# In the United States Court of Federal Claims

No. 14

- 308C

(Filed: July 3 1, 2014 )

**********************************

TERESA NAN LUCREE,

Plaintiff,

v.

UNITED STATES,

Defendant.

********************************** ) ) ) ) ) ) ) ) ) ) ) Challenge to Congress’s authority to impose patent maintenance fees under the Intellectual Property Clause of the Constitution, art. I, § 8, cl. 8; claim akin to illegal ex ac tion; takings claim

Frank A. Lukasik, The Villages, Florida, for plaintiff.

Sonia M. Orfield, Trial Attorney, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, D.C., for defendant. With her on the briefs were Stuart F. Delery, Assistant Attorney General, Civil Division, Robert E. Kirsc hman, Jr., Director, and Franklin E. White, Jr., Assistant Director, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, D.C. Of counsel were Heidi Bourg e ois, Office of General Law, and William LaMarca, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, Virginia.

O PINION AND O RDER

LETTOW, Judge.

P laintiff Teresa Nan Lucree seeks to recover damages from the United States for the early expiration of her patent in 2010 , which resulted from her failure to pay statutorily

- mandated
maintenance fees. 1 In her complaint, Ms. Lucree challenges Congress’s authority to impose

1 The complaint , filed April 16, 2014, lists n ine additional individuals as “party or
amicus” i n this case

, each of whom supposedly had patents that also expired as a resu lt of unpaid
maintenance fees. Joinder of these individuals would be improper under the t erms of Rule 20(a) of the Rules of the Court of Federal Claims (“RCFC”). Although “[m]isjoinder of parties is not a ground for dismissing an action, ” RCFC 21, these other persons would not have a claim cognizable in this court. E ach of the other individuals’ patents expired between 1998 and 2006, putting their claims outside the six

- year statute of limitations for actions commenced against themaintenance fees and argues that the practice results in an illegal exaction and a taking of private property without co mpensation in contravention of t he Fifth Amendment to the United States
Constitution. Pending before the c ourt is the government’s motion to dismiss Ms. Lucree’s complaint pursuant to R CFC 12(b)(6). For the reasons s tated , the government’s motion is
GRAN TED.
BACKGROUND

In the course of applying for and securing a patent, applicants must pay sever al fees, including filing fees, issue fees, and maintenance fees. See 35 U.S.C. § 41. 2 Of relevance here,

p atent holders must pay maintenance f ees to the United States Patent and Trademark Office (“USPTO”) three times during the lives of their issued patents to keep them in force

. Id

. § 41(b) (1) (“Th e [USPTO] Director shall charge . . . fees for m aintaining in force all patents . . . [at] [ t ] hre e years and 6 months after grant

, . . . [at] [ s ] even years and 6 months after grant

, . . . [and at] [ e ] leven years and 6 months after grant

. ”). If a patent holder fail s to pay maintenance
fees within six months of the statutory deadlines, their pertinent patent expire s

. Id. § 41(b)(2). 3

Ms. Lucree paid the first and second required maintenance fees for her patent, U.S. Patent
No. 5,791,732 (filed May 19

, 1997) (issued Aug. 11, 1998), but failed to pay the thir d and final fee, resul ting in the patent’s e xpiration on August 11

, 2010, after a six

- month grace period, eight years earlier than anticipated. See Compl. at 3

- 4; 1358 Off. Gaz. Pat. & Trademark Office No. 4 (Sept. 28, 2010)

. Ms. Lucree made no attempt to dispute her nonpayment or t o seek a reviva l of her patent. See Def.’s Mot. at 4

. Rather, she filed suit in this court , challenging the constitutionality of maintenance fees and Congress’s ability to attach conditions to patents that
have been issued

. Compl. at 12, 16. She contends that such conditions violate the property interests of patent holders in their patents by enabling the government to take their patents before their expiration date and place them in the public domain

. Id

. at 16.

T he government seeks dismissal of Ms. Lucree’s complaint on the ground that Congress’s well

- settled authority to legislate patent fee requirements renders post

- issuance
conditions

, such as maintenance fees

, constitutional . Def.’s Mot. at 5

- 7. In t he government ’s view, because conditions are permissi ble, there is no tak ing when patents expire due to unpaid
maintenance fees

. Id . at 7

- 8 (“Ms. Lucree had no property to be taken once the patent lapsed due to nonpayment of the maintenance fees.”)

. Ms. Lucree accepts Congress’s general authority to impose c onditions on patents but contends that Congress exceed ed its authority by requiring

United States. 28 U.S.C. § 2 5 01

. C onsequently, the claims of the other n ine individuals are dismissed, and the court will treat Ms. Lucree as the sole plaintiff.

2 Filing fees are prescribed in 35 U.S.C. § 41(a). Other provisions of Section 41 specify examination fees, issue fees, appeal fees, revival fees, and maintenance fees, among others. See
Id

. § 41(a) (3), (4), (6), (7) and (b). Fees are reduced for small bu sinesses. Se e id

. § 41(h).

3 “T he Director may accept the payment of any maintenance fee required by subsection (b) after the 6

- month grace period if the delay is shown to the satisfaction of the Dire ctor to have
been unintentional

. ” 35 U.S.C. § 41(c) (1). In such cases, patents are “revived” and a revival fee
is due. Id

. § 41(a)(7); see also Def.’s Mot. to Dismiss (“Def.’s Mot.”) at 4, ECF. No. 5.

2maintenance fees. See Reply Brief of Tere sa Nan Lucree (“Pl.’s Opp’n ”) at 5, 10, ECF No. 6. Maintenance fee requirements , she contends, improperly a dopt a European approach to patent law that allows the government to take the personal property of patent

- holders who fail to pay additional fees on property that they own. Id . at 8

- 10, 12.

JURISDICTION

This court has jurisdiction over Ms. Lucree’ s cl aims pursuant to the Tucker Act, 28
U.S.C. § 1491(a)(1), which grants the Court of Federal Claims “jurisdiction to render judgment upon any claim against the United States founded either upon the Constitution, or any Act of Congress or any regulation of an executive department, or upon any express or implied contract with the United States, or for liquidated or unliquidated damages in cases not sounding in tort.”
28 U.S.C. § 1491(a)(1). Nonetheless, th e Tucker Act does not create a substantive right to

mo netary relief. United States v. Testan , 424 U.S. 392, 398 (1976). Rather, a plaintiff must point to an additional source of law that mandates compensation b y the federal government for any damages sustained. United States v. Mitchell , 4 6 3 U.S. 206, 2 16

- 17 (1983) (citing Testan

, 424 U.S. at 400). Here, Ms. Lucree seeks relief for the early expiration of her patent under the Fifth Amendment’s takings clause, which prohibits “private p roperty [from] be[ing] taken for public use

, without just compensation.” U.S. Const. amend. V . A claim for just compensation is a claim for money damages cognizable under the Tucker Act. Pres e ault v. Interstate Commerce
Comm’n , 49 4 U.S. 1, 11

- 13 (1990); Narramore v. United States , 960 F.2d 1048, 1051 (Fed. Cir. 1992). Ms. Lucree’s challenge to the constitutionality of the maintenance

- fee provisions of 35 U.S.C. § 41 also implicitly raises a claim of an illegal exaction, i.e. , to recover money improperly paid, exacted, or taken from her in contrav ention of the C onstitution when she paid the first two
maintenance fees that were due under 35 U.S.C. § 41(b) . A claim based upon an illegal exaction pursuant to an asserted statutory power may be maintained under the Tucker Act. Aerolin e a s Argentinas v. United States , 77 F.3d 1564, 1572

- 73 (Fed. Cir. 1996); E as t port S. S. Corp. v.
United States , 372 F.2d 1002 , 1007

- 08 (Ct. Cl. 1967) ; see also Figueroa v. United States

, 466 F.3d 1023, 1029 (F ed. Cir. 2006) (ruling that a patent holder had standing to chal lenge the legality of patent fees that he had paid )

.

STANDARD FOR DECISION

T o avoid dismissal u nder RCFC 12(b)(6), a complaint must contain sufficient factual matter, accepte d as true, that state s a p lausible claim for relief. See C onnolly

- Lohr v. United
States , 112 Fed. Cl. 350, 352 (2013) ( cit ing Ashcroft v. Iqbal , 556 U.S. 662, 678 (2009)) . When considering a motion to dismiss under RCFC 12(b)(6) , courts must accept all well

- pleaded factual allegations as true and draw all reasonable inferences in the pleader’s favor. Pe rez v. United States , 156 F.3d 1366, 1370 (Fed. Cir. 1998). If the facts alleged in the complaint do not entitle the plaintiff to a legal remedy, the complaint may be dismissed for failure to state a claim upon which relief can be granted. Southfork Sys., Inc. v. United States

, 141 F .3d 1124, 1131 (Fed. Cir. 1998); Connolly

- Lohr , 112 Fed. Cl. at 352 (citing RCFC 12(b)(6)).

3ANALYSIS

A. Constitutionality of Maintenance Fees

T he Constitution grants Cong ress the power “to prom ote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive r ight to their respectiv e writings and d iscoveries.” U.S. Const. art I, § 8, cl. 8. Ms. Lucree concedes that th e Intellectual Property Clause authorizes Congress to impose conditions on patent applications, but she contends that it does not empower Congress to place conditions on patents after they have
been issued. Compl. at 1 2

. She argues that p ost

- issuance conditions like maintenance fees are unconstitutional because they are derived from European patent law s rather than the
Constitution

, 4 and because they detract, rather than promote, scientific progress by burdening patent applicants with added costs and the threat of early expiration for nonpayment. See Compl.

at 9

- 16; see also Pl.’s Opp’n at 6

- 8. 5

The government avouches that “ ‘ maintenance fees and the patent system put in place by Congress . . . d o not co nflict with the Constitution. ’ ” Def.’ s Mot. at 6 (quoting Korsinsky v.
Dudas

, 2 2 7 Fed. Appx. 891, 894 (Fed. Cir. 2007) ) . Rather, the Constitution grants Congress
discretion to determine which patent policies and practices will best promote scientific progress. Id . at 5 (“ ‘ [T]he powers of Congress to legislate on the subject of pa tents is plenary by the terms
of the Constitution

. ’ ”) (quoting McClurg v. Kingsland , 42 U.S. (1 How

. ) 202, 206 (1843)). The right to a patent, the government contends, is statutory, and Congress is constitutionally authorized to impose monetary conditions on it. Id . at 5

- 6 (citing Graham v. John Deere Co.

, 383 U.S. 1, 6 (1966) ; Boyden v. Commissioner of Patents , 441 F.2d 1041, 1043

- 44 (D.C. Cir. 1971) ; and Giuliani v. United States , No. 88

- 00287 ACK, 1988 WL 97455 , at *1 (D. Haw. Aug. 1, 1988), aff’d , 878 F.2d 1444 (Fed. Cir. 1989 ) )

.

4 Ms. Lucree contends that Congress adopted the Paris Convention , not the United States
Constitution

, as its guide for patent legislation, Pl.’s Opp’n at 5, and based its authority to prescribe maintenance fees on the “European Method,” id. at 9.

5 Ms. Lucree also posits two additional arguments for the unconstitutionality of maintenance fees. First, she argues that maintenance fees impermissibly impose additional requirements on patentees

, i.e.

, entrepreneurship and commercial success . Pl.’s Opp’n at 7

- 8

. Howeve r, as the government notes, all patentees are required to pay maintenance fees, regardless
of the co mmercial value of their patents

. Def.’ s Mot. at 7 n.5

. It is up to the patent

- holder to decide whether the patent is worth maintaining. Id . Thus, while maintenance fees force patent

holders to make a choice, they do not bind them to any additional requirements apart from payment of the specified fee , rendering Ms. Lucree’s argument unpersuasive. Second, she argues that maintenance fees are unconstitution al because the fees are used to pay the ex penses of future applications by the Patent Office, which Ms. Lucree alleges is on a
self

- sustaining budget. Compl. at 1 7

. This argument also is without merit. “Congress’ [ s ] determination of federal spending pri orities and how the patent system fits into national economic development goals is an eminently rational exercise of its power .” Figueroa v. United
States , 66 Fed. Cl. 139, 152 (2005)

, aff’d , 466 F.3d 1023

.

4Given the broad terms of the Intellectual Property Clause of the Constitution, a ny condition Congress imposes on patents need only be rationally related to the promotion of progress in science and the useful arts to survive judicial scrutiny. Figueroa , 66 Fed. Cl. at 152. While Ms. Lucree contends that Congress’s imposition of maintenance fees gives greater prominence to European practice than the terms of the Constitution

, and imposes a post

- issuance
condition on a patent, nothing in the Constitution forecloses Congress from requiring such fees,
which r ational ly relate to the promotion of scientific progress

. 6

B. Ta kings

In addition to challenging the constitutionality of maintenance fees, Ms. Lucree cont ends that Congress’s imposition of such fees r esult ed in an unconstitutional taking of her private property, for which she now seeks just compensation. Compl. at 16. 7 She alleges that she had complied with all of the requirements for patent issuance, giv ing her a cognizable property right in her patent

, independent of any additional post

- issuance congressio nal conditions. Compl. at
17

- 18

. She accordingly avers that she should be compensated for all lost profits incurred by the early expiration of her patent. Id . at 21. The government maintains that there is no taking because the patent privilege does not exist independent of congressional conditions, including post

- issuance maintenance fees, meani ng that Ms. Lucree had no property to be taken by the government after she failed to pay the third installment of those fees . Def.’s Mot. at 7

- 8

.

I t is undisputed that Ms. Lucree had a property interest in her patent . T hat property
interest , however, wa s subject to the terms and conditions set by Congress, including
maintenance fees

. 8 Because Ms. Lucree did not pay the final maintenance fee due on her patent,

6 Congress explained its adoption of maintenance fees as “ ha [ving] the advantage of deferring payment until the invention begins to return revenue to the inventor. Should the invention prove to have no commercial value, the inventor has the option of permitting the patent to lapse, thus avoid ing further fees.” H.R. Rep. No. 96

- 1307(I), at 4

- 5 (1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6463

- 64 ; see Def.’s Mot. at 7 n.5

.

7 Ordinarily, claimants must concede the validity of the government action underlying their takings claims. See Tabb Lakes , Ltd

. v. United States , 10 F.3d 796, 802 (Fed. Cir. 1993).
Nonetheless , “ [ a ] claim in our court for just compensation due to a taking is not defeated merely because a property owner believes that the government action that allegedly took his property

was for other reasons invalid

– or even because he goes so far as to challenge its validity. As the Federal Circuit has explained, ‘a court’s conclusion that government agents acted unlawfully does not defeat a Tucker Act takings claim if the elements of a ta king are otherwise satisfied.’” Bailey v. United States , 78 Fed. Cl. 239, 25 3

- 5 4 (2007) (quoting Del

- Rio Drilling Programs, Inc.
v. United States , 146 F.3d 1358, 1363 (Fed. Cir. 1998)). Accordingly, Ms. Lucree’s takings claim is not precluded by her const itutional challenge.

8 As the government notes, a similar complaint filed in 2006 was dismissed under Rule 12(b)(6) for failure to state a claim. See Michels v. United States , 72 Fed. Cl. 426 (2006). In
Michels , the court held that Congress had the autho rity to impose conditions, including maintenance fees, on patents, and that an early expiration of patents due to nonpayment did not

5the early expiration of her patent did not constitute a taking by the government, but rather w a s consequence for her failure to fulfill the requirements upon which her patent was conditioned.
T hese circumstances do not entitle Ms. Lucree to legal relief, and her complaint may be properly
dismissed for failure to state a claim. 9

CONCLUSION

For the reasons set forth above, the government’s motion to dismiss Ms. Lucree’s complaint pursuant to RCFC 12(b)(6) is GRANTED.

The clerk shall enter judgment in accord with this disposition

.

No costs.

It is so ORDERED

.

s/ Charles F. Lettow
Charles F. Lettow Judge

constitute a taking of property for purposes of the Fifth Amendment. Id . at 430 (citing Figueroa v. United States , 57 Fed. Cl. 488 (2003)). The court refrained, however, from ruling on the constitutionality of maintenance fees given that it was raised for the first time in the plaintiff’s response to the government’s motion to dismiss. Id . at 431

- 432. The court in Michels nonetheless stated that had the issue been properly pled, it would have failed on the merits. Id . at 432.

9 Ms. Lucree ’s complaint also challenges the constitutionality of publishing patent applications eighteen months after filing and the Patent Office ’s transition to the “first to file” system, both of which she contends harm small businesses and independent inventors. Compl. at

18

- 21. This challenge is hypothetical; Ms. Lucree acknowledge s that the “first to file” system is not pertinent to her clai ms in this action. Compl. 20

- 21. Consequently , Ms. Lucree fails to establish that she has standing to bring these claims. See, e.g.

, Madstad Eng ’ g, Inc. v. United

States Patent & Trademark Office

, __ F.3d __, __, 2014 WL 2938080, at *1, *13 (Fed. Cir. J uly 1, 2014) (holding that a plaintiff did not have standing to challenge the “first to file” system

where its alleged harms were speculative and not actual). Nonetheless , even if standing were found , these claims would fail on the merits, given the court’ s deference to congressional discretion over patent legislation.

6