OREGE[{AL

l|n tbeMnrte|. $rtstes @ourt of ;feUersl @[g.itgg

No.13-307c FILED

Filed: November 30, 2016

*,1. 'r.+** x *.*r!*t!*,** ***{.+  +** ***,r*** ***

LARRY GOLDEN,

Pleintiff nvn ea

THE LINITED STATES,

Defendant.

*************** *** * * * * * * * * *:*:i * * * ** ***

Larry Golden, Greenville, South Carolina, pro se.

Lindsay Kate Eastman, United States Department of Justice, Civil Division, Washington, D.C.

MEMORANDUM OPINION AND ORDER DEI{YING THE GOVERNMENT'S

MOTION TO DISMISS

BRADEN,.radge.

I. RXLEVANTFACTUAI,BACKGROUND.'

On April 5,2006, Mr. Larry Golden filed Patent Application No. 1tl397,118 (..the'118

Application"), titled "Multi sensor Detection, stall ro stop And Lock Disabling System," with

the united states Patent and rrademark office ("usPTo"). 2112116 Am. compl. Ex. B. on June

10, 2008, the '118 Application resulted in the issuance of U.S. patent No. 7,3g5,497 (,,the'497

Patenf). 2112/16 Arn. Compl. Ex. B.

Several days prior, on June 6, 2008, Mr. Golden filed a continuation-in-part application,2

No. 12l155,573 ("the'573 Application"), of the ,118 Application. 2/12/16 Am. Compl. Ex. C.

I The facts discussed herein are derived from the May 1,2013 Complaint (.,Compl.',); and

the February 12,2016 Amended complaint ("2112/16 Am. compl.") and attached Exhibits A-K

("2/12/16 Am. Compl. Ex. A-K").

2 "A continuation-in-part is an application frled during the lifetime of an earlier

nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional

Nov 3 0 2016

U.S. COURT OF

FEDERAL CLAIMS

28 U.S.C. $ 1498(a) (Patent Infringement);

35 U.S.C. g 251 (Reissue); RCFC 12(bxl)

(Jurisdiction);

RCFC 12(b)(6) (Failure to State a Claim);

RCFC 12(e) (More Definite Statement);

RCFC 15(a)(2) (Amended Complaint,

With Court's Leave);

Manual of Patent Examining Procedure

(9th ed. 2015).

?01'{ 1,e00 0000 t0!l 1893
On December 22 ,2009,the '573 Application resulted in the issuance of U.S. Patent No. 7,636,033

("the '033 Patent"). 2/12/16 Am. Compl. Ex. C.

On January 20, 2010, Mr. Golden filed a continuation application, Application No.

121657,356 ("the '356 Application"), ofthe '573 Application. Thereafter, Mr. Golden filed several

continuation applications ofthe '356 Application, resulting in:

. U.S. Patent No. 8,106,752 ("the'752 Patent"), issued on January 31,2012;

. U.S. Patent No. 8,334,761 ("the '761 Patenf'), issued on December 18, 2012;

r U.S. Patent No. 8,53 1,280 ('the '280 Patent"), issued on September 10,2013;

o U.S. Patent No. 9,096,189 ("the '189 Patent"), issued on August 4,2015; and

o Published Patent Application No. 2076-0027273 Al ("the'273 PG-PUB).

2/12/16 Am. Compl. Exs. D, E, F, I.

On March 31,2011, Mr. Golden filed a reissue application for the '033 Patent that, on

January 1, 2013, issued as U.S. Reissue Patent No. RE43,891 ("the '891 patenf).3 2/12116 Am.

Compl. Ex. G.

On September 9, 2011, Mr. Golden filed a second reissue application for the '033 Patent.

on February 12, 2013, the application resulted in the issuance of U.S. Reissue patent No.

RE43,990 ("the'990 Patent"). 2ll2l16 Am. Compl. Exs. G, H.

The patents listed above disclose inventions for the detection and automated isolation of

dangerous chemical, biological, and radiological agents in shipping containers, tractor trailers,

mail caniers, mail boxes and lockers. see, e.g.,2112116 Am. compl. Ex. B at 2. Mr. Golden is

the owner, and sole inventor, of these patents. 2/12/16 Am. Compl. Exs. A-I.

application and adding matter not disclosed in the said earlier nonprovisional application.,' Manual

of Patent Examining Procedure (.'MPEP') $201.8 (9th ed. 2015).

. 

3 under 35 u.s.c. $ 251, defective patents may be corrected through a process known as

"reissue." Section 25 1(a) provides:

[w]henever any patent is, through error, deemed wholly or partly inoperative or

invalid, by reason of a defective specification or drawing, or by reaion of the

patentee claiming more or less than he had a right to claim in the patent, the Director

shall, on the surrender of such patent and the payment ofthe fJe required by law,

reissue the patent for the invention disclosed in the original patent, and in

accordance with a new and amended apptication, for the unexpired fart ofthe term

of the original patent. No new matter shall be introduced into the application for

relssue.

35 U.S.C. $ 251(a).
II, PROCEDURALHISTORY.

On May 1,2013,Mr. Golden ("Plaintiff') filed a Complaint in the United States Court of

Federal Claims alleging that the Govemment infringed the '990 Patent, based on three solicitations

published by the United States Deparhnent of Homeland Security (.'DHS") seeking to develop

technology for sensing biological and chemical substances. Compl. at 1-2. The Complaint alleges

that the DHS solicitations directly infringed, inftinged under the doctrine of equivalents, or

infringed by inducement claims 11, 74 and 8l ofthe '990 Patent. Compl,at3.

On August 15, 2013, Plaintiff frled a "Notice of Supplement" that the court considers an

Amended Complaint. ECF No. 6.

On September 5,2013, the Governrnent filed a Motion For A More Definite Statement,

pursuant to Rule of the United States Court of Federal Claims ("RCFC") 12(e), requesting that

Plaintiff further amend the May 1, 2013 Complaint to incorporate numbered paragraphs,

enumerate with particularity the Govemment devices or processes that allegedly infringe

Plaintiffs patents, and identifu the party in interest. ECF No. 9.

On September 20,2013, Plaintiff filed: a Motion To Strike (ECF No. 10); a Motion To

Amend Complaint (ECF No. 11); a Motion To Supplement Complaint @CF No. 14); a Response

to the september 5,2013 Motion For A More Definite statement @cF No. 12); and a Motion For

Summary Judgment (ECF No. 13).

on october 15,2013, Plaintiff filed a second Response to the september 5, 2013 Motion

For A More Definite Statement that the court considers a Second Amended Complaint. The

October 15, 2013 Second Amended Complaint advised the court that Plaintiff is iepresentine

himself, not the company ATPG Technology. ECF No. 20.

On October 21,2013, the court ganted the September lO, 2013 Motion For A More

Definite statement, because t}'e May l, 2013 complaint, the August 15, 2013 Amended

complaint, and the october 15,2013 Second Amended complaint were so vague and ambiguous

that the Govemment could not prepare an informed Answer. ECF No. zt. ihat same day, the

Govemment filed a Response To Plaintiff s Motion For Summary Judgment. ECF No. 22.

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

on December 20, 2013, the court denied plaintiffs September 20, 2013 Motion For

Summary Judgment, without prejudice, because the Govemment had not filed an Answer. ECF

No. 28.

on December 30, 2013, Plaintifffiled a Motion To Amend And Supplement pleadings of

The More Definite Statement, pusuant to RCFC 15(a)(2). ECF No. 29.

on January r0,2014, the Govemment filed an Answer to the December 30. 2013 Motion

To Amend Pleadings. ECF No. 30. The Govemment treated the December 30,2013 Motion To

Amend Pleadings as filed by leave of court and, therefore, superseding plaintifps November 22,

2013 More Definite Statement. ECFNo.30 atn.1.
On February 7, 2014, the court granted the December 30, 2013 Motion to Amend Pleadings

and ordered the parties to treat that motion as a Third Amended Complaint, superseding all prior

complaints submitted by Plaintiff. ECF No. 32.

On April 30,2014, DHS filed a petition for inter pdrtes review ("lPP|') of the '990 Patent

before the USPTO Patent Trial and Appeal Board ("PTAB").

On May 28,2014, Mr. Ha Kung Wong informed the court that he was counsel of record

for Plaintiff (ECF No. 42) but, on September 12,2014, he withdrew (ECF Nos. 49, 50).

On October 8, 2014, the PTAB filed a Decision To lnstitute IPR of claims 11, 74, and 81

of the '990 Patent. See Department of Homeland Security v. Golden, IPR2014-00714,2014 WL

6999625, at " 1 (P.T.A.B. Oct. 8, 2014). With the exception of a sixty-day stay for Plaintiff to seek

legal representation, the court did not stay this case while PTAB proceedings were ongoing. The

court, however, did not take any substantive action during those proceedings.

On October 1,2015, the PTAB issued a final decision "grant[ing] Patent Owner's Motion

to Amend . . . claims 11,74, and 81 of the '990 Patent, and den[ying] the Motion to Amend . . .

claims 154-156." See Department of Homeland Security v. Golden, IPR2014-00714, 2015 WL

5818910, at *17 (P.T.A.B. Oct. 1, 2015). On November 17,2015, the pTAB denied plaintifps

request for rehearing. see Depqrtment of Homeland securily v. Golden,lpR20l4-00714, 2015

WL 10381775 (P.T.A.B. Nov. 17,2015).

On December 22, 2015, the court convened a telephone status conference to discuss how

the case should proceed in light of the PTAB's final decision. on December 23,2015, the court

granted Plaintiff leave to file anotler amended complaint. ECF No. 65.

on February 12, 2016, Plaintiff filed a Fourth Amended complaint ("2/12/16 Am.

compl.") alleging that, the Govemment: (1) was liable for the infringement of plaintifls '497,

'752,'891, '990, and '189 Patents under 28 u.s.c g 1498(a); and (2) violated the Fifth Amendment

of the United States Constitution by taking plaintiffs ,497,,033,'752,'761, '290, ,g91, ,990,

'l89Patentsandrelated'2T3Application,withoutjustcompensation.2/12/16Am.compl.atflfl

68-127.

The February 12, 2016 Amended complaint identifies over thirfy devices that were

developed or procured, as a result of Govemment solicitations, Govemment contracts. or National

Science Foundation ("NSF") gy.arlts.4 2/12/16 Am. compl. atflf,6g-127 . These devices allegedly

* The relevant devices. are: M-Lock; High-power Electomagnetic System (..HpEMS',);

Smartphone Microscope; Biophone; Smartphone Biosensor cradle; iFhone Biodetector

smartphone; Pathtracker; the center of Integrated Nanomechanical Systems (,.coINS') Nano- Embedded sensors; Smartphone-Based Rapid Diagnostic Tests; Lockheea uu.tin K-Max

Unmarured self-flying Helicopter; Boeing MH-6 Little Bird Helicopter; sIN-vApoR I

Smartphone system; samsung Galaxy s6 Microscope Smartphone; vockef System; Nett warrior

Smartphone System; Northrop Grumman x-47B ucAS r x-478 control Display unit;

GammaPix; NFC Samsung Galaxy s6 smartphone Sensor; cell-All Synkera Iltinorera ultra:
infringe claims in Plaintiff s '497,'752,'891,'990, and'189 Patents. 2112116 Am' Compl. at flfl

68-127.

On April 8,2016, the Govemment filed an Answer to the February 12,2016 Amended

Complaint. ECF No. 74.

On June 3,2016, Plaintiff filed a Motion For Summary Judgment [On] Validity and, on

June 8, 2016, Plaintiff filed a Motion For Entry Of Estimated Damages And Accounting Report.

On June L0,2016 the court convened a telephone status conference. OnJune 13,2016,

based on the arguments raised during the status conference, the court ordered that the Govemment

file a Motion To Dismiss, and stayed the June 3, 2016 Motion For Summary Judgment and June

8, 2016 Motion For Entry Of Estimated Damages And Accounting Report. ECF No. 85.

On June 24,2016, tle Govemment filed a Motion To Dismiss Certain Accused Devices

("Gov't Mot."). On July 5, 2016 Plaintiff frled a Response ("P1. Resp."). On July 18, 2016, the

Government filed a Reply ("Gov't Reply").

UI. STANDARD OFRXVIEW.

A. Standing.

Federal trial courts have been advised to "decide standing questions at the outset of a case.

That order ofdecision (firstjurisdiction then the merits) helps better to restrict the use ofthe federal

courts to those adversarial disputes that Article III defines as the federal judiciary's business."

Steel Co. v. Citizensfor a Better Env't,523 U.S. 83, 111 (1998) (Breyer, J., concurring). The parfy

invoking federal jurisdiction has the burden ofproofto satisfy the constitutional requirements of

Article III standing. See FWPBS, Inc. v. Dallas,493U.5.215,23l (1990) (holding that the burden

is on the party seeking to exercise jurisdiction to clearly allege facts sufficient to establish

jurisdiction).

"A patentee shall have remedy by civil action for infringement of his patent." 35 U.S.C. $

281; see a/so 35 U.S.C. $ 100(d) ("The word 'patentee' includes not only the patentee to whom

the patent was issued but also the successors in title to the patentee."); Paradise Creations, Inc. v.

w sales, lnc.,315 F.3d 1304, 1308 (Fed. cir. 2003) ("[T]his court has determined that in order

to assert standing for patent infringement, the plaintiff must demonstrate that it held enforceable

titie to the patent at the inception of the lawsuit.") (emphasis in original).

Biotouch System; iPhone Biodetector Smartphone; Navy Marine Corps Intranet; FLIR

identiFINDER R300; Aoptix stratus MX Peripheral; MultiRae Pro wireless portable Multi

Threat Radiation and chemical Detector; PositivelD's M-BAND; positivelD's Firefly DX;1,'x2',

Detection Device Samsung Galaxy s6 smartphone; 2"x2" Detection Device Samsung Galaxy s6

smartphone; NetS2 Smartshield G300 Radiation Detector Samsung Galaxy s6 Smartphone;

NetS2 SmartShield G500 Radiation Detector samsung Galaxy s6 Smartphone; and the passport

systems Base control unit; oshkosh Defense Autonomous Unmanned Ground vehicle

TerraMax; and the Variable NODE+Oxa. 2/72/76 Am. Compl. at,lffl 68-127.
The standard set forth by the United states supreme court over a century ago in watetman

v. MacKenzie, 138 U.S. 252 (1891) still govems:

There can be no doubt that he is "the party interested, either as patentee, assignee,

or grantee," and as such entitled to maintain an action at law to recover damages

for an infringement; and it carurot have been the intention of [C]on$ess that a suit

in equity against an infringer to obtain an injunction and an account of profits, in

which the court is authorized to award damages, when necessary to fully

compensate the plaintifi and has the same power to treble the damages as in an

action at law, should not be brought by the same person.

Id. at 260-6I (intemal citations omitted).

The February 12,2016 Complaint alleges that Plaintiffis the sole owner of the'497 ,'033,

'752,"761,'280,'891,'990,and'189Patents.2/12/16An,.Compl.attffl6-7. Therefore,Plaintiff

has standing to seek an adjudication of the claims alleged in the February 12, 2016 Amended

Complaint.

B. Jurisdiction.

The United States Court ofFederal Claims has jurisdiction to adjudicate ciaims alleging.

fthat] an invention described in and covered by a patent ofthe United States is used

or manufactured by or for the United States without license ofthe owner thereof or

lawful right to use or manufacture the same . . . [seeking] recovery of. . . reasonable

and entire compensation for such use and manufacture. [T]he use or

manufacture of [a patenred] invention by a contractor, a subconiractor, or any

person, firm, or corporation /or the Government and with the authorization or

consent ofthe Government, shall be construed as use or manufacture for the United

States.

28 U.S.C. $ 1498(a) (emphasis added).

Infringing activity is "for the Govemment" under section 1498(a) if it is "for the benefit of

the Govemment." Advanced Software Design Corp. v. Federal Reserve Bank of St. Louis, 583

F.3d 1371, 1378 (Fed. Cir.2009); see also Madeyv Duke University,4l3 F. Supp.2d,601,607

(M.D.N.C. 2006) ("A use is 'for the Govemment' if it is 'in furtherance and fulfillment of a stated

Govemment policy' which serves the Government's interests and which is 'for the Govemment's

benefit."' (quoting Riles v. Amerada Hess, Corp.,999 F. Supp. 938,940 (S.D. Tex. 1998)). In

Hughes Aircraft Co. v. United States, 534 F.2d 889 (197 6), for example, the court held that a

satellite program to advance the military defense and security of the United States was "for the

Govemment." Id. at898.

Moreover, "authorization or consent of the Govemment," does not need to be expressly

stated. See TVI Energt Corp. v. Blane,806 F.2d 1057, 1060(Fed. Cir. 1986) ("[a]uthorizarion or

consent by the Govemment can be express [or] [i]n proper circumstances, Government
authorization can be implied."). Indeed, "authorization or consent . . . may be glven m many ways

other than by . . . direct form of communication--e.g., by contracting offrcer instructions, [or] by

specifications . . . which impliedly sanction and necessitate infringement[.]" Hughes Aircraft co,

534 F.2d at 901.

The February 12,2016 Amended Complaint alleges that various nongovemment entities,

including a number ofcorporations and public research universities, infringed the '497,'033,'752,

'761,'280, '891,'990, and'189 Patents. Whether the court has jurisdiction over those claims is

the subject of this Memorandum Opinion And Order.

C. Standard Of Review For Pro 

^Se 

Litigants.

Pro se plaintiffs' pleadings are held to a less stringent standard than those of litigants

represented by counsel. See Haines v. Kerner,404 U.S. 519, 520 (1972) (holding that pro se

complaints, "however inartfully pleaded," are held to "1ess shingent standards than formal

pleadings drafted by lawyers"). The United States Court ofFederal Claims traditionally examines

the record "to see if la pro sel plaintiff has a cause of action somewhere displayed." Ruderer

v. United States,4I2F.2d, 1285,1292 (Ct. Cl. 1969). Nevertheless, while the court may excuse

ambiguities inapro se plaintifPs complaint, the court "does not excuse [a complaint's] failures."

Henke v. United gtates,60F.3d795,799 (Fed. Cir. 1995). ("The fact that [the plaintiff] acted pro

se in the drafting ofhis complaint may explain its ambiguities, but it does not excuse its failures,

if such there be.").

Apro se plaintiff, however, is not excused from his burden ofproving, by a preponderance

of the evidence, that the court possesses jurisdiction. See McNutt v. Gen. Motors Acceptance

Corp.,298 U.S. 178, 189 (1936) ("[The plaintiff] must allege in his pleading the facts essential to

show jurisdiction."); see also Reynolds v. Army & Air Force Exch. Serv., 846F.2d746,748 (Fed.

Cir. 1988) (fThe pro se plaintiffl bears the burden of establishing subject matter jurisdiction by a

preponderance of the evidence."). The plaintiff cannot rely solely on aliegations in the complaint,

but must bring forth relevant, adequate proofto establish jurisdiction. See Reynolds,846 F.3d at

748 ("Ilt was incumbent upon [the pro se plaintiff] to come forward with evidence establishing

the court's jurisdiction.").

D. Standard Of Review For A Motion To Dismiss, Pursuant To RCFC l2(bxl).

A challenge to the United States Court of Federal Claims' "general power to adjudicate in

specific areas of substantive law . . . is properly raised by a [Rule] 12(b)(1) motion;' Palmer

1). united stat$, 168 F.3d 1310, 1313 (Fed. cir. 1999); see also RCFC l2(b)(l) (allowing a party

to assert, by motion, "lack of subject-matter jurisdiction"). When considering a motion to dismiss

for lack of subject-matter jurisdiction, the court must take the facts alleged in the complaint as true.

See Erickson v. Pardus,55l U.S. 89,93-94 (2007). The court may consider evidence beyond the

pleadings, however, when the motion to dismiss challenges the jurisdictional facts alleged in the

complaint. See Moyer v. US., 190 F.3d 1314, 1318 (Fed. Cir. 1999). If the court determines that

it does not have subject-matter jurisdiction, the court must dismiss the complaint. See RCFC

12(bX1).
E. Standard of Review For Motion To Dismiss, Pursuant To RC['C 12(bX6)'

A claim is subject to dismissal under RCFC 12(bX6), if it does not provide a basis for the

courr to grant relief. see Bell Atl. corp. v. Twombl/, 550 u.s. 544, 555-56 (2007) ("[A wellpleaded complaint] requires more than labels and conclusions, and a formulaic recitation of the

"I"-".rtr ofa cause of action will not do. Factual allegations must be enough to raise a right of

relief above the speculative level, on the assumption that all the allegations in the complaint are

true (even if doubtfirl in fact)." (intemal citations omitted)); see also Lindsay v. united states,295

F.3d 1252, 1257 (F ed.Cit.2002) ("A motion to dismiss . . . for failure to state a claim upon which

reliefcan be granted is appropriate when the facts asserted by the claimant do not entitle him to a

legal remedy.").

A complaint must "contain suffrcient factual matter, accepted as true, to 'state a claim to

reliefthat is plausible on its face."' Ashcrofi v. lqba|,556U.5.662,679 (2009) (qtotingTwombly,

550 U.S. at 570). The allegations contained in a complaint also must indicate to the court that

there is "more than a sheer possibility that a defendant has acted unlawfully. Id. "Tbreadbare

recitals of the elements of a cause of action, supported by mere conclusory statements, do not

suffice." 1d. To determine whether a complaint states a plausible claim for relief, a court must

engage in a context-specific analysis and "draw on its judicial experience and common sense." 1d.

at 678-:79. The court, however, must construe the allegations of the complaint in the light most

favorable to the plaintiff. See Henke v. UnitedStates,60F.3d795,797 (Fed. Cir.1995).

IV. DISCUSSION.

A. The Government's June 24,2016 Motion To Dismiss The February 12,2016

Amended Complaint's M-Lock And HPEMS Claims, Pursuant To RCFC

12(b)(6).

1. The Government's Argument.

The Government argues that, under section 1498(a), a patent owner can sue the United

States for patent infringement only if the United States, a contractor, a subconhactor, a person, or

a corporation uses or manufactures the patented invention (1) for the Govemment and (2) with the

authorization or consent of the Govemment. Gov't Mot. at 3. The February 12,2016 Amended

Complaint alleges that iControl, Inc. ("iControl"), a Govemment contactor, used and

manufactwed a device called M-Lock that ffiinged Plaintiff s '752 md '990 Patents. Gov't Mot.

at 3. The Amended Complaint, however, fails to allege sufficient facts to establish that the

Govemment was directly involved in the manufacture or use of M-Lock or that t}te device was

manufactured for the benefit of the Govemment. Gov't Mot. at 4.

Similarly, the February 12, 2016 Amended Complaint alleges that Eureka Aerospace,

another Government contractor, used and manufactured a device called the High-Powered

Electromagnetic System ("HPEMS") that infringed Plaintiff s '891 Patent. Gov't Mot. at 4.

Plaintiff alleges that the United States Air Force ("USAF") issued a request related to IIPEMS ard

that the United States Marines ("Marines") are a potential customer of the device, but otherwise

fails to allege any manufacture or use "by or for the Govemment." Gov't Mot. at 4.
Accordhgly, the February 12,2016 Amended complaint's M-Lock and HPEMS claims

do not assert sufficient facts to entitle Plaintiffto a remedy under section 1498(a). Gov't Mot. at

4. Those claims should therefore be dismissed, pursuant to RCFC 12(bX6). Gov',t Mot. at 4.

2. Plaintiff s Response'

Plaintiffargues that the Govemment's manufacture or use of an infringing device generally

results from procurement contracts. Pl. Resp. at 6. Moreover, when purchasing goods and services

from a contractor, the Government seeks to acquire the best product without delay and "will not

refuse to award a contract on the grounds that the prospective contactor may infringe a patent."

Pl. Resp. at 6 (quoting 48 C.F.R. 27 .l02bD. Plaintiff does not explicitly apply these ruies to the

facts alleged in the February 12,2016 Amended complaint. Bu! his argument appears to be that

the existence of a contract between the Govemment and iControl and Eureka Aerospace for the

development of infringing devices supports a reasonable inference that the manufacture and use

of the devices was "for the Govemment" and "with the authorization and consent of the

Government." 28 U.S.C. $ 1498(a).

3. The Government's RePlY.

The Government replies that Plaintiff did not address "[the Amended Complaint's] failue

to state with particularity a cause of action for which reliefcan be granted relating to the M-l.ock

Device or the [HPEMS]." Gov't Reply at 2'

4. The Court's Resolution.

a. The Government's June 24' 20!6 Motion To Dismiss The

February 12, 2016 Amended Complaint's M-Lock Claims,

Pursuant To RCFC 12(bX6)' Is Denied.

The Govemment argues that the M-Lock claims should be dismissed, pursuant to RCFC

12(bX6), because the February 12,2016 Amended complaint does not allege that M-Lock was

manufactured for the benefit of the Govemment. Gov't Mot. aI4. The court disaglees.

viewed in the light most favorable to Plaintiff, the February 12,2016 Amended complaint

alleges sufficient facts to raise a plausible right of relief rurder section 1498(a). See Iqbal' 556

IJ .5. at 677 . "A claim has facial plausibility when the plaintiff pleads factual content that allows

the court to draw the reasonable inference that the defendant is liable for the misconduct alleged."

Id. at 678. The February 12,2016 Amended Complaint alleges that DHS, a federal agency,

contracted with iControl "for the development[,] commercialization [and purchase] of . . . MLock," an automated locking device that contains "a movement sensor, a tempelature sensot, a

humidity sensor, an infrared sensor, a radioactivity detection sensor, an acoustic sensor, [and/or] a

chemical detection sensor;' 211212016 Am. Compl. nn74-'15. The February 12,2016 Amended

complaint alleges that M-Lock infringes several claims of Plaintiff s '752 md '990 Patents,

disclosing inventions that that automatically detect chemical, biological, and radiological agents

so that tenorist activity can be prevented. See 2112/16 Am. Compl. Ex. D at 16; see also 2 112116

Am. Compl. Ex. H at 17. And the February 12, 2016 Amended Complaint alleges that the
infringing device is being used and manufactured without license or legal right. 211212016 AmCompl. fl 75.

Based on the alleged facts, the court can reasonably infer that iControl is a governrnent

contractor and that the manufacture and use of M-Lock was "for tlle benefit of [DHS]." see

Advanced Software Design Corp.,583 F.3d at 1378. In light ofthe allsgation that the inventions

disclosed in patents '752 and '990 were designed to prevent terrorist activity, it is plausible that

iConhol manufactured an infringing device for the benefit ofDHS to promote national security'

see, e.g., Hughes Aircraft Co.,534 F.2d at 898 (finding that the government's participation in a

satelG progiam was "for the Government," because the program was vital to the military defense

and security ofthe United States). Moreover, under section 1498(a), "Government authorization

or consent" can be implied by circumstances . See TVI Energt Corp , 806 F.2d at 1060'

In this case, the February 12,2016 Amended Complaint alleges that DHS contracted with

iControl to develop and commercialize M-Lock. This contractual relationship supports a

reasonable inference that the Govemment authorized the manufacture and use of the infringing

device.

b. The Government's June 24, 2016 Motion To Dismiss The

February 12, 2016 Amended Complaint's HPEMS Claims,

Pursuant To RCf'C 12(bX6), Is Denied'

The Govemment also argues that the February 12,20t6 Amended complaint's HPEMS

claims should be dismissed, because they do not allege that Eureka Aerospace manufactured or

used the HPEMS "for the Govemment." Gov't Mot. at 4. Again, the court does not agree with

the Govemment's contention. The February 12, 2016 Amended Complaint alleges that "as a result

of [] contracts with [USAF] . . . for the development and commercialization of the Eureka

Aerospace HPEMS, tle United states has used, authorized the use, and manufactured, without

license or legai right, to Plaintiff s inventions [disclosed in patent'891]." 2112116 Am. lompl. fl

87. The HPEMS is a device that shoots an electromagnetic pulse so that vehicles can be disabled,

without using firearrns. ,See 2112116 Arn Compl fl 86.

In light of these allegations, the court can reasonably infer that Eureka Aerospace's

manufacture and use of the HPEMS advances the military defense and security of the United States

and is thus..for the benefit of the Govemment." see, e.g., Hughes Airoaft co.,534 F.2d at 898.

Moreover, construed in the light most favorable to Plaintiff, the February 12,2016 Amended

Complaint alleges that USAF contracted with Eureka Aerospace to develop and commercialize

tn" fipgntS-*fficient facts to support a reasonable inference that USAF implicitly authorized

the manufacture and use ofthe infringing device. See TVI Energy Corp.,806 F.2d at 1060.5

5 While the February 12, 2016 Amended Complaint does not clearly state whether

USAF issued a solicitation for the HPEMS or awarded Eureka Aerospace a contract to develop

that device, the court must interpret a complaint in the iight most favorable to the plaintiff, when

ruling on a motion to dismiss, pursuant to 12(bx6). see Henke,60 F.3d at 797. Therefore, the

court reads the February 12, 2016 Amended Complaint to allege that the Govemment awarded

Eureka Aerospace a contract to develop and commercialize the HPEMS'

10
For these reasons, the court denies the Govemment June24,20l6 Motion To Dismiss the

February 12, 2016 Amended complaint's M-Lock and HPEMS claims, pursuant to RCFC

12(b)(6).

B. The Government's June 24,2016

Amended Complaint's National

RcFc u(b)(l) and 12(b)(6).

Motion To Dismiss The February 12' 2016

Science Foundation Clairns, Pursuant To

1. The Government's Argurnent.

The Govemment contends that, under section 1498(a), "merely funding an activity does

not establish the Govemment's authorization and consent [to manufacture or use an infringing

devicel.,' Gov,t Mot. at 5. The February 12, 2016 Amended complaint alleges that the

Govemment funded the development of multiple infringing devices through a series of NSF grants

(,NSF claims"), but does not allege any other facts 1o establish the Government's authorization or

consent to the manufacture oruse ofthose devices.6 Gov'tMot. at 5. Moreover' the February 12,

2016 Amended Complaint does not allege that the NSF-funded devices were used or manufactured

"by or for the Government." Gov't Mot. at 5. Therefore, the February 12' 2016 Amended

Complaint's NSF claims should be dismissed for failure to state a claim upon which relief can be

granted. Gov't Mot. at 5.

The Govemment also argues-without additional explanation-that the court should

dismiss the NSF ciaims for lack of subject matter jurisdiction' Gov't Mot. at 5.

2. Plaintiff s Response.

Plaintiff responds that "[g]rant related agreements [are] contracts within Tucker Act

jurisdiction when all the requisite elements of a contract were present, including a government

representative with actual authority to bind the govemment in contract." Pl. Resp. at 7 (quoting

Pennsylvania Dep't ofPub. llelfare v. United States,48 Fed. Cl. 785,790 (2001) ("[g]rant related

agreements have been held to be contracts within Tucker Act jurisdiction when all the requisite

elements of a contract were present, including a govemment representative with actual authority

to bind the goverffnent in contract.")). The February 1.2,2016 Amended Complaint's NSF claims

facially involve grant related agreements. Pl. Resp. at 8-9. Therefore, the United States Court of

Federal Claims has jurisdiction, under the Tucker Act, to adjudicate those claims. Pl. Resp. at 8.

Plaintiff also argues that the Govemment's award of NSF grants for the development of

infringing devices supports a reasonable inference that the manufacture and use ofthose devices

was "for the Government" and "with the authorization and consent of the Govemment." Pl. Resp.

at I 0-l 1.

6 The accused devices are: the Smartphone Microscope, Gov't Mot. at 5; Biophone, Gov't

Mot. at 6; Smartphone Biosensor "Cradle", Gov't Mot. at 6; iPhone Biodetector Smartphone,

Gov't Mot. at 7; Pathtracker, Gov't Mot. at 7; COINS, Gov't Mot. at 8; and Smartphone-Based

Rapid Diagnostic Test Devices, Gov't Mot. at 8.

1i
3. The Government's RePlY.

The Govemment concedes that NSF Research Grant Awards may be treated as contacts

to establish jurisdiction under the Tucker Act, but argues that the existence of a contract is not

sufficient to establish liability under section 1498(a). Gov't Reply at2. Section 1498(a) allows a

patent holder to sue the Government only if the infringing manufacture or use of the relevant

invention was "for the Govemment" and "with the authorization or consent of the Govemment "

Some courts have found that the terms ofaNSF grant can satisfy section 1498(a). Gov't Reply at

2 (citing McMullen Assoc., Inc. v. State Bd. Of Higher Ed.,268 F. Supp. 735 (D Or' 1967))' The

gants ;t issue in those cases, however, reserved property rights in the infiinging device to the

Govemment. Gov't Reply at 2. The Febru ary 12,2016 Amended complaint does not allege that

the Govemment retained a property right in any ofthe accused devices and fails to allege any other

facts that could plausibly establish that the manufacture or use ofthe patented invention was "for

the Govemmenti'and "with the authorization or consent of the Govemment." Gov't Reply at 2-

3.

4. The Court's Resolution.

a, The June 24,2016 Motion To Dismiss The X'ebruary 12,2016

Amended Complaint's National Science Foundation Claims,

Pursuant To RCFC 12(b)(1)' Is Denied.

Under the Tucker Act, the United States Court of Federal Claims has jurisdiction to

adjudicate a claim if the statute, regulation, or constitutional provision that is the basis for that

claim "can fairly be interpreted as mandating compensation by the Federal Govemment for the

damage sustaine d,,' united states v. Mitchell,463 rJ.s.206,217 (1983), and the plaintiff is "within

the class of plaintiffs entitled to recover under the statute if the elements of [the] cause of action

are established," Greenlee County, Arizona v. (Inited States,487 F.3d 871,876 (Fed. Cir. 2007).

"There is no firther jurisdictional requirement that plaintiff make [] additional nonfrivolous

allegation[s] that [he] is entitled to relief under the relevant money-mandating source." .,rdn 's

Helicopter Serv., Inc. v. Federal Aviation Agency. 525 F.3d 1299,1307 (Fed. Cir. 2008). Instead,

"the consequence ofa ruling by the court . . . that plaintiff s case does not fit within the scope of

the [money-mandating] source . . . is simply fthat] plaintiff loses on the merits for failing to state

a claim on which relief can be granted." Fisher v. United States,402F.3d116'7,1I75-76 (Fed.

Cir.2005).

Here, the February 12, 2016 Amended Complaint's NSF claims are based on section

1a98(a), a statute that is money-mandating on its face' See 28 U.S.C. $ 1498(a) ("Whenever an

invention described in and covered by a patent ofthe 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.") (emphasis added). Furthermore, Plaintiffis the owner of the United States patents

asserted in this case and is therefore entitled to recover under section 1498(a). See 28 U.S.C. $

1498(a).

12
Accordingly, the court has jurisdiction to adjudicate the February 12,20t6 Amended

complaint's NSF claims. The Government's June 24, 2016 Motion To Dismiss, pursuant to

12(bX1), is denied.

b. The June 24,2016 Motion To Dismiss The February 12,2016

Amended Complaint's National Science Foundation Claims,

Pursuant To RCF'C 12(bX6), Is Denied.

The February 12,2016 Amended Complaint's NSF claims allege sufficient facts to support

a reasonable inference that the manufacture and use of the accused devices was "for the

Govemment." see lqbat,556 U.S. at 678. The NSF claims allege that the Govemment awarded

research grants to develop portable devices that can: (1) identify dangerous chemical, radiological,

and bacte;ial agents; and (2) track the spread of disease.T Based on the alleged facts, it is plausible

that the accused devices were used to further the military defense, national security, and public

health interests of the United States: policies that the Govemment has a fundamental interest in

advancing. Accordingly, the court can reasonably infer that the use of the NSF-funded devices

was ..for the Govemment;' see, e.g., Hughes Aircrafi co., 534 F.2d at 898 (finding that the

govemment's participation in a satellite program was "for the Govemment," because the program

was vital to the military defense and security ofthe United States); see also Madey,413 F. Supp.

2d at 607 (M.D.N.C. 2006) (explaining that a use is "for the Govemment" if it is in furtherance

and fulfillment of a stated Govemment poiicy and for the Govemment's benefit).

The February 12, 2016 Amended Complaint's NSF claims also allege suffrcient facts to

plausibly establish that the use of the accused devices was "with the authorization or consent of

the Government." Authorization or consent can be implied from the circumstances-"e.g., by

contracting officer instructions, [or] specifications or drawings which impliedly sanction and

necessitate infringement." Hughes Aircraft Co., 534 F.2d at 901. For example, in TVI Energt

Corp., the United States Court of Appeals for the Federal Circuit held that the Government

impliedly sanctioned the use of a patented invention when it issued a solicitation that required

bidders to submit for inspection, and perform live demonstrations of, the accused device. See TVI

Energy Corp.,806 F.2d at 1060.

In this case, the relevant NSF grants anticipate that the awardees will develop and test the

devices proposed in their applications. See, e.g., NSF Award No. 1444240 ('Annual and Final

7 The relevant NSF grants are being used to develop: "a portable smartphone attacbment

that can be used to perform sophisticated field testing to detect viruses and bacteria," 2112116 Am.

Compl. tl78; "[a device] that derives biological signals from your smartphone's acceierometer . . .

[and] [t]his informalion is useful to base medical diagnoses in rcal-life conditions and to help track

chronic health conditions and effects of therapeutic interventions," 2/12/16 Am' Compl. fl80; "a

cradle and app for the iPhone to make a handheld biosensor that uses the phone's own camera and

processing power to detect any kind of biological molecules or cells," 2112116 An'. Compl. !f92; a

handheld instrument to help contain the spread of Ebola, Hlv, Tuberculosis, andMalaia,2ll2/16

Am. Compl. '1f 102; "[a portable device for] real-time detection of explosives, toxicants, and

radiation," 2112/16 Am. Compl. lfl22; "highly sensitive rapid medical diagnostic tests," 2112/16

Am. Compl. fl126.

IJ
project reports, as required in the NSF Grant Conditions, should document all efforts and

outcomes, whether or not they are successful."). Govemment funding of research that will lead to

the development and testing of an accused device supports a reasonable inference that the

Govemment impliedly sanctioned infringing activity.

v. coNcLUsIoN.

For the reasons discussed herein, the Govemment's Jlur:.e 24,2016 Motion To Dismiss

Certain Devices, pursuant to RCFC 12(bX1) and 12(b)(6), is denied.

Plaintiff, however, is cautioned that the court's ruling today is based on the standard of

review on sufficiency ofthe pleading alone and is not to be construed as a ruling on the substantive

merits of the patent infringement claims alleged in the February 12, 2016 Amended Complaint.

The court will convene a telephone status conference in the next few days to discuss a schedule to

move this case towards adiudication.

IT IS SO ORDERED. An J--- \At 

.''...........................|-

'

SUSAN G/BRADEN

Judge

14