In the United States Court of Federal Claims

No. 12-484C

(Filed Under Seal: June 26, 2015)

(Reissued: July 2, 2015)

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FASTSHIP LLC,

Plaintiff,

v.

UNITED STATES,

Defendant.

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Patent case; “manufactured” for purposes 

of alleged infringement under 28 U.S.C. 

§ 1498(a); partial summary judgment

Mark L. Hogge, Dentons US LLP, Washington, D.C., for plaintiff. With him on the brief 

and at the hearing were Shailendra K. Maheshwari, Dentons US LLP, Washington, D.C., and

Donald E. Stout, Fitch, Even, Tabin & Flannery LLP, Washington, D.C. Also with him on the 

brief were Nicholas Jackson and Rajesh Noronha, Dentons US LLP, Washington, D.C. 

 Andrew P. Zager, Trial Attorney, Commercial Litigation Branch, Civil Division, United 

States Department of Justice, Washington, D.C., for defendant. With him at the hearing was 

Scott Bolden, Assistant Director, Commercial Litigation Branch, Civil Division, United States 

Department of Justice, Washington, D.C. With him on the briefs were Joyce R. Branda, Acting 

Assistant Attorney General, Benjamin C. Mizer, Principal Deputy Assistant Attorney General, 

and John Fargo, Director, Commercial Litigation Branch, Civil Division, United States 

Department of Justice, Washington, D.C. 

OPINION AND ORDER1

LETTOW, Judge. 

In this patent case, plaintiff, FastShip LLC (“FastShip”), alleges that the United States 

(“the government”) through the Department of the Navy (“the Navy”) has infringed Claims 1 

and 19 of its U.S. Patent No. 5,080,032 (“the ’032 patent”) and Claims 1, 3, 5, and 7 of its U.S. 

 

1Because this opinion and order might have contained confidential information within the 

meaning of Rule 26(c)(1)(G) of the Rules of the Court of Federal Claims (“RCFC”) and the 

protective order entered in this case, it was initially filed under seal. The parties were requested 

to review this opinion and order and to provide proposed redactions of any confidential 

information. No redactions were requested. 
2

Patent No. 5,231,946 (“the ’946 patent”) and thus is liable for damages under 28 U.S.C. 

§ 1498(a). Compl. ¶ 18. FastShip claims patent infringement regarding the Freedom class of 

Littoral Combat Ships (“LCS”), specifically LCS-1 (USS Freedom), LCS-3 (USS Fort Worth),

and later ships in the class (LCS-5, -7, -9, and -11). Compl. ¶18. Before the court is the 

government’s motion for partial summary judgment pursuant to RCFC 56. Def.’s Mot. for 

Partial Summary Judgment (“Def.’s Mot.”), ECF No. 65. The government avers that LCS-3 and 

the later allegedly infringing ships were not “manufactured” by or for the government within the 

meaning of 28 U.S.C. § 1498 prior to the expiration of the patents-in-suit, and they thus provide 

no basis for FastShip’s recovery as to those ships. Def.’s Mot. at 1.2 FastShip resists this 

motion, arguing that evidence shows that LCS-3 was substantially manufactured at the time the 

patents at issue expired. See Pl.’s Response to Def.’s Mot. for Partial Summary Judgment (“Pl.’s 

Opp’n”), ECF No. 75.3

 BACKGROUND 

A. ’032 and ’946 Patents 

FastShip’s allegations of infringement are directed to a class of Navy vessels, specifically 

littoral combat ships that combine semi-planing monohulls with the use of waterjets for 

propulsion. Compl. ¶¶ 16-18.4

 The ’032 and ’946 patents asserted in this case describe a semiplaning monohulled vessel that is longer than 200 feet with a displacement in excess of 2,000 

tons. See Compl. ¶¶ 8-9; see also Tech. Tutorial Tr. 28:14-19 (Aug. 27, 2013).5

 The vessel 

relies on its hull design and waterjet propulsion to enable speed capabilities exceeding 40 knots. 

See Compl. ¶ 8. 

FastShip’s ’032 patent was issued on January 14, 1992, and the ’946 patent, a 

continuation of the ’032 patent, was issued on August 3, 1993. Def.’s Opening Claim 

Construction Br. Exs. A (U.S. Patent No. 5,080,032) (“’032 patent”), & B (U.S. Patent No. 

 

2The government concedes that LCS-1, USS Freedom, was manufactured prior to the 

expiration of the patents-in-suit. Def.’s Mot. at 1.

3LCS-5, -7, -9, and -11 are ships that were constructed after LCS-3. The government 

contends that “FastShip has not advanced the idea that LCS-5, -7, -9, or -11 are still at issue,” but 

FastShip has not withdrawn its claims regarding these ships. See Def.’s Mot. at 20. 

4The waterjet is an assembly that functions as a “ship or boat propulsion device.” 

McGraw-Hill Dictionary of Scientific and Technical Terms 2278 (6th ed. 2003). The assembly 

“consist[s] of a pump, usually located within the hull, that receives water through an inlet duct 

and discharges it through a nozzle at increased velocity to produce propulsive thrust.” Id. In this 

instance, the pump consists of an impeller within a housing, connected to a powered shaft. See 

Hr’g Tr. 36:17-21 (June 8, 2015) (“What we’ve been calling the waterjet is actually the impeller 

structure, the fan housing, if you will, that . . . is bolted inside the waterjet tunnel.”). 

5Further citations to the transcript of the technical tutorial will omit reference to the date. 
3

5,231,946) (“’946 patent”), ECF No. 26. Both patents expired on May 18, 2010.6 Compl. ¶ 5. 

At the time of expiration, LCS-1 (USS Freedom) was complete and in use by the Navy, and

LCS-3 (USS Fort Worth) and later ships in the class (LCS-5, -7, -9, -11) were still under 

construction. See Hr’g Tr. 34:11 to 35:7 (June 8, 2015);7see also Pl.’s Opp’n at 1; Def.’s Mot. 

at 1. 

 

 The ’032 patent consists of 20 claims, of which Claim 1 pertains to an apparatus, device, 

or assembly, stating hull and waterjet limitations. Claim 1 describes: 

A vessel comprising: 

a hull having a non-stepped profile which produces a high pressure area at the 

bottom of the hull in a stern section of the hull which intersects a transom to form an 

angle having a vertex at the intersection and hydrodynamic lifting of the stern section at a 

threshold speed without the hull planing across the water at a maximum velocity 

determined by a Froude Number, the hull having a length in excess of 200 feet, a 

displacement in excess of 2000 tons, a Froude Number in between about 0.42 and 0.90, 

and a length-to-beam ratio between about 5.0 and 7.0; 

at least one inlet located within the high pressure area; 

at least one waterjet coupled to the at least one inlet for discharging water which 

flows from the inlet to the waterjet for propelling the vessel; 

a power source coupled to the at least one waterjet for propelling water from the 

at least one inlet through the waterjet to propel the vessel and to discharge the water from 

an outlet of the waterjet; and wherein 

acceleration of water into the at least one inlet and from the at least one waterjet 

produces hydrodynamic lift at the at least one inlet which is additional to the lifting 

produced by the bottom of the hull in the high pressure area which increases efficiency of 

the hull and reduces drag. 

’032 patent, Claim 1 (emphasis added); see also id., Claim 19 (“[a] vessel conveying method” 

with similar limitations); ’946 patent, Claims 1, 3, 5, & 7 (describing similar limitations with 

 

6The face of the ’946 patent indicates that “[t]he portion of the term of this patent 

subsequent to Jan. 14, 2009 has been disclaimed.” ’946 patent at 1. However, effective June 8, 

1995, Congress changed the term of United States Patents, including those patents in force at the 

time. See generally 35 U.S.C. § 154. Based on the pleadings, the parties “agree that the 

language of FastShip’s terminal disclaimer . . . was effective in extending its term date to May 

18, 2010 after the change in statute.” Def.’s Mot. at 4 n.3. 

7Further citations to the transcript of the hearing on the government’s motion for partial 

summary judgment will omit reference to the date. 
4

both method and apparatus claims).8

B. Pertinent Components of LCS-3

LCS-3 is powered by a combination of two diesel engines and two gas turbines that are 

connected to four waterjets using shafts and gearboxes. Def.’s Mot. Ex. C (Preliminary 

Technical Manual for LCS-3, Vol. 1 (Nov. 1, 2013)), at 11; see also Def.’s Mot. at 6, Figure 1 

(depicting LCS-3 components). Inlets on the bottom portion of the ship’s hull draw in water, and 

the waterjets discharge the water at high velocity, providing propulsive force to the ship. Def.’s 

Mot. Ex. C, at 66. The monohull of LCS-3 includes the bow (the forward [front] portion), the 

midships portion, and the stern (the aft [back] portion), with port (left, looking forward) and 

starboard (right, looking forward) sides. See Hr’g Tr. 31:16-19; see also Pl.’s Opp’n Ex. C (Dep. 

of Captain Casey J. Moton (Apr. 16, 2015)) (“Moton Dep.”) 75:17 to 76:22;9 Def.’s Mot. at 7, 

14; Def.’s Reply in Further Support of its Mot. for Partial Summary Judgment (“Def.’s Reply”) 

at 6, ECF No. 75. The major components of the monohull can be seen in the figure provided by 

the government below. 

Def.’s Mot. at 6, Figure 1. 

 

8The Froude Number is the ratio of a ship’s speed in knots to the square root of its length

in feet and is used to understand drag by describing the physics of a ship’s speed relative to its 

size. It is analogous to the use of a Mach Number to describe aviation speed. See Tech. Tutorial 

Tr. 18:24 to 19:11. 

9Further citations to the transcript of Captain Moton’s deposition will omit reference to 

the date. 
5

 Both the superstructure above the main deck of the ship and the hull that supports the 

superstructure are built in a modular fashion. See Moton Dep. 49:1-3; see also Def.’s Mot. Ex. B

(Decl. of Captain Moton (Nov. 17, 2014)) (“Moton Decl.”) ¶ 14. The Freedom class ships are 

constructed in modules, which are then assembled or erected. Moton Dep. 49:14-19. Individual 

elements of each ship’s warfighting system are also modular, allowing components to be 

interchanged to provide various combat capabilities. Moton Dep. 11:22 to 13:5, 49:9-14. 

 The modules are developed via a phased process that includes material fabrication, 

paneling, construction, painting, pre-outfitting, and erection. See Moton Dep. 49:20 to 52:4; see 

also Moton Decl. ¶ 14; Def.’s Mot. Ex. H (LCS-3 Module Status Chart (May 26, 2010)). 

Material fabrication consists of the process for building the ship’s pieces, and construction 

requires putting those pieces together to form the structure of a module. Moton Dep. 51:1-4.

Pre-outfitting prepares a module for the outfitting process that includes installing insulation, 

piping, and electrical cabling. Moton Dep. 51:7-15. Erection, the final assembly step, consists 

of welding individual modules together to comprise either a larger portion of the ship, called a 

“Grand Module,” or the ship itself. Moton Dep. 51:18 to 52:4; Def.’s Mot. at 8. The status of 

the modules and Grand Modules for LCS-3 as of May 26, 2010, eight days after the ’032 and 

’946 patents expired, are depicted in the figure below. 

Def.’s Mot. Ex. H. The bow portion of the hull, comprised of Modules 801, 802, and 803, was 

still under construction. Id. Similarly, the transom, Module 866, to be secured to the stern 
6

section of the hull, was still under construction. Id. 

 

C. Construction of LCS-3

Lockheed Martin and Gibbs & Cox were contracted by the Navy to design and build the 

Freedom class of LCS. Compl. ¶¶ 12-13. As part of its performance, Lockheed Martin was 

required to maintain detailed documentation of the design and construction of each LCS. See

Pl.’s Opp’n Exs. B (LCS Weekly Report (June 2, 2010)), F (LCS Weekly Report (May 12, 

2010)), & H (LCS Weekly Report (Apr. 14, 2010)); see also Def.’s Mot. Ex. A (U.S. Navy Base 

Contract & Modifications (Feb. 28, 2003 and July 17, 2003, respectively)). Lockheed Martin 

was also required to “establish, maintain[,] and use an Earned Value Management System 

(EVMS) meeting the criteria set forth in [Defense Federal Acquisition Regulation Supplement 

(‘DFARS’) §] 252.234-7001 . . . as a management tool for cost, schedule[,] and technical 

performance.” See Def.’s Mot. Ex. A, at 81. Further, the contract required submission of a 

monthly Cost Performance Report, which included a description of the previous month’s 

accomplishments, the Program Cost Status, and the Program Schedule Status. See id. Exs. A, at 

97, & E (Excerpts of Cost Performance Reports (June 29, 2009 through June 24, 2012)). An 

officer in the Navy, Captain Moton, served as the LCS Program Manager’s Representative who 

“was responsible for on-site contract management and oversight for LCS shipbuilding,” which 

included LCS-3. Moton Decl. ¶ 8.10 His role encompassed “[o]verseeing contractor-reported 

performance as to cost and schedule . . . [and] the reporting of [his] own observations . . . , 

[including] prepar[ing] an ‘LCS Weekly Report’ that was provided to the Program Office and 

other Navy leadership.” Id. ¶ 12. 

 LCS-3 was “on-order” by the Navy on June 26, 2006, to be built at the shipyard of 

Marinette Marine, Inc. in Marinette, Wisconsin. See Def.’s Mot. at 10.11 The first constructed 

portion of the ship’s hull was the “keel,” which forms the ship’s primary “backbone.” Id. at 8. 

The keel of LCS-3 was laid on July 11, 2009, marking the start of the module erection process. 

Id. Exs. E (excerpt of Cost Performance Report), at 2-3, & G (Timeline of Major Events for 

LCS-1 and LCS-3 (July 17, 2003 through June 6, 2012)). Following this step, additional 

modules of LCS-3 were “fabricated, constructed, painted, outfitted with piping and electrical 

connections, loaded with major equipment, and erected onto the growing base portion of the 

hull.” Id. at 8. “Fabrication and construction of the superstructure occur[ed] in parallel with the 

hull work.” Id. 

 During September 2009, the two gas turbine engines “were delivered and landed,”

meaning that they were placed in their ultimate destination in the ship. See Def.’s Mot. at 10; see 

also id. Exs. E, at 4, & G. The two diesel engines were landed in December 2009. Id. Ex. E, at 

6. At least one, but “most likely” all four, of the impellers and housings for the waterjets were 

 

10Captain Moton reported to the Supervisor of Shipbuilding, Conversion, and Repair 

(“SUPSHIP”), who “administers and manages the execution of [United States Department of 

Defense] contracts awarded to assigned commercial entities in the shipbuilding and ship repair 

industry, including production of the Navy’s Littoral Combat Ship.” Moton Decl. ¶¶ 3-4. 

11Marinette Marine served as a subcontractor to Lockheed Martin for this purpose. 
7

present, assembled, and awaiting installation as of April 14, 2010. See Moton Dep. 82:6-20; see 

also Pl.’s Opp’n Ex. H, at 13. At this time, the impellers and housings had not yet been bolted 

inside the waterjet tunnels. See Pl.’s Opp’n Ex. H, at 13; see also Hr’g Tr. 28:12-21. 

“[A]t the same time that the LCS[-]3 was being constructed,” corrosion was detected in 

waterjet tunnels on LCS-1, located in San Diego. Moton Dep. 57:22 to 58:2, 60:8 to 61:6.12 In 

May 2010, components from the LCS-3 waterjets were borrowed or “cannibalized” for use on 

LCS-1.13 Pl.’s Opp’n Ex. F (LCS Weekly Report), at 3; see also Moton Dep. 114:17 to 119:18.14 

When asked if he knew “whether or not the cannibalizing of the LCS[-]3 waterjets caused any 

delay in the installation of the waterjets on the LCS[-]3,” Captain Moton stated that he “[did not] 

suspect that they [did]” and that he “believe[d] there were other factors” causing delay of the 

waterjet installation on LCS-3 than the cannibalization work. Moton Dep. 123:11 to 124:5.15 

Three of the LCS-3 waterjet impeller systems had also “been completely disassembled, 

inspected, repairs completed, and then tested and reassembled” as of May 28, 2010. Moton Dep.

133:17-19; see Pl.’s Opp’n Ex. D (LCS Overview and Production Status Packet (May 28, 2010)), 

at 18. Some of that work occurred in connection with shock testing of the waterjet impeller 

system. As Captain Moton testified, “[w]hen a ship class is first built, [it has] a shock 

requirement which essentially is if [the ships] are near an underwater explosion from a torpedo[, 

mine,] or some kind of other weapon . . . , the ship[s] will maintain watertight integrity.” Moton 

Dep. 134:21 to 135:4. Specifically, one waterjet impeller system was “used for shock testing . . . 

and then opened and inspected to make sure that there was no damage before it was sent to the 

shipyard.” Moton Dep. 135:22 to 136:5. 

 

12SUPSHIP remained responsible for the repairs of LCS-1 during this period. See Moton 

Dep. 58:3-17. 

13“[O]ne entire [waterjet] unit [was shipped] to San Diego and then it was shipped right 

back, they didn’t need it.” Hr’g Tr. 37:19-25. 

 

14Zinc corrodes faster than iron, and accordingly it can be used to provide cathodic 

protection. See Moton Dep. 117:6-7. The shipbuilders discovered that some of the metal on 

LCS-1 had corroded and “that the cathodic protection inside the waterjet tunnels [using zinc] was 

not sufficient.” Moton Dep. 118:2-3. As a result, the zinc parts of LCS-1 that corroded were 

replaced with new zinc components, and additional zinc cathodic protection was installed inside 

the tunnel. “[T]o get [the] repair done on LCS[-]1 [by adding cathodic protection inside the 

waterjet tunnels], components of that system were borrowed from LCS[-]3 with the payback[, or 

replacement of the component part,] to follow.” Moton Dep. 119:13-16; see also Hr’g Tr. 34:11 

to 35:22. 

15According to the government, “what [Captain] Moton couldn’t remember was . . . the 

reason for a delay[, but] perhaps [it was] the other way around, which is [that the impeller 

systems for the waterjets] weren’t scheduled to be installed until July anyway and so one was 

available to be sent temporarily to the West Coast.” Hr’g Tr. 35:12-16. 
8

All four waterjet impeller systems were installed in LCS-3 during July 2010, after the 

expiration of the patents-in-suit on May 18, 2010. Def.’s Mot. Exs. E, at 12, G (Timeline of 

Events), & J (Photographs of Stern and Bow Modules (July 7, 2010 through Dec. 4, 2010)), at 1; 

see also Moton Dep. 98:20 to 99:20.16 Three months after the patents had expired, on August 

18, 2010, Grand Modules 701, 710, and 711, comprising the Grand Bow Module, were moved 

out of the shipbuilding factory in advance of their erection to the rest of the hull. See Def.’s Mot. 

Exs. J, at 2, & G (indicating that the Grand Bow Module was erected in August 2010); see also 

Moton Dep. 105:6-11 (“[I]n August . . . , the bow module would have been moved into place 

next to the hull and then there still would have had to have been that process of the welding up 

and the connecting . . . soon after [August 18, 2010].”). The ship’s final module, Module 866 

comprising the transom, was erected onto LCS-3 on September 17, 2010. See Def.’s Mot. Exs. 

E, at 13, 16, G, & J, at 3 (depicting that Module 866 was erected onto the hull as of September 

22, 2010). 

 On December 4, 2010, LCS-3 was christened and “launched,” although “[a]lignment and 

connection of the propulsion system continued throughout 2011,” as did testing of the ship. 

Def.’s Mot. Exs. E, at 22-37, & G. On June 6, 2012, LCS-3, USS Fort Worth, was delivered to 

the Navy. See id. Exs. E, at 38, & G. 

D. Parties’ Communications During Construction 

FastShip informed the government of the alleged infringement of the patents-in-suit by 

the Freedom class of LCS on April 11, 2008, when FastShip sent a letter to the Navy setting out 

an administrative claim demanding compensation for patent infringement. Pl.’s Opp’n Ex. G 

(Letter from FastShip to the Navy (Apr. 11, 2008)). Two years later, on April 28, 2010, the 

Navy sent a reply to FastShip’s counsel, informing FastShip that the Navy had investigated the 

claim and had chosen to deny the claim because it did not believe that the Freedom class of ships 

infringed the patents owned by FastShip. Id. Ex. I (Letter from the Navy to FastShip (Apr. 28, 

2010)). On June 15, 2010, FastShip reiterated the “allegations of patent infringement.” Id. Ex. J 

(Letter from FastShip to the Navy (June 15, 2010)). 

 

16The government contends that Lockheed Martin’s Cost Performance Report detailing 

accomplishments from May 2010 indicated that LCS-3 was 49% complete at the time the patents 

expired. Def.’s Mot. Ex. F (Lockheed Martin’s Cost Performance Reports (Apr. 26, 2010 

through May 30, 2010)), at 10. This number was reached by “multiplying the estimate of 

completeness by a weight percentage” that was used to gauge the amount of time and effort 

necessary to complete building the ship. Pl.’s Opp’n at 5 n.3 (citing Moton Dep. 70:6 to 71:14). 

However, according to FastShip, this calculation estimated the amount of labor necessary for 

completing the overall LCS-3 project, so it “[did] not accurately reflect the level of completeness 

of the modules that ma[d]e up the LCS-3” in May 2010. Pl.’s Opp’n at 5. 

 As of May 18, 2010, Captain Moton estimated that LCS-3 was 74.5% complete, based 

upon the percentage completion of each of the modules combined to form “a ship level summary 

number.” Moton Dep. 69:8 to 71:15. This completion estimate was for LCS-3 overall, including 

unpatented features and structures. The completion of the patented assembly would have 

exceeded this estimate. Pl.’s Opp’n at 5-6. As discussed infra, however, the percentage 

completion values are immaterial to the court’s decision in this case. 
9

PROCEDURAL HISTORY 

FastShip filed suit in this court on August 1, 2012, alleging that the Navy’s “unlicensed 

use and manufacture” of LCS-1 and LCS-3 infringed its ’032 and ’946 patents. Compl. ¶ 18. 

FastShip further claimed that LCS-5, -7, -9, and -11, “under construction or on order,”

potentially constituted an infringement of its patents. Compl. ¶ 14. The parties briefed claim 

construction in August and September of 2013 and conducted a technological tutorial for the 

court on August 27, 2013. On September 13, 2013, the parties presented arguments at a 

Markman hearing, and the court issued an order on October 9, 2013, construing seven terms of 

the patents. See FastShip, LLC v. United States, 114 Fed. Cl. 499 (2013).

On November 26, 2014, the government filed its motion for partial summary judgment of 

non-liability on FastShip’s claims for patent infringement with regard to LCS-3, -5, -7, -9, and -

11. Def.’s Mot. at 1. This motion has now been thoroughly briefed and was argued at a hearing 

held on June 8, 2015. 

STANDARDS FOR DECISION 

A. A Claim Pursuant to 28 U.S.C. § 1498(a)

As explicated in 28 U.S.C. § 1498, the United States has waived sovereign immunity and 

granted this court exclusive jurisdiction to adjudicate patent infringement claims against the 

federal government “[w]henever 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); see also Martin v. United 

States, 99 Fed. Cl. 627, 632-33 (2011) (recognizing that Section 1498, rather than the Tucker 

Act, 28 U.S.C. § 1491(a), grants this court jurisdiction over patent infringement claims against 

the United States). The statute further states, in relevant part, that “the use or manufacture of an 

invention described in and covered by a patent of the United States 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.” 

28 U.S.C. § 1498(a) (emphasis added). The unauthorized “use or manufacture of an invention” 

under Section 1498(a) is analogous to a taking of property under the Fifth Amendment of the 

United States Constitution. See Motorola, Inc. v. United States, 729 F.2d 765, 768 (Fed. Cir. 

1984); see also Hughes Aircraft Co. v. United States, 29 Fed. Cl. 197, 208 (1993). In this 

respect, the government “takes” a non-exclusive and compulsory license to any United States 

patent “as of the instant the invention is first used or manufactured by [or for] the [g]overnment.” 

Decca Ltd. v. United States, 640 F.2d 1156, 1166 (Ct. Cl. 1980); see also Liberty Ammunition, 

Inc. v. United States, 119 Fed. Cl. 368, 385 (2014), appeals pending, Nos. 15-5054, 15-5061 

(Fed. Cir.). 

Given that the government has waived sovereign immunity only for the compulsory 

taking of a non-exclusive patent license, government liability under 28 U.S.C. § 1498 diverges 

from private liability under 35 U.S.C. § 271: 
10

Government liability under Section 1498 arises from the “use[ ] or 

manufacture[ ] by or for the United States.” There is no mention 

of liability for a “sale” to the United States of a device covered by 

a patent. In contrast, with respect to private liability for patent 

infringement, the “sale” of a patented device is specifically defined 

in 35 U.S.C. § 271 as an act of infringement . . . .

17

de Graffenried v. United States, 25 Cl. Ct. 209, 215 (1992) (alteration in original); compare 28 

U.S.C. § 1498, with 35 U.S.C. § 271. 

B. Patent Infringement 

“The court determines whether the government has engaged in direct infringement [of a 

patent] using a two-step process that parallels the analysis for infringement litigation between 

private parties.” Liberty Ammunition, 119 Fed. Cl. at 385 (citing Lemelson v. United States, 752 

F.2d 1538, 1548 (Fed. Cir. 1985)); see also Casler v. United States, 15 Cl. Ct. 717, 731 (1988), 

aff’d, 883 F.2d 1026 (Fed. Cir. 1989). Initially, the court construes the claims of the patent and 

then compares those claims to the characteristics of the accused product or process. See JVW 

Enters. v. Interact Accessories, Inc., 424 F.3d 1324, 1329 (Fed. Cir. 2005). When comparing the 

patent claims to the accused device or process, the plaintiff has the burden of proving by a 

preponderance of the evidence that every limitation set forth in a patent claim is present in the 

accused device or process either literally or by a substantial equivalent. Boeing Co. v. United 

States, 69 Fed. Cl. 397, 426 (2006) (“[E]ach element of a claim is material and essential, and . . . 

for a court to find infringement, the plaintiff must show the presence of every element [for literal 

infringement] or its substantial equivalent [for infringement under the doctrine of equivalents] in 

the accused device.”) (alteration in original) (quoting Lemelson, 752 F.2d at 1551). This 

standard is commonly referred to as the “all elements” rule. See TDM Am., LLC v. United States, 

92 Fed. Cl. 761, 768 (2010), aff’d, 471 Fed. Appx. 903 (Fed. Cir. 2012); see also WarnerJenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997). The plaintiff’s failure to meet 

even one element within a claim, literally or by its substantial equivalent, negates a finding of 

infringement. See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). 

C. Summary Judgment 

A grant of summary judgment is appropriate when the pleadings, affidavits, and 

evidentiary materials filed in a case demonstrate that “there is no genuine dispute as to any 

material fact and the movant is entitled to judgment as a matter of law.” RCFC 56(a). A 

 

17Section 271 of Title 35 of the United States Code provides in relevant part: 

(a) . . . whoever without authority makes, uses, offers to sell, or 

sells any patented invention, within the United States or imports 

into the United States any patented invention during the term of the 

patent therefor, infringes the patent. 

35 U.S.C. § 271(a) (emphasis added). 
11

material fact is one “that might affect the outcome of the suit under the governing law.” 

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A genuine dispute is one that might 

“return a verdict for the nonmoving party.” Id. If “the record taken as a whole [cannot] lead a 

rational trier of fact to find for the non-moving party, there is no ‘genuine issue for trial,’” and 

summary judgment is appropriate. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 

574, 587 (quoting First Nat. Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 288 (1968)). 

The moving party has the burden of demonstrating the absence of genuine disputes. In 

that respect, “the inferences to be drawn from the underlying facts . . . must be viewed in the 

light most favorable to the party opposing the motion.” Matsushita, 475 U.S. at 587-88 (quoting 

United States v. Diebold, Inc., 369 U.S. 654, 655 (1962)); see also Celotex Corp. v. Catrett, 477 

U.S. 317, 323 (1986). The non-moving party may defeat summary judgment by presenting 

material facts of its own, more than “[m]ere denials or conclusory statements,” that indicate “an 

evidentiary conflict created on the record.” Barmag Barmer Maschinenfabrik AG v. Murata 

Mach., Ltd., 731 F.2d 831, 836 (Fed. Cir. 1984). To establish “that a fact cannot be or is 

genuinely disputed,” a party must “cite[] to particular parts of materials in the record, including 

depositions, documents, electronically stored information, affidavits or declarations, stipulations 

(including those made for purposes of the motion only), admissions, interrogatory answers, or 

other materials.” RCFC 56(c)(1)(A). 

ANALYSIS 

The salient elements required for a vessel subject to the claimed invention include: 

(1) “a hull,” (2) “at least one inlet,” (3) “at least one waterjet coupled to the at least one inlet,” 

and (4) “a power source coupled to the at least one waterjet.” See, e.g., ’032 patent, col. 14, 

lines 1-18 (Claim 1); see also Def.’s Reply at 8-9. The dispositive issue before the court 

on the government’s motion is whether these allegedly infringing elements of LCS-3 were 

“manufactured” during the term of the ’032 and ’946 patents. See Hr’g Tr. 12:12-17; see also 28 

U.S.C. § 1498(a).18“[Because] the failure to meet a single limitation is sufficient to negate 

infringement of the claim,” Laitram Corp., 939 F.2d at 1535, the incomplete manufacture of 

even one element will preclude recovery against the government under 28 U.S.C. § 1498(a), see 

TDM Am., 92 Fed. Cl. at 768; see also Hughes Aircraft, 29 Fed. Cl. at 219 (“Conduct falling 

short of manufacture, even if it capitalizes on the patent in some sense, does not constitute 

infringement.”) (citing Tektronix, Inc. v. United States, 575 F.2d 832, 837 (Ct. Cl. 1978)); 

Interdent Corp. v. United States, 531 F.2d 547, 552 (Ct. Cl. 1976) (“[T]he omission of any one 

of the elements of the claimed combination avoids infringement.”).

 

18Neither party has argued that the term “manufacture” set forth in Section 1498 should 

have a different meaning than the word “make” that is found in the related provision of 35 

U.S.C. § 271. See, e.g., Hr’g Tr. 7:25 to 8:4, 14-16. Consequently, cases interpreting the term 

“make” in Section 271 will have a bearing on the court’s application of “manufacture” in Section 

1498 and will be relied upon in the court’s analysis. See, e.g., Hughes Aircraft, 29 Fed. Cl. at 

218 (looking to cases applying 35 U.S.C. § 271 for guidance on the issue of whether allegedly 

infringing spacecraft were “manufactured” for purposes of Section 1498). 
12

A. Judicial Interpretation of “Make” and “Manufacture”

The term “manufacture” has not been defined in patent law; instead, its meaning has been 

developed by courts based on the circumstances at hand. See Hughes Aircraft, 29 Fed. Cl. at 226 

(“We glean from [case] precedents that the question of what constitutes ‘use’ [and 

‘manufacture’] is a mixed question of fact and law to be determined on a case-by-case basis.”) 

(emphasis added).19 

In 1972, “the question of manufacture” under 35 U.S.C. § 271 was considered by the 

Supreme Court in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 527 (1972). At issue 

in Deepsouth was whether the sale to foreign customers of subassemblies of a patented shrimp 

deveiner with the intent that the recipients would assemble the components abroad constituted 

infringement of two combination patents under 35 U.S.C. § 271. See id. at 523-24 (explaining 

that Deepsouth Packing Co. was “shipping deveining equipment to foreign customers in three 

separate boxes, each containing only parts of the 1 3/4-ton machines,” that could be fully 

assembled “in less than one hour”). The majority opinion by Justice White answered that 

question in the negative. Id. at 532. In finding non-infringement, Justice White relied on general 

principles of patent law: 

We cannot endorse the view that the ‘substantial manufacture of 

the constituent parts of (a) machine’ constitutes direct infringement 

when we have so often held that a combination patent protects only 

against the operable assembly of the whole and not the 

manufacture of its parts. ‘For as we pointed out . . . a patent on a 

combination is a patent on the assembled or functioning whole, not 

on the separate parts.’

Id. at 528 (emphasis added) (quoting Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., 

320 U.S. 680, 684 (1944)); see also Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 

336, 344 (1961) (“For if anything is settled in the patent law, it is that the combination patent 

covers only the totality of the elements in the claim and that no element, separately viewed, is 

within the grant.”); Leeds & Catlin Co. v. Victor Talking Mach. Co., 213 U.S. 301, 320 (1909) 

(“To be that,—to be identical with the invention of the combination,—they must be united by the 

same operative law.”). In Deepsouth, Justice Blackmun, joined by Chief Justice Burger and 

Justices Powell and Rehnquist, dissented on the ground that the majority had taken “too narrow a 

 

19The court has found no precedents that suggest “percentage of completion” is the 

proper benchmark for determining whether a device has been “manufactured,” and the 

government “did not and does not” suggest otherwise. See Def.’s Reply at 1. As a result, any 

“disputed issue of fact regarding the percentage of completeness of the LCS-3 at the time of 

expiration of the patents-in-suit,” Pl.’s Opp’n at 16, see supra, at 8 n.16, is immaterial and 

irrelevant to the court’s analysis. 
13

reading of 35 U.S.C. § . . . 271(a).” 406 U.S. at 532. 20

 Twelve years later, the Federal Circuit also addressed the meaning of the term “make” for 

purposes of 35 U.S.C. § 271 in Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 

11 (Fed. Cir. 1984). At issue in that case was “the extent to which a competitor of a patentee can 

manufacture and test during the life of a patent a machine intended solely for post-patent use.” 

Id. at 16 (emphasis in original). The patent-in-suit was for an automatic rewinder used to make 

rolls of toilet tissue and paper towels, and the machine at issue operated as follows: 

First, from within a 72-inch long “cutoff” roll, a 72-inch blade 

ejects to sever the continuous web of paper which is wound around 

the bedroll. Then, pins attached to the bedroll hold the severed 

edge of the web while pushers, also attached to the bedroll, transfer 

the edge of the web towards the mandrel (the roll on which the 

paperboard core is mounted). 

Id. at 15. 

 

20At the time of the decision in Deepsouth, 35 U.S.C. § 271 proscribed the unauthorized 

“mak[ing], us[ing] or sell[ing of] any patented invention, within the United States during the 

term of the patent therefor . . . .” 35 U.S.C. § 271(a) (1970) (emphasis added). In response 

to the Court’s decision in Deepsouth, Congress sought to “amend[] the patent law so that 

when components are supplied for assembly abroad to circumvent a patent, the situation will be 

treated the same as when the invention is ‘made’ or ‘sold’ in the United States.” Patent Law 

Amendments of 1984, S. Rep. No. 98-663, at 3 (Sept. 24, 1984); see also Microsoft Corp. v. 

AT & T Corp., 550 U.S. 437, 445 n.3 (citing Section-by-Section Analysis of H.R. 6286, 130 

Cong. Rec. 28,069 (1984) (“This proposal responds to the United States Supreme Court decision 

in Deepsouth . . . concerning the need for a legislative solution to close a loophole in [the] patent 

law.”)). Accordingly, 35 U.S.C. § 271 was amended in 1984, see Pub. L. No. 98-622, § 101, 98 

Stat. 3383, and now provides that: 

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.

35 U.S.C. § 271(f)(1). While the amendment countermanded the Supreme Court’s decision “not 

to make it infringement where the final assembly and sale is abroad,” S. Rep. No. 98-663, the 

statute “neither defined the terms ‘make,’ ‘use’ or ‘sell’ nor overruled Deepsouth’s interpretation 

of those terms,” Hughes Aircraft, 29 Fed. Cl. at 218 n.22. 
14

Although the accused infringer, Magna-Graphics, “normally fully tested machines at its 

plant before shipment,” the company engaged in a “scheme to avoid patent infringement” by 

conducting its tests in two noninfringing stages. Paper Converting, 745 F.2d at 15 (emphasis in 

original). In the first stage of testing, Magna-Graphics “checked the bedroll to determine 

whether the pushers actuated properly . . . [, but] no cutoff blades or pins were installed.” Id. In 

the second stage of testing, Magna-Graphics “checked the cutoff roll to determine whether the 

cutting blade actuated as intended . . . [, but no] pins, pushers, and blade [were] installed.” Id. 

Then, after negotiating a shipment agreement with the purchaser, Magna-Graphics shipped “the 

basic rewinder machine . . . and cutoff roll and bedroll” in separate packages on different dates. 

Id. at 15-16. The purchaser had agreed not to fully assemble the machine until two days after the 

patent had expired. Id. “Given the amount of testing performed [t]here, coupled with the sale 

and delivery during the patent-term of a ‘completed’ machine (completed by being ready for 

assembly and with no useful noninfringing purpose),” the Federal Circuit found MagnaGraphics’ machine to be infringing. Id. at 19. The court of appeals reasoned that “a contrary 

result would emasculate the congressional intent [of] prevent[ing] the making of a patented item 

during the patent’s full term” and would allow an “unscrupulous competitor [to] aggressively 

market[] its own product and construct[] it to all but the final screws and bolts.” Id.21 Judge 

Nies dissented in part, arguing that “[t]he majority’s conclusion necessitates giving a meaning to 

‘patented invention’ contrary to the definition set forth by the Supreme Court in Deepsouth.” Id.

at 24. 

Several judges of this court have sought to limn “the boundaries of the problem” posed in 

deciding when “a device has been ‘manufactured’ for purposes of [28 U.S.C. § 1498].” Hughes 

Aircraft, 29 Fed. Cl. at 219. In Hughes Aircraft, the government was accused of infringing a 

patent “for controlling the attitude of a spin-stabilized spacecraft.” Id. at 201. The government 

disputed liability, arguing that some of the spacecraft at issue had not been manufactured before 

the patent expired because they contained inoperable test parts (or “dummy parts”). Id. at 220. 

“The test parts would not have been used when the spacecraft was launched and, in many cases, 

were . . . included only to give the spacecraft the appropriate mass and balance during the testing 

process.” Id. Since the “dummy parts [were] not intended to be launched into space, the 

government reason[ed], their inclusion on the spacecraft render[ed] the spacecraft inoperable” 

under Deepsouth. Id. The court disagreed with the government, holding: 

Even though test parts were not intended to be launched with the 

spacecraft, the fact remains that the spacecraft, including the 

 

21The majority opinion in Paper Converting began an examination of the Supreme 

Court’s decision in Deepsouth with the warning that “[w]e must be cautious in extending five to 

four decisions[, such as the one in Deepsouth,] by analogy.” Paper Converting, 745 F.2d at 17. 

It then distinguished Deepsouth on the facts, asserting that the Supreme Court’s decision was 

primarily driven by the issue of the extraterritorial impact of United States patent law. See id. at 

17-18 (“While there is . . . a horror of giving extraterritorial effect to United States patent 

protection, there is no corresponding horror of a valid United States patent giving economic 

benefits not cut off entirely on patent expiration.”). Nevertheless, “because no other precedent 

control[led] [the court’s] decision . . . [, the Federal Circuit] look[ed] to Deepsouth and 

elsewhere for guidance . . . .” Id. at 18. 
15

attitude control system, had been entirely assembled to the extent 

feasible at the time. In our view, that complete physical assembly

readily satisfies Deepsouth’s requirement of an “operable assembly 

of the whole,” 406 U.S. at 528. 

Id. (emphasis added). 

Alternatively, the government in Hughes Aircraft averred that the spacecraft had not been 

“manufactured” based “on the fact that the full testing process . . . was not complete on any of 

the spacecraft in issue by the expiration date.” 29 Fed. Cl. at 221. The court also rejected that 

argument. It concluded that testing, while important, see id. (“The importance of testing to these 

spacecraft cannot be overstated.”), was not part of the manufacturing process, id. at 221-22. 

Rather, it was “part of a later process for perfecting the ability of the object to perform its 

intended use . . . , [which] simply d[id] not fall within any fair usage of the term ‘manufacture.’” 

Id. at 222. To hold otherwise, as the court observed, would “obliterate[] the distinction in § 1498 

between ‘use’ and ‘manufacture.’” Id. 

Although there are factual differences between the status and condition of LCS-3 at issue 

in this case and the accused products in Deepsouth, Paper Converting, and Hughes Aircraft, the 

legal principles pertinent to those prior decisions still apply. See, e.g., East Coast Sheet Metal 

Fabricating Corp. v. Autodesk, Inc., No. 12-CV-517-LM, 2015 WL 226084, at *15 (D.N.H. Jan. 

15, 2015), amended in part, No. 12-CV-517-LM, 2015 WL 925614 (D.N.H. Mar. 3, 2015), 

appeal pending, No. 15-1717 (Fed. Cir.) (recognizing the distinct factual situation in Deepsouth

but relying on the general principles of patent law applied by the Supreme Court in that 

decision). Accordingly, the court finds it appropriate to draw on these cases for guidance when 

analyzing the government’s motion for partial summary judgment. 

 B. “Manufacture” of LCS-3

The government focuses on two key elements of LCS-3, the waterjet impeller assemblies 

and the hull, which it contends were incompletely fabricated or assembled by the expiration of 

the FastShip patents. 

1. “Waterjet” limitation. 

The patents at issue required “at least one waterjet coupled to the at least one inlet” and 

“a power source coupled to the at least one waterjet.” See, e.g., ’032 patent, col. 14, lines 15-18. 

Because the waterjet impeller assemblies were not installed in the waterjet tunnels before the 

patents-in-suit expired, the government maintains “that the waterjet element has not been 

‘coupled’ to the inlet [or the power source] as required by the claims.” Def.’s Reply at 9. 

FastShip concedes that the waterjet impeller assemblies were not installed before the patents 

expired, Pl.’s Opp’n at 6, but points out that at least one waterjet impeller assembly was 

available on-site waiting to be bolted to a waterjet power shaft, see id. Ex. H, at 13. According 

to FastShip, “[t]he actual bolting on of the available [waterjet] impeller assembly was not a 

significant event in the completion of the patented assembly,” id. at 12, and therefore, “the letter 

and spirit of the claimed inventions had been manufactured by [the government] by the 
16

expiration date,” id. at 13, of the patents. 

FastShip’s argument would sidestep the requirement of an “operable assembly of the 

whole.” Deepsouth, 406 U.S. at 528. Bolting may have been a relatively straightforward and 

quick process, but the fact remains that this final installation step for any of the four waterjet 

impeller assemblies did not occur until after the expiration date of the ’032 and ’946 patents. As 

of May 18, 2010, no “waterjet” was “coupled” to an “inlet” or a “power source,” see ’032 patent,

col. 14, lines 15-18, and instead, each of the four waterjet impeller assemblies remained 

uninstalled and incapable of propulsion, see Def.’s Mot. at 19. On these facts, Deepsouth’s legal 

principle of an “operable assembly of the whole” has not been met. 406 U.S. at 528; cf. Hughes 

Aircraft, 29 Fed. Cl. at 220 (finding spacecraft at issue to be an operable assembly where the 

spacecraft “had completed systems installation as of the expiration date [of the patent]”) 

(emphasis added). 

FastShip endorses the rationale of Paper Converting because it considers the factual 

circumstances of Paper Converting to be analogous to the present situation. See Pl.’s Opp’n at 

25. According to FastShip, the court should be guided by the Federal Circuit’s decision in Paper 

Converting because “[the Navy] knew of the existence of [p]laintiff’s patents and [p]laintiff’s 

claims of infringement of those patents years before those patents expired. Nevertheless, by the 

time the patents expired, [the Navy had] engaged in substantial manufacture of the LCS-3, a long 

leadtime article, to the point of assembly of all parts that are alleged to correspond to the claimed 

invention.” Id. In essence, FastShip inferentially suggests that the Navy did not move with 

alacrity to fully assemble LCS-3 because it was aware that FastShip’s patents were expiring.22 

FastShip also argues that the decision in Deepsouth is of very limited utility in the circumstance 

of this case.23

 

 

22Among other things, FastShip asserts that “[it] was intentionally left off of the [Navy’s] 

design and build team for this entire fleet of ships.” Hr’g Tr. 38:11-14. FastShip also 

emphasizes that patent counsel for the Navy received an administrative claim from FastShip in 

April 2008 demanding compensation for infringement and waited two years before denying 

FastShip’s demand while the Navy continued to proceed with construction of LCS-3. See Pl.’s 

Opp’n at 24-25; see also Hr’g Tr. 38:10-11. Finally, FastShip notes that the Navy “persisted 

with construction” of LCS-3 even after receiving a follow-up letter in June 2010. Pl.’s Opp’n at 

25.

23At the hearing, FastShip argued that the Supreme Court’s decision in Deepsouth 

reflected “overruled . . . dicta,” which “Congress specifically went after” on the basis of 

extraterritoriality. Hr’g Tr. 41:16-21. The Federal Circuit has not accepted this position, 

however. Approximately fifteen years after its decision in Paper Converting and the amendment 

to 35 U.S.C. § 271 to address the extraterritoriality aspects of Deepsouth, the Federal Circuit 

noted that Deepsouth continues to be a viable statement of applicable law insofar as “making” is 

concerned. See Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1252 n.2 (Fed. Cir. 2000) 

(acknowledging that for “claims brought under § 271(a), Deepsouth remains good law: one may 

not be held liable under § 271(a) for ‘making’ or ‘selling’ less than a complete invention”) 

(emphasis added); see also The Massachusetts Inst. of Tech. v. Abacus Software, Inc., No. 5:01 

CV 344, 2004 WL 5268128, at *24 (E.D. Tex. Aug. 24, 2004), report and recommendation 
17

The court is not persuaded by FastShip’s arguments. Unlike in Paper Converting, where 

Magna-Graphics intended to manufacture a patented machine and attempted to circumvent 

infringement by purposefully selling the machine in non-infringing components to be combined 

after the patent had expired, 745 F.2d at 15-16, FastShip has offered no sound evidence to show 

that the Navy intentionally delayed installation of waterjet impeller assemblies on LCS-3 for the 

similar purpose of avoiding infringement.24

 Although FastShip contends that there was not “any 

reason why [a waterjet impeller assembly] wasn’t bolted on” when it was “shipped right back 

from San Diego,” Hr’g Tr. 37:25 to 38:1, the Navy’s contractor and subcontractor were 

progressing steadily in construction of LCS-3. Where Magna-Graphics in Paper Converting

duplicitously tested the infringing machine in “unpatented assemblies of elements,” 745 F.2d at 

19-20, the Navy’s actions in disassembling, inspecting, repairing, testing, and reassembling the 

waterjet impeller assemblies were not attempts to avoid fully testing the claimed elements, see 

supra, at 6-7. In short, the events involving FastShip’s administrative claim and the 

government’s actions thereafter do not provide this court with justification for adopting the 

rationale in Paper Converting, even though LCS-3 is a long-leadtime item. See de Graffenried, 

25 Cl. Ct. at 215 (ruling where plaintiff also “ha[d] not demonstrated any analogous ‘scheme to 

avoid infringement’”).

2. “Hull” Limitation.

Portions of the bow of the vessel had also not been installed prior to the expiration date of 

the patents-in-suit. FastShip argues that it is not appropriate for the court to consider the status 

of the bow because that portion of the vessel is “not specifically claimed in the asserted patent 

claims and is not a material limitation.” Pl.’s Opp’n at 12. The patents-in-suit claim “a vessel 

comprising . . . a hull . . . having a length in excess of 200 feet [and] a displacement in excess of 

2000 tons” that generates “high pressure” in the stern area. See, e.g., ’032 patent, col. 13, line 68 

 

adopted sub nom., 2004 WL 5268127 (E.D. Tex. Sept. 29, 2004) (“[I]t seems clear that the panel 

majority [in Paper Converting] was not intending to articulate a new standard for deciding direct 

infringement.”). In sum, notwithstanding Paper Converting, Deepsouth has been applied when 

“make[]” for purposes of 35 U.S.C. § 271(a) and “manufacture[]” for purposes of 28 U.S.C. 

§ 1498 have been at issue. See East Coast Sheet Metal Fabricating, 2015 WL 226084, at *16 

(concluding that Deepsouth was not inapposite to the case because “[r]esolution of the question 

presented in Deepsouth required the [C]ourt to determine what constituted the manufacture of an 

infringing apparatus, which [wa]s very much at issue [t]here”); see also de Graffenried, 25 Cl. 

Ct. at 214 (citing Deepsouth in an action brought under 28 U.S.C. § 1498 for the “general rule

. . . that until a device covered by a patent is actually assembled, the device has not been 

‘manufactured’”). 

24According to the government, the waterjet impeller assemblies “weren’t scheduled to be 

installed until July,” after the patents expired. Hr’g Tr. 35:14-15; see also Def.’s Mot. Ex. E, at 

12 (showing “July 2010 [a]ccomplishments”). In response, FastShip contends that “[t]here is no 

fixed schedule for construction. . . . These things aren’t cast in stone. . . . This ship was supposed 

to be done before the patents expired and it just wasn’t.” Hr’g Tr. 39:11-17. 
18

to col. 14, line 9 (emphasis added).25 Although the patent claims do not specify a bow section 

with particularity, “an operably assembled hull inherently has a stern section, [a midships 

section,] a bow section, a port section and a starboard section.” Def.’s Reply at 6 (emphasis 

added); see also Hr’g Tr. 31:11-19. A semi-planing monohull design would not be able to 

“displace[] in excess of 2000 tons [of water],” see ’032 patent, col. 14, line 9, without a bow that 

is watertight, and FastShip has adduced no cogent evidence to demonstrate otherwise, although it 

did argue to the contrary, see Hr’g Tr. 40:4-9 (“And at the time, you know, we have a front of the 

ship. . . . [I]t’s not their bow, but it is the front of the ship. Does it displace 2,000 [tons of 

water]? I think so, I mean . . . these ships are quite a bit bigger than the claimed limitation of 

2,000 ton displacement.”). Accordingly, the status of the bow, as part of the hull, shall be 

considered by the court. 

The Grand Bow Module was transported for erection to the rest of the hull in mid-August 

of 2010. Prior to that time, the modules of the bow were under construction, waiting to be 

combined into the Grand Bow Module and then to be welded to the rest of the vessel, see Moton 

Dep. 102:7 to 105:11; see also Def.’s Mot. Ex. H, as seen in the photographs below: 

Def.’s Mot. Ex. I, at 2 (LCS-3 Photographs (May 19, 2010)) (showing status of Module 803, a 

component of the bow, the day after the patents-in-suit had expired). 

 

25The “high pressure” results largely from hydrodynamic forces, with hydrostatic forces 

playing a minor role, when the vessel is operating in semi-planing mode. See FastShip, 114 Fed. 

Cl. at 505-06. Hydrodynamic forces acting on a moving vessel produce both drag and lift and 

are a function of the configuration of the hull and the inlets of the waterjets, the outlets of the 

waterjets, and the speed of the vessel. See id. Relatedly, hydrostatic forces apply both when a 

ship is at rest and when it traverses the water. See id. For further discussion of the pressures 

experienced on a semi-planing hull, see id. 
19

Id. Ex. I, at 3 (depicting status of Modules 801 and 802, parts of the bow, one day after the ’032 

and ’946 patents had expired). 

Even after completing the “construction” stage of assembly, the modules for the bow still 

needed to go through the process of “pre-outfitting” before being “erected” to the rest of the hull. 

See Def.’s Reply at 10 (citing Moton Decl. at ¶ 14); see also Def.’s Mot. Ex. J, at 2. Based on 

these facts, those modules were not ready to be assembled into the Grand Bow Module or 

installed to the other portions of the hull on the date when the patents-in-suit expired. Cf. Paper 

Converting, 745 F.2d at 19 (defining “completed machine” as “being ready for assembly and 

with no useful noninfringing purpose”) (emphasis added); Hughes Aircraft, 29 Fed. Cl. at 220 

(ruling where the spacecraft at issue had completed a systems installation stage that was “the 

final assembly stage during which all of the components, subsystems[,] and systems ordinarily 

would be installed”) (emphasis added). Instead, “[t]he photographs of the state of assembly on 

or shortly after that date [i.e., the patent expiration date,] show that LCS-3 could not possibly 

float by May 18, 2010,” Def.’s Reply at 7, and the “hull” element of the claims remained 

incomplete and inoperable, see Deepsouth, 406 U.S. at 528. 

In sum, based on general tenets of patent law and in light of the distinct facts presented in 

this case, the court finds that the allegedly infringing LCS-3 was not “manufactured” for 

purposes of Section 1498(a) by the date the pertinent patents expired. 

CONCLUSION 

For the reasons provided, the government’s motion for partial summary judgment is 

GRANTED because there are no genuine issues of material fact with regard to manufacture of 

LCS-3. The pertinent vessel, USS Fort Worth, and the later constructed LCS-5, -7, -9, and -11 

shall be dismissed from, and not given further consideration in, this action. 
20

The parties are requested to provide by July 22, 2015, a plan and schedule for completing 

preparations of this case for trial. 

It is so ORDERED. 

s/ Charles F. Lettow 

Charles F. Lettow

Judge