ADVANCED AEROSPACE TECHNOLOGIES, INC., v. USA

Filing 47

PUBLISHED OPINION granting 31 Motion to Dismiss - Rule 12(b)(1). Signed by Judge Susan G. Braden. (cm) Copy to parties.

In the United States Court of Federal Claims
No. 12-85
Filed: October 31, 2013
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ADVANCED AEROSPACE
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TECHNOLOGIES, Inc.,
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Plaintiff,
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v.
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THE UNITED STATES,
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Defendant,
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and
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THE BOEING COMPANY,
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and
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INSITU, Inc.,
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Third-Party Defendants.
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Ripeness;
Standing;
28 U.S.C. § 1498(a) (waiver of sovereign
immunity and jurisdiction re: certain
patent infringement claims);
28 U.S.C. § 1498(c) (patent claims arising
abroad);
28 U.S.C. § 1631 (transfer to cure want of
jurisdiction);
35 U.S.C. § 154(a)(1) (content and term of a
patent);
35 U.S.C. § 271(a) (liability for patent
infringement as to the use, an offer to sell,
or sales within the United States and
imports thereto);
35 U.S.C. § 271(b) (inducing patent
infringement);
35 U.S.C. § 271(c) (contributory
infringement);
35 U.S.C. § 271(f) (infringement for
exporting components of patented
invention);
RCFC 7.1 (Disclosure Statement);
RCFC 12(b)(1) (Motion to Dismiss).

Craig S. King, Arent Fox LLP, Washington, D.C., Counsel for Plaintiff.
Benjamin Speake Richards, United States Department of Justice, Civil Division,
Washington, D.C., Counsel for the Government.
Scott Michael McCaleb, Wiley Rein, LLP, Washington, D.C., Counsel for Third-Party
Defendants.

MEMORANDUM OPINION AND ORDER REGARDING THE SCOPE OF
SOVEREIGN IMMUNITY FOR PATENT INFRINGEMENT
UNDER 28 U.S.C. § 1498(a).
Braden, Judge.
In Zoltek Corp. v. United States, 672 F.3d 1309 (2012) (en banc) (“Zoltek V”), the United
States Court of Appeals for the Federal Circuit sua sponte revisited an earlier panel decision and
held that 28 U.S.C. § 1498(a):
[C]reates an independent cause of action for direct infringement by the
Government or its contractors that is not dependent on 35 U.S.C. § 271(a). Direct
infringement under § 1498(a) comes within the scope of the right to exclude
granted in 35 U.S.C. § 154(a)(1). Thus, under § 1498(a)[,] the Government has
waived its sovereign immunity for direct infringement, which extends[,] not only
to acts previously recognized as being defined by § 271(a)[,] but also acts covered
under § 271(g) due to unlawful use or manufacture . . . . [As such,] when the
product of a patented process is used in, or imported into, the United States by or
for the United States, there is direct infringement for the purposes of a § 1498[(a)]
action.
Id. at 1326–27.1

1

On March 25, 1996, Zoltek Corp. (“Zoltek”) filed a complaint in the United States
Court of Federal Claims, pursuant to 28 U.S.C. § 1498(a), alleging that the carbon fiber products
used in a fighter jet designed and built by Lockheed Martin Corporation (“Lockheed”) under a
government contract infringed Zoltek’s patent. In 2002, the United States Court of Federal
Claims held that “section 1498 does not apply to all forms of direct [patent] infringement as
currently defined in 35 U.S.C. § 271.” Zoltek Corp. v. United States, 51 Fed. Cl. 829, 837 (2002)
(“Zoltek I”).
In 2003, the United States Court of Federal Claims granted Zoltek leave to amend its
complaint to allege a Fifth Amendment claim, and identify the source of patent rights allegedly
taken by the Government. See Zoltek Corp. v. United States, 58 Fed. Cl. 688 (2003) (“Zoltek
II”). Both Zoltek and the Government appealed. In a per curiam opinion, the United States
Court of Appeals for the Federal Circuit affirmed the trial court’s determination that Zoltek’s
patent claim was precluded by § 1498(a), but reversed the trial court’s determination that Zoltek
could allege patent infringement as a Fifth Amendment takings claim.
See Zoltek
Corp. v. United States, 442 F.3d 1345 (Fed. Cir. 2006) (“Zoltek III”).
On remand, the United States Court of Federal Claims granted Zoltek leave to further
amend and assert a claim against Lockheed and transferred that claim to the United States
District Court for the Northern District of Georgia. See Zoltek Corp. v. United States, 85 Fed.
Cl. 409, 413–18 (2009) (“Zoltek IV”). The court, however, rejected the Government’s argument
that the Northern District of Georgia did not have subject matter jurisdiction, because the
contractor was immune under § 1498(a), thereby precluding transfer under 28 U.S.C. § 1631. Id.
at 418–19.
2

Our appellate court, however, did not “decide the issue of indirect infringement,
under § 271(b), (c), and (f).” Id. at 1327. According to The Boeing Company (“Boeing”), that
issue is presented in this case. The court disagrees.
I.

RELEVANT FACTS.2

Sometime in 1997, William Randall McDonnell, “a member of the McDonnell family of
aviation pioneers who founded McDonnell Aircraft,” “conducted research directed to effective
launch and recovery of unmanned aerial vehicles (“UAVs”)” using a hook arrangement on a
UAV’s wing to capture a vertical arrestment line.3 Am. Compl. ¶¶ 2, 3, 20. In October 1997,
Mr. McDonnell’s UAV-retrieval system was tested successfully. Am. Compl. ¶ 21. In March
1999, a modified version of this retrieval system, using a single vertical arrestment line, also was
tested successfully. Am. Compl. ¶ 22.
In July 1999, Mr. McDonnell filed a U.S. patent application for the above described
UAV-retrieval system that resulted in the issuance of three patents: U.S. Patent Nos. 6,874,729
(“the ‘729 patent”); 7,097,137 (“the ‘137 patent”); and 8,167,242 (“the ‘242 patent”). Am.
Compl. ¶ 25. Each patent had the title: “Launch and Recovery System for Unmanned Arial
Vehicles.” Am. Compl. at 1. The invention described in these patents “solved a key technical
challenge in the successful deployment of UAVs without use of runways.” Am. Compl. ¶ 23.
Although other runway-free retrieval devices were known at that time, such as nets, there was no
system that “reliably captured the UAV without damage.” Am. Compl. ¶ 23. Subsequently, Mr.
McDonnell assigned all “rights, title, and interest” in these patents to Advanced Aerospace
Technologies, Inc. (“AATI” or “Plaintiff”), of which Mr. McDonnell is the President and sole
owner. Am. Compl. ¶¶ 2, 5.
Insitu, Inc. (“Insitu”) is a corporation “in the business of making . . . UAVs and guidance,
launch and retrieval systems” in Bingen, Washington. Am. Compl. ¶ 14. In 1999, after learning
that a predecessor entity to Insitu was “encountering difficulties in reliably retrieving [its]
straight wing UAV” and after entering into a nondisclosure agreement with AATI, Mr.
McDonnell suggested to Insitu’s founder and Chief Technology Officer that Insitu switch to a
Subsequently, the United States Court of Federal Claims also certified a question as to
“whether 28. U.S.C. § 1498(c) must be construed to nullify any government contractor immunity
provided in § 1498(a) when a patent infringement claim aris[es] in a foreign country.” Zoltek
Corp. v. United States (No. 96-cv-166), Dkt. No. 385 (May 14, 2009) (“Certified Order”).
Rather than addressing that question, the United States Court of Appeals for the Federal Circuit
en banc and sua sponte “re-examine[d] the premises on which [its] earlier opinion in Zoltek III
was based, and reconsider[ed] the consequences of that opinion.” Zoltek V, 672 F.3d at 1314.
2

The relevant facts recited herein were derived from the First Supplemental Complaint,
filed on May 10, 2012 (“Am. Compl.”).
3

A vertical arrestment line has “an inherent capability of absorbing the UAV’s kinetic
energy, thus decelerating the UAV undamaged.” Am. Compl. ¶ 20.

3

swept4 shaped wing, instead of the straight wing that was being used. Am. Compl. ¶ 26. In late
2000, Mr. McDonnell learned that Insitu “was still encountering difficulties with their hook
engaging the recovery line that were so significant that they threatened the continued viability of
the company.” Am. Compl. ¶ 27. “In response, Mr. McDonnell sent Insitu a copy of his thenpending patent application which disclosed the use of a special hook design for catching UAVs.”
Am. Compl. ¶ 27. After reviewing Mr. McDonnell’s patent application Insitu “modified its own
design to include a two part capture mechanism, and filed its own patent application for a twopart hook design, which resulted in Insitu’s U.S. Patent No. 7,059,564 (“the ‘564 patent”).” Am.
Compl. ¶ 27. In sum, Insitu did not reference the ‘729 patent, ‘137 patent, or the ‘242 patent as
prior art, but instead cited the application as a “foreign reference,” without attribution to Mr.
McDonnell or AATI, even after these patents issued, and miscited the published application.
Am. Compl. ¶ 29. Insitu, however, proceeded to infringe AATI’s patents “in willful disregard
for AATI’s legal rights.” Am. Compl. ¶ 33. And, Insitu “improperly induced” AATI to delay
the enforcement of the ‘137 patent, ‘242 patent, and ‘729 patent in 2008 for a 120 day period,
during which time Insitu was acquired by Boeing.5 Am. Compl. ¶ 36. Nevertheless, AATI
advised Boeing in writing of Insitu’s infringement prior to Boeing’s acquisition of Insitu. Am.
Compl. ¶ 37.
In addition, the Amended Complaint alleges that Boeing and its subsidiary Insitu are
parties to contracts with the United States (“Government”) to provide “intelligence gathering,
surveillance, and reconnaissance . . . services[,] which included no hardware deliveries of
[unmanned aircraft systems] and no Government specifications or instructions requiring
infringement of the AATI patents.” Am. Compl. ¶ 9 (emphasis added). At least six types of
Insitu UAVs, i.e., the Scan Eagle,6 Night Eagle, Insight, GeoRanger, ScanEagle Compressed
Carriage, and Integrator, are alleged to infringe AATI’s patents by using the Skyhook feature.
Am. Compl. ¶ 14. AATI estimates, based on public sources, that Boeing’s annual revenues
derived from the sales of AATI’s patented technology exceed $400 million. Am. Compl. ¶ 38.
II.

PROCEDURAL HISTORY.

On February 8, 2012, AATI filed a complaint in the United States Court of Federal
Claims, alleging that the Government infringed the ’729 and ‘137 patents, that subsequently was
amended on May 10, 2012 as a First Supplemental Complaint (“Am. Compl.”).7 The Amended
4

“Swept” means not straight. Am. Compl. ¶ 4.

5

The court will herein refer to third-party defendants, Boeing and Insitu, collectively as
“Boeing.”
6

In 2002, Boeing “entered into a partnership with Insitu to market and further develop”
UAV retrieval and launching systems that “matured into the ScanEagle UAV.” Am.
Compl. ¶ 31.
7

On February 9, 2012, AATI filed a complaint for willful patent infringement in the
United States District Court for the Eastern District of Missouri, pursuant to 35 U.S.C. § 1, et
seq., including 35 U.S.C. § 271, that was assigned to the Honorable Rodney W. Sippel. That
complaint included six counts: Count I alleged direct infringement of U.S. Patent No. 6,874,729
4

Complaint included six counts. Count I alleged that Insitu and Boeing’s use or manufacture of
UAVs infringed the ‘729 patent, “with the [a]uthorization and [c]onsent of the United States.”
Am. Compl. ¶¶ 39–49.
Count II alleged that Insitu and Boeing used or manufactured UAVs that infringed the
‘137 patent “with the [a]uthorization and [c]onsent of the United States.” Am. Compl. ¶¶ 50–60.
Count III alleged that Insitu and Boeing used or manufactured UAVs that infringed the
‘242 patent “with the [a]uthorization and [c]onsent of the United States.” Am. Compl. ¶¶ 61–70.
Count IV alleged that the Government “has been” and “now is using or manufacturing,
without license of AATI or lawful right to use or manufacture, the invention described in and
covered by the ‘729 patent, by using or manufacturing Insitu UA[V]s, and all like systems and
services.” Am. Compl. ¶¶ 72–75.
Count V alleged that the Government “has been” and “now is using or manufacturing,
without license of AATI or lawful right to use or manufacture, the invention described in and
covered by the ‘137 patent, by using or manufacturing Insitu UA[V]s, and all like systems and
services.” Am. Compl. ¶¶ 76–79.
Count VI alleged that the United States “has been” and “now is using or manufacturing,
without license of AATI or lawful right to use or manufacture, the invention described in and
covered by the ‘242 patent, by using or manufacturing Insitu UA[V]s, and all like systems and
services.” Am. Compl. ¶¶ 80–83.
On April 6, 2012, the Government filed a Motion To Notify Interested Party Boeing. The
court granted that motion on April 23, 2012. On April 27, 2012, that Notice was served on
Boeing, in its corporate capacity and as the corporate entity that acquired Insitu in 2008. On
May 1, 2012, AATI filed an unopposed Motion To Supplement Pleadings. On May 2, 2012, the
court granted that motion.
On May 10, 2012, AATI filed a First Supplemental Complaint alleging, in addition to the
four claims alleged in the February 8, 2012 Complaint, new claims regarding infringement of the
‘242 patent, because of the Government, Boeing, and Insitu’s use or manufacture of certain of
AATI’s patented systems for and with the authorization and consent of the Government. Am.
Compl. ¶¶ 61–71, 80–83. On June 8, 2012, the Government filed an Answer. On June 11, 2012,
Insitu and Boeing filed an Answer, and each company filed a Rule 7.1 Disclosure Statement.

by Insitu and Boeing; Count II alleged inducement of infringement of U.S. Patent No. 6,874,729
by Insitu; Count III alleged contributory infringement of U.S. Patent No. 6,874,729 by Insitu;
Count IV alleged direct infringement of U.S. Patent No. 7,097,137 by Insitu and Boeing; Count
V alleged inducement of infringement of U.S. Patent No. 7,097,137 by Insitu; and Count VI
alleged contributory infringement of U.S. Patent No. 7,097,137 by Insitu. Complaint, Advanced
Aerospace Techs., Inc. v. The Boeing Co., et al. (No. 4:12-cv-226), Dkt. No. 1.
5

On July 30, 2012, the parties filed a Joint Preliminary Status Report and a Joint Motion
For Protective Order. On August 1, 2012, the court issued a Protective Order. On August 8,
2012, the court issued a Scheduling Order. On September 20, 2012, the parties filed a Joint
Motion For Protective Order Concerning E-Discovery. To date, the court has declined to rule on
that Motion, as premature.
On October 15, 2012, Boeing filed a Motion To Dismiss, Pursuant to Rule 12(b)(1) (“TPD Mot.”). On October 17, 2012, the court held a telephone status conference, wherein the
Government was asked to inform the court of its position on the jurisdictional issues presented
by Boeing’s October 15, 2012 Motion To Dismiss. On October 19, 2012, the parties entered a
Stipulation regarding the contracts relevant to this action.
On November 16, 2012, AATI filed an Opposition To Boeing’s October 15, 2012 Motion
to Dismiss (“Pl. Opp.”). On November 18, 2012, the Government filed a Motion For Leave To
File a brief providing its “views” on the jurisdictional issue raised by Boeing’s October 15, 2012
Motion to Dismiss (“Gov’t Resp.”). On December 3, 2012, Boeing filed a Reply (“T-PD
Reply”).
On May 22, 2013, the court convened an oral argument on Boeing’s October 15, 2012
Motion To Dismiss (5/22/13 TR at 1–81). On June 12, 2013, the Government filed a
Supplemental Brief (“Gov’t Supp. Br.”). On June 26, 2013, Boeing filed a Response (“T-DP
Resp.”). And, on June 26, 2013 AATI also filed a Response (“AATI Resp.”).
III.

DISCUSSION.
A.

Whether The Third-Party Defendants Have Standing To Seek An
Adjudication Of The October 15, 2012 Motion To Dismiss.

AATI asserts that Boeing does not have standing to seek an adjudication of the October
15, 2012 Motion To Dismiss, because all claims alleged in the February 8, 2012 Complaint and
the May 10, 2012 Supplemental Complaint are directed against the Government. Pl. Opp. at 19
(citing United States v. Metro. St. Louis Sewer Dist., 952 F.2d 1040, 1043 (8th Cir. 1992) (“[A]
party may assert a third party’s rights only if, inter alia, the third party is unable to assert its own
rights[.]”)). Metro. St. Louis Sewer, however, is inapposite, as it concerned an intervenors’
standing to raise a waivable affirmative defense, not to contest the court’s jurisdiction. Id.
More importantly, as the United States Court of Appeals for the Federal Circuit has held, “any
party may challenge, or the court may raise sua sponte, subject matter jurisdiction at any time.”
Rick’s Mushroom Serv., Inc. v. United States, 521 F.3d 1338, 1346 (Fed. Cir. 2008); see also
RCFC 14(a)(6)(C) (providing that the “third-party defendant . . . . may assert against the plaintiff
any defense that the [Government] has to the plaintiff’s claim”).8
8

RCFC 14(a) was abrogated, effective August 30, 2013. RCFC 14(a)(6)(C) was
applicable and in force, however, both on June 11, 2012, the date that Insitu and Boeing filed an
Answer as a third-party defendants, and on October 15, 2012, the date the pending Motion To
Dismiss was filed.

6

For this reason, the court has determined that Boeing has standing to seek an adjudication
of the October 15, 2012 Motion To Dismiss.
B.

Whether The Third-Party Defendants’ October 15, 2012 Motion To Dismiss
Is Ripe.

Next, AATI argues that adjudication of Boeing’s October 15, 2012 Motion To Dismiss is
premature, because the claims asserted in the May 10, 2012 Amended Complaint are dependent
on discovery. Pl. Opp. at 3–5. AATI advises the court that, if there is “no authorization and
consent in respect to contracts where AATI asserts [35 U.S.C.] § 271(f) infringement,” the court
will have no need to address jurisdiction because all such claims could be adjudicated in the
“willful patent” case which is pending, but stayed, in the United States District Court for the
Eastern District of Missouri. Pl. Opp. at 4.
Boeing responds that dismissal is not premature, because AATI “chose to assert indirect
infringement claims under section 271(f)” in the February 8, 2012 Complaint and May 10, 2012
Amended Complaint so that the court “must assess whether jurisdiction exists.” T-PD Reply at
1; see also T-PD Mot. at 11 (citing Am. Compl. at ¶¶ 43–44, 47–48, 54–55, 65-66, 69–70). As
such, the October 15, 2012 Motion To Dismiss is ripe, as it raises a question of law and does not
challenge any underlying factual allegations. T-PD Reply at 4 (citing Nat’l Presto Indus.,
Inc. v. Dazey Corp., 107 F.3d 1576, 1580 (Fed. Cir. 1997) (holding that an appeal challenging a
court’s subject matter jurisdiction presents a question of law)). Contrary to AATI’s assertion,
there is no unresolved question of authorization and consent, because the Government has
verified authorization and consent to the relevant contracts at issue. T-PD Reply at 5 (citing
Hughes Aircraft Co. v. United States, 534 F.2d 889, 901 (Ct. Cl. 1976) (stating that “post hoc
intervention of the Government in pending infringement litigation against individual contractors”
establishes authorization and consent)).9 Therefore, postponing a decision on Boeing’s October
15, 2012 Motion To Dismiss would waste judicial resources and impose unnecessary discoveryrelated burdens on the parties. T-PD Reply at 5.
9

Boeing submitted an October 12, 2012 letter from Benjamin S. Richards, Attorney,
Commercial Litigation Branch, Civil Division, U.S. Department of Justice, to counsel for AATI
to evidence the Government’s authorization of and consent to the contracts at issue. T-PD Reply
at 5 (citing T-PD Reply Ex. A). The court, however, declines to consider this letter. First, by
appending the letter to a reply brief, Boeing afforded AATI no opportunity to respond. See
Novosteel SA v. United States, 284 F.3d 1261, 1274 (Fed. Cir. 2002) (“Raising the issue for the
first time in a reply brief does not suffice; reply briefs reply to arguments made in the response
brief—they do not provide the moving party with a new opportunity to present yet another issue
for the court’s consideration.”). Second, “[o]n a motion to dismiss, the court generally may not
consider materials outside the pleadings.” Am. Contractors Indem. Co. v. United States, 570
F.3d 1373, 1376 (Fed. Cir. 2009); cf. AstraZeneca Pharm. LP v. Apotex Corp., 669 F.3d 1370,
1378 n.5 (Fed. Cir. 2012) (affirming the trial court’s decision, when evaluating a motion to
dismiss, to review documents “integral to or explicitly relied upon in the complaint,” without
allowing the opposing party to conduct additional discovery (quoting In re Burlington Coat
Factory Sec. Litig., 114 F.3d 1410, 1426 (3d Cir. 1997))).

7

AATI, however, does not cite a single authority, precedential or otherwise, in support of
the argument that the court should defer ruling on the pending jurisdictional motion, because
discovery might render the motion moot. In fact, AATI’s argument conflicts with Steel
Co. v. Citizens for a Better Environment, 523 U.S. 83, 93–95 (1998), wherein the United States
Supreme Court held that jurisdictional issues, even particularly difficult ones, must be decided as
a threshold matter, even when a case may be resolved easily on the merits.
For these reasons, the court has determined that Boeing’s October 15, 2012 Motion to
Dismiss is ripe for the court’s adjudication.
C.

Whether The Waiver Of Sovereign Immunity, Under 28 U.S.C. § 1498(a),
Applies To The Types of Patent Infringement Prescribed In 35 U.S.C. § 271.
1.

The Third-Party Defendants’ Argument.

First, Boeing argues that the United States Court of Appeals for the Federal Circuit
“expressly connected the waiver of sovereign immunity [under § 1498(a)] to the scope of the
patent grant under 35 U.S.C. § 154(a)(1).”10 T-PD Mot. at 6 (citing Zoltek V, 672 F.3d at 1323).
Because section 154(a)(1) of the Patent Act incorporates language that is parallel to that found in
section 271(a) and (g), violations thereof are acts of direct infringement and included in the
waiver of sovereign immunity in § 1498(a). T-PD Mot. at 6–7. Therefore, Boeing contends that
Zoltek V “expressly left precedent regarding acts of indirect infringement undisturbed,” because
“the law is settled that the Government has not waived its sovereign immunity” for such claims.
T-PD Mot. at 7 (citing Zoltek V, 672 F.3d at 1327); see also id. at 7 (quoting Decca
Ltd. v. United States, 640 F.2d 1156, 1167 (Ct. Cl. 1980) (stating that “under section 1498, the
Government has agreed to be sued only for its direct infringement of a patent . . . . Activities of
the Government which fall short of direct infringement do not give rise to governmental liability,
because the Government has not waived its sovereign immunity with respect to such activities.”)
(emphasis and bold in T-PD Mot.)). And, as Decca stated, the Government is “not liable for its
inducing infringement by others, for its conduct contributory to infringement of others, or for
what, but for section 1498, would be contributory (rather than direct) infringement of its
suppliers.” Decca, 640 F.2d at 1167. Therefore, Zoltek V and Decca require that the court grant
Boeing’s October 15, 2012 Motion to Dismiss. T-PD Mot. at 7.
Second, Boeing points out that section 154(a)(1) of the Patent Act11 does not include any
language describing the export of components of a patented invention, because that type of

10

Section 154(a)(1) of the Patent Act affords a patentee only “the right to exclude others
from making, using, offering for sale, or selling the invention into the United States[.]” 35
U.S.C. § 154(a)(1).
11

Boeing adds that it is not unusual for sovereign immunity to bar patent infringement
claims. T-PD Reply at 10 (stating that the United States Court of Appeals for the Federal Circuit
has “routinely confirmed that the use of a patented invention by a governmental entity does not
necessarily entitle the patent holder to the right to sue the government”).

8

infringement is limited to section 271(f) of the Patent Act.12 T-PD Reply at 7. For this reason,
Zoltek V characterized section 271(f) as a statute prohibiting “indirect infringement.” T-PD Mot.
at 8 (citing Zoltek V, 672 F.3d at 1327).
Third, Boeing asserts that Zoltek V stands for the proposition that § 1498(a) is applicable
only to direct infringement, as described in certain sections of the Patent Act: when an entire
patent combination is made, § 271(a); or, on the completion of a patented process, § 271(g). TPD Mot. at 8. Therefore, § 1498(a) is not applicable to indirect infringement, described in
section 271(f) of the Patent Act as where uncombined components of a patented combination are
supplied or caused to be combined overseas “to actively induce” infringement. T-PD Mot. at 8.
In addition, “language of intent” is included in section 271(f) of the Patent Act that parallels that
of induced infringement under section 271(b). T-PD Mot. at 8. And, the text of section
271(f)(2) parallels that of “contributory infringement” under section 271(c). T-PD Mot. at 8.
Therefore, Boeing reads Zoltek V to link the scope of § 1498(a) only to acts that “directly
implicate the exclusive rights granted to a patentee” under section 154(a)(1). T-PD Mot. at 9
(citing Zoltek V, 672 F.3d at 1326–27). Since section 154(a)(1) of the Patent Act does not
include “any exclusive rights corresponding to acts of infringement under [s]ection 271(f),”
Boeing states that the “only reasonable conclusion is that conduct delineated in [section] 271(f)
constitutes indirect infringement.” T-PD Mot. at 9.
Boeing reasons that the conclusion that there has been no waiver of sovereign immunity
as to section 271(f) of the Patent Act is consistent with Zoltek V’s conclusion that immunity was
waived as to 35 U.S.C. § 271(g). T-PD Mot. at 9. This is so, because in “general a party is
liable for infringement under [s]ection 271(g) [of the Patent Act] if the party imports a product
made by a patented process—an act that directly implicates the exclusive rights granted to a
12

Section 271(f) of the Patent Act provides:

(1) Whoever without authority supplies or causes to be supplied in or from
the United States all or a substantial portion of the components of a patented
invention, where such components are uncombined in whole or in part, in such
manner as to actively induce the combination of such components outside of the
United States in a manner that would infringe the patent if such combination
occurred within the United States, shall be liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from
the United States any component of a patented invention that is especially made
or especially adapted for use in the invention and not a staple article or
commodity of commerce suitable for substantial noninfringing use, where such
component is uncombined in whole or in part, knowing that such component is so
made or adapted and intending that such component will be combined outside of
the United States in a manner that would infringe the patent if such combination
occurred within the United States, shall be liable as an infringer.
35 U.S.C. § 271(f).

9

patentee by [s]ection 154(a)(1) because Congress expanded the patent grant under [s]ection
154(a)(1) when it added [s]ection 271(g) to the Patent Act.” T-PD Mot. at 9 (citing Zoltek V,
672 F.3d at 1323–25). But, when Congress added patent liability under section 271(f) of the
Patent Act, the scope of the patent grant in section 154(a)(1) was not changed. T-PD Mot. at 9.
Therefore, Boeing advises that Congress “intended different treatment for [s]ections 271(f) and
(g).” T-PD Mot. at 9. Consequently, “well settled-principles of statutory interpretation mandate
the conclusion that there has been no waiver of sovereign immunity for acts of infringement
under [s]ection 271(f).” T-PD Mot. at 10. This result, according to Boeing, also “conforms to
the general principle that a court must narrowly construe any waiver of the Government’s
sovereign immunity.” T-PD Mot. at 10.
Finally, Boeing cites Motorola, Inc. v. United States, 729 F.2d 765, 768 (Fed. Cir. 1984)
for the proposition that “[a]lthough a section 1498 action may be similar to a Title 35 action, it is
nonetheless only parallel and not identical.” T-PD Mot. at 11. Consequently, it is the
prerogative of Congress to waive sovereign immunity and Congress “plainly has not done so for
all conduct that may render a private party liable for patent infringement.” T-PD Mot. at 11
(emphasis and bold in T-PD Mot.). Since Congress has not waived sovereign immunity for
indirect infringement under section 271(f), the court should dismiss all of AATI’s claims based
on such conduct, i.e., Amend. Compl. ¶¶ 43–44, 47–48, 54–55, 58–59, 65–66, 69–70. T-PD
Mot. at 11–12.
Boeing’s Response to the Government’s Supplemental Brief simply indicates that Boeing
“join[s] in the Government’s arguments set for in the Supplemental Brief,” reiterating several
arguments made therein. T-PD Resp. at 1. Specifically, the Response, like the Government’s
Supplemental Brief, argues that claims of infringement under section 271(f) fail the “three-prong
test . . . in [Zoltek V],” and thus remain outside the scope of the waiver of sovereign immunity
under § 1498(a). T-PD Resp. at 2.
2.

The Government’s Argument.

Interestingly, as the primary defendant, the Government did not initiate or immediately
join Boeing’s October 15, 2012 jurisdictional motion, but waited for the court’s invitation to
provide its “views” on the scope of the congressional waiver of sovereign immunity under 28
U.S.C. § 1498(a). In a five-page initial submission, the Government simply concurred that the
“United States has waived sovereign immunity only for claims of compensation based on its, or
its contractor’s, direct infringement of a United States patent.” Gov’t Resp. at 2, 3–4 (citing
Decca and Zoltek V).
In response to the court’s request at the May 22, 2013 oral argument, the Government
filed a Supplemental Brief on June 12, 2013, requesting that the court dismiss the claims alleged
in the Amended Complaint at ¶¶ 43–44, 47–48, 54–55, 58–59, 65–66, and 69–70, because they
state claims under 35 U.S.C. § 271(f). Gov’t Supp Br. at 1–2; see also id. at 3–16.
Seizing on AATI’s contention that infringement under section 271(f) is a form of direct
infringement (Pl. Opp. at 12), the Government contends that the “second prong of the Zoltek [V]
analysis” precludes section 271(f) from being within the ambit of the Government’s waiver of

10

sovereign immunity in § 1498(a). Gov’t Supp. Br. at 4. Zoltek V held that the scope of the
Government’s waiver of immunity is determined by applying a three-prong analysis, and the
second of those prongs provides that immunity is waived when an invention claimed in a U.S.
patent “(2) is ‘used or manufactured by or for the United States,’ meaning each limitation is
present in the accused product or process[.]” Gov’t Supp. Br. at 4 (quoting Zoltek V, 672 F.3d at
1319). That requirement—that each limitation is present in the accused product or process—
requires that the product or process accused of infringing “is complete.” Gov’t Supp. Br. at 6.
Because infringement under sections 271(b), (c), and (f) is “preparatory to an infringement that
has yet to be completed,” infringement under those sections is implicitly excluded from the
scope of the § 1498(a) waiver. Gov’t Supp. Br. at 6.
3.

The Plaintiff’s Response.

AATI responds that the court has jurisdiction over AATI’s claims as to Boeing’s
infringement, because of Government authorization and consent for the conduct described in the
Amended Complaint. Pl. Opp. at 5–6, 16; see also Am. Compl. at 1–2. Therefore, section
271(f) imposes liability on the supplier of components to be used to assemble or manufacture an
infringing product by an entity outside of the borders of the United States. Pl. Opp. at 6–7. In
contrast to section 271(c) of the Patent Act, prohibiting contributing infringement, section 271(f)
does not require a predicate act of direct infringement. Pl. Opp. at 7 (citing Worldtech Sys., Inc.
v. Integrated Networks Solutions, Inc., 609 F.3d 1308, 1317 (Fed. Cir. 2010) (holding that
“indirect infringement must relate directly to . . . direct infringement.”)). Therefore, because
section 271(f) of the Patent Act does not require proof of direct infringement, section 271(f)
infringement ipso facto “cannot be indirect infringement.” Pl. Opp. at 7. AATI also adds that
section 271(f) is a “twin to 35 U.S.C. § 271(g), since Congress enacted section 271(f) of the
Patent Act to impose liability for patent infringement where components of an invention were
made in the United States, but then exported for physical combination abroad. Pl. Opp. at 6
(citing Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 444–45 (2007) (explaining that “Congress
specifically intended § 271(f) as a response to the Supreme Court’s decision in Deepsouth
[Packing Co., Inc., v. Laitram Corp., 406 U.S. 518 (1972)]. . . . [so that § 271(f)] expands the
definition of infringement to include supplying from the United States a patented invention’s
components” (internal citations omitted))).
In sum, section 271(g) was enacted to eliminate patent infringement accomplished by
carrying out some or all of the steps of a patented process outside the United States and then
importing the end product or offering to sell, selling, or using that product in the United States.
Pl. Opp. at 7. In other words, section 271(g) of the Patent Act deals with imports and is the
mirror opposite of section 271(f) that deals with exports. Pl. Opp. at 8. Both statutes “close
loopholes and both address intended activity outside the patent jurisdiction of the United States
that is not itself a violation of [section] 271(a).” Pl. Opp. at 8.
In addition, AATI contends that the aforementioned statutory construction is supported
by Zoltek V, since “much of the rationale for deciding that [section] 271(g) is within [section]
1498(a) lends itself equally to the conclusion that [section] 271(f) is also within [section]
1498(a).” Pl. Opp. at 8. For this reason, sections 271(f) and (g) of the Patent Act prohibit
infringement that, “had it been conducted in the United States, would be infringement
under [section] 271(a).” Pl. Opp. at 9. As Zoltek V recognized, the “limitation of [section]

11

1498(a) to infringement under [section] 271(a) is inconsistent with the plain language of the
statute[.]” Pl. Opp. at 9 (quoting Zoltek V, 672 F.3d at 1314–15). Moreover, limiting the scope
of sovereign immunity under section 1498(a) only to section 271(a) of the Patent Act “creates
the possibility that the United States’ procurement of important military matériel could be
interrupted via infringement actions against government contractors—the exact
result [section] 1498 was meant to avoid.” Pl. Opp. at 9 (quoting Zoltek V, 672 F.3d at 1314–
15). In other words, the Government needs to maintain the ability to authorize and consent to
infringement under section 271(f) to avoid having necessary procurement interrupted by an
infringement suit. Pl. Opp. at 10.
Next, AATI addresses Boeing’s argument that “(1) all acts of ‘indirect infringement’ are
outside of § 1498 and (2) infringement under § 271(f) is ‘indirect infringement’ so that
(3) § 271(f) is outside § 1498.” Pl. Opp. at 10. AATI states that simply describing infringement
under § 271(f) as “indirect infringement” does not address whether the acts described therein are
subject to the scope of immunity under § 1498(a). Pl. Opp. at 10. And, as the United States
Court of Appeals for the Federal Circuit explained, whether section 271(f) of the Patent Act is
subject to the scope of sovereign immunity set forth in § 1498(a) was not at issue in Zoltek V. Pl.
Opp. at 10–11.
Then, AATI posits that there is no basis for “limiting § 1498 to acts that violate rights set
forth in § 154,” because neither the Government nor its contractors have a “license” or “lawful
right” to use § 1498(a) to shield them against infringement, whether infringement occurs under
section 271(f) of the Patent Act or section 271(g). Pl. Opp. at 11–12. In fact, section 271(f) of
the Patent Act should not be labeled as “indirect infringement” for purposes of § 1498(a), since
the United States Court of Appeals for the Federal Circuit has held that “indirect infringement”
requires the establishment of a “concomitant act of direct infringement.” Pl. Opp. at 12 (citing
Worldtech, 609 F.3d at 1317 (explaining that a “defendant’s liability for indirect infringement
must relate to . . . identified instances of direct infringement”)); see also Lucent Techs.,
Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009) (articulating appellant’s argument
that “direct infringement [is] a necessary predicate for proving indirect infringement”).
Therefore, infringement under section 271(f) of the Patent Act, as to acts occurring within the
United States, is not indirect infringement, because it focuses on the act of supplying components
in or from the United States for combination abroad, and does not require any separate act of
direct infringement.
Pl. Opp. at 12 (citing 5 Donald S. Chisum, CHISUM ON
PATENTS, § 16.02[7] (Matthew Bender) (including infringement under § 271(f) of the Patent
Act in a section entitled “Direct Infringement”)). In fact, AATI asserts that infringement under
section 271(f) is direct infringement that is “covered by the § 1498(a) waiver.” AATI Resp. at 1.
AATI also challenges Boeing’s reliance on Decca for the proposition that indirect
infringement is not subject to the scope of § 1498(a) immunity waiver. Pl. Opp. at 13–14.
Decca was decided in 1980. Pl. Opp. at 13. Therefore, Decca’s holding that § 1498(a) waives
the Government’s sovereign immunity for “direct infringement,” applies only to sections 271(b)
and (c) of the Patent Act, since section 271(f) was not enacted until 1984. Pl. Opp. at 13. To the
extent that Decca still has vitality after Zoltek V, its holding is limited only to
suppliers/manufacturers of components of a patented invention, where those components are not
combined within the United States. Pl. Opp. at 14. In this case, however, there is no dispute that
Boeing manufactured both UAVs and a rig for deploying the arrestment line within the United

12

States. Pl. Opp. at 14. And, there is no dispute that when both of these parts of the invention are
manufactured, the invention “is complete and ready to use.” Pl. Opp. at 14. Therefore, the only
“combination” of the manufactured parts that occurs outside the United States is the “use” of the
two parts; it is not “the manufacture of a permanent completed structure.” Pl. Opp. at 14.
Specifically, Boeing supplied both parts of the patented invention—the UAVs with the structure
in question, and a rig for deploying the arrestment line—an action that constitutes the supply of
“all components” referenced in section 271(f) of the Patent Act. Pl. Opp. at 14. Therefore,
Boeing’s supply of these components was direct infringement, because Boeing “made the
invention within the meaning of [Section] 154.” Pl. Opp. at 14. Although AATI’s patented
invention was “combin[ed]” overseas, in that two parts were used in conjunction with each other,
the “entire manufacture” took place in the United States. Pl. Opp. at 15.
AATI concludes that the court does not need to decide “whether [section] 271(f) [of the
Patent Act] describes a direct infringement in all circumstances, but only under the facts of this
case,” wherein “Boeing’s manufacture of AATI’s complete invention in the United States, for
‘combination’ only in terms of use overseas, is a direct infringement that falls within the plain
meaning of § 1498(a).” Pl. Opp. at 15. In sum, as a matter of law, “[b]ecause [section] 271(g)
[of the Patent Act] is within § 1498, [Section] 271(f) must be deemed to be within § 1498 as
well.” Pl. Opp. at 15.
AATI also asserts that both the Government and Boeing misapply the “Zoltek V
statement that a use or manufacture means that each limitation must be present in the accused
product of process.” AATI Resp. at 10. Zoltek V found that each limitation of an asserted
section 271(g) claim was present in the accused product or process by virtue of the importation,
sale, or use in the United States of the product created by the patented process. Similarly, in the
case of § 271(f) infringement, each limitation is present in the accused product or process, so as
to constitute use or manufacture under § 1498(a), by the “supply of components in conjunction
with the intent or understanding . . . that those components will be combined overseas[.]” AATI
Resp. at 10. Thus, just as a section 271(g) infringement is a “use” under § 1498(a), so also is an
infringement claim brought under § 271(f). AATI Resp. at 11.
4.

The Court’s Resolution.

Section 1498(a) is a congressional waiver of sovereign immunity and designation of the
United States Court of Federal Claims as the exclusive forum for the adjudication of patent
infringement claims against the Government:
Whenever an invention described in and covered by a patent of the United States
is used or manufactured by or for the United States without license of the owner
thereof or lawful right to use or manufacture the same, the owner’s remedy shall
be by action against the United States in the United States Court of Federal
Claims for the recovery of his reasonable and entire compensation for such use
and manufacture.
28 U.S.C. § 1498(a).

13

The United States Court of Appeals for the Federal Circuit en banc stated that: “Section
1498 makes no reference to direct infringement as it is defined in [35 U.S.C.] § 271(a). Indeed,
so interpreting § 1498(a) is contrary to its plain language, interpreted in light of the meaning of
that language in 1910.” Zoltek V, 672 F.3d at 1319. Instead, our appellate court said
that “§ 1498(a) comes within the scope of the right to exclude granted in 35 U.S.C. § 154(a)(1).”
Zoltek V, 672 F.3d at 1326–27. Section 154(a)(1) of the Patent Act describes a patent as “the
right to exclude others from making, using, offering for sale, or selling the invention throughout
the United States or importing the invention into the United States[.]” 35 U.S.C. § 154(a)(1). It
is for this reason that our appellate court has held the Government waives sovereign immunity
for claims alleging a violation of the rights protected by section 154(a)(1) of the Patent Act. See
Zoltek V, 672 F.3d at 1326–27 (explaining that because “direct infringement under § 1498(a)
comes within the scope of the right to exclude granted in 35 U.S.C. § 154(a)(1) . . . . the
Government has waived its sovereign immunity”). Any act to deny a patent holder the benefit of
that right is prohibited under § 1498(a), whether it be “direct” or “indirect.”
In sum, all parties in this case misconstrue the scope of the waiver of sovereign immunity
in § 1498(a), as the “plain language of § 1498(a) indicates that § 1498(a) operates independently
from Title 35.” Zoltek V, 672 F.3d at 1321 (emphasis added); see also id. at 1326. Therefore,
contrary to Boeing’s argument, Zoltek V did not consider whether Congress waived sovereign
immunity for so-called indirect infringement under 28 U.S.C. § 1498(a), not because the “law is
settled,” but because that issue was not presented in that case. Compare T-PD Mot. at 7 (“As for
claims of indirect infringement, the law is settled that the Government has not waived its
sovereign immunity.”), with Zoltek V, 672 F.3d at 1327 (“We do not decide the issue of indirect
infringement, under § 271(b), (c), and (f), which is not before us.” (emphasis added)). Likewise,
although Boeing argues that Decca prohibits the court from ruling that the waiver of sovereign
immunity under 28 U.S.C. § 1498(a) extends to indirect infringement, the issue before the Court
of Claims in that case did not concern liability, but “the quantum of recovery.” See Decca, 640
F.2d at 1162. Therefore, that court’s observation that the “[a]ctivities of the Government which
fall short of direct infringement” are exempt from the scope of the immunity waiver under §
1498(a) is dicta. Id. at 1167.13 And, contrary to AATI’s argument, neither section 271(f) of the
Patent Act, nor any other section thereof, is “within” § 1498(a). Pl. Opp at 8; see also Pl. Resp.
at 8–9.
The text of § 1498(a) does not describe the type of patent infringement for which
Congress has waived sovereign immunity by using the adjectives “direct” or “indirect.” See 28
U.S.C. § 1498(a). What § 1498(a) does state is that sovereign immunity is waived where: an
“invention described in and covered by a patent;” is “us[ed] or manufacture[ed]” by or for the
Government; “without [a] license of the [patent] owner” or “lawful right” to do so. Id. (emphasis
added). In the context of Section 1498(a), “use” of a patent means that “each limitation of the
claims must be present in the accused product[.]” Zoltek V, 672 F.3d at 1318; see also id. at
1319.
13

Moreover, the only case that Decca cited in support is in a footnote, Leesona
Corp. v. United States, 599 F.2d 958, 962 (1979), cert. denied, 444 U.S. 991 (1979), a case that
also concerned damages, not the waiver of sovereign immunity under § 1498(a). See Decca, 640
F.2d at 1167 n.15.
14

As to the ‘729, ‘137, and ‘242 patents in this case, the Amended Complaint alleges that
the Government “has entered into certain contracts with Insitu and Boeing[,] pursuant to which
those companies use or manufacture the invention described in and covered [by AATI’s patents]
for the United States, with the authorization and consent of the United States for that use or
manufacture.” Am. Compl. ¶ 49 (same re: ‘729 patent) (emphasis added); see also id. ¶ 60
(same re: ‘137 patent); see also id. ¶ 71 (same re: ‘242 patent). In addition, the Amended
Complaint alleges that the Government “has been, and now is using or manufacturing, without
license of AATI or lawful right to use or manufacture, the invention described in and covered by
the ‘729 patent, by using or manufacturing Insitu UA[Vs], and all like systems and services.”
Am. Compl. ¶ 74; see also id. ¶ 77 (same re: ‘137 patent); see also id. ¶ 82 (same re: ‘242
patent).
As the United States Court of Appeals for the Federal Circuit has stated, to “use an
invention, each limitation of the claims must be present in the accused product[.]” Zoltek V, 672
F.3d at 1318 (internal quotation omitted); see also id. at 1320 (“the language in § 1498(a) . . . is
limited to inventions that are ‘used or manufactured by or for the United States.’”). “Use,”
however, is not defined by where the alleged infringing conduct takes place, but by the effect of
the conduct. The contracts at issue in this case authorized the act of infringement. That conduct
arose in the United States14 and is consistent with Decca’s description of direct infringement as
“use or manufacture . . . either through authorized actions of governmental employees or
through actions by contractors specifically authorized by the Government to engage in the
actions for the Government.” 640 F.2d at 1167 n.15 (emphasis added). Therefore, the court
construes the aforementioned paragraphs of the Amended Complaint to allege that the inventions
described in the ‘729, ‘137, and ‘242 patents were used by or for the Government, “without [a]
license” or “lawful right” to do so. See 28 U.S.C. § 1498(a).
The Amended Complaint, however, also alleges that Insitu and Boeing have directly
infringed AATI’s patents by “supplying or causing to be supplied in or from the United States all
or a substantial portion of . . . the components of the invention claimed in the ‘729 patent, where
such components are uncombined in whole or in part, in such a manner as to actively and
intentionally induce the combination of such components outside of the United States in a
manner that it knew or knows would infringe the ‘729 patent[,] if such combination occurred
within the United States.” Am. Compl. ¶ 43; see also id. ¶¶ 44; ¶¶ 47–48 (same re: Boeing’s
actions re: ‘729 patent); see also id. ¶¶ 54–55 (same re: Insitu’s actions re: ‘137 patent); see also
id. ¶¶ 58–59 (same re: Boeing ‘s actions re: ‘137 patent); see also id. ¶¶ 65–66 (same re: Insitu’s
actions re: ‘242 patent); see also id. ¶¶ 69–70 (same re: Boeing’s actions re: ‘242 patent). But,
Zoltek V requires “use[] or manufacture[] by or for the United States.” 672 F.3d at 1319. The
mere allegation of exportation, without an allegation of use by the Government, does not
implicate this court’s jurisdiction under 28 U.S.C. § 1498(a). As such, the Amended Complaint
does not allege either use or manufacture by or for the Government and the court does not have
jurisdiction under 28 U.S.C. § 1498(a) to adjudicate claims of patent infringement between
private parties.
14

Therefore, Section 1498(c) is inapplicable as it provides: “The provisions of . . . section
[§ 1498] shall not apply to any claim arising in a foreign country.” 28 U.S.C. § 1498(c).

15

Therefore, ¶¶ 43–44, 47–48, 54–55, 58–59, 65–66, and 69–70 of the Amended Complaint
as to Insitu and Boeing are dismissed, and Boeing is dismissed as a T-PD.15 Boeing, in its own
capacity and as the parent of the wholly-owned subsidiary Insitu, however, may elect to
intervene in this case. If it decides to do so, any such motion must be filed for the court’s
consideration on or before November 15, 2013. The court will convene a status conference with
the parties on November 25, 2013, to set up a briefing schedule for claim construction.
IV.

CONCLUSION.

For these reasons, the October 15, 2012 Motion to Dismiss by Third-Party Defendant The
Boeing Company is granted and paragraphs 43–44, 47–48, 54–55, 58–59, 65–66, and 69–70 of
the May 10, 2012 Amended Complaint are dismissed, insofar as they allege a claim for patent
infringement under Title 35. Plaintiff, however, is granted leave to further amend to include
factual aspects of these allegations as background information.
IT IS SO ORDERED.
s/ Susan G. Braden
SUSAN G. BRADEN
Judge

15

In the event that the Government is determined to be liable for patent infringement
under 28 U.S.C. § 1498(a), it may seek to enforce any indemnification agreement it may have
with Boeing in a separate action in federal district court. Whether AATI may seek a separate
adjudication against Boeing and the quantum of damages, if any, also is subject to the
jurisdiction of a federal district court.
16