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MAR 29 2018

U. S COURT OF
FEDERAL CLA||V|S

In the United States Court of Federal Claims

No. 13- 307C
Filed: March 29, 2018

****************$$*$$****$$*$$$$$****

LARRY GOLDEN,
Plaintiff, pro se,

v.

THE UNITED STATES,

Defendant.

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*$**$******$***$$*******$************

Larry Golden, Greenvil]e, South Carolina, pro se.

Nicholas Jae-Ryoung-Kim, United States Department of Justice, Civil Division, Washington,

D.C., Counsel for the Govemment.

MEM()RANDUM OPINION AND ORDER GRANTING-IN-PART AND
DENYING-IN-PART THE GOVERNMENT’S MOTION FOR PARTIAL DISMISSAL

BRADEN, ChiefJudge.

45 C.F.R. § 75.435(h) (Uniform
Administrative Requirements);

48 C.F.R. § 2.101(b) (Federal Acquisition
Regulations Defmitions);

28 U.S.C. §§ 1491(a) (Tucker Act
Jurisdiction), 1498(3.) (Patent
Infringement Jurisdiction), 1927
(Liability for Excessive Costs);

31 U.S.C. §§ 6303 (Using Procurement
Contracts), 6304 (Using Grant
Agreements), 6305 (Using
Cooperative Agreements);

35 U.S.C. §§ 102 (Novelty), 103
(Obviousness), 11 1(a),(b)
(Application for Patent), 120 (Benef`lt
of Earlier Filing Date), 251 (Reissue
of Defective Patents), 252 (Effect of
Reissue);

Manual of Patent Examining Procedure
(9th ed. 2015); and

Rule of the Unjted States Court of
Federal Claims 12(b)(1)
(Jurisdiction), 12(b)(6) (Failure to
State a Claim), 12(h)(3) (Lack of
Subject-Matter Jurisd_iction), 15(a)
(Amendments Before Trial), 41 (b)
(Dismissal of Actions), 56(€), (f)
(Summary Judgment).

 

To facilitate review of this Memorandum Opim'on And Order, the coul“£ has provided the
following outline.

I. RELEVANT FACTUAL BACKGROUND.
A. The Prosecution History Of The Relevant United States Patent Applications.
B. National Science Foundation Grants And Cooperative Agreements.
C. National Institutes Of Health Grants.

II. PROCEDURAL HISTORY.

III. STANDARD OF REVIEW.
A. Jurisdiction.
B. Stanclard Of Review For A Motion To Dismiss Under RCFC 12(b)(1).
C. Standard Of Review For A Motion To Dismiss Under RCFC 12(b)(6).
D. Standard Of Review For Pro Se Litigants.

IV. DISCUSSION.
A. Whether Certain Patent Infringement Allegations 111 The August 10, 2017 Fifth

Amended Complaint Should Be Dismissed Under RCFC 12(b)(1) And 12(`0)(6).

1. Patent Infringement Allegations 111 The August 10, 2017 Fifth Amendod
Complaint.

2. The Govemment’$ Argument.

3. Plaintiff’ 5 Response And Motion For Leave To Fiie A Motion For
Summary Judgment.

4. The Govemrnent’$ Reply And Opposition To Plaintiff’ s Motion For Leave
To File A Motion For Summary Judgment.

5. Plaintiff’ S Reply.

6. The Court’s Resolution.
a. Governing Precedent.
b. Patent Infringement Allegations Concemiug National Science

Foundation Gra.nts And Cooperative Agreements Must Be
Dismissed Under RCFC 12(b)(1).
i. Regarding National Science Foundation Grants.
ii. Regarding National Science Foundation Cooperative
Agreements.

c. Patent lnfringement Allegations Conceming National Institutes Of
Health Grants Must Be Dismissed Under RCFC 12(b)(1).

d. Patent lnfringement Allegations Conceming The Govemment’$
Alleged Use Of “Smartphones And Other Consumer Devices”
Must Be Dismissed Under RCFC 12(b)(1) And 12(b)(6).

V.

CONCLUSION.

Patent Infringement Allegations Concerning Broad Agency
Announcements Must Be Disrnissed Under RCFC 12(b)(6).
Patent Infringement Allegations Concerning The ’033 Patent Must
Be Dismissed Under RCFC 12(b)(1).

Patent lnfringement Allegations Concerning UniSSued Patent
App1ications And Pre~lssuance Use Or Manufacture Must Be
Dismissed Under RCFC 12(b)(1).

Patent lnfringement Allegations Concerning The ’761, ’280, And
’189 Patents Must Be Dismissed Under RCFC 12(b)(6).

I. RELEVANT FACTUAL BACKGROUN]).l
A. The Prosecution History Of The Relevant United States Patent Applications.

On April 5, 2006, Larry Golden filed U.S. Patent Application No. 11/397,118 (the “’ 1 18
Application”), entitled “Multi Sensor Detection And Lock Disabling System,” With the United
States Patent and Trademari<: Office (the “USPTO”).2 2/12/ 16 Am. Compl. Ex. B. The ’118
Application “pertain[ed] to anti-terrorist detection and prevention systems, and more particularly
pertain[ed] to a disabling lock mechanism combined With a chemical/biological/radiological
detection system for use With products grouped together by similar characteristics in order to
prevent unauthorized entry, contamination[,] and terrorist activity.” 2/12/ 16 Am. Compl. EX. B.

On June 6, 2008, Mr. Golden filed a continuation~in~part3 of the ’1 18 Application, U.S.
Patent Application No. 12/155,573 (the “’573 Application”). 2/ 12/ 16 Am. Compl. EX. C.

On June 10, 2008, the USPTO issued the ’1 18 Application, as U.S. Patent No. 7,385,497
(the “’497 Patent”). 2/12/ 16 Arn. Compl. EX. B.

 

l The relevant facts discussed herein Were derived from: exhibits attached to the February
12, 2016 Amended Complaint (“2/ 12/ 16 Am. Cornpl. Ex. A_I”); the August 10, 2017 Fifth
Amended Complaint (“8/ 10/ 17 Am. Compl.”); and exhibits attached to the Governrnent’s October
20, 2017 Motion For Partial Disrnissal (“10/20/ 17 Gov’t Mot. Ex. 1~22”). See Moyer v. Unifed
States, 190 F.3d 1314, 1318 (Fed. Cir. 1999) (“Fact~finding is proper When considering a
motion to dismiss Where the jurisdictional facts in the complaint . . . are challenged.”); see also
Ferrez`ro v. United States, 350 F.3d 1318, 1324 (Fed. Cir. 2003) (the trial court “may Weigh
relevant evidence When it considers a motion to dismiss that challenges the truth of jurisdictional
facts alleged in a complaint”).

z The examination of a patent application at the USPTO

begins With the applicant filing the application itself. . . . [T]his application can be
one of two basic types. The usual course is to file a regular application[, i,e., a
nonprovisional application,] under [35 U.S.C. §] lll(a). The statute has
been . . . amended, however, to permit the filing of a provisional application as set
out in [35 U.S.C. §] 111(b). This latter form of application is not itself subject to
examination, although it can be followed by a regular application Within a year.
The provisional application is in the nature of a domestic priority document

R. CARL MoY, MoY’s WALKER oN PATENTS § 3 :3 (4th ed. 2003).

3 “A continuation-in-part is an application filed during the lifetime of an earlier
nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional
application and adding matter not disclosed in the said earlier nonprovisional application.”
MANUAL oF PATENT EXAMIN:NG PROCEDURE (“MPEP”) § 201.08 (9th ed. 2015).

 

 

On Decernber 22, 2009, the USPTO issued the ’573 Application, as U.S. Patent No.
7,636,033 (the “’033 Patent”). 2/12/16 Am. Cornpl. EX. C.

On January 20, 2010, Mr. Golden filed a continuation4 of the ’573 Application, U.S. Patent
Application No. 12/657,356 (the “’356 Application”). 2/12/16 Am. Compl. Ex. D.

On May 27, 2010, Mr. Golden filed a continuation of the ’356 Application, U.S. Patent
Application No. 12/802,001 (the “’001 Application”). 2/12/16 Am. Cornpl. EX. E.

On March 31, 201 1, Mr. Golden filed a reissue application5 of the ’033 Patent, U.S. Reissue
Appiication No. 13/065,837 (the “’837 Application”). 2/12/16 Am. Compl. EX. G.

On September 9, 2011, Mr. Golden filed a second reissue application of the ’033 Patent,
U.S. Reissue Application No. 13/199,853 (the “’853 Application”). 2/12/16 Am. Cornpl. Ex. H.

On November 3, 2011, Mr. Golden filed a divisional application6 of the ’001 Application,
U.S. Patent Application No. 13/288,065 (the “’065 Application”). 2/12/16 Am. Compl. Ex. F.

On January 31, 2012, the USPTO issued the ’3 56 Application, as U.S. Patent No. 8,106,752
(the “’752 Patent”). 2/12/16 Am. Compl. EX. D.

 

4 “A continuation application is an application for the invention(s) disclosed in a prior-filed
copending nonprovisional application . . . The disclosure presented in the continuation must not
include any subject matter which Would constitute new matter if submitted as an amendment to
the parent application.” MPEP § 201.07.

Although Mr. Golden filed the ’356 Application as a “continuation” of the ’573
Application, the ’356 Application was filed after issuance of the ’573 Application, i.e., when the
’573 Application Was no longer pending See 35 U.S.C. § 120 (“An application for patent for an
invention disclosed . . . in an application previously filed in the United States, . . . shall have the
same effect, as to such invention, as though filed on the date of the prior application, if filed before
the patenting or abandonment of or termination of proceedings on the first application or on an
application similarly entitled to the benefit of the filing date of the first application[.]” (emphasis
added)); See also MPEP § 201.07.

5 Defective patents may be corrected by “reissue.” See 35 U.S.C. § 251(a) (“Whenever
any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a
defective specification or drawing, or by reason 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
of the fee required by law, reissue the patent for the invention disclosed in the original patent, and
in accordance with a new and amended application, for the unexpired part of the term of the
original patent.”).

6 A divisional application is “[a] later application for an independent or distinct invention,
carved out of a nonprovisional application . . . disclosing and claiming only subject matter
disclosed in the earlier or parent application[.]” MPEP § 201.06.

 

 

i
|
1
]
§

 

On December 18, 2012, the USPTO issued the ’001 Application, as U.S. Patent No.
8,334,761 (the “’761 Patent”). 2/12/16 Arn. Compl. Ex. E.

On January 1, 2013, the USPTO issued the ’837 Application, as U.S. Reissue Patent No.
RE43,891 (the “’891 Patent”). 2/12/ 16 Am. Compl. EX. G.

On February 12, 2013, the USPTO issued the ’853 Application, as U.S. Reissue Patent No.
RE43,990 (the “’990 Patent”). 2/12/ 16 Am. Compl. Ex. H.

On Septelnber 9, 2013, Mr. Golden filed a continuation of the ’065 Applieation, U.S. Patent
Application No. 14/021,693 (the “’693 Application”). 2/12/ 16 Am. Compl. EX. 1.

On September 10, 2013, the USPTO issued the ’065 Application, as U.S. Patent No.
8,531,280 (the “’280 Patent”). 2/12/16 Am. Compl. Ex. F.

On July 23, 2015, Mr. Golden filed a continuation of the ’693 Application, U.S. Patent
Application No. 14f806,988 (the “’988 Application). 8/10/17 Am. Compl. 1[ 36; see also U.S.
Patent No. 9,589,439.

On August 4, 2015, the USPTO issued the ’693 Application, as U.S. Patent No. 9,096,189
(the “’189 Patent”). 2/12/16 Am. Compl. EX. I.

On March 6, 2017, Mr. Golden filed a continuation of the ’988 Application, U.S. Patent
Application No. 15/530,839 (the “’839 Application”). 8/10/17 Am. Compl. il 3.

On March 7, 2017, the USPTO issued the ’988 Application, as U.S. Patent No. 9,589,439
(the “’439 Patent”). 8/10/ 17 Am. Compl. jj 36; see also ’439 Patent.

On June 29, 20l7, the USPTO published the ’839 Application, as U.S. Publication No.
2017/0186259. 8/10/17 Arn. Compl. 11 3.

As a result of the aforementioned USPTO actions, Mr. Golden became the “sole owner of
the entire right, title, and interest in and to” the ’497, ’033, ’752, ’761, ’891, ’990, ’280, ’189, and
’439 Patents, as well as the ’839 Application. 8/10/17 Am. Compl. 11 38; see also 2/12/ 16 Am.
Compl. EX. Bwl.

The following Court Exhibit A shows the order in which each of the aforementioned patent
applications was filed by Mr. Golden and issued by the USPTO.

 

    

  

 

The ’118 Application
`__ (Filed: 4/5/2006)

 

 

 

The ’573 Application
(Filed: 6/6/2008)

 

COURT EXHIBIT A

 

W

 

 

 

    

The ’497 Patent
(Issued: 6/10/2008)

 

 

 

 

 

The ’356 Application
(Filed: 1/20/2010)

The ’033 Patent

 

 

(Issued:12/22/2009)

 

 

 

The ’001 Application

 

(Fn@d; 5/27/2010)

 

The ’065 Application
(Filed: 11/3/2011)

 

 

   

 

     
 
     
 
 
 
   
    

 

 

 

-i§ (Fiied; 3/31/2011)

The ’837 Application

 

 

 
 
  

  

 

 

The ’853 Application

 

 

 

 

 

 

 

   

The ’752 Patent
(Issued: 1/31/2012)

 

(Fiied: 9/9/2011)

 

 

 

 

The ’761 Patent

 

(Issued: 12/18/2012)

 

The ’891 Patent
(lssued: 1/1/2013)

 

 

 

    

 

The ’693 Application

The ’990 Patent

(13511@¢1:2/12/2013)

 

 

 

 

 

 

(Filed: 9/9/2013)

 

 

The ’988 Application
(Filed: 7/23/2015)

 

The ’280 Patent

 

-j;j (13511@<:1:9/10/2013)

 

 

 

(Filed: 3/6/2017)

The ’189 Patent

 

The ’839 Application

(Issued: 8/4/2015)

 

 

 

 

 

    

 

' The ’439 Patent
(lssued: 3/7/2017) :_::`

 

 

7

 

B. National Science Foundation Grants And Cooperative Agreements.

ln July 2004, the National Science Foundation (the “NSF”)7 issued “Cooperative
Agreement Financial & Adrninistrative Terms and Conditions” (the “2004 CA-FATCS”), to advise
recipients that the “NSF cannot assume any liability for accidents, illnesses, injuries, or claims
arising out of, or related to, any activities supported by an award or for unauthorized use of
patented or copyrighted materials.” 10/20/ 17 Gov’t Mot. EX. 15 (Article 38).

On Septernber 1, 2004, the NSF awarded Cooperative Agreement No. EEC-0425914,
“lntegrated Nanomechanical Systems (COINS),” to the University of California, Berkeley (“UC
Berkeley”), incorporating the 2004 CA-FATCs. 10/20/ 17 Gov’t Mot. Ex. 20.

On July l, 2007, the NSF issued “Cooperative Agreement Financial & Administrative
Terrns and Conditions” (the “2007 CA-FATCS”), to advise recipients that the “NSF cannot assume
any liability for accidents, illnesses, injuries, or claims arising out of, or related to, any activities
supported by an award or for unauthorized use of patented or copyrighted materials.” 10/20/ 17
Gov’t Mot. Ex. 15 (Article 39).

On September 1, 2009, the NSF awarded Cooperative Agreement No. EEC-0832819, “The
Center of Integrated Nanomechanical Systems (COINS) Renewal Years 6-10,” to UC Berkeley,
incorporating the 2007 CA~FATCS. 10/20/ 17 Gov’t Mot. EX. 21.

On lanuary 4, 2010, the NSF issued “Research Terms & Conditions” (the “2010 RT&CS”),
to advise recipients that the “NSF cannot assume any liability for accidents, illnesses or claims
arising out of any work supported by an award or for unauthorized use of patented or copyrighted
materials.” 10/20/ 17 Gov’t Mot. Ex. 15 (Article 25).

On August 19, 2010, the NSF awarded Grant No. CCF-1029585, “Collaborative Research:
Computational Behavioral Science: Modeling, Analysis, and Visualization of Social and
Comrnunicative Behavior,” to the Massachusetts Institute of Technology (“MIT”), incorporating
the 2010 RT&CS. 10/20/17 Gov’t Mot. Ex. 6.

On January 14, 2013, the NSF issued “Research Terms & Conditions” (the “2013
RT&CS”), to advise recipients that the “NSF cannot assume any liability for accidents, illnesses

or claims arising out of any work supported by an award or for unauthorized use of patented or
copyrighted materials.” 10/20/17 Gov’t Mot. EX. 15 (Article 32).

 

7 The NSF is “an independent federal agency created by Congress in 1950 ‘to promote the
progress of science; to advance the national health, prosperity, and welfare; to secure the national
defense[.]’ . . . With an annual budget of $7.5 billion (FY 2017), lthe NSF is] the funding source
for approximately 24 percent of all federally supported basic research conducted by America’s
colleges and universities.” About the Narional Sclence Founclaz‘ion, NAT’L SCI. FOUND.,
https://www.nsf.gov/about/ (last visited March 7, 2018).

On lanuary 14, 2013, the NSF also awarded Grant No. CBET-1264377, “Multimode
Smartphone Biosensor,” to the University of illinois at Urbana-Champaign (“UIUC”),
incorporating the 2013 RT&CS. 10/20/ 17 Gov’t Mot. EX. 7.

On July 16, 2013, the NSF awarded Grant No. EFR.l-1332275, “EFRI-BioFleX: Cellphone-
based Digital Imrnunoassay Platform for High~throughput Sensitive and Multiplexed Detection
and Distributed Spatio-Temporal Analysis of lnfluenza,” to the University of California, Los
Angeles (“UCLA”), incorporating the 2013 RT&Cs. 10/20/ 17 Gov’t Mot. EX. ll.

On March 7, 2014, the NSF issued “Research Terms & Conditions” (the “2014 RT&CS”),
to advise recipients that the “NSF cannot assume any liability for accidents, illnesses or claims
arising out of any work supported by an award or for unauthorized use of patented or copyrighted
materials.” 10/20/ 17 Gov’t l\/lot. Ex. 15 (Article 34).

On June 13, 2014, the NSF awarded Grant No. CBET-1444240, “EAGER: Mobile-phone
based single molecule imaging of DNA and length qualification to analyze copy-number variations
in genome,” to UCLA, incorporating the 2014 RT&CS. 10/20/17 Gov’t Mot. Ex. l0.

On July 3, 2014, the NSF awarded Grant No. CBET-1447893, “EAGER: Lab-in-a-
Smartphone,” to UIUC, incorporating the 2014 RT&CS. 10/20/ 17 Gov’t Mot. Ex. 8.

On July 25, 2014, the NSF awarded Grant No. IIP-1450552, “I-Corps: Nanophosphors as
Ultra-Sensitive Lateral Flow Reporters in a Lab~on~Phone Platform,” to the University of Houston
(“UI-I”), incorporating the 2014 RT&CS. 10/20/ 17 Gov’t Mot. EX. 12.

On August 11, 2014, the NSF awarded Grant No. CBET~i343058, “TNSPIRE Track 2:
Public Health, Nanotechnology, and Mobility (PHeNol\/l),” to Cornell University (“Cornell”),
incorporating the 2014 RT&CS. 10/20/ 17 Gov’t Mot. EX. 9.

On December 26, 2014, the NSF issued “Grant General Conditions (GC~i)” (the “2014
GGCS”), to advise recipients that the “NSF cannot assume any liability for accidents, bodily injury,
illness, breach of contract, any other damages or loss, or any claims arising out of activities
undertaken pursuant to the grant, whether with respect to persons or property of the grantee or
third parties.” 10/20/ 17 Gov’t Mot. EX. 15 (Section 45).

On August 6, 2015, the NSF awarded Grant No. 1533 983, “PFI: BIC Human~Centered
Smart-Integration of Mobile Imaging and Sensing Tools with Machine Leaming for Ubiquitous
Quantification of Waterborne and Airbome Nanoparticles,” to UCLA, incorporating the 2014
GGCS. 10/20/17 Gov’t Mot. EX. 13.

On August 22, 2015, the NSF awarded Grant No. 1534126, “PFI: BIC~Pathtracker: A
smartphone-based system for mobile infectious disease detection and epidemiology,” to UIUC,
incorporating the 2014 GGCs. 10/20/ 17 Gov’t Mot. EX. 14.

 

C. National Institutes Of Heaith Grants.

On February 18, 2014, the National institutes of I-lealth (the °‘NIH”)8 awarded Grant No.
1R43A1107984-01A1, “A Sensitive and Serotype~Specific Dengue Diagnostic Test for Low~
Resource Setting,” to Al Biosciences, lnc. 10/20/ 17 Gov’t Mot. Ex. 19.

On January 20, 2015, the NIH awarded Grant No. 1R43CA193096-01, “KS Detect: A
solar-powered and smartphone integrated instrument for point-of-care diagnosis of Kaposi’s
sarcoma,” to A’AS lnc. 10/20/17 Gov’t Mot. EX. 18. This grant was “subject to”
45 C.F.R. § 75.435(h).9 10/20/17 Gov’t Mot. Ex. 18.

On December 23, 2015, the NlH awarded Grant No. 1R21A1120973-01, “Field-deployable
Assay for Differential Diagnosis of Malaria and Viral Febrile Illnesses,” to Sandia National
Laboratories. 10/20/ 17 Gov’t Mot. Ex. 16. This grant also was “subject to” 45 C.F.R. § 75.43 5(h).
10/20/17 Gov’t Mot. EX. 16.

On June 20, 2016, the NIH awarded Grant No. 1R01EB021331~01, “FeverPhone: Point of
Care Diagnosis of Acute Febrile illness using a Mobile Device,” to Cornell. 10/20/ 17 Gov’t Mot.
Ex. 17. And, this grant was “subject to” 45 C.F.R. § 75.435(11). 10/20/17 Gov’t Mot. EX. 17.

II. PROCEDURAL HISTORY.

On May 1, 20l3, Mr. Golden (“Plaintiff”) filed a Complaint in the United States Court of
Federal Claims (ECF No. 1) (°‘5/ 1/ 13 Compl.”), alleging that the United States Department of
I-Iomeland Security (the “DHS”) infringed the ’990 Patent. 5/1/13 Compl. 1-2.

On August 15, 2013, Plaintiff filed a “Notice of Supplement,”fo providing “supplemental
materia ” to support Plaintiff’s May 1, 2013 Complaint. ECF No. 6.

On September 5, 2013, the Government filed a Motion For A More Defim`te Statement,
pursuant to RCFC 12(e), requesting that Plaintiff amend Plaintiff" s May 1, 2013 Complaint to
incorporate numbered paragraphs, enumerate with particularity the devices or processes that
allegedly infringe Plaintiff’s patents, and identify the party-in-interest. ECF No. 9.

 

8 The NIH is “a part of the U.S. Department of Health and Human Services,” and “is the
largest source of funding for medical research in the world[.]” Who We Are, NAT’L iNSTS. OF
HEALTH, https://www.nih.gov/about-nih/who-we-are (last visited March 7, 2018).

9 45 C.F.R. § 75.435(h) provides that the “[c]osts of legal, accounting, and consultant
services, and related costs, incurred in connection with patent infringement litigation, are
unallowable unless otherwise provided for in the . . . award.” 45 C.F.R. § 75.435(11)

m The court considered Plaintiff’s August 15, 2013 “Notice of Supplement” as an
Amended Complaint, filed pursuant to Rule of the United States Court of Federal Claims
(“RCFC”) l5(a)(l). ECF No. 21 (“On August 15, 2013, Plaintiff filed a Notice of Supplement
that the court interprets as an Amended Complaint.”).

10

 

On September 20, 2013, Plaintiff filed: a Motion To Strike Defendant’s Motion For A
More Definite Statement, pursuant to RCFC 12(f) (ECF No. 10); a Motion To Amend Complaint
(ECF No. 11); a Response to the Government’s September 5, 2013 Motion For A More Definite
Statement (ECF No. 12); a Motion For Summary ludgment (ECF No. 13); and a Motion To
Supplement Pleadings. ECF No. 14.

On October 15, 2013, Plaintiff filed a second Response to the Government’s September 5,
2013 Motion For A More Definite Statement that the court considered as a Second Amended
Complaint, filed with the court’s leave, pursuant to RCFC l5(a)(2). ECF No. 19.

On October 21, 2013, the court granted the Government’s September 5, 2013 Motion For
A More Definite Statement, because Plaintiff’s May l, 2013 Complaint, August 15, 2013
Amended Complaint, and October 15, 2013 Second Amended Complaint were vague and
ambiguous making it difficult for the Government to prepare an informed Answer. ECF No. 21.
That same day, the Government filed a Response To Plaintiff’s Motion For Summary Judgment.
ECF No. 22.

On November 22, 2013, Plaintiff filed a More Definite Statement ECF No. 24.

On December 20, 2013, the court denied Plaintiff"s September 20, 2013 Motion F or
Summary Judgment, without prejudice, since the Government had not filed an Answer. ECF No.
28.

On December 30, 2013, Plaintiff filed a Motion To Amend And Supplernent Pleadings Of
The More Definite Statement. ECF No. 29.

On January 10, 2014, the Government filed an Answer to Plaintiff’s December 30, 2013
Motion To Amend And Supplement Pleadings.ll ECP No. 30.

On February 7, 2014, the court granted Plaintiff’ s December 30, 2013 Motion to Amend
And Supplement Pleadings and ordered the parties to treat that motion as a Third Amended
Complaint, filed by leave of the court, pursuant to RCFC 15(a)(2), superseding ali prior
complaints ECF No. 32.

On March 31, 2014, the court issued an Order staying Plaintiff’s Fif`th Amendment Takings
Clause claims and directing the parties to “proceed With Plaintist claims only as they relate to
the alleged patent infringement by the United States.” ECF No. 38.

On April 30, 2014, the DHS filed a petition for an interparfes review (“IPR”)12 of the ’990
Patent before the USPTO Patent Trial and Appeal Board (the “PTAB”).

 

11 The Government considered Plaintiff s December 30, 2013 Motion To Amend Pleadings
as filed by leave of the court and, therefore, superseded Plaintiff’s November 22, 2013 More
Definite Statement ECF No. 30 at n.l.

n IPR is “a trial proceeding conducted at the [USPTO] to review the patentability of one
or more claims in a patent only on a ground that could be raised under [35 U.S.C.j §§ 102 or 103,

11

 

 

On October 8, 2014, the PTAB issued a Decision To lnstitute lPR of claims 11, 74, and 81
of the ’990 Patent. See Dep’f ofHomeland Sec. v_ Goldenj lPR2014-00714, 2014 WL 6999625,
at *l (P.T.A.B. Oct. 8, 2014). Although the court did not stay this case while the PTAB
proceedings were ongoing, the court did not take any substantive action during that time.

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 Dep't ofHomelaml Sec. v. Golden, lPR2014-00714, 2015 WL
5818910, at *17 (P.T.A.B. Oct. 1, 2015). On November 17, 2015, the PTAB denied Plaintiff’s
request for a rehearing of the PTAB’s decisions See Dep ’t ofHomeland Sec. v. Golden, IPR2014-
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. ECF No. 67 (transcript). On
December 23, 2015, the court issued an Order granting Plaintiff leave to file a fourth amended
complaint, pursuant to RCFC 15(a)(2). ECF No. 65.

On February 12, 2016, Plaintiff filed a Fourth Amended Complaint. ECF No. 68. On
February 19, 2016, Plaintiff filed a Claim Chart. ECF No. 69.

On April 8, 2016, the Government filed an Answer to Plaintiff s February 12, 2016 Fourth
Amended Complaint. ECF No. 74.

On June 3, 2016, Plaintiff filed a Motion For Summary Judgment On Validity. ECF No.
79. On June 6, 2016, Plaintiff filed: a Motion For Response To Claim Charts (ECF No. 80); a
Motion To Stay (ECF No. 8l); and a Motion For Entry Of Devices. ECF No. 82. On June 8,
2016, Plaintiff filed a Motion For Entry Of Estimated Damages And Accounting Report. ECF No.
84.

On June 10, 2016 the court convened a telephone status conference ECF No. 87
(transcript). On June 13, 2016, the court issued an Order directing the Government to file a Motion
To Dismiss and staying Plaintiff s 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, the Government filed a Motion To Dismiss Certain Accused Devices.
ECF No. 88. On November 30, 2016, the court denied the Government’s June 24, 2016 Motion
To Dismiss, without prejudice ECF No. 94.

On December l6, 2016, the court issued a Discovery Order allowing the parties to
exchange jurisdictional discovery. ECF No. 97.

On February 3, 2017, the court issued an Order dismissing the following filings by Plaintiff,
without prejudice: Plaintiff’ s June 3, 2016 Motion For Summary Judgment On Validity; Plaintiff’s

 

and only on the basis of prior art consisting of patents or printed publications.” Inrer Partes
Review, U.S. PATENT & TRADEMARK OFFICE, https:f/www.uspto.gov/patents-application-process/
appealing-patent-decisions/trials/inter-partes-review (last visited March 12, 2018).

12

 

June 6, 2016 Motion For Response To Claim Charts; Plaintiff’s June 6, 2016 Motion To Stay;
Plaintiff’s June 6, 2016 Motion For Entry Of Devices; and Plaintiff’s June 8, 2016 Motion 13 or
Entry Of Estimated Damages And Accounting Report. ECF No. 100.

On March 1, 2017, and prior to the completion of the court-ordered discovery, Plaintiff
filed a Motion For Response To The liebruary 19, 2016 Claim Chart. ECF No. 102. On March
24, 2017, Plaintiff filed a Motion To Supplement Plaintiff’ s Claim Chart (ECF No. 107) and a
Motion To Supplement The Amended Complaint. ECF No. 108. On April 11, 2017, Plaintiff
filed a second Motion for Summary Judgment On Validity. ECF No. 111.

On l\/Iay 15, 2017, Plaintiff filed a c‘l\/Iotion To Supplement The Amended Complaint With
Pleadings Of 28 U.S.C. § 1491 ‘Government Fifth Amendment Takings Of A Patent(s).”’ ECF
No. 114.

On May 24, 2017, the court convened a telephone status conference, wherein Plaintiff was
directed “to file a [Fifth A]mended [C]omplaint that include[d] all of [Plaintiff’s] concerns, all of
[Plaintiff’ s1 charges against the Government in one document . . .No more supplements, no more
anything else. Whatever is in that document will be what we’re going to continue the case on.”
ECF No. 118.

On May 25, 2017, the court issued an Order denying all of Plaintiff s pending motions, i. e.,
Plaintiff’ s March 1, 2017 Motion For Response To Claim Chart; Plaintiff s March 24, 2017
Motion To Supplement Plaintiff s Claim Chart; Plaintiff’s March 24, 2017 Motion To Supplement
The Amended Complaint; Plaintiff’ s April 11, 2017 Motion for Summary Judgment On Validity;
and Plaintiff’s May 15, 2017 Motion To Supplement The Amended Complaint. ECF No. 116.
The May 25, 2017 Order also stated that “Plaintiff may amend his complaint and claim chart one
final time, prior to the court’s ruling on jurisdiction Plaintiff is ordered not to file any other
motions or papers without leave ofthe court.” ECF No. 116 at 2 (emphaSiS added).

On August 10, 2017, Plaintiff filed a Fifth Amended Complaint (“8/ 10/ 17 Am. Compl.”)
(ECF No. 120) and a Final Claim Chart. ECF No. 121. Plaintiff’ s August 10, 2017 Fifth Amended
Complaint alleges that the Government: (1) violated the Fif`th Amendment of the United States
Constitution by taking for public use the ’497, ’033, ’752, ’761, ’280, ’891, ’990, ’189, and ’439
Patents, without just compensation; and (2) is liable for infringement of the ’497, ’033, ’752, ’761 ,
’280, ’891, ’990, ’189, and ’439 Patents, as well as the ’839 Application under 28 U.S.C. § 1498(a).
8/10/17 Arn. Compl. 1111 87492.

On August 24, 2017, Plaintiff sent an email to the Department of Justice (the “DOJ”)
stating:
As you know my strategy was to continue submitting claims of “takings”
and “inf`ringement” for as long as the Government continued to prolong this case.
(Larry Golden v. The United States: Case # 13-307 C). With that said, of course
you know the claims ha[ve] moved from twelve (12) claims of “takings” and
“infringement” that began in the year 2013, to seventy~two (72) claims of “takings”
and “infringement” as of this year 2017.

13

 

 

The Judge has ordered a final complaint and a final claim chart that was due
on August 15. 2017. Because of the Judge order I can no longer continue my
strategy of introducing new cctakings” and “infringement” claims or new patents
and patent claims.

Therefore, l have changed my strategy. My new strategy is to file a
complaint(s) in F ederal District Court against Apple, Samsung, LG, Panasonic, and
Motorola for Patent infringement on March l, 2018. The strategy here is to force
Apple, Samsung, and LG to decide between one or two choices: (1) in an effort to
avoid any responsibility for infringement or liability of paying hundreds of billions
of dollars in damages, the companies cho [o]se to throw the Government under the
bus by presenting evidence that they were under contract to develop and
manufacture devices that infringes my communication / monitoring device. If they
cho[o]se this option it makes them a witness for me in my current case (Larry
Golden v. The United States; Case # 13-307 C). (2) Deny the allegations of
infringement In this case l will present evidence to support the fact that the
companies were under contract with the Government to develop and manufacture
devices that infringe[} my communication f monitoring device, but that the
companies decided to continue to develop and manufacture my communication /
monitoring device beyond the specifications agreed upon with the Governrnent,
even after I notified the companies in 2010 to stop their manufacturing If they
chos[o]e this option it opens the companies up to willful infringement and the
possibility of a temporary injunction to stop the manufacturing and development of
my communication / monitoring device. If you were Apple, Samsung, and LG
which option would you cho [o]se.

10f20/ 17 Gov’t Mot. EX. 1.

On October 20, 2017, the Government filed a Motion For Partial Dismissal (“10/20/ 17
Gov’t Mot.”), pursuant to RCFC l2(b)(1) and 12(b)(6). ECF No. 123.

On November 17, 2017, Plaintiff filed a Response And Motion For Leave To File A Motion
For Summary Judgment (“1 1/17/ 17 Pl. Resp.”). ECF No. 124.

On December 18, 2017, the Government filed a Reply And Opposition To Plaintiff"s
Motion lj or Leave To File A Motion For Summary Judgment (“12/ 18/ 17 Gov’t Reply”). ECF No.
125 .

On January 8, 2018, Plaintiff filed a Reply (“1/8/1 8 Pl. Reply”). ECF. No. 126.
III. STANDARD OF REVIEW.
A. Jurisdiction.

As a threshold matter, the court must consider jurisdiction before reaching the substantive
merits of a case. See Gonzalez v. Thaler, 565 U.S. 134, 141 (2012) (“When a requirement goes to
subj ect_matter jurisdiction, courts are obligated to consider sua sponte issues that the parties have

14

 

disclaimed or have not presented.”). The burden of establishing jurisdiction “lies with the party
seeking to invoke the court’s jurisdiction,” Cedars-Sinai Med. Ctr_ v. Wafkins, ll F.3d 1573, 1583
(Fed. Cir. 1993).

B. Standard Of Review For A Motion To Dismiss Under RCFC 12(b)(1).

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] l2(b)(1) motion.”
Palrner v. United States, 168 F.3d 1310, 1313 (Fed. Cir. 1999); see also RCFC 12(b)(1) (allowing
a party to assert, by motion, “lack of subject-matter jurisdiction”).

if a motion to dismiss for lack of subject-matter jurisdiction “challenges the court’s subject
matter jurisdiction based on the sufficiency of the pleading’s allegations . . . then those allegations
are taken as true and construed in a light most favorable to the complainant.” Cea'ars-Sinai Mea'_
Ctr_, 11 F.3d at 1583. But, if such a motion “denies or controverts the pleader’s allegations of
jurisdiction, . . . the movant is deemed to be challenging the factual basis for the court’s subject
matter jurisdiction.” Ia'. “In such a case, the allegations in the complaint are not controlling and
only uncontroverted factual allegations are accepted as true for purposes of the motion. All other
facts underlying the controverted jurisdictional allegations are in dispute and are subject to fact-
finding by the . . . court.” Ial. at 1583484 (internal citations omitted); see also Moyer, 190 F.3d at
1318 (“Fact-finding is proper when considering a motion to dismiss where the jurisdictional facts
in the complaint . . . are challenged.”). The court “may weigh relevant evidence when it considers
a motion to dismiss that challenges the truth of jurisdictional facts alleged in a complaint.”
Ferrez'ro, 350 F.3d at 1324; see also Reynolds v. Army & Az'r Force Exch. Serv., 846 F.2d 746, 747
(Fed. Cir. 1988) (“If a motion to dismiss for lack of subject matter jurisdiction . . . challenges the
truth of the jurisdictional facts alleged in the complaint, the [trial] court may consider relevant
evidence in order to resolve the factual dispute.”); JAMES WM. MOORE, MOORE’S FEDERAL
PRACTICE § 12.30[4] (3d ed. 2012) (“[W]hen a court reviews a complaint under a factual attack,
the allegations have no presumptive truthfulness, and the court . . . has discretion to allow
affidavits, documents, and even a limited evidentiary hearing to resolve disputed jurisdictional
facts.”).

If the court determines that it does not have subject-matter jurisdiction, the court must
dismiss the complaint See RCFC l2(h)(3) (“lf the court determines at any time that it lacks
subject-matter jurisdiction, the court must dismiss the action.”).

C. Standard ()f Review For' A Motion To Dismiss Under RCFC lZ(b)(6).

A claim is subject to dismissal under RCFC 12(b)(6), if it does not provide a basis for the
court to grant relief. See Bell Al‘l. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007) (“[A well-
pleaded complaint] requires more than labels and conclusions, and a formulaic recitation of the
elements of a cause of action will not do. Factual allegations must be enough to raise a right of
relief above the speculative level, on the assumption that all the allegations in the complaint are
true (even if doubtful in fact).” (internal citations omitted)); see also Lz'nclsay v. United States, 295
F.3d 1252, 1257 (Fed. Cir. 2002) (“A motion to dismiss . . . for failure to state a claim upon which

15

 

 

l
i
l
l
l
1

 

relief can be granted is appropriate when the facts asserted by the claimant do not entitle him to a
legal remedy.”).

A complaint must “contain sufficient factual matter, accepted as true, to ‘state a claim to
relief that is plausible on its face.”’ Ashcroft v. labal, 556 U.S. 662, 678 (2009) (quoting Twoml)ly,
550 U.S. at 570). “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.” la'. The allegations in a complaint also must establish that there is “more than a sheer
possibility that a defendant has acted unlawfully.” Icl. “Threadbare recitals of the elements of a
cause of action, supported by mere conclusory statements, do not suffice.” Ia'.; see also Sioax
Honey Ass’n v. Hartfora' Fire Ins. Co., 672 F.3d 1041, 1062 (Fed. Cir. 2012) (holding that a
complaint “require[s] more than labels and conclusions”). lo determine whether a complaint
states a plausible claim for relief, the court must engage in a context-specific analysis and “draw
on its judicial experience and common sense.” labal, 556 U.S. at 679. Therefore, the court is “not
bound to accept as true a legal conclusion couched as a factual allegation.” Twombly, 550 U.S. at
555.

D. 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 “less stringent standards than formal
pleadings drafted by lawyers”). The United States Court of Federal Claims traditionally has
examined the record “to see if [a pro se] plaintiff has a cause of action somewhere displayed.”
Ruderer v. United States, 412 F.2d 1285, 1292 (Ct. Cl. 1969). Although the court may excuse
ambiguities in a pro se plaintiffs complaint, the court °‘does not excuse [a complaint’s] failures.”
Henke v. United States, 60 F.3d 795, 799 (Fed. Cir. 1995). (“The fact that lthe plaintiff] acted pro
se in the drafting of his complaint may explain its ambiguities, but it does not excuse its failures,
if such there be.”).

`A pro se plaintiff is not excused from satisfying the burden of proof as to jurisdiction, by
a preponderance of the evidence. See McNutr 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, 846 F.2d at 748 ([The pro se plaintiff] bears the burden of establishing subject
matter jurisdiction by a preponderance of the evidence.”). A pro se plaintiff cannot rely solely on
conclusory allegations in the complaint, but must allege “competent proof ’ to establish
jurisdiction McNufr, 298 U.S. at 189; see also Reynolds, 846 F.2d at 748 (“[l]t was incumbent
upon [the pro se plaintiff] to come forward with evidence establishing the court’s jurisdiction.”);
Zulueta v_ United States, 553 F. App’x 983, 985 (Fed. Cir. 2014) (“[T]he leniency afforded to a
[pro se] litigant with respect to mere formalities does not relieve the burden to meet jurisdictional
requirements.” (quotation marks omitted)).

16

 

 

IV. DISCUSSION.

A. Whether Certain Patent Infringement Allegations13 In The August 10, 2017
Fifth Amended Complaint Should Be Dismissed Under RCFC 12(|))(1) And
12(b)(6).

1. Patent Infringement Allegations In The August 10, 2017 Fifth
Amended Complaint.

The August l0, 2017 Fifth Amended Complaint alleges that the Government:
(l) Violated the Fifth Amendment of the United States Constitution by taking for public use the
’497, ’033, ’752, ’761, ’280, ’891, ’990, ’189, and ’439 Patents, without just compensation; and
(2) is liable for infringement of the ’497, ’033, ’752, ’76 l, ’280, ’891, ’990, ’189, and ’439 Patents,
as well as the ’839 Application under 28 U.S.C. § 1498(a). 8/10/17 Am. Compl. 111 87~»~92. The
Fifth Amended Complaint alleges that the court has jurisdiction over the Tal<ings Clause claims
under 28 U.S.C. § 1491(a) and over the patent infringement allegations under 28 U.S.C. § 1498(a).
s/io/iv Am. Compl. 1111 3_20.14

The August 10, 2017 Fifth Arnended Complaint identifies numerous “devices” and
“programs”l§ that allegedly Were developed or procured, as a result of “contracts, agreements,

 

13 Hereinafter, the court refers to the patent infringement claims alleged in the August 10,
2017 Fifth Amended Complaint as “patent infringement allegations” to avoid confusion with the
patent claims that are allegedly infringed

14 fn accordance with the court’s March 3l, 2014 Order, the court will not rule on the
Governrnent’s October 20, 2017 Motion For Partial Dismissal regarding Plaintiff’ s Fifth
Amendment Takings Clause claims. ECF No. 38 (stating that “Plaintift`s takings claim[s] should
be stayed” and directing the parties to “proceed With Plaintiff’s claims only as they relate to the
alleged patent infringement by the United States”). Therefore, those portions of the Government’s
October 20, 2017 Motion For Partial Disrnissal relating to Plaintiff’s Fifth Arnendment Tal<ings
Clause claims are denied, without prejudice

l5 The “devices” and “programs” identified include: Alluviam HazMasterG3; Apple
HomeKit; Apple iPhone 5, 5c, 5s, 6, and 6 Plus (“Biodetector”); Apple iPads; Apple Watch;
August Connect; “ATHENA;” August Smart Lock; Biorneme two3; Boeing MH-6 Little Bird;
“Cell All;” “‘COINS’ Nano-Embedded Sensors',” DreamHammer Ballista; “EAGER;” Eureka
High-Power Electromagnetic System; FePhone; FeverPhone; FLIR identiFINDER R300; Ford
MyFord Mobile App; GammaPix; Kromek DBS-ID; Kromek D3S-NE'1`; iControl mLOCK;
“TNSPIRE;” “Lab-on~a~Drone;” LG Electronics G5 Smartphone; LG Electronics V10
Smartphone; Lockheed Martin K~MAX; MultiRAE Pro; Navy/Marine Corps lntranet; Northrop
Grumman X-47B; NutriPhone; Oshkosk TerraMax; Panasonic Toughbook 31 Laptop; PositivelD
“Firefly DX;” SiN~VAPOR; Samsung Gear 52; Samsung Galaxy 56 (“BioPhone,” “Biotouch
System,” “Nett Warrior”); Samsung SmartThings Hub; “Smartphone~Based Rapid Diagnostic
Tests;” “VOCl<et Systern;” Volkswagen Car-Net e~Remote; and Yale Assure Lock.

17

 

grants, and procurements” between various federal entities16 and private parties.ll 8/10/17 Am.
Compl. 1111 91-406. These “devices” and “programs,” independently or in combination, allegedly
infringe claims of the ’497, ’033, ’752, ’76l, ’89l, ’990, ’280, ’l89, and ’439 Patents, as well as
the ’839 Application. 8/10/ 17 Am. Compl. j[ 91. For example, regarding the LG Electronics GS
Smartphone, the Fifth Amended Complaint alleges the following:

Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 22 of the ’439 Patent, and claims 18, 118, 12, 28, 25, 30,
22, and 20 of the ’990 Patent as a current manufacturer, consumer, and/or user of
the “LG Electronics G5 Smartphone”. Manufacture for the Government; 2008:
The “Cell~All” initiative. The [DHS-S&'l`] . . . , Cell-All aims “to equip your cell
phone with a sensor capable of detecting deadly chemicals”, says Stephen Dennis,
Cell-All’s program manager. [DHS~S&T] pursued cooperative agreements with
four cell phone manufacturers: Qualcomm, LG, Apple, and Samsung. Used by the
Government; 2016: Both the LG G5 and V10 smartphones can be used by the
[DOD]. The LG smartphones received a security certification from the U.S.
Defense Information Systems Agency [(the “DISA”)], as Well as a certification by
the National lnformation Assurance Partnership [(the “NIAP”)]. Sensors will
integrate with 261 million cell phones now used in the U.S. [and l]everage billions
of dollars spent each year in sensor, carrier network and cell phone development
Multiple sensors network for chemical profiling; Cell-All aims “to equip your cell
phone with a sensor capable of detecting deadly chemicals”, says Stephen Dennis,

 

16 The federal entities identified include: the Department of the Army; the Department of
the Air Force; the Department of Defense (“DOD”); the Department of Energy; the DHS; the
Department of Horneland Security Science and Technology Directorate (“DHS-S&T”); the DOJ;
the Department of the Navy; the Air Force Research Laboratory; the Army Commnnications-
Electronics Research, Development and Engineering Center; the Amiy Edgewood Chemical
Biological Center; the Army Research Laboratory; the Chemlcal Biological Radiological Nuclear
information Resource Center; the Defense Advanced Research Projects Agency; the Defense
Threat Reduction Agency', the Domestic Nuclear Detection Office (“DNDO”); the Environrnental
Protection Agency; the Federal Emergency Management Agency; the General Services
Administration; the l-Iomeland Security Advanced Research Projects Agency; the integrated
Chemical Biological Radiological Nuclear and Explosive Program; the Joint Acquisition Chemical
Biological Radiological Nuclear Knowledge System; the Joint Program Executive Office for
Chemical and Biological Defense; the National Aeronautics and Space Administration; the Naval
Air Systems Command; the Naval Research Laboratory; the NIH; the NSF; the Oak R_idge
National Laboratory; and the Office of Naval Research.

17 The “private parties” identified include: Alluviam LLC; Apple lnc.; Biomeme Inc.;
Boeing Company; California institute of Technology (“Caltech”); Comell; Eureka Aerospace;
“Ford;” Holornic LLC; Kromel< Group plc; LG Electronics; Lockheed Martin Corporation; MlT;
Motorola, Inc.; Northrop Grumman Corporation; Oshl<osh Defense LLC; Panasonic Corporation;
Passport Systems, Inc.; PositiveID Corporation; Qualcornrn Inc.; Raytheon Ktech; Samsung;
Stanford University (“Stanford”); UC Berkeley; UCLA; the University of California, Merced
(“UC Merced”); UH; UIUC; and “Volkswagen.”

18

 

 

Cell-All’s program manager. Multiple sensor units per phone are possible. Stephen
Dennis envisions a chemical sensor in every cell phone in every pocket, purse, or
belt holster.

As a result of contracts, agreements, and procurements with various
Government Agencies (111[ 49~78), the [DHS], the [DOD], and LG Electronics for
the manufacture, development, commercialization, and/or use of the
communication/ monitoring device “LG Electronics GS Srnartphone”, the United
States has used, authorized the use, and manufactured, without license or legal
right, Plaintiff s inventions described in and covered by the ’439, and ’990 Patents.

8/10/17 Arn. Compl. 1111 93-97 (bold in original).
2. The Govermnent’s Argument.

The Government argues that the patent infringement allegations in 1111 91-406 of the August
10, 2017 Fifth Amended Complaint reflect a “deliberate strategy to multiply the proceedings for
as long as the [G]overnment . . . resist[s] settlement on Plaintiffs terms.” 10/20/ 17 Gov’t Mot. at
2. According to 28 U.S.C. § 1927,18 parties are prohibited from “rnultiply[ing] the proceedings in
any case unreasonably and vexatiously.” 10/20/17 Gov’t Mot. at 3. Although some leniency
should be afforded a pro se plaintiff, Such a plaintiff is not exempt from complying with the court’s
rules. 10/20/17 Gov’t Mot. at 3. RCFC 41 (b) authorizes the court to dismiss a claim for failure to
comply with the court’s rules or a court order. 10/20/ 17 Gov’t Mot. at 3. Accordingly, the patent
infringement allegations in the Fifth Amended Complaint should be dismissed under RCFC 41(b).
10/20/ 17 Gov’t Mot. at 2-»»3.

In the alternative, the Governrnent contends that 28 U.S.C. § 1498(a) “provides patent
owners with a remedy of damages” in the United States Court of Federal Claims, but only “when
the claimed invention is ‘used or manufactured by . . . the United States’ without a license.”
10/20/l7 Gov’t Mot. at 7 (quoting 28 U.S.C. § 1498(a)). A private party’s “use or manufacture”
of a claimed invention will be considered a “use or manufacture for the Governmen ” if the use or
manufacture is: (1) for the benefit of the Government; and (2) with the Government’s
“authorization or consent.” 10/20/l7 Gov’t Mot. at 7 (citing Carrier Corp. v. United States, 534
F.2d 244, 249 (Ct. Cl. 1976)).

 

18 28 U.S.C. § 1927 provides that

[a]ny attorney or other person admitted to conduct cases in any court of the United
States or any Territory thereof who so multiplies the proceedings in any case
unreasonably and vexatiously may be required by the court to satisfy personally the
excess costs, expenses, and attorneys’ fees reasonably incurred because of such
conduct

28 U.S.C. § 1927.

19

 

Regarding the “first requirement,” private conduct incidentally benefitting the Government
does not constitute use “for the benefit of the Government.” 10/20/ 17 Gov’t Mot. at 7 (citing
Sheridan v. United Srares, 120 Fed. Cl. 127, 131 (Fed. Cl. 2015) (“Where benefits to the
Government are merely an incidental effect of private conduct, they do not constitute ‘use or
manufacture for the Governrnent’ within the meaning of § 1498.”)). As to the “second
requirement,” authorization or consent may be express or, in limited circumstances, implied
10/20/ 17 Gov’t Mot. at 8. For example, the Governrnent “can provide express authorization and
consent . , . by including [an] operative clause in a contract, or providing other formal, written
authorization.” 10/20/ 17 Gov’t Mot. at 8. fn addition, implied authorization may be presumed
where there are “contracting officer instructions, [or] . . . specifications[,] or drawings which
impliedly sanction and necessitate infringement.” 10/20/ 17 Gov’t Mot. at 8 (quoting Hughes
Aircroft Co. v. United States, 534 F.2d 889, 901 (Ct. Cl. 1976)). Authorization and consent,
however, “may be limited by clauses in a contract.” 10/20/17 Gov’t Mot. at 8 (citing Carrfer
Corp., 534 F.2d at 249 (“Since Section 1498(a) expressly provides that any use of a patented
invention for the Governrnent must be authorized or consented to, it is plain that the Governrnent
can limit . . . authorization and consent[.]”)).

The court does not have jurisdiction under 28 U.S.C. § 1498(a) to adjudicate patent
infringement allegations concerning NSF and NIH grants and cooperative agreements, because
any benefit to the Government, at best, would be incidental 10/20/ 17 Gov’t Mot. at 10~16. In
addition, none of the grants or cooperative agreements evidence any “express or implied
authorization and consent by the [G]overnrnent.” 10/20/ 17 Gov’t Mot. at 11, 16. ln fact, the
“expressly incorporated NSF Research Terms & Conditions” explicitly exempt the NSF from
liability “for unauthorized use of patented . . . materials.” 10/20/l7 Gov’t Mot. at 13. Similarly,
the NIH grants include a reference to 45 C.F.R. Part 75, that “disallows [an] awardee from
submitting ‘[c]osts of legal, accounting, and consultant services, and related costs, incurred
in connection with patent infringement litigation [. . .] unless otherwise provided for in
the [. . .] award.”’ 10/20/17 Gov’t Mot. at 14 (quoting 45 C.F.R. § 75.435(h)). Lil<ewise, the
award of NSF and NlH grants does not evidence implied authorization, because the Government
does not direct or exercise control over the activities of awardees. 10/20/ 17 Gov’t Mot. at 13.
Although the cooperative agreements may involve a measure of Governrnent involvement, they
do not contain any text evidencing Government “authorization [or] consent to infringe another’s
patent.” 10/20/ 17 Gov’t Mot. at 15-16.

The Government also argues that the Fifth Amended Complaint’s “allegations relating
generally to smartphones and other consumer devices should be dismissed” under RCFC 12(b)(1)
and 12(b)(6), because they fail to allege “actual ‘use’ by the [G]overnrnent of the various
combinations of consumer devices, nor would the [G]overnment’s use be plausible.” 10/20/17
Gov’t Mot. at 16~17. ln addition, the Fifth Amended Complaint “fails to allege that any of these
various consumer devices Were made for the benefit of the [G]overnrnent.” 10/20/ 17 Gov’t Mot.
at 17. The companies referenced in the Fifth Amended Complaint “manufacture, develop, and
commercialize their devices in their own economic self-interest.” 10/20/ 17 Gov’t Mot. at 17.
Moreover, any benefit that the Governrnent might receive does “not constitute use or manufacture
for the Government within the meaning of § 1498.” 10/20/ 17 Gov’t Mot. at 17~18 (quoting
Sheridan, 120 Fed. Cl. at 131 (determjning that the alleged benefit to the Government of economic
“stimulus, jobs, and revenue” was “merely an incidental effect of private conduct, [that does] not

20

 

constitute ‘use or manufacture for the Government’ within the meaning of § 1498”)). ln sum, the
Fifth Amended Complaint contains no allegations that the Government actually used or authorized
the use of any of the accused devices at issue. 10/20/ 17 Gov’t Mot. at 20. Instead, the Fifth
Amended Complaint alleges only that the devices “@ be used by the [Government].” 10/20/ 17
Gov’t Mot. at 20 (underline in original).

Other allegations of the Fif`th Amended Complaint also should be dismissed, under RCFC
12(b)(1) and 12(b)(6). l0/20/ 17 Gov’t Mot. at 21. First, allegations of infringement “based on a
number of devices allegedly developed by third party Passport Systems, Inc. in response to a Broad
Agency Announcement (“BAA”)” should be dismissed, because “a BAA is not a contract.”
10/20/ 17 Gov’t Mot. at 21 (citing 8/10/17 Am. Compl. 1111 161-68). A BAA is “a general
announcement of an agency’s research interest” and “cannot be said to provide authorization and
consent.” 10/20/ 17 Gov’t Mot. at 21»»22 (quoting 48 C.F.R. § 2.101(b)). Second, patent
infringement allegations concerning the ’761 , ’280, and ’189 Patents should be dismissed, because
the Fifth Amended Complaint alleges no infringement of specific claims of these three patents.
10/20/ 17 Gov’t Mot. at 22-23. Third, as to the ’033 Patent, “there is no subject matter jurisdiction
under Section 1498, because this patent was surrendered when it was reissued[.]” 10/20/17 Gov’t
Mot. at 22 (citing 35 U.S.C. § 25l(a) (“[T]he Director shall, on the surrender of such patent and
the payment of the fee required by law, reissue the patent for the invention disclosed in the original
patent[.]”)). Fourth, as to the ’839 Application, there can be no infringement of unissued claims.
10/20/ 17 Gov’t Mot. at 23 (citing Stroughter v. UnitedSrates, 89 Fed. Cl. 755, 762 (Fed. Cl. 2009)
(“Because plaintiffs’ claims allege the infringement of unissued patents, the court's jurisdiction
under § 1498 is lacking.”)). In addition, the allegations of patent infringement of the ’439 Patent
are based on “activities” that occurred prior to issuance of the ’439 Patent and must be dismissed
as a matter of law. 10/20/ 17 Gov’t Mot. at 23.

3. Plaintiff’s Response And Motion F or Leave To FiIe A Motion For
Summary Judgment.

Plaintiff responds that “[a] fter ten (10) months of jurisdictional discovery, the Government
has fail[ed] to introduce any new evidence that supports its ‘Motion to Dismiss Certain NSF and
NIH Devices[.]”’ 11/17/17 Pl. Resp. at 14. The Government’s arguments are the same as those
presented in the June 24, 2016 Motion To Dismiss. 1l/17/ 17 Pl. Resp. at 14. In sum, “[t]he
Government has not shown any disagreement, or has [not] tried to overcome [the court’s
November 30, 2016] ‘Memorandum Opinion and Order Denying Government’s Motion To
Dismiss.”’ 11/17/ 17 Pl. Resp. at 14. Therefore, “Plaintiff is standing on the [c]ourt’s resolution
and decision to dismiss.” 1l/17/17 Pl. Resp. at 14.

In the alternative, Plaintiff “seeks leave to file a motion for summary judgment,” pursuant
to RCFC 56(e) and 56(f). 11/17/l7 Pl. Resp. at l. Plaintiff contends that the Government is in
“contempt of court” for “willfully disobey[ing]” the court’s order to file a Motion To Dismiss
“based on jurisdiction that was due on October 2, 2017.” 11/17/17 Pl. Resp. at 2. Plaintiff “did
not object” to the Govemment’s September 15, 2017 request “for an extension of time to respond
to Plaintiff’ s [Fifth] Amended Complaint,” because “it was an extension of time . . . to file an
answer.” 11/l7f17 Pl. Resp. at 3 (citing ECF No. 122 (Sept. 19, 2017 Order granting the
Government “an additional 18 days to respond to Plaintiff’ s [Fifth Amendedl Complaint”)).
lnstead of filing an answer, the “Government has wasted 16 months of taxpayers’ dollars

21

 

 

questioning this [c]ourt’s jurisdiction[.]” 11/17/17 Pl. Resp. at 3. The Government is also in
“contempt of court” for “willfully disobey[ing]” the court’s order to “file an answer to Plaintiff’s
Complaint.” 11/17/ 17 Pl. Resp. at 4-5 (citing ECF No. 122). ln addition, the Government is in
“conternpt of court” for “willfully disobey[ing]” the court’s order “M to file any additional
[m]otions before a decision is made on jurisdiction.” 11/17/17 Pl. Resp. at 5 (capitalization and
underline in original). But, “[w]ithin the Government’s latest ‘Motion for Partial Dismissal . . . ’
filed on 10/20/2017, the Government is asking the [c]ourt to rule on pleadings” that are not related
to jurisdiction 11/17/l7 Pl. Resp. at 6. Plaintiff has “[s]uffered [p]rejudice,” because of the
Government’s “{W]illful [c]onduct of [d]elaying.” ll/17/ 17 Pl. Resp. at 8.

4. The Government’s Reply And Opposition To Plaintiff’s Motion For
Leave To File A Motion For Summary Judgment

The Government replies that “Plaintiff offers no rebuttal to the [Fifth] Amended
Complaint’s failure to plead any facts supporting the jurisdictional prerequisite that the newly
accused consumer devices . . . were manufactured for the [G]overnment.” 12/18/17 Gov’t Reply
at 5. “Nor does Plaintiff address the [Fif`th] Arnended Complaint’s failure to allege use by the
[G]overnment of accused devices[.]” 12/18/17 Gov’t Reply at 5. ln fact, “Plaintiff"s attempt to
drastically expand this case by introducing scores of consumer devices actually reinforces the
{G]overnment’s arguments for dismissal Indeed, Plaintiff” s bald [allegation] that ‘[t]he
Government cannot use a smartphone of any kind without infringing Plaintiff s claimed invention’
demonstrates the implausibility of Plaintiff’ s allegations of infringement.” 12/18/ 17 Gov’t Reply
at 5 (underline in original). Plaintiff also “makes no showing that this [c]ourt has jurisdiction over
the NSF and NIl-l awards[,] based on either express or implied authorization and consent.”
12/18/17 Gov’t Reply at 6. Although, “Plaintiff faults the [G]overnment for allegedly ‘fail[ing] to
introduce new evidence that supports’ its argument that this [c]ourt lacks jurisdiction over the NSF
and NlH awards . . . , in doing so, Plaintiff improperly reverses the burden of proving jurisdiction,
which remains with Plaintiff” 12/18/17 Gov’t Reply at 6 (citing Sheria'an, 120 Fed. Cl. at 129
(“Subject~matter jurisdiction must be established by the plaintiff at the outset of any case before
the Court proceeds to the merits of the action.”)). Finally, “Plaintiff’ s additional evidence . . . and
claim charts . . . should be excluded,” because “[t]hese exhibits belatedly accuse additional
products . . . in contravention of this [c]ourt’s May 25, 2017 Scheduling Order, which permitted
Plaintiff ‘to amend his complaint and claim chart one final time, prior to the court’s ruling on
jurisdiction,’ in which the complaint ‘will allege all claims asserted against the Government.”’
12/18/17 Gov’t Reply at 7 (quoting ECF No. 116).

In addition, “Plaintiff"s demand for ‘summary judgrnent’ is improper,” as it violates the
court’s May 25 , 2017 Scheduling Order that “plainly and repeatedly prohibited Plaintiff from filing
additional motions without first obtaining leave of court.” 12/18/17 Gov’t Reply at 3 (citing ECF
No. 1l6 (“Plaintiff is ordered not to file any other motions or papers without leave of the court.”)).
“Styling the paper as one ‘seel<[ingj leave to file’ does not undo Plaintiff’s overreach.” 12/ 18/ 17
Gov’t Reply at 3. ln addition, “Plaintiff misrepresents the [G]overnrnent’s correspondence with
Plaintiff and the [c]ourt to feign surprise by the [Gjovernment’s motion to dismiss[.]” 12/1 8/ 17
Gov’t Reply at 3. Specifically, “[o}n September 15 , [20l 7] the [G]overnment Wrote to the [c]ourt,
copying Plaintiff, that the {G] overnment intended to seek an extension ‘to file its Motion to
Dismiss.”’ 12/18/17 Gov’t Reply at 4 (underline in original). rl`herefore, because “Plaintiff’s . . .

22

 

motion is premised on this misrepresentation . . . , it should be denied.” 12/18/17 Gov’t Reply at
4. ln the alternative, Plaintiff’s request for summary judgment is “premature because the case is
in the pleadings stage, merits discovery has not yet opened, and the [c]ourt has not yet construed
the claim terms.” 12/18/17 Gov’t Reply at 4 (citing RCFC 56(d) (“lf a nonmovant shows by
affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its
opposition, the court may . . . defer considering the motion or deny it[.]”)).

5. Plaintift"s Reply.

Plaintiff`s reply did not address the Government’s arguments concerning the court’s
jurisdiction to adjudicate the patent infringement allegations of the August 10, 20l7 Fifth
Amended Complaint.

6. The Court’s Resqution.
a. Governing Precedent.

The United States Court of Federal Claims has jurisdiction to adjudicate patent
infringement allegations against the Government alleging that “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.” 28 U.S.C. § 1498(a).
In this context, “the use or manufacture of [a patented] invention . . . 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 construed as use or manufacture for the United States.” Ia'.
Accordingly, the United States Court of Federal Claims has jurisdiction to adjudicate patent
infringement allegations against the Government “arising upon either . . . of . . . two grounds:
(1) unlicensed use or manufacture of a patented invention by the [Governrnent] directly; and/or
(2) unlicensed use or manufacture of a patented invention for the [Government] and with [the
Government’s] authorization or consent.” Hughes Az`rcraft Co., 534 F.2d at 897. As to the second
basis for jurisdiction, 28 U.S.C. § 1498(a) “sets forth a two-part test for determining whether th[e]
court has jurisdiction . . . over a particular fallegation].” Ia'. “Under this test, a finding of
jurisdiction is conditioned upon a showing that[:] (l) the accused use or manufacture was
undertaken for the Government, 1'. e. , for the Government’s benefit; and (2) the Government gave
its authorization or consent f`or the accused use or manufacture.” Id. at 897-98.

Regarding the first element, infringing activity has been held to be “for the Government”
under 28 U.S.C. § 1498(a), if it is “for the benefit of the Government.” Advanced$ofmare Desl`gn
Corp, v. Fed. Reserve Bank ofSt. Louis, 583 F.3d 1371, 1378 (Fed. Cir. 2009). “Incidental benefit
to the [G]overnrnent is insufficient[.]” IRIS Corp. v. Japan Airlines Corp., 769 F.3d 1359, 1362
(Fed. Cir. 2014) (quotation marks and alterations omitted) (holding that the Government benefited
from the examination of passports in “accord[ance with] federal law,” because it “improves the
detection of fraudulent passports and reduces demands on [G]overnment resources”); see also
Advanced Software Design Corp., 583 F.3d at 1378-79 (holding that requiring Federal Reserve
Banks to use a certain “seal encoding” system to identify fraudulent bank checks, benefitted the
Government by averting fraud and saving resources through the use of more efficient technology);
Hughes Aircraj? Co., 534 F.2d at 897-99 (holding that the Government’s participation in the

23

 

 

Skynet ll satellite program was “for the Government,” because the program was vital to the
military defense and security of the United States).

Regarding the second element, “authorization or consent of the Government” may be
express or implied See TVI Energy Corp. v. Blane, 806 F.2d 1057, 1060 (Fed. Cir. 1986)
(“Authorization or consent by the Government can be expressed . . . [or i]n proper circumstances,
Government authorization can be implied.”); see also Hughes Aircraj‘ Co., 534 F.2d at 901
(holding that implied authorization may be presumed when the Government provides

“instructions, . , . specifications[,j or drawings which impliedly sanction and necessitate
infringement”); IRIS Corp., 769 F.3d at 1362 (holding that “the [G]overnment. . . clearly provided
its authorization or consentl,] because [the contractor] . . . [could 1not comply with its legal

obligations without engaging in the allegedly infringing activities”); Larson v. United States, 26
Cl. Ct. 365, 370 (Cl. Ct. 1992) (holding that implied authorization or consent “may be found under
the following conditions: (1) the [G]overnment expressly contracted for work to meet certain
specifications; (2) the specifications cannot be met without infringing on a patent; and (3) the
[G]overnment had some knowledge of the infringement”). ln addition, the Government “can limit
its authorization and consent” by “inclusion . . . of a standard clause [that] limits the Government’ s
authorization and consent[.]” Carrier Corp., 534 F.2d at 24749 (“Since Section l498(a)
expressly provides that any use of a patented invention for the Government must be authorized or
consented to, it is plain that the Government can limit . . . authorization and consent{.j”).

b. Patent Infringernent Allegations Concerning National Science
Foundation Grants And Cooperative Agreements Must Be
Dismissed Under RCFC 12(b)(1).

i. Regarding National Science Foundation Grants.

The Government argues that patent infringement allegations19 concerning the nine NSF

grants20 should be dismissed under RCFC 12(b)(1), because: (1) in general, grants “by their
nature . . . carry out an attenuated public purpose . . . instead of acquiring property or services for
the direct benefit or use of the [Gjovernment;” and (2) the NSF grants “are entirely devoid of
express or implied authorization and consent by the [G]overnment.” 10/20/ 17 Gov’t Mot. at ll
(underline in original).

 

19 The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations concerning the NSF grants are: 1111 184485, 199"”200, 235-36, 260-61, 265-66,
270-71, 275-76, 280-81, 285-86, 290-91, 295-96, 300-01, 305-06, and 350-51. These
paragraphs are highlighted in yellow in the attached Court Exhibit B.

20 The nine NSF grants are: Grant No. CCF-1029585 (10/20/17 Gov’t Mot. Ex. 6); Grant
No. CBET-1264377 (10/20/ 17 Gov’t Mot. Ex. 7); Grant No. CBET-l447893 (10!20/17 Gov’t Mot.
Ex. 8); Grant No. CBET-l34305 8 (10/20/ 17 Gov’t Mot. Ex. 9); Grant No. CBET-1444240
(10/20/ 17 Gov’t Mot. Ex. 10); Grant No. EFRI-1332275 (10/20/ 17 Gov’t Mot. Ex. 11); Grant No.
IlP-1450552 (10/20/17 Gov’t Mot. Ex. 12); Grant No. 1533983 (10/20/17 Gov’t Mot. Ex. 13); and
Grant No. 1534126 (10/20/17 Gov’t Mot. Ex. 14).

24

 

 

The Fifth Amended Complaint alleges the following with respect to Grant No. CCF-
1029585:

Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 13 of the ’439 Patent, and claims 18, 118, 12, 28, 25, 20,
32, and 30 of the ’990 Patent as a current manufacturer, consumer, and/or user of
the Samsung Galaxy s6 “BioPhone”. The Samsung Galaxy s6 “Bio Phone”
smartphone can measure your heart and breathing rates, even if you’re not directly
touching it. Researchers at MIT are working on a project called BioPhone that
derives biological signals from your smartphone’s accelerometer, which they say
can capture the small movements of your body that result from the beating of your
heart and rising and falling of your chest. This information is useful to base medical
diagnoses in real-life conditions and to help track chronic health conditions and
effects of therapeutic interventions Research is based upon work supported by the
[NSF] (NSF CCF~1029585), Samsung, and the MIT Media Lab Consortium.

As a result of contracts[zll with the . . . [NSF], Samsung Group, and the MIT
Media Lab Consortium for the development and commercialization of the Samsung
Galaxy s6 “BioPhone”, and the “Samsung Electronic Communications Device”,
the United States has used, authorized the use, and manufactured, without license
or legal right, Plaintiff s inventions described in and covered by the ’439, and ’990
Patents.

8/10/17 Am. Compl. 1111 1994200.

The Fifth Arnended Complaint contains patent infringement allegations arising from the
award of the other NSF grants, each of which repeats the text of 28 U.S.C. § 1498(a) in
conclusively alleging that, “[a]s a result of contracts with the [NSF} . . . the United States has used,
authorized the use, and manufactured . . . Plaintiff"s inventions” as “a current manufacturer,
consumer, and/or user” of the “devices” or “programs” developed under the NSF grants. 8/10/l7
Am. Compl. 1111 184~85, 199~200, 235~36, 260-61, 265-66, 270-71, 275-76, 280~»81, 285486,
290-91, 295-96, 300-01, 305-06, 350-51. The Fifth Amended Complaint, however, does not
contain “the necessary supporting or primary facts sufficient” to support this conclusion See
Hebern v. United States, 132 Ct. Cl. 344, 348~49 (Ct. Cl. 1955). Instead, the Fifth Amended
Complaint implies “direct” use or manufacture by the Government, based solely on the
NSF’s funding the development of allegedly infringing “devices” or “programs.” 8/10/17 Am.
Compl. 11 200 (“As a result of contracts,” i.e., the NSF grants, “the United States has used,
authorized the use, and manufactured . . . Plaintiff’s inventions[.]” (emphasis added)). Funding
alone, however, does not establish “direct” use or manufacture of “Plaintiff’s inventions” by the

 

21 The Fifth Amended Complaint’s characterization of a NSF grant as a contract is
incorrect. Compare 31 U.S.C. § 6304 (“An executive agency shall use a grant agreement . . .
when . . . substantial involvement is not expected between the executive agency and the . . .
recipient when carrying out the activity contemplated in the agreement.”), with 31 U.S.C. § 6303
(describing the circumstances, inapplicable here, under which agencies are required to use
“procurement contracts”).

25

 

NSF, see Capz'tol Boulevard Parmers v. United States, 31 Fed. Cl. 758, 761 (Fed. Cl. 1994)
(determining that, with regard to federal grants, “the [G]overnment does not procure any property
or services for its direct use, rather it provides funding”); and the Fifth Amended Complaint’s
conclusory allegations are not sufficient to establish jurisdiction See Norron v. Larney, 266 U.S.
51l, 515 ( 1925) (“It is quite true that the jurisdiction of a federal court must affirmatively and
distinctly appear and cannot be helped by presumptions or by argumentative inferences drawn
from the pleadings.”).

The Fifth Amended Complaint also fails to allege that “the accused use or manufacture
was undertaken . . . for the Government’s benefit.” See Hughes Aircra]? Co., 534 F.2d at 897. The
Fifth Amended Complaint contains no factual allegations establishing anything more than
“incidental benefit” to the NSF. See Advanced Sofrware Design Corp., 583 F.3d at 1379 (holding
that “an interest in [a] program generally, or [where the Government] funds or reimburses all or
part of [a pro gram’s] costs, is too remote to make the 1G10vernment the program’s beneficiary for
the purposes underlying § 1498” (quoting Larson, 26 Cl. Ct. at 369)); see also IRIS Corp., 769
F.3d at 1362 (“lncidental benefit to the [G]overnment is insufficient” to satisfy the requirements
of 28 U.S.C. § 1498(a).).

Nor does the Fifth Amended Complaint allege that “the Government gave its authorization
or consent for the accused use or manufacture.” See Hughes Aircraft Co., 534 F.2d at 897. The
Fifth Amended Complaint does not contain any factual allegations establishing that the NSF, at
any time, authorized or consented to infringing use or manufacture For example, the Fifth
Amended Complaint does not cite any portions of the NSF grants or communications between the
NSF and grant awardees “expressly” or “implicitly” authorizing infringing conduct. See Larson,
26 Cl. Ct. at 369-70 (“[A]uthorization or consent requires explicit acts or extrinsic evidence
sufficient to prove the [G]overnment’s intention to accept liability for a specific act of
infringement.”). Nor does the Fifth Arnended Complaint include any factual allegations that could
be construed as “express” or “implicit” authorization or consent by the NSF to infringe Plaintiff’s
patents. See Hughes Az'rcraft Co., 534 F.2d at 901 (holding that implied authorization may
be presumed when the Government provides “instructions, . . . specifications[,] or drawings
which impliedly sanction and necessitate infringement”); see also IRIS Corp., 769 F.3d at 1362
(holding that “the 1G]overnrnent . . . clearly provided its authorization or consent[,] because [the
contractor] . . . cannot comply with its legal obligations without engaging in the allegedly
infringing activities”), Instead, each of the NSF grants incorporated a standard clause advising
that the NSF “cannot assume any liability for . . . claims arising out of any work supported by
an award for unauthorized use of patented . . . materials” or, more generally, “with respect
to . . . property of . . . third parties.” 10/20/17 Gov’t Mot. Ex. 15. Therefore, awardees were
warned that the use of “property of . . . third parties,” including “patented . . . materials,” was
“unauthorized.” See Carrier Corp., 534 F.2d at 247-49 (holding that the Government “can
limit . . . authorization and consent” by “inclusion . . . of a standard clause [that] limits the
Government’s authorization and consent”).

For these reasons, the court has determined that the patent infringement allegations

contained in 1111 184-85, 199-200, 235-36, 260-61, 265-66, 270-71, 275-76, 280-81, 285-86,
290~91, 295~96, 300~01, 305~06, and 350~51 of the August 10, 2017 Fifth Amended Complaint

26

 

 

failed to satisfy Plaintiff s burden to establish jurisdiction under 28 U.S.C. § 1498(a). Accordingly,
these paragraphs of the Fifth Amended Complaint must be dismissed under RCFC 12(b)(l).

ii. Regarding National Science Foundation Cooperative
Agreements.

The Government also argues that patent infringement allegations22 concerning the two NSF

cooperative agreements23 should be dismissed under RCFC l2(b)(l), 10/20/17 Gov’t Mot. at 15.

rl`he Fifth Amended Complaint alleges the following with respect to the NSF cooperative
agreements:

Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 13 of the ’439 Patent, and claims 18, 118, 12, 28, 25, 20,
32, and 30 of the ’990 Patent as a current manufacturer, consumer, and/or user of
the “COINS” Nano-Embedded Sensors for Smartphones: The Center of Integrated
Nanomechanical Systems (COINS) is a multidisciplinary nanoscale science and
engineering center (NSEC) funded by the [NSF] with its headquarters at
[UC Berkeley] and satellite campuses at Stanford, Caltech, and [UC Merced]. The
goal of COINS is to develop and integrate cutting-edge nanotechnologies into a
versatile platform With various ultra-sensitive, ultra-selective, self-powering,
mobile, Wirelessly communicating detection applications; develop novel low~
power, low-cost, selective nanomaterials-enable sensing systems for real-time
detection of expiosives, toxicants, and radiation and interface Nano-enable sensers
with smart phones, eventually becoming embedded in the device.

As a result of contracts{z‘l] With the [NSF], the Center of Integrated
Nanomechanical Systems (COINS), [UC Berkeley], Stanford, Caltech,
[UC Merced], and Apple lnc. for the development and commercialization of the
“COINS” Nano-Ernbedded Sensors for Smartphones, and the “Apple Inc.’s
Electronic Communications Device”, the United States has used, authorized the

 

22 The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations concerning the NSF cooperative agreements are: ii‘|i 194~»95. These paragraphs are
highlighted in green in the attached Court Exhibit B.

23 The two NSF cooperative agreements are: Award No. 0425914 (10/20/17 Gov’t Mot.
EX. 20) and Award No. 0832819 (10/20/17 Gov’t Mot. EX. 21).

24 The Fifth Amended Complaint’s characterization of a NSF cooperative agreement as a
contract is incorrect Compare 31 U.S.C. § 6305 (describing the circumstances under which
agencies are required to use a “cooperative agreement”), with 31 U.S.C. § 6303 (describing the
circumstances, inapplicable here, under Which agencies are required to use “procurement
contracts”).

27

 

 

use, and manufactured, Without license or legal right, Plaintiff’s inventions
described in and covered by the ’439 and ’990 Patents.

8/10/17 Am. Compl. iii 19¢95.

The Fifth Amended Complaint, however, does not contain “the necessary supporting or
primary facts sufficient to allege” that the Government “used, authorized the use, and
manufactured . . . Plaintiffs inventions,” as a result of the NSF cooperative agreements See
Hebern, 132 Ct. Cl. at 348-49. lnstead, the Fifth Amended Complaint implies “direct” use or
manufacture by the Government, based solely on the NSF’s funding the development of allegedly
infringing “devices” or “programs.” 8/10/17 Am. Compl. ii 194 (“The Center of integrated
Nanomechanical Systems (COINS) is a multidisciplinary nanoscale science and engineering
center CNSEC) funded by the [NSF.]” (emphasis added)). Funding alone, however, does not
establish “direct” use or manufacture of “Plaintiff’ s inventions” by the NSF. See Capitol
Boulevard Partners, 31 Fed. Cl. at 761. Although cooperative agreements entail some greater
involvement by the NSF than grants, that fact also does not establish “direct” use or manufacture
by the NSF; and the Fifth Amended Complaint failed to allege any other involvement by the NSF.
Compare 31 U.S.C. § 6305 (“An executive agency shall use a cooperative agreement . . .
When . . . substantial involvement is expected between the executive agency and the . . . recipient
When carrying out the activity contemplated in the agreement.”), with 31 U.S.C. § 6304 (“An
executive agency shall use a grant agreement . . . When . . . substantial involvement is not expected
between the executive agency and the . . . recipient when carrying out the activity contemplated in
the agreement.”). Nor does the Fifth Amended Complaint cite any portions of the NSF cooperative
agreements or communications between the NSF and cooperative agreement awardees from which
the court reasonably could infer “direct” use or manufacture by the NSF; and the Fifth Amended
Complaint’s conclusory allegations are not sufficient to establish jurisdiction See Norton, 266
U.S. at 515 (“lt is quite true that the jurisdiction of a federal court must affirmatively and distinctly
appear and cannot be helped by presumptions or by argumentative inferences drawn from the
pleadings.”).

The Fifth Amended Complaint also fails to allege that “the accused use or manufacture
was undertaken . . . for the Government’s benefit.” See Hughes Atrcraji‘ Co. , 534 F.2d at 897. The
Fif’th Arnended Complaint contains no factual allegations establishing anything more than
“incidentai benefit” to the Government See Advanced Software Design Corp., 583 F.3d at 1379
(holding that “an interest in [a] program generaliy, or [Where the Government] funds or reimburses
ali or part of [a program’s] costs, is too remote to make the [G]overnment the program’s
beneficiary for the purposes underlying § 1498” (quoting Larson, 26 Cl. Ct. at 369)); see also IRIS
Corp., 769 F.3d at 1362 (“Incidental benefit to the [G]overnment is insufficient” to satisfy
the requirements of 28 U.S.C. § 1498(a).). Moreover, although cooperative agreements entail
some greater involvement by the NSF than grants, the purpose is the same, i.e., “to transfer a
thing of value . . . instead of acquiring . . . properly or services for the direct benefit or use of
the . . . Government.” 31 U.S.C. § 6305 (emphasis added); see also 31 U.S.C. § 6304 (“[T]he
principal purpose of [a grant agreement] is to transfer a thing of value . . . instead of acquiring . . .
property or services for the direct benefit or use of the . . . Government.”).

Nor does the Fifth Amended Complaint allege that “the Government gave its authorization
or consent for the accused use or manufacture.” See Hughes Aircraft Co., 534 F.2d at 897. The

28

 

 

Fifth Amended Complaint does not contain any factual allegations establishing that the NSF, at
any time, authorized or consented to infringing use or manufacture For example, the Fifth
Amended Complaint does not cite any portions of the NSF cooperative agreements or
communications between the NSF and cooperative agreement awardees “expressly” or
“implicitly” authorizing infringing conduct See Larson, 26 Cl. Ct. at 369-70 (“[A]uthorization
or consent requires explicit acts or extrinsic evidence sufficient to prove the [G]overnment’s
intention to accept liability for a specific act of infringement.”). Nor does the Fifth Amended
Complaint include any factual allegations that could be construed as “express” or “implied”
authorization or consent by the NSF to infringe Plaintiff’ s patents. See Hughes Aircraft Ca., 534
F.2d at 901 (holding that implied authorization may be presumed when the Government provides
“instructions, . . . specifications[,] or drawings which impliedly sanction and necessitate
infringement”); see also IR]S Corp., 769 F.3d at 1362 (holding that “the [Gjovernment . . . clearly
provided its authorization or consent[,] because [the contractor] . . . cannot comply with its legal
obligations without engaging in the allegedly infringing activities”). lnstead, each of the
NSF cooperative agreements incorporated a standard clause advising that the NSF “cannot
assume any liability for . . . claims arising out of, or related to, . . . [the] unauthorized use of
patented . . . materials.” 10/20/ 17 Gov’t Mot. Ex. 15. Therefore, awardees were warned that the
use of “patented . . . materials” was “unauthorized.” See Carrz'er Corp., 534 F.Zd at 247-49
(holding that the Government “can limit . . . authorization and consent” by “inclusion . . . of a
standard clause [that] limits the Government’s authorization and consent”).

For these reasons, the court has determined that the patent infringement allegations
contained in 1111 194495 of the August 10, 2017 Fifth Amended Complaint failed to satisfy
Plaintist burden to establish jurisdiction under 28 U.S.C. § 1498(a). Accordingly, these
paragraphs of the Fifth Amended Complaint must be dismissed under RCFC lZ(b)(l).

c. Patent Infringement Allegations Concerning National
Institutes Of Health Grants Must Be Dismissed Under RCFC
12(b)(1).

The Government also argues that patent infringement allegations25 concerning the four
NIH grants26 should be dismissed under RCFC l2(b)(l). 10/20/ 17 Gov’t Mot. at 14~15.

The Fifth Amended Complaint alleges the following with respect to Grant No.
1R21All20973:

Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 20 of the ’439 Pateut, claim 34 of the ’752 patent, and

 

25 The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations concerning the NIH grants are: 1111 335-36, 355-56, 360-61, and 365-66. These
paragraphs are highlighted in blue in the attached Court Exhibit B.

25 The four NlH grants are: Grant No. 1R2lAIl20973~01 (10/20/17 Gov’t Mot. Ex. 16);
Grant No. 1R01EB021331-Ul (10/20/17 Gov’t Mot. Ex. 17); Grant No. lR43CAl93096-01
(10/20/17 Gov’t Mot. Ex. 18); and Grant No. 1R43A1107984-01A1 (10/20/17 Gov’t Mot. Ex. 19).

29

 

 

claims 118, 18, 92, 25, and 124 of the ’990 Patent as a current manufacturer,
consumer, and/or user of the “FeverPhone” that is interconnected to the Apple
iPhone. Comell[’s] David Erickson, a mechanical engineer, and Saurabh l\/lehta, a
physician and nutrition researcher. The {NIH] . . . has awarded to Cornell a four-
year, $2.3 million grant to develop Feveri’hone, which will diagnose six febrile
diseases in the field: dengue, malaria, chikungunya, typhoid fever, leptospirosis and
Chagas’ disease FeverPhone_hardware and software, working in combination
with a smartphone or tabletewill provide a real-time, rapid and accurate diagnosis
using a drop of blood to differentiate and identify specific pathogens. While the
Zika virus was not included in this specific grant, as the application was submitted
before the current outbreak, the technology potentially can be expanded to include
it. “FeverPhone,” a smartphone based molecular diagnostics platform for point~of~
care differential diagnosis of six common causes of acute febrile illness includes:
(1) a specialized 6-plexed colorimetric lgM!IgG assay cartridge that exploits color
discrimination assay on mobile devices, (2) associated iPad based hardware that
allows rapid interpretation of the cartridge results, and (3) software that combines
differential molecular diagnosis with a confirmatory symptomatic interface.

As a result of contracts[m with the [NIH] . . . , Cornell . . . , and Apple Inc.
for the development and commercialization of the “FeverPhone” and the “Apple
lnc.’s Electronic Communications Device” the United States has used, authorized
the use, and manufactured, without license or legal right, Plaintiff" s inventions
described in and covered by the ’439, ’752, and ’990 Patents.

s/io/w Am. Compl. 1111 355-56.

The Fifth Amended Complaint contains patent infringement allegations arising from the
award of the other NIH grants, each of which repeats the text of 28 U.S.C. § 1498(a) in
conclusively alleging that, “[a]s a result of contracts with the [Nll-I] . . . the United States has used,
authorized the use, and manufactured . . . Plaintiff’s inventions” as “a current manufacturer,
consumer, and/or user” of the “devices” or “programs” developed under the NIH grants. 8/10/17
Am. Compl. 1111 336, 356, 361, 366. The Fifth Amended Complaint, however, does not contain
“the necessary supporting or primary facts sufficient” to support this conclusion See Hel)ern, 132
Ct. Cl. at 348-49. Instead, the Fifth Amended Complaint implies “direct” use or manufacture by
the Government, based solely on the NIH’s funding the development of allegedly infringing
“devices” or “programs.” 8/10/17 Am. Compl. 11 356 (“As a result of contracts,” i.e., the NIH
grants, “the United States has used, authorized the use, and manufactured . . . Plaintiff s
inventions[.]” (emphasis added)). Funding alone, however, does not establish “direct” use or
manufacture of “Plaintiff’ s inventions” by the NIH, see Capitol Boulevard Partners, 31 Fed. Cl.
at 761 (determining that, with regard to federal grants, “the {Gjovernment does not procure any
property or services for its direct use, rather it provides funding”); and the Fifth Amended
Complaint’s conclusory allegations are not sufficient to establish jurisdiction See Norton, 266

 

27 As previously explained, the Fifth Amended Complaint’s characterization of a NIH grant
as a contract is incorrect See 31 U.S.C. §§ 6303-6304 (distinguishing between grant agreements
and procurement contracts).

30

 

 

U.S. at 515 (“It is quite true that the jurisdiction of a federal court must affirmatively and distinctly
appear and cannot be helped by presumptions or by argumentative inferences drawn from the
pleadings.”).

The Fifth Amended Complaint also fails to allege that “the accused use or manufacture
Was undertaken . . . for the Government’s benefit.” See Hughes Az'rcrafi‘ Co. , 534 F.2d at 897. The
Fifth Amended Complaint contains no factual allegations establishing more than “incidental
benefit” to the Government See Advanced Software Design Corp., 583 F.3d at 1379 (holding that
“an interest in [a] program generally, or [where the Government] funds or reimburses all or part
of [a program’s] costs, is too remote to make the [G]ovemment the program’s beneficiary for the
purposes underlying § 1498” (quoting Larson, 26 Cl. Ct. at 369)); see also IRIS Corp., 769 F.3d
at 1362 (“lncidental benefit to the [G]overnment is insufficient” to satisfy the requirements of 28
U.S.C. § 1498(a).).

Nor does the Fifth Amended Complaint allege that “the Government gave its authorization
or consent for the accused use or manufacture.” See Hughes Atrcraft Co., 534 F.2d at 897. The
Fifth Amended Complaint does not contain any factual allegations establishing that the NIH, at
any time, authorized or consented to infringing use or manufacture For example, the Fifth
Amended Complaint does not cite any portions of the NIH grants “expressly” or “implicitly”
authorizing infringing conduct. See Larson, 26 Cl. Ct. at 369~70 (“[A]uthorization or consent
requires explicit acts or extrinsic evidence sufficient to prove the [G]overnment’s intention to
accept liability for a specific act of infringement.”). Nor does the Fifth Amended Complaint
include any factual allegations that could be construed as “express” or “implied” authorization or
consent by the Nll-l to infringe Plaintiff’s patents. See Huglzes Aircraj? Co., 534 F.2d at 901
(holding that implied authorization may be presumed when the Government provides
“instructions, . . . specifications[,] or drawings which impliedly sanction and necessitate
infringement”); see also IRIS Corp., 769 F.3d at 1362 (holding that “the [G]overnment . . . clearly
provided its authorization or consent[,] because [the contractor] . . . cannot comply with its legal
obligations without engaging in the allegedly infringing activities”). Instead, three of the Nll-I
grants were “subject to” 45 C.F.R. § 75 .435(h), that provides that “[c]osts of legal . . . services,
and related costs, incurred in connection with patent infringement litigation, are unallowable
unless otherwise provided for in the . . . award.” 45 C.F.R. § 75.435(h). Although the text of
45 C.F.R. § 75.435(h) does not directly pertain to the NlH’s authorization or consent, it does
bolster the conclusion that the NIH grants are devoid of express or implied authorization or
consent

For these reasons, the court has determined that the patent infringement allegations
contained in 1111 335-36, 355-56, 360-61, and 365-66 of the August 10, 2017 Fifth Amended
Complaint failed to satisfy Plaintiff" s burden to establish jurisdiction under 28 U.S.C. § 1498(a).
Accordingly, these paragraphs of the Fifth Amended Complaint must be dismissed under RCFC

12(b)(1).

31

 

 

d. Patent Infringement Allegations Concerning

Government’s Alleged Use Of “Smartphones And Other
Consumer Devices” Must Be Disrnissed Under RCFC 12(b)(l)

And 12(1>)(6).

The Government argues that patent infringement allegations28 “

The Fifth Amended Complaint alleges the following with respect to the “LG Electronics
G5 Smartphone”:

Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 22 of the ’439 Patent, and claims 18, 118, 12, 28, 25, 30,
22, and 20 of the ’990 Patent as a current manufacturer, consumer, and/or user of
the “LG Electronics G5 Smartphone”. Manufacture for the Government; 2008:
The “Cell-All” initiative rl`he [DHS-S&T] . . . , Cell-All aims “to equip your cell
phone with a sensor capable of detecting deadly chemicals”, says Stephen Dennis,
Cell-All’s program manager. [DHS-S&T] pursued cooperative agreements with
four cell phone manufacturers: Qualcomm, LG, Apple, and Samsung. Used by the
Government; 2016: Both the LG G5 and V10 smartphones can be used by the
[DOD]. The LG smartphones received a security certification from the iDlSA], as
well as a certification by the [NIAP]. Sensors will integrate with 261 million cell
phones now used in the U.S. [and l]everage billions of dollars spent each year in
sensor, carrier network[,] and cell phone development Multiple sensors network
for chemical profiling; Cell-All aims “to equip your cell phone with a sensor
capable of detecting deadly chemicals”, says Stephen Dennis, Cell-All’s program
manager. Multiple sensor units per phone are possible Stephen Dennis envisions
a chemical sensor in every cell phone in every pocket, purse, or belt holster.

AS a result of contracts, agreements, and procurements with various
Government Agencies (1111 49-78), the [DHS], the [DOD], and LG Electronics for
the manufacture development, commercialization, and/or use of the
communication/monitoring device “LG Electronics G5 Smartphone”, the United
States has used, authorized the use, and manufactured, without license or legal
right, Plaintiff’ s inventions described in and covered by the ’439, and ’990 Patents.

8/ l()/ 17 Am. Compl. 1111 96-97 (bold in original).

 

28 The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations “relating generally to smartphones and other consumer devices” are: 1111 96»97,
101-02, 106-07, 111-12, 116-17, 121-»22, 126-27, 131-32, 136-37, 141W42, 14647, and
151-52. These paragraphs are highlighted in orange in the attached Court Exhibit B.

32

relating generally to
smartphones and other consumer devices” should be dismissed under RCFC l2(b)(l), because the
Fifth Amended Complaint “fails to sufficiently allege actual ‘use’ by the [G]overnrnent of the
various combinations of consumer devices, nor would the [G]overnrnent’s use be plausible.”
10/20/17 Gov’t Mot. at 17.

 

The Fifth Amended Complaint includes patent infringement allegations concerning the
Government’s alleged “use” and “manufacture” of other “smartphones [and] consumer devices,”
each of which repeats the text of 28 U.S.C. § 1498(a) in conclusively alleging that, c‘[als a
result of contracts, agreements, and procurements with various Government Agencies
(1111 49~78) . . . the United States has used, authorized the use, and manufactured . . . Plaintiff’s
inventions[.]”’ 8/10/17Am.Comp1.111197,102,107, 112, ll7, 122, 127, 132,137,142, 147,152.
To support this allegation, the Fifth Amended Complaint repeatedly cites to 1111 49-78 of the Fifth
Amended Complaint. These paragraphs describe the Government’s intent to °‘allow” or “approve”
the “use” of various “smartphones and other consumer devices,” e.g., “the iPhone 50 and SS.”
8/10/17 Am. Compl. 1l 75 . Por example, 11 53 of the Fifth Amended Complaint states:

2012: “The [DOD] expects in coming weeks to grant two separate security
approvals for Samsung’s Galaxy smartphones, along with iPhones and iPads
running Apple’s latest operating system-~moves that would boost the number of
U.S. government agencies allowed to use those devices. An approval by the
Pentagon is considered as the highest standard[] in security.”

8/10/l7 Am. Compl. 11 53 (emphasis added).
Similarly, 11 72 of the Fifth Amended Complaint states:

20l4: “By opening its networks to Samsung and Apple devices, [DISA] . . . intends
to broaden the variety of mobile computers that troops and civilian [DOD]
employees can use in the field, on bases, in offices and elsewhere to receive and
send information and work almost anywhere at any time.”

8/10/17 Am. Compl. 1172 (emphasis added).

'l`he Fifth Amended Complaint, however, does not allege that the Government’s intent to
“allow” or “approve” the use of “smartphones and other consumer devices” infringes Plaintiff s
patents. lnstead, the Fifth Amended Complaint alleges that the Govemment’ s use of these devices
fn combination with other “devices” or “programs,” e.g., the “‘Cell-All’ initiative,” infringes
Plaintiff" s patents. 8/10/17 Am. Compl. 1111 96~97. No factual allegations, however, support
assuming that the Government used or authorized the use of these other “devices” or “programs”
to infringe Plaintiff’ s patents.

For example, although the Fifth Amended Complaint alleges that the “LG Electronics G5
Smartphone . . . can be used” by the Government, such an allegation does not support the
conclusion that the Government used or authorized the use of these devices to run the “‘Cell-All’
initiative.” 8/10/17 Am. Compl. 1111 96-97. Nor do such allegations imply that the Govemment’s
use of the “LG Electronics G5 Smartphone” infringes Plaintiff s patents, since the Government
may simply use these devices to make calls. Without supporting factual allegations, however, the
court cannot assume infringing use or manufacture by the Government See Nortor.¢, 266 U.S. at
515 (“lt is quite true that the jurisdiction of a federal court must affirmatively and distinctly appear
and cannot be helped by presumptions or by argumentative inferences drawn from the
pleadings.”); see also SB CHARLES A. WRIGHT & ARTHUR R. MILLER, FED. PRACTICE &
PROCEDURE § 1350 (3d ed. 2004) (“[A]rgumentative (as opposed to reasonable) inferences

33

 

 

favorable to the pleader will not be drawn and conclusory allegations or conclusions of law will
not be credited.”). ln sum, although the factual allegations of the Fifth Amended Complaint may
support a conclusion that the Government “allowed” or “approved” the “use” of various
“smartphones and other consumer devices,” they do not support the conclusion that the
Government used or authorized the use of these devices in an infringing manner.

For these reasons, the court has determined that the patent infringement allegations
contained in 1111 96~97, 101-02, 106-07, 111-12, 1l6-l7, 121-22, 126-27, 131-32, 136»»~37,
141-42, 146-47, and 151~52 of the August 10, 2017 Fifth Amended Complaint failed to satisfy
Plaintiff’s burden to establish jurisdiction under 28 U.S.C. § l498(a). Accordingly, these
paragraphs of the Fifth Amended Complaint must be dismissed under RCFC 12(b)(1).

ln the alternative, the Government argues that the same allegations should be dismissed
under RCFC 12(b)(6), for “improperly alleg[ing] infringement by or for the [G]overnment in
irreconcilably vague and omnibus fashion by repeatedly citing ‘contracts, agreements, and
procurements with various Government Agencies.”’ 10/20/ 17 Gov’t Mot. at 17.

The Govemment’s position is correct, because the Fifth Amended Complaint does not
contain factual allegations supporting that, “[a]s a result of contracts agreements and
procurements with various Government Agencies . . . the United States has used, authorized the
use, and manufactured . . . Plaintiff’s inventions[.j” 8/10/ 17 Am. Compl. 11 97 (ernphasis added).
The Fifth Amended Complaint fails to identify the “contracts, agreements, and procurements” at
issue. Without more, the Fifth Amended Complaint has not met the requirements of Twombly and
labal. Nor does the Fifth Amended Complaint provide anything other than conclusory allegations
that the Government used or authorized the use of “smartphones and other consumer devices” in
a manner that infringes Plaintiff’s patents Such “[t]hreadbare recitals of the elements of a cause
of action, supported by mere conclusory statements, [however,] do not suffice.” Iql)al, 556 U.S.
at 678; see also Siou.x Honey Ass’ri, 672 F.3d at 1062 (holding that a complaint c‘require[s] more
than labels and conclusions”).

For these reasons, the court has determined that even if the August 10, 2017 Fifth Amended
Complaint established jurisdiction as to the patent infringement allegations contained in 1111 96~97,
101-02, 106407, 111~12, 116~17, 121~»22, 126-27, 131-32, 136-37, 141-42, 146-47, and
151-52 of the Fifth Amended Complaint, the allegations contained therein failed to state a claim
upon which relief may be granted and must be dismissed under RCFC 12(b)(6).

e. Patent Infringement Allegations Concerning Broad Agency
Announcements Must Be Dismissed Under RCFC 12(b)(6).

The Government argues that patent infringement allegations29 concerning a DNDO BAA
should be dismissed under RCFC 12(b)(6), because the Fifth Amended Complaint “fails to

 

29 The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations conceming the DNDO BAA are: 1111 161$7. These paragraphs are highlighted in red
in the attached Court Exhibit B.

34

 

plausibly allege that the Government either used or manufactured any technologies described in
the BAA.” 10/20/17 Gov’t Mot. at 22.

In relevant part, the Fifth Amended Complaint alleges:

Upon information and belief, the United States has infringed, and continues
to infringe, at least claims 1, 2, and 4 of the ’497 Patent, claims 34, and 37 of the
’752 Patent, claims 13, and 14 ofthe ’439 Patent, and claims 119, 29, 18, 118, 12,
28, 25, 20, 124, 32, and 30 of the ’990 Patent as a current manufacturer, consumer,
and/or user of the l”x2” Detection Device (DD) Samsung Galaxy s6 Smartphone;
2”X2” Detection Device (DD) Samsung Galaxy s6 Smartphone; NetSZ SmartShield
G3 00 Radiation Detector Samsung Galaxy s6 Smartphone; NetSZ SmartShield
G5 00 Radiation Detector Samsung Galaxy s6 Smartphone; and the Passport
Systems Base Control Unit (BCV) “TOUGHBOOK 31” Panasonic Laptop:

2”X2” Detection Device (DD) Samsung Galaxy s6 Smartphone: In response
to the [DNDO’s] BAA 09~102 Passport Systems, lnc. of Billerica, MA has
developed a system of networked portable spectroscopic radiation detectors to
improve the detection, localization, and identification of radiological threats.

=l= >l= =I=

NetSZ SmartShield G500 Radiation Detector Samsung Galaxy s6
Smartphone: Passport Systems Inc. G500 Radiation Detector alarms When radiation
levels are detected; used as a standalone device or as part of a network; is the same
size, form factor and Weight as a smartphone and easily added to the belt of safety
personnel; is paired With a smartphone Via Bluetooth, and automatically joins a _
SmartShield Networl<.

 

=l< >1= =!=

As a result of contracts With the [DNDO], Passport Systems, lnc., Panasonic
Corporation, and the Samsung Group for the development and commercialization
of the l”XZ” Detection Device (DD) Samsung Galaxy s6 Smartphone; 2”x2”
Detection Device (DD) Samsung Galaxy s6 Smartphone; NetSZ SmartShield G300
Radiation Detector Samsung Galaxy s6 Smartphone; NetSZ SmartShield G500
Radiation Detector Samsung Galaxy s6 Smartphone; and the Passport Systems '
Base Control Unit (BCU) “TOUGHBOOK 31” Panasonic Laptop the United States j
has used, authorized the use, and manufactured, without license or legal right, §
Plaintiff’s inventions described in and covered by the ’497, ’439, ’752, and ’990 ‘
Patents. l

8/10/17 Am. Compl. 1111 161_62, 165, 167.

But, the conclusion tha , “[a]s a result of contracts With the DNDO . . . the United States
has used, authorized the use, and manufactured . . . Plaintiff’s inventions,”’ is not plausibly
supported by factual allegations in the Fifth Amended Complaint. 8/10/17 Am. Compl. 11 167

 

35

 

(ernphasis added). Indeed, the Fifth Amended Complaint fails to identify a single “contract” With
the DNDO. lnstead, it alleges only that the DNDO issued a BAA; a BAA, however, is not a
“contract.” See 48 C.F.R. § 2.101(b) (defining a “BAA” as “a general announcement of an
agency’s research interest including criteria for selecting proposals and soliciting the participation
of all offerors capable of satisfying the Government’s needs”). Again, without more, the Fifth
Amended Complaint has not met the requirements of Twombly and Iql)al. And, conclusory
allegations that the Government used or authorized the use of the “Sarnsung Galaxy s6
Smartphone” in a manner that infringes Plaintiff’s patents are likewise insufficient, as such
“[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
statements, do not suffice.” Iqbal, 556 U.S. at 678; see also Sionx Honey Ass ’n, 672 F.3d at 1062
(holding that a complaint “require[s] more than labels and conclusions”).

For these reasons, the court has determined that the patent infringement allegations
contained in 1111 161~67 of the August 10, 2017 Fifth Amended Complaint must be dismissed under
RCFC 12(1))(6).

f. Patent Infringement Allegations Concerning The ’033 Patent
Must Be Disrnissed Under RCFC 12(b)(1).

The Government argues that patent infringement allegations concerning the ’033 Patent
should be dismissed under RCFC l?,(b)(l), because “this patent Was surrendered When it was
reissued as [the ’891 Patent] and [the ’990 Patent].” 10/20/ 17 Gov’t Mot. at 22,

An application for reissue of a patent constitutes an offer to surrender the patent. See 35
U.S.C. § 251(a) (“[T]he Director shall, on the surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention disclosed in the original patent[.]”).
“The surrender of the original patent . . . take[s] effect upon the issue of the reissued patent.” 35
U.S.C. § 252. Therefore, as a matter of law, “[a]n original patent cannot be infringed once a reissue
patent has issued, for the original patent is surrendered . . . [and t]he original claims are dead.”
Seattle Box Co., Inc. v. Indnst Cratz`ng & Packing, Inc., 731 F.2d 818, 827 (Fed. Cir. 1984).

In this case, on two occasions, Plaintiff applied for reissuance of the ’033 Patent via the
’837 Application and the ’853 Application, thereby offering to surrender the ’033 Patent in
accordance With 35 U.S.C. § 251(a). 2/12/ 16 Am. Compl. Ex. G, H. Thereafter, the USPTO
issued both of these reissue applications, as the ’89l Patent and the ’990 Patent, respectively, on
January 1, 2013 and February 12, 2013. 2/12/16 Am. Compl. EX. G, H. As such, the ’033 Patent
Was surrendered as of January 1, 2013, i.e., the earliest reissue date. See 35 U.S.C. § 252 (“The
surrender of the original patent . . . take[s] effect upon the issue of the reissued patent.”). Therefore,
the court does not have jurisdiction to adjudicate patent infringement allegations concerning
the ’033 Patent, because the ’033 Patent is no longer a “patent of the United States.” See 35
U.S.C. §§ 251(a), 252; see also 28 U.S.C. § 1498(a) (requiring “an invention described in and
covered by a patent of the United States”).

36

 

 

 

For these reasons, the court has determined that patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the ’033 Patent30 failed to satisfy Plaintiff’ s
burden to establish jurisdiction under 28 U.S.C. § 1498(a). Accordingly, these allegations of the
Fifth Amended Complaint must be dismissed under RCFC 12(b)(1).

g. Patent Infringement Allegations Concerning Unissued Patent
Applications And Pre-Issuance Use Or Manufacture Must Be
Dismissed Under RCFC 12(b)(1).

Fl`he Government argues that patent infringement allegations concerning the ’839
Application and pre-issuance use or manufacture of the ’439 Patent should be dismissed under
RCFC 12(b)(1). 10/20/ 17 Gov’t Mot. at 23.

The ’839 Application has not issued, nevertheless the Fifth Amended Complaint alleges
that the Government “infringed, and continues to infringe” claims of the ’839 Application. 8/10/17
Am. Compl. ll 91. ln addition, the ’439 Patent issued on March 7, 2017, but the Fifth Amended
Complaint alleges infringement of the ’439 Patent, based on Government “progranis” that were
cancelled in April 2014, almost three years prior to issuance of the ’439 Patent. Compare 8/10/17
Arn. Compl. 1111 315-"16, with 10/20/ 17 Gov’t Mot. Ex. 22 (a June 10, 2014 United States
Government Accountability Office Report, explaining the DHS’s decision to cancel the
“BioWatch Gen~3” program in April 2014). In addition, the Fifth Amended Complaint alleges
infringement of the ’439 Patent, based on NSF grants that expired prior to issuance of the ’439
Patent. Compare 8/10/ 17 Am. Compl. 1111 184_85, 199-200, 260461, 275-76, 280-81, 295~96,
305-06, with 10/20/17 Gov’t Mot. EX. 6-8, 10, 12.

The court’s jurisdiction under 28 U.S.C. § 1498(a) is limited to allegations “against the
[G]overnment arising out of post~issuance [G]overnment use [or manufacturej of an invention.”
Hornback v. United States, 601 F.3d 1382, 1386 (Fed. Cir. 2010) (“"l`he language of section
1498(a) is mandatory, and therefore grants the [United States] Court of F ederal Claims exclusive
jurisdiction to hear all claims against the [G]overnrnent arising out of post-issuance [G]overnment
use of an invention.”).

For these reasons, the court has determined that patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the ’839 Application31 and pre-issuance

 

30 Infringement of the ’033 Patent is alleged in jill 91-92 of the August 10, 2017 Fifth
Amended Complaint, the relevant portions of which the court has highlighted in purple in the
attached Court EXhibit B. These paragraphs, however, contain patent infringement allegations
concerning other patents and therefore are dismissed to the extent they concern the ’033 Patent.

31 Infringement of the ’839 Application is alleged in 1111 91-92 of the August 10, 2017 Fifth
Amended Complaint, the relevant portions of which the court also has highlighted in purple in the
attached Court Exhibit B. These paragraphs, however, contain patent infringement allegations
concerning other patents and therefore are dismissed to the extent they concern the ’839
Application.

37

use or manufacture of the ’439 Patent32 failed to satisfy Plaintiff’ s burden to establish jurisdiction
under 28 U.S.C. § l498(a). Accordingly, these allegations of the Fifth Amended Complaint must

be dismissed under RCFC 12(b)(l).

h. Patent Infringement Allegations Concerning The ’761, ’280,
And ’189 Patents Must Be Dismissed Under RCFC 12(b)(6).

Finally, the Government argues that patent infringement allegations concerning the ’761,
’280, and ’189 Patents should be dismissed under RCFC 12(b)(6), because the Fifth Amended
Complaint “alleges no infringement of any claims of these patents.” 10/20/ 17 Gov’t Mot. at 23.

With regard to the ’761, ’280, and ’189 Patents, the Fifth Amended Complaint alleges:

Upon information and belief, the United States has infringed, and continues
to infringe, . . . Plaintiff’s 'l`angible Patented Claimed Inventions of . . . [the ’761,

’280, and ’189 Patents.]

=l= =l< >l=

As a result of contracts, agreements, procurements, and grants, for the
development and commercialization of Plaintiff’s tangible patented claimed
inventions, the United States . . . has used, authorized the use, manufactured
and developed, without license or legal right, or authorization and consent,
Plaintiff’ s tangible patented claimed inventions as described in and covered by the
Plaintiff’s . . . ’761, ’280, . . . [and] ’189 . . . [P]atents.

8/10/17 Am. Compl. 1111 9l~»92.

To survive a motion to dismiss under RCFC 12(b)(6), “[t]here must be some allegation of
specific services or products of the defendants which are being accused.” Addicfion and
Detoxificarion Inst. L.L_C. v. Carpcnfer, 620 F. App’x 934, 937 (Fed. Cir. 2015). The Fifth
Amended Complaint, however, does not contain any allegation about how the ’761, ’280, and ’189
Patents Were infringed and by What action of the Government

 

32 Infringement of the ’439 Patent is alleged in 1111 91-92, 96-97, 101-02, 106-07, 111-12,
116-17, 121-22, 126~27, 131~32, 136~37, 141#42, 146»47, 151-52, 156~57, 161*67, 171~72,
176-80, 184-85, 189-90, 194-95, 199_200, 204-05, 209»10, 214-»15, 2l9m20, 224»26, 230-31,
235~36, 240~41, 245-46, 250~51, 255-56, 260-61, 265-66, 270-71, 275-76, 280-81, 285-86,
290_91, 295_96, 300-01, 305~06, 3l0~11, 315~16, 320~21, 325~26, 330-31, 335~36, 340-41,
345~46, 350~»51, 355-56, 360-61, and 365-66 of the August 10, 2017 Fifth Amended Complaint,
the relevant portions of which the court has highlighted in pink in the attached Court Exhibit B, if
not otherwise highlighted in a difference color. These paragraphs, however, contain patent
infringement allegations concerning other patents and therefore are dismissed to the extent they
concern the ’439 Patent. lf Plaintiff can identify post-issuance activity incorporated Within these
paragraphs that is not otherwise dismissed, the court Will reconsider dismissal of those relevant

portions.

38

 

 

For these reasons, the court has determined that the patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the ’761, ’280, and ’189 Patents must be
dismissed under RCFC 12(b)(6).33

V. CONCLUSION.

For the reasons discussed herein, the Government’s October 20, 2017 Motion For Partial
Dismissal, pursuant to RCFC 12(b)(1) and 12(b)(6), is granted-in-part and denied-in-part.
Plaintiff`s November 17, 2017 Motion For Leave To File A Motion For Summary Judgment,
is denied, as the Government “has not had an opportunity to make full discovery.” Celofex
Corp. v. Catren‘, 477 U.S. 317, 326 (1986).

The court will convene a telephone status conference Within the next two Weeks to identify
What, if any, patent infringement allegations are viable and may be adj udicated, and how the parties
propose proceeding

IT IS SO OR])ERED.

    

Chief Judge

 

33 Infringement of the ’761 , ’280, and ’ 189 Patents is alleged in 1111 91_92 of the August 10,
2017 Fifth Amended Complaint, the relevant portions of Which the court also has highlighted in
purple in the attached Court Exhibit B. These paragraphs, however, contain patent infringement
allegations concerning other patents and therefore are dismissed to the extent they concern the
’761, ’280, and ’189 Patents.

39

 

