HADDAD v. USA

Filing 31

REPORTED ORDER ordering Plaintiff to file response.Show Cause Reponse due by 10/20/2017.Signed by Chief Judge Susan G. Braden. (ar) Copy to parties.

ORIGINAL
3Jn tbe mlntteb

~tates

Qtourt of jfeberal Qtlaims

No. 17-307
Filed: September 22, 2017

SEP 2 2 2017

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MICHAEL HADDAD,
Plaintiff, prose,

FILED
U.S. COURT OF
FEDERAL CLAIMS

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v.
THE UNITED STATES,
Defendant,
and
BAE SYSTEMS INFORMATION
SOLUTIONS, INC., NCR GOVERNMENT
SYSTEMS, LLC, TRANS DIGITAL
TECHNOLOGIES, LLC and
MORPHO TRUST USA, LLC,
Third-Party Defendants.

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Issue Fee Payment,
Patent Applicant,
Patent Assignment,
Patent Issue Date,
Patent License,
Patent Number,
Show Cause Order.

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MEMORANDUM OPINION AND SHOW CAUSE ORDER
On December 29, 2009, the United States Patent and Trademark Office ("USPTO") issued
U.S. Pat. No. 7,639,844 (the '"844 Patent") to Michael Haddad ("Plaintiff'), the sole inventor.
On March 6, 2017, Plaintiff filed a Complaint alleging that the Transportation Security
Administration ("TSA"), a federal agency, infringed the '844 Patent. ECF No. 1.
On July 5, 2017, the Government filed a Motion For Partial Dismissal, pursuant to Rules
of the United States Court of Federal Claims ("RCFC") 12(b)(l) and 12(b)(6). ECF No. 20.
Therein the Government asserted that,
[a]lthough Mr. Haddad contends that he now holds all substantial rights in the '844
Patent, the Complaint indicates that these rights were not assigned back to Mr.
Haddad by Astomet until October 27, 2016. The Complaint is silent regarding
when these rights were originally assigned to Astomet by Mr. Haddad.
ECF No. 20 at 5.

7017 1450 ODDO 1346 2564

On July 18, 2017, Plaintiff filed a Reply to the Government's July 5, 2017 Motion. ECF
No. 27. Exhibit A of Plaintiffs July 18, 2017 Reply included a letter, dated May 1, 2009 (the
"Assignment Letter"), purporting to "appoint[] Astomet Technologies, Inc. as the exclusive
licensee to pursue TSA opportunity [sic] for the CAT/BPSS." The Assignment Letter refers to
Plaintiff as the "Owner of patent US7,639,844." Exhibit C of Plaintiffs July 18, 2017 Reply
included a signed and notarized statement (the "Notarized Statement") executed by Plaintiff, in his
personal capacity and in his capacity as "CEO/President" of Astomet Technologies, Inc.,
representing that "the exclusive license of Patent 7,639,844 ... assigned from Mr. Michael
Haddad, the inventor and owner of the 7,639,844 patent to Astomet Technologies, Inc., took place
on May 1st, 2009[.]" The Notarized Statement also represents that "Mr. Michael Haddad certify
[sic] that as per the record, that he signed a letter dated 5/1/2009 granting Astomet Technologies,
Inc. a license[.]" Therein, Plaintiff twice affirmed the date of the Assignment Letter as May 1,
2009.
The USPTO, however, assigns patent numbers "after the issue fee has been paid." 1 The
issue fee for the'844 Patent was paid on November 9, 2009. 2 Therefore, Plaintiff could not have
known the patent number of the '844 Patent, i.e., 7,639,844, prior to November 9, 2009. As such,
the Assignment Letter's designation of Plaintiff as the "Owner of patent US7,639,844" is facially
inconsistent, i.e., the Assignment Letter is dated May 1, 2009, more than six months before the
'844 Patent would have been assigned its patent number.
For these reasons, Plaintiff is ordered to file a response on, or before, October 20, 2017,
explaining how Plaintiff knew the patent number of the '844 Patent on May 1, 2009, the date of
the Assignment Letter. If a response is not filed by that time, the court will dismiss the abovecaptioned case, pursuant to RCFC 41 (b), with prejudice.
IT IS SO ORDERED.

Chief Judge

1

Patent Process Overview, UNITED STATES PATENT AND TRADEMARK OFFICE,
https ://www.uspto.gov/patent s-getting-sta1ted/patent-process-overview#step7 (last visited September 21,
2017) ("The notice of allowance will list the issue fee and may also include the publication fee that must
be paid prior to the Patent being issued... . A patent number and issue date will be assigned to an
application and an Issue Notification will be mailed after the issue fee has been paid and processed by the
USPTO.").
2
See "Issue Fee Payment (PT0-85B)"dated November 9, 2009 within the " Image F ile Wrapper" of
the'844 Patent, UNITED STATES PATENT AND TRADEMARK OFFICE: PATENT APPLICATION INFORMATION
RETRIEVAL, https://portal.uspto.gov/pair/PublicPair (select "Patent N umber" and search "7639844"; then
select "Image File Wrapper").

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