Bondyopadhyay v. United States ( 2020 )

In the United States Court of Federal Claims
No. 19-1831C
Filed: June 23, 2020
* * * * * * * * * * * * * * * * * ** *
PROBIR K. BONDYOPADHYAY, *
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Plaintiff, *
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v. Pro Se; Patent Infringement; Res
*
Judicata; Fifth Amendment Taking;
UNITED STATES, *
Fraud; Statute of Limitations.
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Defendant. *
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* * * * * * * * * * * * * * * * * ** *
Probir K. Bondyopadhyay, pro se, Houston, TX.
Joshua I. Miller, Trial Attorney, Commercial Litigation Branch, Civil Division,
United States Department of Justice, Washington, D.C., for defendant. With him were
Gary L. Hausken, Director, Commercial Litigation Branch, and Joseph H. Hunt,
Assistant Attorney General, Civil Division.
OPINION
HORN, J.
FINDINGS OF FACT
Plaintiff’s complaint, filed on November 27, 2019, states that “[t]he Plaintiff, a U.S.
Citizen is the sole inventor and owner of the live U.S. Patent 6,292,134 entitled Geodesic
Sphere Phased Array Antenna System.” (capitalization and emphasis in original) (internal
references omitted). Attached to plaintiff’s complaint is only the first page of the ‘134
patent, which is dated September 18, 2001. The ‘134 patent lists plaintiff as the inventor.
The abstract of the ‘134 patent attached to the complaint states:
A geodesic sphere phased array antenna system, capable of scanning the
entire omni-directional communication space and comprising substantially
equilateral triangular planar subarrays of antenna elements arranged in a
geodesic sphere configuration. Icosahedron, one of the five regular solids
and truncated icosahedron, one of the fifteen semi-regular solids are the
preferred basis of the geodesic sphere phased array construction. The
entire communication space is considered as subdivided into a large
number of smaller cells and corresponding to each such cellular
communication space, a contiguous set of the subarrays is energized and
electronically phased to scan the cellular space. Another contiguous set of
subarrays is energized and electronically phased to scan another cellular
space in a similar manner resulting in limited angle scanning requirements
which permit the basic antenna elements to be connected in a cluster as a
unit building block to which transmit/receive signal distribution and
processing means are connected resulting in lower costs in deployment,
operation and maintenance.
Below the abstract, the following image is provided:
The first page of the ‘134 patent also states that the ‘134 patent contains “30 Claims, 14
Drawing Sheets.” (capitalization and emphasis in original).
Plaintiff’s complaint, although at times difficult to follow, seems to allege that the
defendant infringed on his ownership of the ‘134 patent. Plaintiff’s complaint states that
“[t]he violation of the Constitutional Order has occurred at the Small Business Innovation
Research (SBIR) Program of the U.S. Air Force administered by the Air Force Research
Laboratory (AFRL) under the central control of the Office of the Secretary of Defense
(OSD).” (capitalization and emphasis in original) (internal references omitted). Plaintiff
further alleges in his opposition to defendant’s motion to dismiss that there have been
“two distinctly separate violations: (i) acquisition of Innovation fraud under Title 15 USC
section 638(a) and 638 (b). [sic] and (ii) violation of Exclusive Right for Limited Times
of an Inventor, Owner, U.S. Citizen, (This Plaintiff).” (capitalization and emphasis in
original). With regard to plaintiff’s alleged second violation, plaintiff states that the
“Exclusive Rights for Limited Times is a U.S. Constitutional Order that can NOT be
dismissed by any Article 3 U.S. Courts or Article 1 U.S. Courts, created under Section 8,
Clause 9.” (capitalization and emphasis in original).
Plaintiff’s complaint further states:
The U.S. Air Force has acquired the innovation (that soon became the U.S.
Patent), in 1999 in clear violation of Title 15 USC Section 638a and 638b
2
to modernize the Air Force Satellite Control Network (AFSCN). The proof,
at the origin of this U.S. Air Force effort, is staring at the Honorable Federal
Court in Exhibit-3.
(capitalization and emphasis in original). Exhibit 3 of plaintiff’s complaint is labeled: “TIME
LINE OF DEVELOPMENT WORKS ON THE MODERNIZATION OF AIR FORCE
SATTELITE CONTROL NETWORK (AFSCN) BY THE AIR FORCE RESEARCH
LABORATORY (AFRL)” (capitalization and emphasis in original), and contains an uncited
image depicting the United States Air Force’s projected acquisition timeline for the
construction of a Full Scale Geodesic Dome Phased Array Antenna, starting in 1999 and
completed by 2021.
Plaintiff’s multiple filings with the court in the above-captioned case do not specify
a particular device of the AFRL which he alleges infringed on the ‘134 patent. The above-
captioned case, Case No. 19-1831C, however, is one of many actions commenced by
plaintiff relating to the alleged infringement on the ‘134 patent, including an administrative
claim filed by plaintiff with the Judge Advocate General of the United States Air Force on
June 17, 2002, which was denied 44 days later, on July 30, 2002. Between 2003 and
2013, plaintiff filed at least six lawsuits relating to the ‘134 patent in the United States
District Court for the Southern District of Texas against contractors of the AFRL, as well
as against the United States.1
1
In defendant’s motion to dismiss, the defendant notified the court of six lawsuits filed by
plaintiff between 2002 and 2013 which relate to the ’134 patent. Defendant states:
Plaintiff filed two lawsuits against the Government’s contractors, alleging
infringement of the ‘134 patent by those contractors:
• Bondyopadhyay v. Custom Mfg. & Eng’g, Inc, Civ. No. 4:03-
cv-1542 (S.D. Tex. Filed May 7, 2003) (dismissed July 30,
2003 for lack of personal jurisdiction;
• Bondyopadhyay v. Alpha Omega Elec. LLC, Civ. No. 4:03-cv-
1578 (S.D. Tex. Filed May 9, 2003) (dismissed July 30, 2003
for lack of personal jurisdiction).
Plaintiff then filed four lawsuits against the Government in district court over
the next decade:
• Bondyopadhyay v. U.S. Secretary of Defense et al., Civ. No.
4:03-cv-3107 (S.D. Tex. Filed Aug. 6, 2003) (dismissed Dec.
5, 2003 for lack of subject matter jurisdiction and failure to
exhaust administrative remedies);
• Bondyopadhyay v. U.S. Dept. of Defense et al., Civ. No. 4:04-
cv-1990 (S.D. Tex. Filed May 18, 2004) (dismissed Aug. 6,
2004 for lack of subject matter jurisdiction);
• Bondyopadhyay v. Commander, U.S. Air Force Research
3
In 2014, plaintiff filed a previous lawsuit against the United States in the United
States Court of Federal Claims, which was assigned to Judge Williams. During the course
of the proceedings before Judge Williams, she issued three Opinions: a 2015 Opinion
granting the United States’ partial motion to dismiss, see Bondyopadhyay v. United
States, No. 14-147, 2015 WL 1311726 (Fed. Cl. 2015) (Bondyopadhyay I); a Claim
Construction Opinion in 2017, see Bondyopadhyay v. United States, 129 Fed. Cl. 793,
807 (Fed. Cl. 2017) (Bondyopadhyay II); and finally, a grant of defendant’s motion for
summary judgment in 2018, see Bondyopadhyay v. United States, 136 Fed. Cl. 114(Bondyopadhyay III), aff’d, 748 F. App’x 301 (Fed. Cir. 2018). Also in 2018, Judge
Williams’ summary judgment decision in favor of defendant in Bondyopadhyay III was
affirmed by the United States Court of Appeals for the Federal Circuit. See
Bondyopadhyay v. United States, 748 F. App’x 301 (Fed. Cir. 2018) (Bondyopadhyay IV).
In Judge Williams’ decision granting defendant’s partial motion to dismiss in
Bondyopadhyay I, Judge Williams determined that some of plaintiff’s claims were time-
barred, and others “arose after expiration of the patent-in-suit.” See Bondyopadhyay I,
2015 WL 1311726, at *1. Judge Williams’ decision in Bondyopadhyay I also dismissed
plaintiff’s “claims for a Fifth Amendment taking, punitive damages, and costs arising out
of other litigation.” Id. In Judge Williams’ Claim Construction Opinion in Bondyopadhyay
II, Judge Williams’ determined, after a claims construction hearing, that the ‘134 patent’s
use of the term “sphere” meant “greater than a hemisphere so as to provide the phased
array antenna hemispherical or wider coverage.” See Bondyopadhyay II, 129 Fed. Cl. at
807.
In granting summary judgment in favor of the United States in Bondyopadhyay III,
Judge Williams found that there was no infringement of the ‘134 patent by the United
States Air Force’s device, referred to as the Ball Advanced Technology Demonstration
antenna (Ball ATD). See Bondyopadhyay III, 136 Fed. Cl. at 124. Judge Williams
described the Ball ATD as follows:
There is only one accused device at issue—the Ball Advanced Technology
Demonstration antenna. Since at least 2000, the Air Force Research
Laboratory was interested in the feasibility of a large antenna system called
the Geodesic Dome Phased Array Antenna. As part of this research, the Air
Laboratory (AFRL) et al., Civ. No. 4:12-cv-1658 (S.D. Tex.
filed June 1, 2012); and
• Bondyopadhyay v. U.S. Secretary of Defense et al., Civ. No.
4:12-cv-1914 (S.D. Tex. Filed July 1, 2013) (dismissed Oct.
23, 2013 for lack of subject matter jurisdiction).
The court also notes that a Westlaw docket search for plaintiff, at
https://1.next.westlaw.com/Search/Results.html?query=adv%3A%20%22Probir%20K.%
20Bondyopadhyay%22&contentType=DOCKET&querySubmissionGuid=i0ad74013000
001729929984d66570adb&categoryPageUrl=Home%2FDockets&searchId=i0ad74013
000001729929984d66570adb&transitionType=ListViewType&contextData=(sc.Search)
(last visited June 23, 2020), reveals 15 cases filed by plaintiff in state and federal courts.
4
Force sponsored a number of small businesses to research and develop
technology required for building a full-scale Geodesic Dome Phased Array
Antenna. Subsequently, in November 2006, the Air Force awarded a
contract to Ball Aerospace & Technologies Corporation to develop a
Geodesic Dome Phased Array Antenna advanced technology
demonstration. Accordingly, Ball was “to develop, build, and demonstrate
the technological maturity, manufacturing readiness, and mission
effectiveness of a scalable sector” of a Geodesic Dome Phased Array
Antenna. The Ball Advanced Technology Demonstration antenna was the
result of this research and development.
The Ball Advanced Technology Demonstration antenna was designed in
2006–07, manufactured in 2007–08, and installed at Schriever Air Force
Base in Colorado in 2008–09, for testing and demonstration. The actual
demonstration of the Ball Advanced Technology Demonstration antenna
took place between February 2009 and May 2009.
The Ball Advanced Technology Demonstration antenna, which stood
roughly one to two stories high, was not completely constructed to constitute
a full sphere, and was only made up of six flat panels: a single central
pentagonal-shaped panel, surrounded by five outer hexagonal-shaped
panels. . . .
After the demonstration in 2009, the Ball Advanced Technology
Demonstration antenna was disassembled, with one part sent back to Ball
Aerospace for further testing, and after 2012, the Air Force Research
Laboratory did not engage in any activities to develop, manufacture, or test
a Geodesic Dome Phased Array Antenna.
Bondyopadhyay III, 136 Fed. Cl. at 118–20 (internal references omitted). Finding that the
Ball ATD did not infringe upon the ‘134 patent under a literal interpretation, or under the
doctrine of equivalents, Judge Williams stated:
In sum, because the Ball Advanced Technology Demonstration antenna
was incapable of providing hemispheric or greater coverage, it did not
literally infringe the ‘134 patent. Under either test for infringement under the
doctrine of equivalents, the accused device cannot be found as infringing.
Accordingly, Defendant’s motion for summary judgment is GRANTED, and
Plaintiff’s ‘Motion of the Infringement Phase’ is DENIED.
Id. at 124 (capitalization and emphasis in original) (internal citation omitted).
As discussed above, plaintiff in the above-captioned case does not reference a
specific device which allegedly infringed on the ‘134 patent, although plaintiff’s filings in
the above-captioned case mention the previous proceedings in this court. Plaintiff’s
complaint states:
5
The constitutional financial claim has already been recorded with the U.S.
Court of Appeals for the Federal Circuit [Exhibit-6]. It is $100 per hour for
1500 hours per year for 11 years and 23 days, plus administrative and office
cost of $1000 per month for 60 months. The total amount of Constitutional
Financial Claim is $1,719,000.
(alteration, capitalization and emphasis in original). Attached as Exhibit 6 of plaintiff’s
complaint in the above-captioned case is a portion of plaintiff’s briefing before the United
States Court of Appeals for the Federal Circuit in Bondyopadhyay IV.2 Additionally, in
plaintiff’s opposition to defendant’s motion to dismiss, plaintiff references the company
which constructed the Ball ATD, stating that “[t]he U.S. Air force [sic] Research Laboratory
(AFRL) and the contractor Ball Aerospace Corporation have done sub-standard work.
This has already been pointed out during earlier Court proceedings (case 1:14-cv-00147-
MCW).”3
2
An excerpt from the appeal file in the United States Court of Appeals for the Federal
Circuit from Bondyopadhyay IV, which is attached at Exhibit 6 of plaintiff’s complaint in
the above-captioned case, states:
9.0 THE PLAINTIFF INDEPENDENT INVENTOR’S FINANCIAL CLAIM
9.1 PART-A based on exclusive rights for limited times (period
September 18, 2001 through October 11, 2012). The Plaintiff Appellant
independent Inventor was deprived of full time highly specialized Phased
Array Antenna Engineering work on his own invention.
9.2 This PART-A amount is $100 per hour for 1500 hours per year for
eleven (11) years and 23 days.
9.3 PART-B Plaintiff Appellant’s Court cost (US Court of Federal
Claims, period February 2014 through April 2018). This includes clerical,
postal, copying and office costs at their minimum.
9.4 This PART-B amount is $1000 per month for 50 months.
10. This Claim originated from a procurement fraud in the Small
Business Innovation Research (SBIR) program of the U.S. Air Force
managed by U.S. Air Force Research Laboratory (AFRL). Therefore, this
Constitutional Claim should be levied against the budget of the U.S. AFRL.
(capitalization and emphasis in original).
3
The court cannot find any such statement by Judge Williams or by the United States
Court of Appeals for the Federal Circuit which recognizes that the AFRL or Ball Aerospace
Corporation have “done sub-standard work.”
6
Plaintiff’s complaint in the above-captioned case, once again, appears to allege a
Fifth Amendment taking claim, stating that the “Defendant has taken the livelihood of this
Independent Inventor for a prolonged period of eleven years and 23 days and continues
to remain indifferent towards this Constitutional Order for a long time.” (capitalization and
emphasis in original). Plaintiff’s filings with the court in the above-captioned case,
however, do not indicate the exact nature of an alleged event that occurred eleven years
and 23 days prior to plaintiff’s filing of the above-captioned case.
Furthermore, plaintiff appears to allege fraudulent conduct by defendant. Exhibit 5
to plaintiff’s complaint is labeled: “U.S. AIR FORCE AND THE DEPARTMENT OF
DEFENSE ‘HONORS’ FALSE ‘INVENTOR’ OF THE GEODESIC SPHERE PHASED
ARRAY ANETENNA SYSTEM” (capitalization and emphasis in original). Exhibit 5
consists of the following article published on October 11, 2012 in “Air Force Print News
Today”4
AF nominates AFMC, AFSPC civilians for DOD award
By Gloria Kwizera
Air Force Personnel Center Public Affairs
10/11/2012 - JOINT BASE SAN ANTONIO-RANDOLPH, Texas --Two Air
Force civilians have been nominated for the Department of Defense
Distinguished Civilian Service Award.
Dr. Boris Tomasic, Air Force Research Laboratory, Air Force Materiel
Command, and Angelica M. Collazo, 92nd Information Operations
Squadron, Air Force Space Command, will represent the Air Force during
the 57th annual DOD competition, Air Force Personnel Center officials said.
The award is the highest honor given by the Secretary of Defense to career
civilian employees, said Staff Sgt. Leland T. Moseley, AFPC Special
Trophies and Awards section. It is presented annually to a small number of
DOD civilians whose careers reflect exceptional devotion to duty and
significant contributions of broad scope to DOD operational efficiency,
economy, or other improvements.
Tomasic invented and led the development of a revolutionary new antenna
- the Geodesic Dome Phased Array Antenna - for the Air Force satellite
control network. It provides tracking, telemetry and control of nearly all DOD
and National Aeronautics and Space Administration satellites, transitioning
the technology from initial concept to a field ready demonstration levels, He
also provided critical support to Air Combat Command on the Joint Threat
4
AF Nominates AFMC, AFSPC civilians for DOD award, available at,
https://www.af.mil/News/Article-Display/Article/110314/af-nominates-afmc-afspc-
civilians-for-dod-award (last visited June 19, 2020).
7
Emitter, Increment Two Program, developing a system that mimics surface-
to-air missile system radars currently employed worldwide.
Tomasic’s contributions to antenna technology paved the way for Air Force,
Navy and Marine fighter pilots to fly against several emulator systems in
realistic combat training scenarios. Tomasic also contributed to practical
radar and communication system improvements that benefit all DOD forces,
including a field deployable phased array for ballistic missile defense,
assessment of the Army’s Comanche and Black Hawk helicopter antennas,
Space Based Radar system development for the Defense Advanced
Research Projects Agency and development of extremely high frequency
solid state antenna technology that resulted in improved aircraft connectivity
with the military strategic, tactical and relay satellite network..
Collazo has been at the forefront of cutting-edge cyber defense initiatives
critical to the projection of global military power and national defense. She
led the execution of more than $62 million to deploy the first of its kind global
information protection capability, initiating more than 200 major software
changes to a cyber incident handling database. That system is now the
baseline for U.S. Strategic Command’s Joint Computer Emergency
Response Team Database, used by Joint Chiefs of Staff decision-makers
to correlate critical cyber incidents across all services.
Collazo drove establishment of facilities that emulated DOD networks
enabling operators to conduct product and network security assessments.
As a result, her facility was selected as the first-ever site for critical testing
of enterprise-wide solutions to prevent, detect and counter unauthorized
users and actions on DOD networks. She directed 63 system and 25 base
cyber vulnerability assessments, sharing findings with numerous DOD
commanders, system program offices and other joint agencies, enabling
them to remediate thousands of critical system vulnerabilities.
Tomasic and Collazo are authorized to wear the Air Force Recognition
Lapel Pin, Moseley said.
(capitalization and emphasis in original). In plaintiff’s opposition to defendant’s motion to
dismiss, plaintiff also states that defendant committed “acquisition of Innovation fraud
under Title 15 USC section 638(a) and 638 (b).” (capitalization in original).
Defendant moves to dismiss plaintiff’s complaint in its entirety, on multiple grounds,
arguing that this court lacks subject-matter jurisdiction over plaintiff’s claims, and that
plaintiff has failed to state a claim upon which relief can be granted, pursuant to Rules
12(b)(1) and 12(b)(6) (2019) of the Rules of the United States Court of Federal Claims
(RCFC). Defendant states that “it appears there are three potential causes of action in
the complaint: (1) unauthorized patent use by the Government; (2) a ‘taking’ by the
Government of the ‘134 patent; and (3) a fraud claim (or inventorship dispute) against the
8
Government.” (internal references and footnote omitted). Finally, defendant argues that
all of plaintiff’s claims are barred by the statute of limitations. Regarding the alleged
unauthorized patent use, defendant argues that “[a]lthough the complaint does not
identify any particular accused device, the exhibits appended to Plaintiff’s complaint here
and in Bondyopadhyay I make clear that Plaintiff accuses the exact same device of
infringing the exact same patent” in both suits. (capitalization and emphasis in original).
Defendant argues that “both the patent and taking claims have previously been
adjudicated against Plaintiff, such that these causes of action fail on the grounds of res
judicata.” Defendant argues that “neither the patent nor the taking claims can be plausibly
pled because the ‘134 patent has been construed in a manner that prohibits a finding of
infringement or taking by the Government’s activities.” Defendant also argues that the
court “lacks any semblance of subject-matter jurisdiction over Plaintiff’s taking and fraud
claims.”
DISCUSSION
The court recognizes that plaintiff is proceeding pro se. When determining whether
a complaint filed by a pro se plaintiff is sufficient to invoke review by a court, a pro se
plaintiff is entitled to a more liberal construction of the pro se plaintiff’s pleadings. See
Haines v. Kerner, 404 U.S. 519, 520-21 (requiring that allegations contained in a pro se
complaint be held to “less stringent standards than formal pleadings drafted by lawyers”),
reh’g denied, 405 U.S. 948 (1972); see also Erickson v. Pardus, 551 U.S. 89, 94 (2007);
Hughes v. Rowe, 449 U.S. 5, 9-10 (1980); Estelle v. Gamble, 429 U.S. 97, 106 (1976),
reh’g denied, 429 U.S. 1066 (1977); Matthews v. United States, 750 F.3d 1320, 1322
(Fed. Cir. 2014); Diamond v. United States, 115 Fed. Cl. 516, 524 (2014), aff’d, 603 F.
App’x 947 (Fed. Cir.), cert. denied, 575 U.S. 985 (2015). However, “there is no ‘duty [on
the part] of the trial court . . . to create a claim which [plaintiff] has not spelled out in his
[or her] pleading . . . .’” Lengen v. United States, 100 Fed. Cl. 317, 328 (2011) (alterations
in original) (quoting Scogin v. United States, 33 Fed. Cl. 285, 293 (1995) (quoting Clark
v. Nat’l Travelers Life Ins. Co., 518 F.2d 1167, 1169 (6th Cir. 1975))); see also Bussie v.
United States, 96 Fed. Cl. 89, 94, aff’d, 443 F. App’x 542 (Fed. Cir. 2011); Minehan v.
United States, 75 Fed. Cl. 249, 253 (2007). “While a pro se plaintiff is held to a less
stringent standard than that of a plaintiff represented by an attorney, the pro se plaintiff,
nevertheless, bears the burden of establishing the Court’s jurisdiction by a preponderance
of the evidence.” Riles v. United States, 93 Fed. Cl. 163, 165 (2010) (citing Hughes v.
Rowe, 449 U.S. at 9; and Taylor v. United States, 303 F.3d 1357, 1359 (Fed. Cir.), reh’g
and reh’g en banc denied (Fed. Cir. 2002)); see also Pauly v. United States, 142 Fed. Cl.
157 (2019); Golden v. United States, 129 Fed. Cl. 630, 637 (2016); Shelkofsky v. United
States, 119 Fed. Cl. 133, 139 (2014) (“[W]hile the court may excuse ambiguities in a pro
se plaintiff’s complaint, the court ‘does not excuse [a complaint’s] failures.’” (quoting
Henke v. United States, 60 F.3d 795, 799 (Fed. Cir. 1995))); Harris v. United States, 113
Fed. Cl. 290, 292 (2013) (“Although plaintiff’s pleadings are held to a less stringent
standard, such leniency ‘with respect to mere formalities does not relieve the burden to
meet jurisdictional requirements.’” (quoting Minehan v. United States, 75 Fed. Cl. at 253)).
9
“Determination of jurisdiction starts with the complaint, which must be well-pleaded
in that it must state the necessary elements of the plaintiff’s claim, independent of any
defense that may be interposed.” Holley v. United States, 124 F.3d 1462, 1465 (Fed. Cir.)
(citing Franchise Tax Bd. v. Constr. Laborers Vacation Trust, 463 U.S. 1 (1983)), reh’g
denied (Fed. Cir. 1997); see also Klamath Tribe Claims Comm. v. United States, 97 Fed.
Cl. 203, 208 (2011); Gonzalez-McCaulley Inv. Grp., Inc. v. United States, 93 Fed. Cl. 710,
713 (2010). A plaintiff need only state in the complaint “a short and plain statement of the
grounds for the court’s jurisdiction,” and “a short and plain statement of the claim showing
that the pleader is entitled to relief.” RCFC 8(a)(1), (2); Fed. R. Civ. P. 8(a)(1), (2) (2019);
see also Ashcroft v. Iqbal, 556 U.S. at 677-78 (citing Bell Atl. Corp. v. Twombly, 550 U.S.
at 555-57, 570). To properly state a claim for relief, “[c]onclusory allegations of law and
unwarranted inferences of fact do not suffice to support a claim.” Bradley v. Chiron Corp.,
136 F.3d 1317, 1322 (Fed. Cir. 1998); see also Am. Bankers Ass’n v. United States, 932
F.3d 1375, 1380 (Fed. Cir. 2019) (“To avoid dismissal under RCFC 12(b)(6), a plaintiff
‘must allege facts “plausibly suggesting (not merely consistent with)” a showing of
entitlement to relief.’” (quoting Acceptance Ins. Cos., Inc. v. United States, 583 F.3d 849,
853 (Fed. Cir. 2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. at 557))). McZeal v.
Sprint Nextel Corp., 501 F.3d 1354, 1363 n.9 (Fed. Cir. 2007) (Dyk, J., concurring in part,
dissenting in part) (quoting C. W RIGHT AND A. MILLER, FEDERAL PRACTICE AND PROCEDURE
§ 1286 (3d ed. 2004)); Briscoe v. LaHue, 663 F.2d 713, 723 (7th Cir. 1981) (“[C]onclusory
allegations unsupported by any factual assertions will not withstand a motion to dismiss.”),
aff’d, 460 U.S. 325 (1983). “A plaintiff’s factual allegations must ‘raise a right to relief
above the speculative level’ and cross ‘the line from conceivable to plausible.’” Three S
Consulting v. United States, 104 Fed. Cl. 510, 523 (2012) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. at 555), aff’d, 562 F. App’x 964 (Fed. Cir.), reh’g denied (Fed. Cir.
2014). As stated in Ashcroft v. Iqbal, “[a] pleading that offers ‘labels and conclusions’ or
‘a formulaic recitation of the elements of a cause of action will not do.’ 550 U.S. at 555.
Nor does a complaint suffice if it tenders ‘naked assertion[s]’ devoid of ‘further factual
enhancement.’” Ashcroft v. Iqbal, 556 U.S. at 678 (quoting Bell Atl. Corp. v. Twombly,
550 U.S. at 555).
The United States has waived sovereign immunity over patent infringement claims
against the federal government and its contractors, and has provided the United States
Court of Federal Claims with jurisdiction to hear such claims, under 28 U.S.C. § 1498(a).
Section 1498(a) states, in relevant part:
Whenever an invention described in and covered by a patent of the United
States is used or manufactured by or for the United States without license
of the owner thereof or lawful right to use or manufacture the same, the
owner’s remedy shall be by action against the United States in the United
States Court of Federal Claims for the recovery of his reasonable and entire
compensation for such use and manufacture. . . .
For the purposes of this section, 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
10
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) (2018); see also Golden v. United States, 955 F.3d 981, 986 (Fed.
Cir. 2020) (“28 U.S.C. § 1498(a) permits suits against the United States for its
unauthorized use of a patented invention.”); Zoltek Corp. v. United States, 672 F.3d 1309,
1312 (Fed. Cir. 2012).
Defendant in the above-captioned case asserts that plaintiff’s patent claims have
previously been decided in this court, in favor of the United States, by Judge Williams’
decisions, on the partial motion to dismiss, Bondyopadhyay I, the claims construction,
Bondyopadhyay II, and the motion for summary judgment, Bondyopadhyay III. The United
States Court of Appeals for the Federal Circuit affirmed the lower court’s claim
construction and finding that the Air Force’s Ball ATD did not infringe on the ‘134 patent.
See generally Bondyopadhyay IV, 748 F. App’x at 308. Defendant argues that the
doctrine of res judicata, and more specifically, the doctrine of claim preclusion, bars
plaintiff from bringing his claim of patent infringement again in the above-captioned case.
The doctrine of res judicata “includes the two related concepts of claim preclusion
and issue preclusion.” Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 1323 (Fed.
Cir.), reh’g and reh’g en banc denied (Fed. Cir. 2008); see also Faust v. United States,
101 F.3d 675, 677 (Fed. Cir.), reh’g denied (Fed. Cir.), cert. denied, 520 U.S. 1200 (1997)
(“[W]e note that the term res judicata has been used narrowly to denote ‘claim preclusion’
and more generally to denote either ‘claim preclusion’ or ‘issue preclusion.’” (quoting
Foster v. Hallco Mfg. Co., 947 F.2d 469, 478 (Fed. Cir. 1991))). The United States
Supreme Court has stated:
Under the doctrine of res judicata, a judgment on the merits in a prior suit
bars a second suit involving the same parties or their privies based on the
same cause of action. Under the doctrine of collateral estoppel, on the other
hand, the second action is upon a different cause of action and the judgment
in the prior suit precludes relitigation of issues actually litigated and
necessary to the outcome of the first action.
Parklane Hosiery Co., Inc. v. Shore, 439 U.S. 322, 326 n.5 (1979).
In a recent case, the United States Court of Appeals for the Federal Circuit
described the difference between claim and issue preclusion as follows:
“The doctrine of res judicata involves the related concepts of claim
preclusion and issue preclusion.” Phillips/May Corp. v. United States, 524
F.3d 1264, 1267 (Fed. Cir. 2008). “Issue preclusion operates only as to
issues actually litigated, whereas claim preclusion may operate between the
parties simply by virtue of the final judgment.” Young Engn’rs, Inc. v. U.S.
Int’l Trade Comm’n, 721 F.2d 1305, 1314 (Fed. Cir. 1983).
11
First Mortg. Corp. v. United States, Case No. 19-1798, 2020 WL 3108286, at *4 (Fed. Cir.
June 12, 2020) (ellipses in original).
Regarding claim preclusion, the Federal Circuit in First Mortgage further stated:
Claim preclusion “foreclose[es] any litigation of matters that . . . should have
been advanced in an earlier suit.” Phillips/May Corp., 524 F.3d at 1267(internal quotation marks and citation omitted). “A final judgment on the
merits of an action precludes the parties or their privies from relitigating
issued that were or could have been raised in that action.” Federated Dep’t
Stores, Inc. v. Moitie, 452 U.S. 394, 398, 101 S. Ct. 2424, 69 L. Ed.2d 103(1981) (citing Commissioner v. Sunnen, 333 U.S. 591, 597, 68 S. Ct. 715,
92 L. Ed. 898 (1948) and Cromwell v. Cty. Of Sac, 94 U.S. 351, 352–53, 24
L. Ed. 195 (1877)).
First Mortg. Corp. v. United States, 2020 WL 3108286, at *4 (alteration and ellipses in
original); see also Hallco Mfg. Co., Inc. v. Foster, 256 F.3d 1290, 1294 (Fed. Cir. 2001)
(“The general concept of claim preclusion is that when a final judgment is rendered on
the merits, another action may not be maintained between the parties on the same
‘claim.’” (citing Restatement (Second) of Judgments §§ 18–19)).
“Generally, claim preclusion applies where: ‘(1) the parties are identical or in privity;
(2) the first suit proceeded to a final judgment on the merits; and (3) the second claim is
based on the same set of transactional facts as the first.’” First Mortg. Corp. v. United
States, 2020 WL 3108286, at *4 (quoting Ammex, Inc. v. United States, 334 F.3d 1052,
1055 (Fed. Cir. 2003) (citing Parklane Hosiery Co. v. Shore, 439 U.S. at 326 n.5)). A
Judge of the United States Court of Federal Claims has stated:
[C]laim preclusion applies when there is (i) “a judgment on the merits in a
prior suit;” (ii) “a second suit involving the same parties or their privies;” and
(iii) the second suit is “based on the same cause of action.” Parklane
Hosiery, 439 U.S. at 326 n.5, 99 S. Ct. 645; see also Gillig[ v. Nike, Inc.],
602 F.3d at 1361 [(Fed. Cir. 2010)]; Jet, Inc. v. Sewage Aeration Sys., 223
F.3d 1360, 1362 (Fed. Cir. 2000); Strategic Hous. Finance Corp. of Travis
Cty. v. United States, 87 Fed. Cl. 183, 192 (2009).
Aviation Software, Inc. v. United States, 101 Fed. Cl. 656, 662–63 (2011). Furthermore,
for claim preclusion to apply, “a litigant must have a ‘full and fair opportunity’ to litigate its
case.” Id. at 663 (quoting Poyner v. Murray, 508 U.S. 931, 933 (1993)); see also Kremer
v. Chemical Const. Corp., 456 U.S. 461, 481 n.22 (1982); Pactiv Corp. v. Dow Chemical
Co., 449 F.3d 1227, 1233 (Fed. Cir. 2006).
The related doctrine of issue preclusion, also known as collateral estoppel,
precludes a party from re-litigating an issue that was “litigated and resolved in a valid
court determination essential to the prior judgment.” New Hampshire v. Maine, 532 U.S.
742, 748-49, reh’g denied, 533 U.S. 968 (2001). “Under the judicially-developed doctrine
12
of collateral estoppel, once a court has decided an issue of fact or law necessary to its
judgment, that decision is conclusive in a subsequent suit based on a different cause of
action involving a party to the prior litigation.” United States v. Mendoza, 464 U.S. 154,
158 (1984); see also Allen v. McCurry, 449 U.S. 90, 94 (1980) (“Under collateral estoppel,
once a court has decided an issue of fact or law necessary to its judgment, that decision
may preclude relitigation of the issue in a suit on a different cause of action involving a
party to the first case.”). “When an issue of ultimate fact has once been determined by a
valid and final judgment, that issue cannot again be litigated between the same parties in
any future lawsuit.” Ashe v. Swenson, 397 U.S. 436, 443 (1970). The United States
Supreme Court has explained that issue preclusion guards against “the expense and
vexation attending multiple lawsuits, conserves judicial resources, and fosters reliance on
judicial action by minimizing the possibility of inconsistent decisions.” Montana v. United
States, 440 U.S. 147, 153–54 (1979) (footnote omitted). The Supreme Court also stated:
Issue preclusion bars successive litigation of “an issue of fact or law” that
“is actually litigated and determined by a valid and final judgment, and . . .
is essential to the judgment.” Restatement (Second) of Judgments § 27
(1980) (hereinafter Restatement). If a judgment does not depend on a given
determination, relitigation of that determination is not precluded. Id., § 27,
Comment h.
Bobby v. Bies, 556 U.S. 825, 834 (2009); see also United States v. Mendoza, 464 U.S.
at 158 (“Collateral estoppel, like the related doctrine of res judicata, serves to ‘relieve
parties of the cost and vexation of multiple law-suits, conserve judicial resources, and, by
preventing inconsistent decisions, encourage reliance on adjudication.’” (quoting Allen v.
McCurry, 449 U.S. at 94)).
The United States Court of Appeals for the Federal Circuit has set out four
guidelines for determining whether issue preclusion is appropriate:
Issue preclusion bars a cause of action when four conditions are met: “(1)
the issue is identical to one decided in the first action; (2) the issue was
actually litigated in the first action; (3) resolution of the issue was essential
to a final judgment in the first action; and (4) the plaintiff had a full and fair
opportunity to litigate the issue in the first action.”
Laguna Hermosa Corp. v. United States, 671 F.3d 1284, 1288 (Fed. Cir. 2012) (quoting
In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also Biafora v. United States,
773 F.3d 1326, 1333 (Fed. Cir. 2014); Ga. Power Co. v. United States, 143 Fed. Cl. 743,
748 (2019).
Although plaintiff in the above-captioned case does not expressly mention any
device by name, including the AFRL’s Ball ATD, as having allegedly infringed upon the
‘134 patent, plaintiff’s complaint appears to revolve around the manufacturing of the Ball
ATD, the device which was at the center of the dispute before Judge Williams in
Bondyopadhyay I through Bondyopadhyay III, and the United States Court of Appeals for
13
the Federal Circuit in Bondyopadhyay IV. As discussed above, attached to plaintiff’s
complaint in the current case before the court is the following acquisition timeline:
The above acquisition timeline was also filed by plaintiff in Judge Williams’ case, and
appears to comport with Judge Williams’ description of the Ball ATD. In Bondyopadhyay
III, Judge Williams described the Ball ATD as follows:
There is only one accused device at issue—the Ball Advanced Technology
Demonstration antenna. Since at least 2000, the Air Force Research
Laboratory was interested in the feasibility of a large antenna system called
the Geodesic Dome Phased Array Antenna. As part of this research, the Air
Force sponsored a number of small businesses to research and develop
technology required for building a full-scale Geodesic Dome Phased Array
Antenna. Subsequently, in November 2006, the Air Force awarded a
contract to Ball Aerospace & Technologies Corporation to develop a
Geodesic Dome Phased Array Antenna advanced technology
demonstration. Accordingly, Ball was “to develop, build, and demonstrate
the technological maturity, manufacturing readiness, and mission
effectiveness of a scalable sector” of a Geodesic Dome Phased Array
Antenna. The Ball Advanced Technology Demonstration antenna was the
result of this research and development.
The Ball Advanced Technology Demonstration antenna was designed in
2006–07, manufactured in 2007–08, and installed at Schriever Air Force
Base in Colorado in 2008–09, for testing and demonstration. The actual
14
demonstration of the Ball Advanced Technology Demonstration antenna
took place between February 2009 and May 2009.
The Ball Advanced Technology Demonstration antenna, which stood
roughly one to two stories high, was not completely constructed to constitute
a full sphere, and was only made up of six flat panels: a single central
pentagonal-shaped panel, surrounded by five outer hexagonal-shaped
panels. The figure below depicts the Ball Advanced Technology
Demonstration antenna constructed by the Air Force:
As explained by Dr. Haupt, Defendant’s expert, this figure shows the six
panels that constitute the Ball Advanced Technology Demonstration
antenna array. In Dr. Haupt’s opinion, and, as is obvious from the figure,
these six panels are a very small fraction of the array panels of a full
Geodesic Dome Phased Array Antenna. The Ball Advanced Technology
Demonstration antenna is not a “sphere” as defined by the Court in its claim
construction opinion because it is not greater than a hemisphere, as it only
had six panels.
The picture of the Ball Advanced Technology Demonstration antenna
appended to the Complaint shows these six panels as follows:
15
After the demonstration in 2009, the Ball Advanced Technology
Demonstration antenna was disassembled, with one part sent back to Ball
Aerospace for further testing, and after 2012, the Air Force Research
Laboratory did not engage in any activities to develop, manufacture, or test
a Geodesic Dome Phased Array Antenna.
Bondyopadhyay III, 136 Fed. Cl. at 118–120 (footnotes and internal references omitted).
As noted above, plaintiff’s filings in the current case do not mention the Ball ATD
by name, nor does plaintiff attach to his current filings any of the images, reproduced
above, from Judge Williams’ case, except for the acquisition timeline. Plaintiff’s filings in
the current case, however, do not reference any other device for the court to consider.
Moreover, plaintiff does not refute defendant’s statements in its motion to dismiss
currently before the court, that “[t]he device made pursuant to this Acquisition Timeline is
the Ball Advanced Technology Demonstration antenna,” or that “the exhibits appended
to Plaintiff’s complaint and in Bondyopadhyay I make clear that Plaintiff accuses the exact
16
same device of infringing the exact same patent,” (capitalization and emphasis in
original). Plaintiff’s complaint also makes numerous references to his previous case in
this court, although plaintiff appears to incorrectly conclude that the previous decisions by
Judge Williams and the United States Court of Appeals for the Federal Circuit cut in
plaintiff’s favor because Judge Williams and the Federal Circuit recognized that plaintiff
owns the ‘134 patent. That plaintiff appears to be the owner of the ‘134 patent, however,
does not satisfy the inquiry of whether any device used by the United States infringed on
plaintiff’s ‘134 patent.
As discussed above, in Bondyopadhyay III, Judge Williams found that the Ball ATD
did not infringe upon the ‘134 patent, see Bondyopadhyay III, 136 Fed. Cl. at 124, and in
Bondyopadhyay IV, the United States Court of Appeals for the Federal Circuit upheld her
decision. See Bondyopadhyay IV, 748 F. App’x at 308. Moreover, this was the central
dispute in the plaintiff’s previous case in this court, during part of which Judge Williams
conducted a claim construction hearing and issued a claims construction opinion in 2017.
See Bondyopadhyay II, 129 Fed. Cl. 793. Plaintiff has had “full and fair opportunity to
litigate the issue,” and did litigate the issue now presented in the current case, in the
previous action before Judge Williams. See Poyner v. Murray, 508 U.S. at 933. Therefore,
plaintiff’s claim that the Ball ATD infringed on the ‘134 patent is barred by the doctrine of
res judicata.
Defendant next argues that, to the extent plaintiff states a Fifth Amendment taking
claim, this court lacks subject-matter jurisdiction to hear the claim, also under the doctrine
of res judicata. Defendant alternatively argues that the court lacks jurisdiction over any
patent infringement-based taking claims, even if res judicata does not apply. Plaintiff
failed to address, in the many filings plaintiff submitted in the current case, defendant’s
arguments, raised in its motion to dismiss, the issue of whether plaintiff’s Fifth
Amendment taking claim is properly before the court.
The United States Supreme Court has stated that “[t]he principles of res judicata
apply to questions of jurisdiction as well as to other issues.” Am. Sur. Co. v. Baldwin, 287
U.S. 156, 166 (1932). Judges of the United States Court of Appeals for the Federal Circuit
and the United States Court of Federal Claims also have explained that the principles of
res judicata may apply to questions of jurisdiction. See Amgen Inc. v. United States Int’l
Trade Comm’n, 902 F.2d 1532, 1536 n.5 (Fed. Cir. 1990) (“Dismissals for lack of
jurisdiction may be given res judicata effect as to the jurisdictional issue.”);5 Wagstaff v.
United States, 105 Fed. Cl. 99, 110 (2012) (“As for Plaintiff’s claims of violations of the
Fair Debt Collection Practices Act, both a federal district court and a federal appellate
court have ruled that the United States has not waived its sovereign immunity with respect
to such claims. Accordingly, this jurisdictional issue has already been resolved, and the
5
The court notes that in an unpublished opinion, the United States Court of Appeals for
the Federal Circuit stated that “[i]t is well settled that the principles of res judicata apply
to questions of jurisdiction as well as to other issues.” Citizens Elecs. Co., Ltd. v. OSRAM
GmBH, 225 F. App’x 890, 893 (Fed. Cir. 2007) (citing Am. Sur. Co. v. Baldwin, 287 U.S.
at 166).
17
court is barred from adjudicating these claims under principles of res judicata.” (citing
Wagstaff v. Dep’t of Educ., Case No. 5:05–cv–01245, at 19–22 (W.D.Tex. Feb. 15, 2007;
Wagstaff v. Dep’t. of Educ., 509 F.3d 661, 663–64 (5th Cir. 2007), cert. denied, 554 U.S.
904, reh’g denied, 554 U.S. 942 (2008)); but see Goad v. United States, 46 Fed. Cl. 395,
398, appeal dismissed, 243 F.3d 553 (Fed. Cir.), cert. denied, 531 U.S. 1015 (2000) (“[I]f
the second-filed claim contains new information which cures the jurisdictional defect fatal
to the first-filed suit, then the second-filed suit presents a different jurisdictional issue and
res judicata does not apply.”). Judges of the United States Court of Federal Claims also
have indicated that, under the related doctrine of issue preclusion, or collateral estoppel,
this court may be precluded from exercising subject-matter jurisdiction in an ongoing
action when the same action, based on the same facts, has been previously dismissed
on jurisdictional grounds and the jurisdictional flaw that necessitated dismissal on the first
suit has not been cured. See Lowe v. United States, 79 Fed. Cl. at 229 (“It is beyond cavil
that the issue of collateral estoppel goes to subject matter jurisdiction, and may be
pleaded as a 12(b)(1) motion.” (citing Schwasinger v. United States, 49 F. App’x 888 (Fed.
Cir. 2002) (affirming lower court’s dismissal of a plaintiff’s third complaint on the basis of
collateral estoppel because plaintiff’s two prior complaints were identical to the third
complaint and had been dismissed for lack of subject matter jurisdiction)).
As discussed above, Judge Williams’ first decision in plaintiff’s patent infringement
case previously filed in this court was the 2015 grant of defendant’s partial motion to
dismiss in Bondyopadhyay I, which dismissed plaintiff’s Fifth Amendment taking claim on
the ground that the court lacked subject-matter jurisdiction. See Bondyopadhyay I, 2015
WL 1311726, at *6 (“To the extent Plaintiff’s claim of patent infringement is brought as a
Fifth Amendment taking, the claim is dismissed.”). Judge Williams explained:
Defendant correctly asserts that a claim for patent infringement against the
Government is considered under § 1498 rather than the Fifth Amendment.
Demodulation[, Inc. v. United States], 118 Fed. Cl. [69,] at 73 [(2014)]
(“Count IV is dismissed to the extent that Plaintiff attempts to fashion its
patent infringement claim as a Fifth Amendment takings claim. A patent
infringement claim is a tort claim and therefore is excluded by the Tucker
Act’s prohibition on ‘cases sounding in tort.’ The only way to bring a patent
infringement claim in this Court is to assert the claim under 28 U.S.C.
§ 1498(a) . . . .”); Keehn v. United States, 110 Fed. Cl. 306, 355 (2013)
(“[P]laintiff’s Fifth Amendment takings theory is without merit. It is 28 U.S.C.
§ 1498(a), not the Fifth Amendment to the United States Constitution, that
provides the waiver of sovereign immunity that enables a plaintiff to file suit
against the government for patent infringement.”). To the extent Plaintiff’s
claim of patent infringement is brought as a Fifth Amendment taking, the
claim is dismissed.
Bondyopadhyay I, 2015 WL 1311726, at *6 (final alteration in original). As addressed by
Judge Williams, the case law is clear that a patent infringement claim such as plaintiff’s
is not to be treated as a Fifth Amendment taking claim. See Golden v. United States, 955
F.3d at 986 (“We first consider the dismissal of Golden’s patent infringement-based
18
takings claims. The Claims Court held that it did not have jurisdiction over these claims
pursuant to 28 U.S.C. § 1491, because patent infringement claims against the
government are to be pursued exclusively under 28 U.S.C. § 1498. We agree.” (internal
reference omitted)). Therefore, to the extent plaintiff alleges a taking claim based on the
alleged infringement of the ‘134 patent, this court lacks jurisdiction to hear such a claim
as a Fifth Amendment taking claim.
Defendant also addresses a remaining claim by plaintiff, that a “possible reading
of Plaintiff’s complaint is that Plaintiff believes that the Government has committed fraud
by identifying someone other than Plaintiff as inventor of what Plaintiff believes he
invented.” (emphasis in original). In Exhibit 5 of plaintiff’s complaint, plaintiff attaches an
article published by the Air Force Personnel Center Public Affairs, on October 11, 2012,
quoted above, regarding the nomination of two Air Force civilians for the “Department of
Defense Distinguished Civilian Service Award.” The article states that one of the civilians
employed by the AFRL, Dr. Boris Tomasic, “invented and led the development of a
revolutionary new antenna - the Geodesic Dome Phased Array Antenna - for the Air Force
satellite control network.” To the extent that plaintiff alleges that the United States
committed a fraud, or made fraudulent statements in this exhibit, this court lacks subject-
matter to adjudicate the claim, as they are tort claims. The Tucker Act expressly excludes
tort claims, including those committed by federal officials, from the jurisdiction of the
United States Court of Federal Claims. See 28 U.S.C. § 1491(a) (“The United States
Court of Federal Claims shall have 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.”);
see also Keene Corp. v. United States, 508 U.S. 200, 214 (1993); Rick’s Mushroom Serv.,
Inc. v. United States, 521 F.3d 1338, 1343 (Fed. Cir. 2008); Alves v. United States, 133
F.3d 1454, 1459 (Fed. Cir. 1998); Brown v. United States, 105 F.3d 621, 623 (Fed. Cir.)
(“Because Brown and Darnell’s complaints for ‘fraudulent assessment[s]’ are grounded
upon fraud, which is a tort, the court lacks jurisdiction over those claims.”), reh’g denied
(Fed. Cir. 1997); Golden Pac. Bancorp v. United States, 15 F.3d 1066, 1070 n.8 (Fed.
Cir.), reh’g denied, en banc suggestion declined (Fed. Cir.), cert. denied, 513 U.S. 961(1994); Rohland v. United States, 136 Fed. Cl. 55, 65–66 (2018) (“Claims of fraud,
conspiracy, harassment, breach of fiduciary duty, negligence, trespass, and false
imprisonment sound in tort.”); Hampel v. United States, 97 Fed. Cl. 235, 238 (2011);
Jumah v. United States, 90 Fed. Cl. 603, 607 (2009) (“[I]t is well-established that the Court
of Federal Claims does not have jurisdiction over tort claims. Here, Mr. Jumah seeks
damages for ‘[n]eglect, [m]isrepresentation, [f]alse [i]mprisonment, [c]onspiracy,
[i]ntentional [i]nfliction of emotional [d]istress, [i]nvasion of [p]rivacy, [n]egligence and
[t]respass and [p]unitive [d]amages.’ These are all claims sounding in tort.” (internal
citation omitted; all brackets in original)), aff’d, 385 F. App’x 987 (Fed. Cir. 2010);
Woodson v. United States, 89 Fed. Cl. 640, 650 (2009); Fullard v. United States, 77 Fed.
Cl. 226, 230 (2007) (“This court lacks jurisdiction over plaintiff’s conspiracy claim because
the Tucker Act specifically states that the Court of Federal Claims does not have
jurisdiction over claims ‘sounding in tort.’”); Edelmann v. United States, 76 Fed. Cl. 376,
379–80 (2007) (“This Court ‘does not have jurisdiction over claims that defendant
19
engaged in negligent, fraudulent, or other wrongful conduct when discharging its official
duties’ . . . [and] Plaintiffs’ claims of fraud, misrepresentation, slander, perjury,
harassment, intimidation, coercion, theft, and defamation, and their claims that the
Government deprived Ms. Edelmann of her right to a fair trial, are tort claims.” (quoting
Cottrell v. United States, 42 Fed. Cl. 144, 149 (1998)); McCullough v. United States, 76
Fed. Cl. 1, 3 (2006), appeal dismissed, 236 F. App’x 615 (Fed. Cir.), reh’g denied (Fed.
Cir.), cert. denied, 552 U.S. 1050 (2007); Agee v. United States, 72 Fed. Cl. 284, 290
(2006); Zhengxing v. United States, 71 Fed. Cl. 732, 739, aff’d, 204 F. App’x 885 (Fed.
Cir.), reh’g denied (Fed. Cir. 2006). Therefore, plaintiff’s allegations of fraudulent or false
conduct on the part of the defendant are claims which sound in tort, and, accordingly,
must be dismissed for lack of jurisdiction in this court.
Finally, defendant alternatively argues that all of plaintiff’s claims are barred by the
statute of limitations. Suits brought against the United States in the United States Court
of Federal Claims are generally subject to a six-year statute of limitations. According to
the statute at 28 U.S.C. § 2501 (2018):
Every claim of which the United States Court of Federal Claims has
jurisdiction shall be barred unless the petition thereon is filed within six years
after such claim first accrues. . . . A petition on the claim of a person under
legal disability or beyond the seas at the time the claim accrues may be filed
within three years after the disability ceases.
Id. “The six-year statute of limitations set forth in section 2501 is a jurisdictional
requirement for a suit in the Court of Federal Claims.” John R. Sand & Gravel Co. v.
United States, 457 F.3d 1345, 1354 (Fed. Cir.), reh’g en banc denied (Fed. Cir. 2006),
aff'd, 552 U.S. 130 (2008).
For suits involving patent infringement against the United States, however, the time
limitation to file suit against the United States for patent infringement can be tolled up to
six years from the time an administrative claim is filed to when the administrative claim is
denied, pursuant to 35 U.S.C. § 286 (2018). The statute at 35 U.S.C. § 286 states:
Except as otherwise provided by law, no recovery shall be had for any
infringement committed more than six years prior to the filing of the
complaint or counterclaim for infringement in the action.
In the case of claims against the United States Government for use of a
patented invention, the period before bringing suit, up to six years, between
the date of receipt of a written claim for compensation by the department or
agency of the Government having authority to settle such claim, and the
date of mailing by the Government of a notice to the claimant that his claim
has been denied shall not be counted as part of the period referred to in the
preceding paragraph.
Id. Although the statute at 35 U.S.C. § 286 does not reference this court’s six-year statute
of limitations in 28 U.S.C. § 2501, judges of this court have found that “[t]he six-year
20
limitations period established by 28 U.S.C. § 2501 is modified by 35 U.S.C. § 286.”
Unitrac, LLC v. United States, 113 Fed. Cl. 156, 164 (2013), aff’d, 589 F. App’x 990 (Fed.
Cir. 2015) (citing Dow Chemical Co. v. United States, 32 Fed. Cl. 11, 20, aff’d in part,
rev’d in part on other grounds, 226 F.3d 1334 (Fed. Cir. 2004)); see also Filler v. United
States, Case No. 19-173, 2020 WL 2312244, at *6 (Fed. Cl. May 8, 2020) (“In limited
circumstances, the statute of limitations for claims of infringement against the United
States government may be tolled where the patentee files an administrative claim.” (citing
35 U.S.C. § 286)); Ideal Innovations, Inc. v. United States, 139 Fed. Cl. 737, 743 (2018)
(“Section 286 allows for the tolling of the § 2501 limitations period for patent infringement
claims while a validly filed administrative claim is being brought.”).
A patent infringement claim against the United States accrues when the accused
device is “‘first available for use, and it is when the use occurs that a license is considered
to have been taken.’” Unitrac, LLC v. United States, 113 Fed. Cl. at 160 (quoting Decca
Ltd. v. United States, 544 F.2d 1070, 1082, 210 Ct. Cl. 546, 567 (1980))); see also Filler
v. United States, 2020 WL 2312244, at *5; Floyd v. United States, 125 Fed. Cl. 183, 189
(2016). Furthermore, “[a]lleged ongoing infringement does not extend or restart the
limitations period. Rather, once the device is available for use, the license is taken, the
patent owner’s cause of action accrues, and the patent owner has six years to bring its
case.” Ross-Himes Designs, Inc. v. United States, 139 Fed. Cl. 444, 459 (2018) (citing
Starobin v. United States, 662 F.2d 747, 749, 229 Ct. Cl. 67, 70 (1982)); see also Filler v.
United States, 2020 WL 2312244, at *5.6 In Starobin, the United States Court of Claims,
the predecessor court to this court, stated:
[e]ach device, i.e., each individual member of the universe of infringing
devices . . . can be taken only once in its lifetime, and if that taking occurs
prior to the six-year period which immediately precedes the filing of the
lawsuit in the Court of Claims, then recovery as to that particular device is
barred forever by 28 U.S.C. § 2501.
Starobin v. United States, 662 F.2d at 749–50 (footnote omitted).
As discussed above, plaintiff’s patent infringement claim in the above-captioned
case fails under the doctrine of res judicata. But regardless, the statutes at 28 U.S.C.
§ 2501 and 35 U.S.C. § 286 provide that plaintiff’s patent infringement claim was filed
outside of the applicable statute of limitations in which to file. Plaintiff in the above-
captioned case filed an administrative claim with the Judge Advocate General of the
6
The court notes that, in an unpublished decision in 2017, the United States Court of
Appeals for the Federal Circuit stated that “the jurisdictional clock for a § 1498 action
begins to run when the government first uses the claimed invention without authorization
and that specific use is not considered continuous in nature for jurisdictional purposes.”
Sacchetti v. United States, 711 F. App’x 979 (Fed. Cir. 2017) (citing Starobin v. United
States, 662 F.2d at 750; and also citing Regent Jack Mfg. Co. v. United States, 337 F.2d
649, 651, 167 Ct. Cl. 815, 817 (1964); Hyde v. United States, 336 F. App’x 996, 998 (Fed.
Cir. 2009); Bissell v. United States, 41 F. App’x 414, 416 (Fed. Cir. 2002)).
21
United States Air Force on June 17, 2002, which was denied 44 days later, on July 30,
2002. In order for plaintiff’s infringement claim to be timely in this court under 28 U.S.C.
§ 2501 and 38 U.S.C. § 286, plaintiff’s claim must have been filed within six years and 44
days from when plaintiff’s claim accrued, which, as discussed above, occurs “‘when the
accused [instrumentality] is first available for use.’” Floyd v. United States, 125 Fed. Cl.
at 189 (alteration in original) (quoting Unitrac, LLC v. United States, 113 Fed. Cl. at 160)).
Neither party in the above-captioned case states when, if ever, the Ball ATD was first
available for use. Judge Williams stated in Bondyopadhyay III, however, that “the actual
demonstration of the Ball Advanced Technology Demonstration antenna took place
between February 2009 and May 2009.” Bondyopadhyay III, 136 Fed. Cl. at 119. Even
taking the later, May 2009 date of demonstration of the Ball ATD as the time the Ball ATD
was first available for use, plaintiff would have had to file the current case within six years
and 44 days of May 2009, i.e., July 2015.
Judge Williams also stated in Bondyopadhyay III that “after 2012, the Air Force
Research Laboratory did not engage in any activities to develop, manufacture, or test a
Geodesic Dome Phased Array Antenna.” Bondyopadhyay III, 136 Fed. Cl. at 120. Even
if this court took the first day “after 2012,” i.e., January 1, 2013, as the date in which
plaintiff’s claims accrued, which is later than any violation plaintiff alleges to have occurred
in this case, plaintiff would have had to file this case on or before February 14, 2019 in
order to be timely. Therefore, under any plausible formulation of the claims in plaintiff’s
complaint, the current case, which was filed on November 27, 2019, was not filed within
the applicable statute of limitations pursuant to 28 U.S.C. § 2501 and 35 U.S.C. § 286.
CONCLUSION
Plaintiff’s allegations in the above-captioned case are often confused and miss the
mark, even allowing plaintiff every benefit of interpretation, given plaintiff’s pro se status.
Plaintiff failed to effectively or directly respond to a number of the dispositive legal issues
raised in defendant’s motion to dismiss, although plaintiff filed frequent, unresponsive
documents. Plaintiff instead opted, over and over again, to reiterate his assertion that he
is the owner of the ‘134 patent, without addressing whether infringement actually
occurred. Moreover, plaintiff did not offer any evidence or argument as to why plaintiff’s
current case for patent infringement against the United States is not materially identical
to the patent infringement claims at issue in plaintiff’s previous case in this court, or why
his current case is within the applicable statute of limitations. For all these reasons, as
discussed above, defendant’s motion to dismiss is GRANTED, and plaintiff’s complaint is
DISMISSED, with prejudice. The Clerk shall enter JUDGMENT consistent with this
Opinion.
IT IS SO ORDERED.
s/Marian Blank Horn
MARIAN BLANK HORN
Judge
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