosure and confidentiality agreements, apparently
 with the goal of becoming part of the design team. Ulti-
 mately, however, FastShip was not awarded a contract or
 a sub-contract.
      In 2008, FastShip filed an administrative claim with
 the Navy “contending that the LCS program [specifically,
 the LCS-1 and LCS-3 ships] infringed upon [its] patents.”
 J.A. 3. When the claim was denied by the Navy, FastShip
 filed a complaint with the Claims Court on August 2, 2012,
 seeking reasonable royalty damages for infringement pur-
 suant to 28 U.S.C. § 1498(a). The government denied in-
 fringement and argued that the patent was invalid as
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 FASTSHIP, LLC   v. UNITED STATES                           3



 obvious. After a 10-day trial, the Claims Court “found that
 the claims from the ’032 and ’946 patents were valid and
 directly infringed by the government in its construction of
 the LCS-1 [ship].” J.A. 3. The Claims Court also found
 that the accused LCS-3 ship was not ‘‘manufactured’’ by or
 for the government within the meaning of § 1498 before the
 patents in suit expired. We affirmed that decision in Fast-
 Ship, LLC v. United States, 892 F.3d 1298 (Fed. Cir. 2018)
 (FastShip I).
      Subsequently, FastShip filed a motion for attorney’s
 fees and expenses pursuant to 28 U.S.C. § 1498(a). The
 statute provides for a fee award to smaller entities that
 have prevailed on infringement claims, unless the govern-
 ment can show that its position was “substantially justi-
 fied.” 28 U.S.C. § 1498(a). The government opposed a fee
 award on the ground that its positions were substantially
 justified. After a hearing, the Claims Court awarded fees,
 finding that the government’s pre-litigation conduct and
 positions taken during litigation were not “as a whole” sub-
 stantially justified “though it may have taken reasonable
 stances in some respects.” J.A. 18. As to the pre-litigation
 conduct, the Claims Court found it unreasonable for a gov-
 ernment contractor to gather information from FastShip
 about designing an LCS but not to include it as part of the
 team that was awarded the contract. The Claims Court
 also concluded that the Navy took an exceedingly long time
 to act on FastShip’s administrative claim and did not pro-
 vide sufficient analysis in denying the claim. As to the lit-
 igation conduct, the Claims Court found the government’s
 litigation positions unreasonable, including its arguments
 with respect to one document (Figure 11 of the patent spec-
 ifications), and its reliance on the testimony of its expert,
 Mr. Blount, to prove obviousness despite his “extraordi-
 nary skill.” J.A. 17. The Claims Court awarded FastShip
 $6,178,288.29 in attorney’s fees and related expenses. The
 government appeals. We have jurisdiction under 28 U.S.C.
 § 1295(a)(3).
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 4                             FASTSHIP, LLC   v. UNITED STATES



                         DISCUSSION
                               I
     We review the Claims Court’s statutory interpretation
 de novo. Quaker State Oil Refining Corp. v. United States,
 994 F.2d 824, 826–27 (Fed. Cir. 1993). We review the
 Claims Court’s determination of whether the government’s
 position was substantially justified for abuse of discretion.
 See Pierce v. Underwood, 487 U.S. 552, 558–59 (1988); Hit-
 kansut LLC v. United States, 958 F.3d 1162, 1166 (Fed. Cir.
 2020).
      Title 28, Section 1498 of the United States Code pro-
 vides that when the United States uses or manufactures a
 patented invention “without license . . . or lawful right,”
 the patent owner may bring suit to recover “reasonable and
 entire compensation for such use.” 28 U.S.C. § 1498(a).
 The statute states that when the patent owner prevails and
 is “an independent inventor, a nonprofit organization, or
 an entity that ha[s] no more than 500 employees,” the gov-
 ernment is liable to pay “reasonable and entire compensa-
 tion,” that shall include “reasonable fees for expert
 witnesses and attorneys.” Id. No award shall be made,
 however, “if the court finds that the position of the United
 States was substantially justified or that special circum-
 stances make an award unjust.” Id. The burden is on the
 government to establish that a position is substantially jus-
 tified. See Doty v. United States, 71 F.3d 384, 385 (Fed. Cir.
 1995) (providing that, in an Equal Access to Justice Act
 case, “[w]hen a party has prevailed in litigation against the
 government, the government bears the burden of establish-
 ing that its position was substantially justified”).
                               II
     The government first argues that the Claims Court
 erred in relying on the government’s pre-litigation conduct.
 We agree.
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      The Claims Court considered “all of the government’s
 conduct . . . when determining whether the position of the
 United States was ‘substantially justified.’” J.A. 15. Spe-
 cifically, the Claims Court focused on two pre-litigation
 events: (1) FastShip “not [being] included as a part of the
 team that eventually won and constructed the [infringing]
 LCS-1” despite its meeting with government contractors,
 “where information related to FastShip’s patents was
 shared and a confidentiality agreement was signed”; and
 (2) the Navy “s[i]t[ting] on [FastShip’s administrative]
 claim for . . . two years” and not including any analysis in
 its “short, two-page denial” of the claim. J.A. 16.
       Reliance on this pre-litigation conduct in the fee anal-
 ysis was error. We recently held in Hitkansut LLC v.
 United States, 958 F.3d 1162 (Fed. Cir. 2020), that “‘the po-
 sition of the United States’ as used in [28 U.S.C. § 1498(a)]
 refers to positions taken by the United States during liti-
 gation and does not encompass pre-litigation conduct by
 government actors.” Id. at 1165. Under Hitkansut, the
 conduct to be considered “does not include the act of in-
 fringement itself, [any] purported breach of contract, or
 any other underlying governmental actions.” Id. at 1169.
 Thus, it was error for the Claims Court to consider the gov-
 ernment’s actions during the procurement process and dur-
 ing the administrative proceeding, and the award of fees on
 that basis was an abuse of discretion. See Highmark Inc.
 v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 563 n.2
 (2014) (“A district court would necessarily abuse its discre-
 tion if it based its ruling on an erroneous view of the law
 . . . .” (quoting Cooter & Gell v. Hartmarx Corp., 496 U.S.
 384, 405 (1990))); Waymark Corp. v. Porta Sys. Corp., 334
 F.3d 1358, 1363 (Fed. Cir. 2003) (“[A] district court must
 be careful not to award sanctions based on a misunder-
 standing of the governing law, and we must carefully re-
 view an award of sanctions to ensure that this has not
 occurred.”).
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 6                             FASTSHIP, LLC   v. UNITED STATES



      Because the Claims Court erroneously based its deci-
 sion in large part on pre-litigation conduct and did not con-
 clude that the litigation conduct itself was sufficient for an
 award of fees, a remand is required. See Romag Fasteners,
 Inc. v. Fossil, Inc., 866 F.3d 1330, 1340, 1342 (Fed. Cir.
 2017) (remanding to the district court to “evaluate whether
 an award of fees is appropriate” “based on a correct analy-
 sis” where it “erred in declining to consider, in connection
 with its totality of circumstances analysis, [a party]’s ear-
 lier litigation misconduct”). This is not a case like Hit-
 kansut, where the Claims Court’s “analysis demonstrate[d]
 that the position of the United States was not substantially
 justified even under a correct definition of th[is] term.” 958
 F.3d at 1169.
     On remand, the Claims Court must consider whether
 the government’s litigation conduct alone, to the extent it
 was not substantially justified, was sufficient to justify a
 fee award.
                              III
     One further matter remains to be decided on this ap-
 peal. The government argues that, in considering the gov-
 ernment’s litigation conduct, the Claims Court also erred
 in two respects. First, in arguing that the government did
 not infringe, the government presented evidence that the
 accused LCS-1 did not “increase[] efficiency of the hull” as
 required by the claims. J.A. 10027–28. It argued that this
 claim limitation should be construed in view of Figure 11
 of the patent specification that was common to both pa-
 tents. Figure 11 plots the horsepower required by a pa-
 tented ship to reach a certain speed, as compared to a
 conventional frigate. The figure shows that the ship of the
 invention is more efficient (i.e., requires less power) to at-
 tain a given speed than a conventional ship. The parties
 differed as to whether Figure 11 used imperial or metric
 units, a difference that would affect the calculated effi-
 ciency of the accused ships. In the merits appeal, we
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 FASTSHIP, LLC   v. UNITED STATES                           7



 concluded that the “Court of Federal Claims . . . did not
 clearly err as a factual matter by reading Figure 11 as us-
 ing metric units.” FastShip I, 892 F.3d at 1309.
     The government argues that its use of imperial units
 for horsepower in Figure 11 to show non-infringement was
 reasonable. In its pre-trial contentions of law and fact, the
 government presented an annotated version of Figure 11,
 which plotted data for the accused ship, LCS-1, in imperial
 units, alongside the data from the invention and the con-
 ventional ship. “However, the [g]overnment did not sup-
 port its arguments regarding the units in Figure 11 with
 any evidence.” FastShip I, 892 F.3d at 1309. The specifi-
 cation does not state that Figure 11 uses imperial units.
     At trial, the inventor of the patents at issue testified
 that Figure 11 depicts “shaft horsepower in kilowatts”
 (metric units), J.A. 7053, and the government failed to re-
 but this testimony. The government nevertheless repro-
 duced the annotated Figure 11 with imperial units in its
 post-trial brief. In reply, FastShip explained that the gov-
 ernment erroneously plotted LCS-1’s shaft horsepower in
 imperial units although Figure 11 is in metric units.
      The Claims Court found that “the government’s expert
 used the wrong units in his analysis,” ignored the error
 when it “was pointed out to them by [the inventor] on the
 first day of trial,” and “was essentially arguing that the
 [LCS-1] design it chose for its efficiency [during procure-
 ment], was, in fact, not efficient.” J.A. 17 & 17 n.12. We
 see no clear error in the Claims Court’s factual findings
 here or its conclusion that the government’s position here
 was not substantially justified.
      Second, the government argues that the Claims Court
 erred in finding that reliance on its expert, Mr. Blount, and
 his “feasibility analysis” was not substantially justified.
 The government presented Mr. Blount’s “feasibility analy-
 sis” as evidence that the asserted claims would have been
 obvious to a person of ordinary skill in the art. The Claims
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 8                              FASTSHIP, LLC   v. UNITED STATES



 Court concluded that “Mr. Blount had ‘extraordinary skill’”
 and that it was “unreasonable” to “proffer him as a person
 of ordinary skill in the art” because of “his decades of expe-
 rience.” J.A. 17. The government argues, and we agree,
 that this was error. An “attack [on an expert] on the
 grounds that he is not ‘a person of ordinary skill in the
 art’” “is meritless.” Endress + Hauser, Inc. v. Hawk Meas-
 urement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir.
 1997). “The actual [expert]’s skill is irrelevant to the in-
 quiry . . . .” Standard Oil Co. v. Am. Cyanamid Co., 774
 F.2d 448, 454 (Fed. Cir. 1985). It was not unreasonable for
 the government to proffer Mr. Blount’s “feasibility analy-
 sis.” 1 Our decision with this respect also requires a remand
 for further consideration by the Claims Court. 2




     1    To the extent the Claims Court’s substantially jus-
 tified finding relied on the fact that the “feasibility analy-
 sis” involved “a yacht not comparable to a larger ship,”
 J.A. 17, the record does not support the conclusion that
 such a comparison was not justified. The government had
 presented expert testimony as to why the yacht is compa-
 rable, and comparability was not a factor in the Claims
 Court’s original rejection of the “feasibility analysis” in the
 post-trial opinion.
      2   We have no occasion now to address the question of
 whether the amount of fees should be adjusted when the
 positions of the government are in part substantially justi-
 fied and in part not substantially justified. Compare Intel-
 lectual Ventures I LLC v. Trend Micro Inc., 944 F.3d 1380,
 1384 (Fed. Cir. 2019) (determining, in the context of 35
 U.S.C. § 285, that “a court must award fees in an amount
 that ‘bear[s] some relation to the extent of the misconduct’”
 (quoting In re Rembrandt Techs. LP Patent Litig., 899 F.3d
 1254, 1278 (Fed. Cir. 2018))).
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 FASTSHIP, LLC   v. UNITED STATES                            9



                          CONCLUSION
     We vacate the fee award and remand for further pro-
 ceedings consistent with this opinion.
                 VACATED AND REMANDED
                             COSTS
    No costs.
