Golden v. United States

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FlLED
MAR 29 2018

U. S COURT OF
FEDERAL CLA||V|S

In the United States Court of Federal Claims

No. 13- 307C
Filed: March 29, 2018

****************$$*$$****$$*$$$$$****

LARRY GOLDEN,
Plaintiff, pro se,

v.

THE UNITED STATES,

Defendant.

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Larry Golden, Greenvil]e, South Carolina, pro se.

Nicholas Jae-Ryoung-Kim, United States Department of Justice, Civil Division, Washington,

D.C., Counsel for the Govemment.

MEM()RANDUM OPINION AND ORDER GRANTING-IN-PART AND
DENYING-IN-PART THE GOVERNMENT’S MOTION FOR PARTIAL DISMISSAL

BRADEN, ChiefJudge.

45 C.F.R. § 75.435(h) (Uniform
Administrative Requirements);

48 C.F.R. § 2.101(b) (Federal Acquisition
Regulations Defmitions);

28 U.S.C. §§ 1491(a) (Tucker Act
Jurisdiction), 1498(3.) (Patent
Infringement Jurisdiction), 1927
(Liability for Excessive Costs);

31 U.S.C. §§ 6303 (Using Procurement
Contracts), 6304 (Using Grant
Agreements), 6305 (Using
Cooperative Agreements);

35 U.S.C. §§ 102 (Novelty), 103
(Obviousness), 11 1(a),(b)
(Application for Patent), 120 (Benef`lt
of Earlier Filing Date), 251 (Reissue
of Defective Patents), 252 (Effect of
Reissue);

Manual of Patent Examining Procedure
(9th ed. 2015); and

Rule of the Unjted States Court of
Federal Claims 12(b)(1)
(Jurisdiction), 12(b)(6) (Failure to
State a Claim), 12(h)(3) (Lack of
Subject-Matter Jurisd_iction), 15(a)
(Amendments Before Trial), 41 (b)
(Dismissal of Actions), 56(€), (f)
(Summary Judgment).

To facilitate review of this Memorandum Opim'on And Order, the coul“£ has provided the
following outline.

I. RELEVANT FACTUAL BACKGROUND.
A. The Prosecution History Of The Relevant United States Patent Applications.
B. National Science Foundation Grants And Cooperative Agreements.
C. National Institutes Of Health Grants.

II. PROCEDURAL HISTORY.

III. STANDARD OF REVIEW.
A. Jurisdiction.
B. Stanclard Of Review For A Motion To Dismiss Under RCFC 12(b)(1).
C. Standard Of Review For A Motion To Dismiss Under RCFC 12(b)(6).
D. Standard Of Review For Pro Se Litigants.

IV. DISCUSSION.
A. Whether Certain Patent Infringement Allegations 111 The August 10, 2017 Fifth

Amended Complaint Should Be Dismissed Under RCFC 12(b)(1) And 12(`0)(6).

1. Patent Infringement Allegations 111 The August 10, 2017 Fifth Amendod
Complaint.

2. The Govemment’$ Argument.

3. Plaintiff’ 5 Response And Motion For Leave To Fiie A Motion For
Summary Judgment.

4. The Govemrnent’$ Reply And Opposition To Plaintiff’ s Motion For Leave
To File A Motion For Summary Judgment.

5. Plaintiff’ S Reply.

6. The Court’s Resolution.
a. Governing Precedent.
b. Patent Infringement Allegations Concemiug National Science

Foundation Gra.nts And Cooperative Agreements Must Be
Dismissed Under RCFC 12(b)(1).
i. Regarding National Science Foundation Grants.
ii. Regarding National Science Foundation Cooperative
Agreements.

c. Patent lnfringement Allegations Conceming National Institutes Of
Health Grants Must Be Dismissed Under RCFC 12(b)(1).

d. Patent lnfringement Allegations Conceming The Govemment’$
Alleged Use Of “Smartphones And Other Consumer Devices”
Must Be Dismissed Under RCFC 12(b)(1) And 12(b)(6).

V.

CONCLUSION.

Patent Infringement Allegations Concerning Broad Agency
Announcements Must Be Disrnissed Under RCFC 12(b)(6).
Patent Infringement Allegations Concerning The ’033 Patent Must
Be Dismissed Under RCFC 12(b)(1).

Patent lnfringement Allegations Concerning UniSSued Patent
App1ications And Pre~lssuance Use Or Manufacture Must Be
Dismissed Under RCFC 12(b)(1).

Patent lnfringement Allegations Concerning The ’761, ’280, And
’189 Patents Must Be Dismissed Under RCFC 12(b)(6).

I. RELEVANT FACTUAL BACKGROUN]).l
A. The Prosecution History Of The Relevant United States Patent Applications.

On April 5, 2006, Larry Golden filed U.S. Patent Application No. 11/397,118 (the “’ 1 18
Application”), entitled “Multi Sensor Detection And Lock Disabling System,” With the United
States Patent and Trademari<: Office (the “USPTO”).2 2/12/ 16 Am. Compl. Ex. B. The ’118
Application “pertain[ed] to anti-terrorist detection and prevention systems, and more particularly
pertain[ed] to a disabling lock mechanism combined With a chemical/biological/radiological
detection system for use With products grouped together by similar characteristics in order to
prevent unauthorized entry, contamination[,] and terrorist activity.” 2/12/ 16 Am. Compl. EX. B.

On June 6, 2008, Mr. Golden filed a continuation~in~part3 of the ’1 18 Application, U.S.
Patent Application No. 12/155,573 (the “’573 Application”). 2/ 12/ 16 Am. Compl. EX. C.

On June 10, 2008, the USPTO issued the ’1 18 Application, as U.S. Patent No. 7,385,497
(the “’497 Patent”). 2/12/ 16 Arn. Compl. EX. B.

l The relevant facts discussed herein Were derived from: exhibits attached to the February
12, 2016 Amended Complaint (“2/ 12/ 16 Am. Cornpl. Ex. A_I”); the August 10, 2017 Fifth
Amended Complaint (“8/ 10/ 17 Am. Compl.”); and exhibits attached to the Governrnent’s October
20, 2017 Motion For Partial Disrnissal (“10/20/ 17 Gov’t Mot. Ex. 1~22”). See Moyer v. Unifed
States, 190 F.3d 1314, 1318 (Fed. Cir. 1999) (“Fact~finding is proper When considering a
motion to dismiss Where the jurisdictional facts in the complaint . . . are challenged.”); see also
Ferrez`ro v. United States, 350 F.3d 1318, 1324 (Fed. Cir. 2003) (the trial court “may Weigh
relevant evidence When it considers a motion to dismiss that challenges the truth of jurisdictional
facts alleged in a complaint”).

z The examination of a patent application at the USPTO

begins With the applicant filing the application itself. . . . [T]his application can be
one of two basic types. The usual course is to file a regular application[, i,e., a
nonprovisional application,] under [35 U.S.C. §] lll(a). The statute has
been . . . amended, however, to permit the filing of a provisional application as set
out in [35 U.S.C. §] 111(b). This latter form of application is not itself subject to
examination, although it can be followed by a regular application Within a year.
The provisional application is in the nature of a domestic priority document

R. CARL MoY, MoY’s WALKER oN PATENTS § 3 :3 (4th ed. 2003).

3 “A continuation-in-part is an application filed during the lifetime of an earlier
nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional
application and adding matter not disclosed in the said earlier nonprovisional application.”
MANUAL oF PATENT EXAMIN:NG PROCEDURE (“MPEP”) § 201.08 (9th ed. 2015).

On Decernber 22, 2009, the USPTO issued the ’573 Application, as U.S. Patent No.
7,636,033 (the “’033 Patent”). 2/12/16 Am. Cornpl. EX. C.

On January 20, 2010, Mr. Golden filed a continuation4 of the ’573 Application, U.S. Patent
Application No. 12/657,356 (the “’356 Application”). 2/12/16 Am. Compl. Ex. D.

On May 27, 2010, Mr. Golden filed a continuation of the ’356 Application, U.S. Patent
Application No. 12/802,001 (the “’001 Application”). 2/12/16 Am. Cornpl. EX. E.

On March 31, 201 1, Mr. Golden filed a reissue application5 of the ’033 Patent, U.S. Reissue
Appiication No. 13/065,837 (the “’837 Application”). 2/12/16 Am. Compl. EX. G.

On September 9, 2011, Mr. Golden filed a second reissue application of the ’033 Patent,
U.S. Reissue Application No. 13/199,853 (the “’853 Application”). 2/12/16 Am. Cornpl. Ex. H.

On November 3, 2011, Mr. Golden filed a divisional application6 of the ’001 Application,
U.S. Patent Application No. 13/288,065 (the “’065 Application”). 2/12/16 Am. Compl. Ex. F.

On January 31, 2012, the USPTO issued the ’3 56 Application, as U.S. Patent No. 8,106,752
(the “’752 Patent”). 2/12/16 Am. Compl. EX. D.

4 “A continuation application is an application for the invention(s) disclosed in a prior-filed
copending nonprovisional application . . . The disclosure presented in the continuation must not
include any subject matter which Would constitute new matter if submitted as an amendment to
the parent application.” MPEP § 201.07.

Although Mr. Golden filed the ’356 Application as a “continuation” of the ’573
Application, the ’356 Application was filed after issuance of the ’573 Application, i.e., when the
’573 Application Was no longer pending See 35 U.S.C. § 120 (“An application for patent for an
invention disclosed . . . in an application previously filed in the United States, . . . shall have the
same effect, as to such invention, as though filed on the date of the prior application, if filed before
the patenting or abandonment of or termination of proceedings on the first application or on an
application similarly entitled to the benefit of the filing date of the first application[.]” (emphasis
added)); See also MPEP § 201.07.

5 Defective patents may be corrected by “reissue.” See 35 U.S.C. § 251(a) (“Whenever
any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a
defective specification or drawing, or by reason 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
of the fee required by law, reissue the patent for the invention disclosed in the original patent, and
in accordance with a new and amended application, for the unexpired part of the term of the
original patent.”).

6 A divisional application is “[a] later application for an independent or distinct invention,
carved out of a nonprovisional application . . . disclosing and claiming only subject matter
disclosed in the earlier or parent application[.]” MPEP § 201.06.

i
|
1
]
§

On December 18, 2012, the USPTO issued the ’001 Application, as U.S. Patent No.
8,334,761 (the “’761 Patent”). 2/12/16 Arn. Compl. Ex. E.

On January 1, 2013, the USPTO issued the ’837 Application, as U.S. Reissue Patent No.
RE43,891 (the “’891 Patent”). 2/12/ 16 Am. Compl. EX. G.

On February 12, 2013, the USPTO issued the ’853 Application, as U.S. Reissue Patent No.
RE43,990 (the “’990 Patent”). 2/12/ 16 Am. Compl. Ex. H.

On Septelnber 9, 2013, Mr. Golden filed a continuation of the ’065 Applieation, U.S. Patent
Application No. 14/021,693 (the “’693 Application”). 2/12/ 16 Am. Compl. EX. 1.

On September 10, 2013, the USPTO issued the ’065 Application, as U.S. Patent No.
8,531,280 (the “’280 Patent”). 2/12/16 Am. Compl. Ex. F.

On July 23, 2015, Mr. Golden filed a continuation of the ’693 Application, U.S. Patent
Application No. 14f806,988 (the “’988 Application). 8/10/17 Am. Compl. 1[ 36; see also U.S.
Patent No. 9,589,439.

On August 4, 2015, the USPTO issued the ’693 Application, as U.S. Patent No. 9,096,189
(the “’189 Patent”). 2/12/16 Am. Compl. EX. I.

On March 6, 2017, Mr. Golden filed a continuation of the ’988 Application, U.S. Patent
Application No. 15/530,839 (the “’839 Application”). 8/10/17 Am. Compl. il 3.

On March 7, 2017, the USPTO issued the ’988 Application, as U.S. Patent No. 9,589,439
(the “’439 Patent”). 8/10/ 17 Am. Compl. jj 36; see also ’439 Patent.

On June 29, 20l7, the USPTO published the ’839 Application, as U.S. Publication No.
2017/0186259. 8/10/17 Arn. Compl. 11 3.

As a result of the aforementioned USPTO actions, Mr. Golden became the “sole owner of
the entire right, title, and interest in and to” the ’497, ’033, ’752, ’761, ’891, ’990, ’280, ’189, and
’439 Patents, as well as the ’839 Application. 8/10/17 Am. Compl. 11 38; see also 2/12/ 16 Am.
Compl. EX. Bwl.

The following Court Exhibit A shows the order in which each of the aforementioned patent
applications was filed by Mr. Golden and issued by the USPTO.

The ’118 Application
`__ (Filed: 4/5/2006)

The ’573 Application
(Filed: 6/6/2008)

COURT EXHIBIT A

W

The ’497 Patent
(Issued: 6/10/2008)

The ’356 Application
(Filed: 1/20/2010)

The ’033 Patent

(Issued:12/22/2009)

The ’001 Application

(Fn@d; 5/27/2010)

The ’065 Application
(Filed: 11/3/2011)

-i§ (Fiied; 3/31/2011)

The ’837 Application

The ’853 Application

The ’752 Patent
(Issued: 1/31/2012)

(Fiied: 9/9/2011)

The ’761 Patent

(Issued: 12/18/2012)

The ’891 Patent
(lssued: 1/1/2013)

The ’693 Application

The ’990 Patent

(13511@¢1:2/12/2013)

(Filed: 9/9/2013)

The ’988 Application
(Filed: 7/23/2015)

The ’280 Patent

-j;j (13511@<:1:9/10/2013)

(Filed: 3/6/2017)

The ’189 Patent

The ’839 Application

(Issued: 8/4/2015)

' The ’439 Patent
(lssued: 3/7/2017) :_::`

7

B. National Science Foundation Grants And Cooperative Agreements.

ln July 2004, the National Science Foundation (the “NSF”)7 issued “Cooperative
Agreement Financial & Adrninistrative Terms and Conditions” (the “2004 CA-FATCS”), to advise
recipients that the “NSF cannot assume any liability for accidents, illnesses, injuries, or claims
arising out of, or related to, any activities supported by an award or for unauthorized use of
patented or copyrighted materials.” 10/20/ 17 Gov’t Mot. EX. 15 (Article 38).

On Septernber 1, 2004, the NSF awarded Cooperative Agreement No. EEC-0425914,
“lntegrated Nanomechanical Systems (COINS),” to the University of California, Berkeley (“UC
Berkeley”), incorporating the 2004 CA-FATCs. 10/20/ 17 Gov’t Mot. Ex. 20.

On July l, 2007, the NSF issued “Cooperative Agreement Financial & Administrative
Terrns and Conditions” (the “2007 CA-FATCS”), to advise recipients that the “NSF cannot assume
any liability for accidents, illnesses, injuries, or claims arising out of, or related to, any activities
supported by an award or for unauthorized use of patented or copyrighted materials.” 10/20/ 17
Gov’t Mot. Ex. 15 (Article 39).

On September 1, 2009, the NSF awarded Cooperative Agreement No. EEC-0832819, “The
Center of Integrated Nanomechanical Systems (COINS) Renewal Years 6-10,” to UC Berkeley,
incorporating the 2007 CA~FATCS. 10/20/ 17 Gov’t Mot. EX. 21.

On lanuary 4, 2010, the NSF issued “Research Terms & Conditions” (the “2010 RT&CS”),
to advise recipients that the “NSF cannot assume any liability for accidents, illnesses or claims
arising out of any work supported by an award or for unauthorized use of patented or copyrighted
materials.” 10/20/ 17 Gov’t Mot. Ex. 15 (Article 25).

On August 19, 2010, the NSF awarded Grant No. CCF-1029585, “Collaborative Research:
Computational Behavioral Science: Modeling, Analysis, and Visualization of Social and
Comrnunicative Behavior,” to the Massachusetts Institute of Technology (“MIT”), incorporating
the 2010 RT&CS. 10/20/17 Gov’t Mot. Ex. 6.

On January 14, 2013, the NSF issued “Research Terms & Conditions” (the “2013
RT&CS”), to advise recipients that the “NSF cannot assume any liability for accidents, illnesses

or claims arising out of any work supported by an award or for unauthorized use of patented or
copyrighted materials.” 10/20/17 Gov’t Mot. EX. 15 (Article 32).

7 The NSF is “an independent federal agency created by Congress in 1950 ‘to promote the
progress of science; to advance the national health, prosperity, and welfare; to secure the national
defense[.]’ . . . With an annual budget of $7.5 billion (FY 2017), lthe NSF is] the funding source
for approximately 24 percent of all federally supported basic research conducted by America’s
colleges and universities.” About the Narional Sclence Founclaz‘ion, NAT’L SCI. FOUND.,
https://www.nsf.gov/about/ (last visited March 7, 2018).

On lanuary 14, 2013, the NSF also awarded Grant No. CBET-1264377, “Multimode
Smartphone Biosensor,” to the University of illinois at Urbana-Champaign (“UIUC”),
incorporating the 2013 RT&CS. 10/20/ 17 Gov’t Mot. EX. 7.

On July 16, 2013, the NSF awarded Grant No. EFR.l-1332275, “EFRI-BioFleX: Cellphone-
based Digital Imrnunoassay Platform for High~throughput Sensitive and Multiplexed Detection
and Distributed Spatio-Temporal Analysis of lnfluenza,” to the University of California, Los
Angeles (“UCLA”), incorporating the 2013 RT&Cs. 10/20/ 17 Gov’t Mot. EX. ll.

On March 7, 2014, the NSF issued “Research Terms & Conditions” (the “2014 RT&CS”),
to advise recipients that the “NSF cannot assume any liability for accidents, illnesses or claims
arising out of any work supported by an award or for unauthorized use of patented or copyrighted
materials.” 10/20/ 17 Gov’t l\/lot. Ex. 15 (Article 34).

On June 13, 2014, the NSF awarded Grant No. CBET-1444240, “EAGER: Mobile-phone
based single molecule imaging of DNA and length qualification to analyze copy-number variations
in genome,” to UCLA, incorporating the 2014 RT&CS. 10/20/17 Gov’t Mot. Ex. l0.

On July 3, 2014, the NSF awarded Grant No. CBET-1447893, “EAGER: Lab-in-a-
Smartphone,” to UIUC, incorporating the 2014 RT&CS. 10/20/ 17 Gov’t Mot. Ex. 8.

On July 25, 2014, the NSF awarded Grant No. IIP-1450552, “I-Corps: Nanophosphors as
Ultra-Sensitive Lateral Flow Reporters in a Lab~on~Phone Platform,” to the University of Houston
(“UI-I”), incorporating the 2014 RT&CS. 10/20/ 17 Gov’t Mot. EX. 12.

On August 11, 2014, the NSF awarded Grant No. CBET~i343058, “TNSPIRE Track 2:
Public Health, Nanotechnology, and Mobility (PHeNol\/l),” to Cornell University (“Cornell”),
incorporating the 2014 RT&CS. 10/20/ 17 Gov’t Mot. EX. 9.

On December 26, 2014, the NSF issued “Grant General Conditions (GC~i)” (the “2014
GGCS”), to advise recipients that the “NSF cannot assume any liability for accidents, bodily injury,
illness, breach of contract, any other damages or loss, or any claims arising out of activities
undertaken pursuant to the grant, whether with respect to persons or property of the grantee or
third parties.” 10/20/ 17 Gov’t Mot. EX. 15 (Section 45).

On August 6, 2015, the NSF awarded Grant No. 1533 983, “PFI: BIC Human~Centered
Smart-Integration of Mobile Imaging and Sensing Tools with Machine Leaming for Ubiquitous
Quantification of Waterborne and Airbome Nanoparticles,” to UCLA, incorporating the 2014
GGCS. 10/20/17 Gov’t Mot. EX. 13.

On August 22, 2015, the NSF awarded Grant No. 1534126, “PFI: BIC~Pathtracker: A
smartphone-based system for mobile infectious disease detection and epidemiology,” to UIUC,
incorporating the 2014 GGCs. 10/20/ 17 Gov’t Mot. EX. 14.

C. National Institutes Of Heaith Grants.

On February 18, 2014, the National institutes of I-lealth (the °‘NIH”)8 awarded Grant No.
1R43A1107984-01A1, “A Sensitive and Serotype~Specific Dengue Diagnostic Test for Low~
Resource Setting,” to Al Biosciences, lnc. 10/20/ 17 Gov’t Mot. Ex. 19.

On January 20, 2015, the NIH awarded Grant No. 1R43CA193096-01, “KS Detect: A
solar-powered and smartphone integrated instrument for point-of-care diagnosis of Kaposi’s
sarcoma,” to A’AS lnc. 10/20/17 Gov’t Mot. EX. 18. This grant was “subject to”
45 C.F.R. § 75.435(h).9 10/20/17 Gov’t Mot. Ex. 18.

On December 23, 2015, the NlH awarded Grant No. 1R21A1120973-01, “Field-deployable
Assay for Differential Diagnosis of Malaria and Viral Febrile Illnesses,” to Sandia National
Laboratories. 10/20/ 17 Gov’t Mot. Ex. 16. This grant also was “subject to” 45 C.F.R. § 75.43 5(h).
10/20/17 Gov’t Mot. EX. 16.

On June 20, 2016, the NIH awarded Grant No. 1R01EB021331~01, “FeverPhone: Point of
Care Diagnosis of Acute Febrile illness using a Mobile Device,” to Cornell. 10/20/ 17 Gov’t Mot.
Ex. 17. And, this grant was “subject to” 45 C.F.R. § 75.435(11). 10/20/17 Gov’t Mot. EX. 17.

II. PROCEDURAL HISTORY.

On May 1, 20l3, Mr. Golden (“Plaintiff”) filed a Complaint in the United States Court of
Federal Claims (ECF No. 1) (°‘5/ 1/ 13 Compl.”), alleging that the United States Department of
I-Iomeland Security (the “DHS”) infringed the ’990 Patent. 5/1/13 Compl. 1-2.

On August 15, 2013, Plaintiff filed a “Notice of Supplement,”fo providing “supplemental
materia ” to support Plaintiff’s May 1, 2013 Complaint. ECF No. 6.

On September 5, 2013, the Government filed a Motion For A More Defim`te Statement,
pursuant to RCFC 12(e), requesting that Plaintiff amend Plaintiff" s May 1, 2013 Complaint to
incorporate numbered paragraphs, enumerate with particularity the devices or processes that
allegedly infringe Plaintiff’s patents, and identify the party-in-interest. ECF No. 9.

8 The NIH is “a part of the U.S. Department of Health and Human Services,” and “is the
largest source of funding for medical research in the world[.]” Who We Are, NAT’L iNSTS. OF
HEALTH, https://www.nih.gov/about-nih/who-we-are (last visited March 7, 2018).

9 45 C.F.R. § 75.435(h) provides that the “[c]osts of legal, accounting, and consultant
services, and related costs, incurred in connection with patent infringement litigation, are
unallowable unless otherwise provided for in the . . . award.” 45 C.F.R. § 75.435(11)

m The court considered Plaintiff’s August 15, 2013 “Notice of Supplement” as an
Amended Complaint, filed pursuant to Rule of the United States Court of Federal Claims
(“RCFC”) l5(a)(l). ECF No. 21 (“On August 15, 2013, Plaintiff filed a Notice of Supplement
that the court interprets as an Amended Complaint.”).

10

On September 20, 2013, Plaintiff filed: a Motion To Strike Defendant’s Motion For A
More Definite Statement, pursuant to RCFC 12(f) (ECF No. 10); a Motion To Amend Complaint
(ECF No. 11); a Response to the Government’s September 5, 2013 Motion For A More Definite
Statement (ECF No. 12); a Motion For Summary ludgment (ECF No. 13); and a Motion To
Supplement Pleadings. ECF No. 14.

On October 15, 2013, Plaintiff filed a second Response to the Government’s September 5,
2013 Motion For A More Definite Statement that the court considered as a Second Amended
Complaint, filed with the court’s leave, pursuant to RCFC l5(a)(2). ECF No. 19.

On October 21, 2013, the court granted the Government’s September 5, 2013 Motion For
A More Definite Statement, because Plaintiff’s May l, 2013 Complaint, August 15, 2013
Amended Complaint, and October 15, 2013 Second Amended Complaint were vague and
ambiguous making it difficult for the Government to prepare an informed Answer. ECF No. 21.
That same day, the Government 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 Plaintiff"s September 20, 2013 Motion F or
Summary Judgment, without prejudice, since the Government had not filed an Answer. ECF No.
28.

On December 30, 2013, Plaintiff filed a Motion To Amend And Supplernent Pleadings Of
The More Definite Statement. ECF No. 29.

On January 10, 2014, the Government filed an Answer to Plaintiff’s December 30, 2013
Motion To Amend And Supplement Pleadings.ll ECP No. 30.

On February 7, 2014, the court granted Plaintiff’ s December 30, 2013 Motion to Amend
And Supplement Pleadings and ordered the parties to treat that motion as a Third Amended
Complaint, filed by leave of the court, pursuant to RCFC 15(a)(2), superseding ali prior
complaints ECF No. 32.

On March 31, 2014, the court issued an Order staying Plaintiff’s Fif`th Amendment Takings
Clause claims and directing the parties to “proceed With Plaintist claims only as they relate to
the alleged patent infringement by the United States.” ECF No. 38.

On April 30, 2014, the DHS filed a petition for an interparfes review (“IPR”)12 of the ’990
Patent before the USPTO Patent Trial and Appeal Board (the “PTAB”).

11 The Government considered Plaintiff s December 30, 2013 Motion To Amend Pleadings
as filed by leave of the court and, therefore, superseded Plaintiff’s November 22, 2013 More
Definite Statement ECF No. 30 at n.l.

n IPR is “a trial proceeding conducted at the [USPTO] to review the patentability of one
or more claims in a patent only on a ground that could be raised under [35 U.S.C.j §§ 102 or 103,

11

On October 8, 2014, the PTAB issued a Decision To lnstitute lPR of claims 11, 74, and 81
of the ’990 Patent. See Dep’f ofHomeland Sec. v_ Goldenj lPR2014-00714, 2014 WL 6999625,
at *l (P.T.A.B. Oct. 8, 2014). Although the court did not stay this case while the PTAB
proceedings were ongoing, the court did not take any substantive action during that time.

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 Dep't ofHomelaml Sec. v. Golden, lPR2014-00714, 2015 WL
5818910, at *17 (P.T.A.B. Oct. 1, 2015). On November 17, 2015, the PTAB denied Plaintiff’s
request for a rehearing of the PTAB’s decisions See Dep ’t ofHomeland Sec. v. Golden, IPR2014-
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. ECF No. 67 (transcript). On
December 23, 2015, the court issued an Order granting Plaintiff leave to file a fourth amended
complaint, pursuant to RCFC 15(a)(2). ECF No. 65.

On February 12, 2016, Plaintiff filed a Fourth Amended Complaint. ECF No. 68. On
February 19, 2016, Plaintiff filed a Claim Chart. ECF No. 69.

On April 8, 2016, the Government filed an Answer to Plaintiff s February 12, 2016 Fourth
Amended Complaint. ECF No. 74.

On June 3, 2016, Plaintiff filed a Motion For Summary Judgment On Validity. ECF No.
79. On June 6, 2016, Plaintiff filed: a Motion For Response To Claim Charts (ECF No. 80); a
Motion To Stay (ECF No. 8l); and a Motion For Entry Of Devices. ECF No. 82. On June 8,
2016, Plaintiff filed a Motion For Entry Of Estimated Damages And Accounting Report. ECF No.
84.

On June 10, 2016 the court convened a telephone status conference ECF No. 87
(transcript). On June 13, 2016, the court issued an Order directing the Government to file a Motion
To Dismiss and staying Plaintiff s 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, the Government filed a Motion To Dismiss Certain Accused Devices.
ECF No. 88. On November 30, 2016, the court denied the Government’s June 24, 2016 Motion
To Dismiss, without prejudice ECF No. 94.

On December l6, 2016, the court issued a Discovery Order allowing the parties to
exchange jurisdictional discovery. ECF No. 97.

On February 3, 2017, the court issued an Order dismissing the following filings by Plaintiff,
without prejudice: Plaintiff’ s June 3, 2016 Motion For Summary Judgment On Validity; Plaintiff’s

and only on the basis of prior art consisting of patents or printed publications.” Inrer Partes
Review, U.S. PATENT & TRADEMARK OFFICE, https:f/www.uspto.gov/patents-application-process/
appealing-patent-decisions/trials/inter-partes-review (last visited March 12, 2018).

12

June 6, 2016 Motion For Response To Claim Charts; Plaintiff’s June 6, 2016 Motion To Stay;
Plaintiff’s June 6, 2016 Motion For Entry Of Devices; and Plaintiff’s June 8, 2016 Motion 13 or
Entry Of Estimated Damages And Accounting Report. ECF No. 100.

On March 1, 2017, and prior to the completion of the court-ordered discovery, Plaintiff
filed a Motion For Response To The liebruary 19, 2016 Claim Chart. ECF No. 102. On March
24, 2017, Plaintiff filed a Motion To Supplement Plaintiff’ s Claim Chart (ECF No. 107) and a
Motion To Supplement The Amended Complaint. ECF No. 108. On April 11, 2017, Plaintiff
filed a second Motion for Summary Judgment On Validity. ECF No. 111.

On l\/Iay 15, 2017, Plaintiff filed a c‘l\/Iotion To Supplement The Amended Complaint With
Pleadings Of 28 U.S.C. § 1491 ‘Government Fifth Amendment Takings Of A Patent(s).”’ ECF
No. 114.

On May 24, 2017, the court convened a telephone status conference, wherein Plaintiff was
directed “to file a [Fifth A]mended [C]omplaint that include[d] all of [Plaintiff’s] concerns, all of
[Plaintiff’ s1 charges against the Government in one document . . .No more supplements, no more
anything else. Whatever is in that document will be what we’re going to continue the case on.”
ECF No. 118.

On May 25, 2017, the court issued an Order denying all of Plaintiff s pending motions, i. e.,
Plaintiff’ s March 1, 2017 Motion For Response To Claim Chart; Plaintiff s March 24, 2017
Motion To Supplement Plaintiff s Claim Chart; Plaintiff’s March 24, 2017 Motion To Supplement
The Amended Complaint; Plaintiff’ s April 11, 2017 Motion for Summary Judgment On Validity;
and Plaintiff’s May 15, 2017 Motion To Supplement The Amended Complaint. ECF No. 116.
The May 25, 2017 Order also stated that “Plaintiff may amend his complaint and claim chart one
final time, prior to the court’s ruling on jurisdiction Plaintiff is ordered not to file any other
motions or papers without leave ofthe court.” ECF No. 116 at 2 (emphaSiS added).

On August 10, 2017, Plaintiff filed a Fifth Amended Complaint (“8/ 10/ 17 Am. Compl.”)
(ECF No. 120) and a Final Claim Chart. ECF No. 121. Plaintiff’ s August 10, 2017 Fifth Amended
Complaint alleges that the Government: (1) violated the Fif`th Amendment of the United States
Constitution by taking for public use the ’497, ’033, ’752, ’761, ’280, ’891, ’990, ’189, and ’439
Patents, without just compensation; and (2) is liable for infringement of the ’497, ’033, ’752, ’761 ,
’280, ’891, ’990, ’189, and ’439 Patents, as well as the ’839 Application under 28 U.S.C. § 1498(a).
8/10/17 Arn. Compl. 1111 87492.

On August 24, 2017, Plaintiff sent an email to the Department of Justice (the “DOJ”)
stating:
As you know my strategy was to continue submitting claims of “takings”
and “inf`ringement” for as long as the Government continued to prolong this case.
(Larry Golden v. The United States: Case # 13-307 C). With that said, of course
you know the claims ha[ve] moved from twelve (12) claims of “takings” and
“infringement” that began in the year 2013, to seventy~two (72) claims of “takings”
and “infringement” as of this year 2017.

13

The Judge has ordered a final complaint and a final claim chart that was due
on August 15. 2017. Because of the Judge order I can no longer continue my
strategy of introducing new cctakings” and “infringement” claims or new patents
and patent claims.

Therefore, l have changed my strategy. My new strategy is to file a
complaint(s) in F ederal District Court against Apple, Samsung, LG, Panasonic, and
Motorola for Patent infringement on March l, 2018. The strategy here is to force
Apple, Samsung, and LG to decide between one or two choices: (1) in an effort to
avoid any responsibility for infringement or liability of paying hundreds of billions
of dollars in damages, the companies cho [o]se to throw the Government under the
bus by presenting evidence that they were under contract to develop and
manufacture devices that infringes my communication / monitoring device. If they
cho[o]se this option it makes them a witness for me in my current case (Larry
Golden v. The United States; Case # 13-307 C). (2) Deny the allegations of
infringement In this case l will present evidence to support the fact that the
companies were under contract with the Government to develop and manufacture
devices that infringe[} my communication f monitoring device, but that the
companies decided to continue to develop and manufacture my communication /
monitoring device beyond the specifications agreed upon with the Governrnent,
even after I notified the companies in 2010 to stop their manufacturing If they
chos[o]e this option it opens the companies up to willful infringement and the
possibility of a temporary injunction to stop the manufacturing and development of
my communication / monitoring device. If you were Apple, Samsung, and LG
which option would you cho [o]se.

10f20/ 17 Gov’t Mot. EX. 1.

On October 20, 2017, the Government filed a Motion For Partial Dismissal (“10/20/ 17
Gov’t Mot.”), pursuant to RCFC l2(b)(1) and 12(b)(6). ECF No. 123.

On November 17, 2017, Plaintiff filed a Response And Motion For Leave To File A Motion
For Summary Judgment (“1 1/17/ 17 Pl. Resp.”). ECF No. 124.

On December 18, 2017, the Government filed a Reply And Opposition To Plaintiff"s
Motion lj or Leave To File A Motion For Summary Judgment (“12/ 18/ 17 Gov’t Reply”). ECF No.
125 .

On January 8, 2018, Plaintiff filed a Reply (“1/8/1 8 Pl. Reply”). ECF. No. 126.
III. STANDARD OF REVIEW.
A. Jurisdiction.

As a threshold matter, the court must consider jurisdiction before reaching the substantive
merits of a case. See Gonzalez v. Thaler, 565 U.S. 134, 141 (2012) (“When a requirement goes to
subj ect_matter jurisdiction, courts are obligated to consider sua sponte issues that the parties have

14

disclaimed or have not presented.”). The burden of establishing jurisdiction “lies with the party
seeking to invoke the court’s jurisdiction,” Cedars-Sinai Med. Ctr_ v. Wafkins, ll F.3d 1573, 1583
(Fed. Cir. 1993).

B. Standard Of Review For A Motion To Dismiss Under RCFC 12(b)(1).

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] l2(b)(1) motion.”
Palrner v. United States, 168 F.3d 1310, 1313 (Fed. Cir. 1999); see also RCFC 12(b)(1) (allowing
a party to assert, by motion, “lack of subject-matter jurisdiction”).

if a motion to dismiss for lack of subject-matter jurisdiction “challenges the court’s subject
matter jurisdiction based on the sufficiency of the pleading’s allegations . . . then those allegations
are taken as true and construed in a light most favorable to the complainant.” Cea'ars-Sinai Mea'_
Ctr_, 11 F.3d at 1583. But, if such a motion “denies or controverts the pleader’s allegations of
jurisdiction, . . . the movant is deemed to be challenging the factual basis for the court’s subject
matter jurisdiction.” Ia'. “In such a case, the allegations in the complaint are not controlling and
only uncontroverted factual allegations are accepted as true for purposes of the motion. All other
facts underlying the controverted jurisdictional allegations are in dispute and are subject to fact-
finding by the . . . court.” Ial. at 1583484 (internal citations omitted); see also Moyer, 190 F.3d at
1318 (“Fact-finding is proper when considering a motion to dismiss where the jurisdictional facts
in the complaint . . . are challenged.”). The court “may weigh relevant evidence when it considers
a motion to dismiss that challenges the truth of jurisdictional facts alleged in a complaint.”
Ferrez'ro, 350 F.3d at 1324; see also Reynolds v. Army & Az'r Force Exch. Serv., 846 F.2d 746, 747
(Fed. Cir. 1988) (“If a motion to dismiss for lack of subject matter jurisdiction . . . challenges the
truth of the jurisdictional facts alleged in the complaint, the [trial] court may consider relevant
evidence in order to resolve the factual dispute.”); JAMES WM. MOORE, MOORE’S FEDERAL
PRACTICE § 12.30[4] (3d ed. 2012) (“[W]hen a court reviews a complaint under a factual attack,
the allegations have no presumptive truthfulness, and the court . . . has discretion to allow
affidavits, documents, and even a limited evidentiary hearing to resolve disputed jurisdictional
facts.”).

If the court determines that it does not have subject-matter jurisdiction, the court must
dismiss the complaint See RCFC l2(h)(3) (“lf the court determines at any time that it lacks
subject-matter jurisdiction, the court must dismiss the action.”).

C. Standard ()f Review For' A Motion To Dismiss Under RCFC lZ(b)(6).

A claim is subject to dismissal under RCFC 12(b)(6), if it does not provide a basis for the
court to grant relief. See Bell Al‘l. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007) (“[A well-
pleaded complaint] requires more than labels and conclusions, and a formulaic recitation of the
elements of a 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 doubtful in fact).” (internal citations omitted)); see also Lz'nclsay v. United States, 295
F.3d 1252, 1257 (Fed. Cir. 2002) (“A motion to dismiss . . . for failure to state a claim upon which

15

l
i
l
l
l
1

relief can be granted is appropriate when the facts asserted by the claimant do not entitle him to a
legal remedy.”).

A complaint must “contain sufficient factual matter, accepted as true, to ‘state a claim to
relief that is plausible on its face.”’ Ashcroft v. labal, 556 U.S. 662, 678 (2009) (quoting Twoml)ly,
550 U.S. at 570). “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.” la'. The allegations in a complaint also must establish that there is “more than a sheer
possibility that a defendant has acted unlawfully.” Icl. “Threadbare recitals of the elements of a
cause of action, supported by mere conclusory statements, do not suffice.” Ia'.; see also Sioax
Honey Ass’n v. Hartfora' Fire Ins. Co., 672 F.3d 1041, 1062 (Fed. Cir. 2012) (holding that a
complaint “require[s] more than labels and conclusions”). lo determine whether a complaint
states a plausible claim for relief, the court must engage in a context-specific analysis and “draw
on its judicial experience and common sense.” labal, 556 U.S. at 679. Therefore, the court is “not
bound to accept as true a legal conclusion couched as a factual allegation.” Twombly, 550 U.S. at
555.

D. 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 “less stringent standards than formal
pleadings drafted by lawyers”). The United States Court of Federal Claims traditionally has
examined the record “to see if [a pro se] plaintiff has a cause of action somewhere displayed.”
Ruderer v. United States, 412 F.2d 1285, 1292 (Ct. Cl. 1969). Although the court may excuse
ambiguities in a pro se plaintiffs complaint, the court °‘does not excuse [a complaint’s] failures.”
Henke v. United States, 60 F.3d 795, 799 (Fed. Cir. 1995). (“The fact that lthe plaintiff] acted pro
se in the drafting of his complaint may explain its ambiguities, but it does not excuse its failures,
if such there be.”).

`A pro se plaintiff is not excused from satisfying the burden of proof as to jurisdiction, by
a preponderance of the evidence. See McNutr 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, 846 F.2d at 748 ([The pro se plaintiff] bears the burden of establishing subject
matter jurisdiction by a preponderance of the evidence.”). A pro se plaintiff cannot rely solely on
conclusory allegations in the complaint, but must allege “competent proof ’ to establish
jurisdiction McNufr, 298 U.S. at 189; see also Reynolds, 846 F.2d at 748 (“[l]t was incumbent
upon [the pro se plaintiff] to come forward with evidence establishing the court’s jurisdiction.”);
Zulueta v_ United States, 553 F. App’x 983, 985 (Fed. Cir. 2014) (“[T]he leniency afforded to a
[pro se] litigant with respect to mere formalities does not relieve the burden to meet jurisdictional
requirements.” (quotation marks omitted)).

16

IV. DISCUSSION.

A. Whether Certain Patent Infringement Allegations13 In The August 10, 2017
Fifth Amended Complaint Should Be Dismissed Under RCFC 12(|))(1) And
12(b)(6).

1. Patent Infringement Allegations In The August 10, 2017 Fifth
Amended Complaint.

The August l0, 2017 Fifth Amended Complaint alleges that the Government:
(l) Violated the Fifth Amendment of the United States Constitution by taking for public use the
’497, ’033, ’752, ’761, ’280, ’891, ’990, ’189, and ’439 Patents, without just compensation; and
(2) is liable for infringement of the ’497, ’033, ’752, ’76 l, ’280, ’891, ’990, ’189, and ’439 Patents,
as well as the ’839 Application under 28 U.S.C. § 1498(a). 8/10/17 Am. Compl. 111 87~»~92. The
Fifth Amended Complaint alleges that the court has jurisdiction over the Tal)(6).

The Government argues that patent infringement allegations28 “

The Fifth Amended Complaint alleges the following with respect to the “LG Electronics
G5 Smartphone”:

Upon information and belief, the United States has infringed, and continues
to infringe, at least claim 22 of the ’439 Patent, and claims 18, 118, 12, 28, 25, 30,
22, and 20 of the ’990 Patent as a current manufacturer, consumer, and/or user of
the “LG Electronics G5 Smartphone”. Manufacture for the Government; 2008:
The “Cell-All” initiative rl`he [DHS-S&T] . . . , Cell-All aims “to equip your cell
phone with a sensor capable of detecting deadly chemicals”, says Stephen Dennis,
Cell-All’s program manager. [DHS-S&T] pursued cooperative agreements with
four cell phone manufacturers: Qualcomm, LG, Apple, and Samsung. Used by the
Government; 2016: Both the LG G5 and V10 smartphones can be used by the
[DOD]. The LG smartphones received a security certification from the iDlSA], as
well as a certification by the [NIAP]. Sensors will integrate with 261 million cell
phones now used in the U.S. [and l]everage billions of dollars spent each year in
sensor, carrier network[,] and cell phone development Multiple sensors network
for chemical profiling; Cell-All aims “to equip your cell phone with a sensor
capable of detecting deadly chemicals”, says Stephen Dennis, Cell-All’s program
manager. Multiple sensor units per phone are possible Stephen Dennis envisions
a chemical sensor in every cell phone in every pocket, purse, or belt holster.

AS a result of contracts, agreements, and procurements with various
Government Agencies (1111 49-78), the [DHS], the [DOD], and LG Electronics for
the manufacture development, commercialization, and/or use of the
communication/monitoring device “LG Electronics G5 Smartphone”, the United
States has used, authorized the use, and manufactured, without license or legal
right, Plaintiff’ s inventions described in and covered by the ’439, and ’990 Patents.

8/ l()/ 17 Am. Compl. 1111 96-97 (bold in original).

28 The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations “relating generally to smartphones and other consumer devices” are: 1111 96»97,
101-02, 106-07, 111-12, 116-17, 121-»22, 126-27, 131-32, 136-37, 141W42, 14647, and
151-52. These paragraphs are highlighted in orange in the attached Court Exhibit B.

32

relating generally to
smartphones and other consumer devices” should be dismissed under RCFC l2(b)(l), because the
Fifth Amended Complaint “fails to sufficiently allege actual ‘use’ by the [G]overnrnent of the
various combinations of consumer devices, nor would the [G]overnrnent’s use be plausible.”
10/20/17 Gov’t Mot. at 17.

The Fifth Amended Complaint includes patent infringement allegations concerning the
Government’s alleged “use” and “manufacture” of other “smartphones [and] consumer devices,”
each of which repeats the text of 28 U.S.C. § 1498(a) in conclusively alleging that, c‘[als a
result of contracts, agreements, and procurements with various Government Agencies
(1111 49~78) . . . the United States has used, authorized the use, and manufactured . . . Plaintiff’s
inventions[.]”’ 8/10/17Am.Comp1.111197,102,107, 112, ll7, 122, 127, 132,137,142, 147,152.
To support this allegation, the Fifth Amended Complaint repeatedly cites to 1111 49-78 of the Fifth
Amended Complaint. These paragraphs describe the Government’s intent to °‘allow” or “approve”
the “use” of various “smartphones and other consumer devices,” e.g., “the iPhone 50 and SS.”
8/10/17 Am. Compl. 1l 75 . Por example, 11 53 of the Fifth Amended Complaint states:

2012: “The [DOD] expects in coming weeks to grant two separate security
approvals for Samsung’s Galaxy smartphones, along with iPhones and iPads
running Apple’s latest operating system-~moves that would boost the number of
U.S. government agencies allowed to use those devices. An approval by the
Pentagon is considered as the highest standard[] in security.”

8/10/l7 Am. Compl. 11 53 (emphasis added).
Similarly, 11 72 of the Fifth Amended Complaint states:

20l4: “By opening its networks to Samsung and Apple devices, [DISA] . . . intends
to broaden the variety of mobile computers that troops and civilian [DOD]
employees can use in the field, on bases, in offices and elsewhere to receive and
send information and work almost anywhere at any time.”

8/10/17 Am. Compl. 1172 (emphasis added).

'l`he Fifth Amended Complaint, however, does not allege that the Government’s intent to
“allow” or “approve” the use of “smartphones and other consumer devices” infringes Plaintiff s
patents. lnstead, the Fifth Amended Complaint alleges that the Govemment’ s use of these devices
fn combination with other “devices” or “programs,” e.g., the “‘Cell-All’ initiative,” infringes
Plaintiff" s patents. 8/10/17 Am. Compl. 1111 96~97. No factual allegations, however, support
assuming that the Government used or authorized the use of these other “devices” or “programs”
to infringe Plaintiff’ s patents.

For example, although the Fifth Amended Complaint alleges that the “LG Electronics G5
Smartphone . . . can be used” by the Government, such an allegation does not support the
conclusion that the Government used or authorized the use of these devices to run the “‘Cell-All’
initiative.” 8/10/17 Am. Compl. 1111 96-97. Nor do such allegations imply that the Govemment’s
use of the “LG Electronics G5 Smartphone” infringes Plaintiff s patents, since the Government
may simply use these devices to make calls. Without supporting factual allegations, however, the
court cannot assume infringing use or manufacture by the Government See Nortor.¢, 266 U.S. at
515 (“lt is quite true that the jurisdiction of a federal court must affirmatively and distinctly appear
and cannot be helped by presumptions or by argumentative inferences drawn from the
pleadings.”); see also SB CHARLES A. WRIGHT & ARTHUR R. MILLER, FED. PRACTICE &
PROCEDURE § 1350 (3d ed. 2004) (“[A]rgumentative (as opposed to reasonable) inferences

33

favorable to the pleader will not be drawn and conclusory allegations or conclusions of law will
not be credited.”). ln sum, although the factual allegations of the Fifth Amended Complaint may
support a conclusion that the Government “allowed” or “approved” the “use” of various
“smartphones and other consumer devices,” they do not support the conclusion that the
Government used or authorized the use of these devices in an infringing manner.

For these reasons, the court has determined that the patent infringement allegations
contained in 1111 96~97, 101-02, 106-07, 111-12, 1l6-l7, 121-22, 126-27, 131-32, 136»»~37,
141-42, 146-47, and 151~52 of the August 10, 2017 Fifth Amended Complaint failed to satisfy
Plaintiff’s burden to establish jurisdiction under 28 U.S.C. § l498(a). Accordingly, these
paragraphs of the Fifth Amended Complaint must be dismissed under RCFC 12(b)(1).

ln the alternative, the Government argues that the same allegations should be dismissed
under RCFC 12(b)(6), for “improperly alleg[ing] infringement by or for the [G]overnment in
irreconcilably vague and omnibus fashion by repeatedly citing ‘contracts, agreements, and
procurements with various Government Agencies.”’ 10/20/ 17 Gov’t Mot. at 17.

The Govemment’s position is correct, because the Fifth Amended Complaint does not
contain factual allegations supporting that, “[a]s a result of contracts agreements and
procurements with various Government Agencies . . . the United States has used, authorized the
use, and manufactured . . . Plaintiff’s inventions[.j” 8/10/ 17 Am. Compl. 11 97 (ernphasis added).
The Fifth Amended Complaint fails to identify the “contracts, agreements, and procurements” at
issue. Without more, the Fifth Amended Complaint has not met the requirements of Twombly and
labal. Nor does the Fifth Amended Complaint provide anything other than conclusory allegations
that the Government used or authorized the use of “smartphones and other consumer devices” in
a manner that infringes Plaintiff’s patents Such “[t]hreadbare recitals of the elements of a cause
of action, supported by mere conclusory statements, [however,] do not suffice.” Iql)al, 556 U.S.
at 678; see also Siou.x Honey Ass’ri, 672 F.3d at 1062 (holding that a complaint c‘require[s] more
than labels and conclusions”).

For these reasons, the court has determined that even if the August 10, 2017 Fifth Amended
Complaint established jurisdiction as to the patent infringement allegations contained in 1111 96~97,
101-02, 106407, 111~12, 116~17, 121~»22, 126-27, 131-32, 136-37, 141-42, 146-47, and
151-52 of the Fifth Amended Complaint, the allegations contained therein failed to state a claim
upon which relief may be granted and must be dismissed under RCFC 12(b)(6).

e. Patent Infringement Allegations Concerning Broad Agency
Announcements Must Be Dismissed Under RCFC 12(b)(6).

The Government argues that patent infringement allegations29 concerning a DNDO BAA
should be dismissed under RCFC 12(b)(6), because the Fifth Amended Complaint “fails to

29 The paragraphs in the Fifth Amended Complaint that include patent infringement
allegations conceming the DNDO BAA are: 1111 161$7. These paragraphs are highlighted in red
in the attached Court Exhibit B.

34

plausibly allege that the Government either used or manufactured any technologies described in
the BAA.” 10/20/17 Gov’t Mot. at 22.

In relevant part, the Fifth Amended Complaint alleges:

Upon information and belief, the United States has infringed, and continues
to infringe, at least claims 1, 2, and 4 of the ’497 Patent, claims 34, and 37 of the
’752 Patent, claims 13, and 14 ofthe ’439 Patent, and claims 119, 29, 18, 118, 12,
28, 25, 20, 124, 32, and 30 of the ’990 Patent as a current manufacturer, consumer,
and/or user of the l”x2” Detection Device (DD) Samsung Galaxy s6 Smartphone;
2”X2” Detection Device (DD) Samsung Galaxy s6 Smartphone; NetSZ SmartShield
G3 00 Radiation Detector Samsung Galaxy s6 Smartphone; NetSZ SmartShield
G5 00 Radiation Detector Samsung Galaxy s6 Smartphone; and the Passport
Systems Base Control Unit (BCV) “TOUGHBOOK 31” Panasonic Laptop:

2”X2” Detection Device (DD) Samsung Galaxy s6 Smartphone: In response
to the [DNDO’s] BAA 09~102 Passport Systems, lnc. of Billerica, MA has
developed a system of networked portable spectroscopic radiation detectors to
improve the detection, localization, and identification of radiological threats.

=l= >l= =I=

NetSZ SmartShield G500 Radiation Detector Samsung Galaxy s6
Smartphone: Passport Systems Inc. G500 Radiation Detector alarms When radiation
levels are detected; used as a standalone device or as part of a network; is the same
size, form factor and Weight as a smartphone and easily added to the belt of safety
personnel; is paired With a smartphone Via Bluetooth, and automatically joins a _
SmartShield Networl<.

=l< >1= =!=

As a result of contracts With the [DNDO], Passport Systems, lnc., Panasonic
Corporation, and the Samsung Group for the development and commercialization
of the l”XZ” Detection Device (DD) Samsung Galaxy s6 Smartphone; 2”x2”
Detection Device (DD) Samsung Galaxy s6 Smartphone; NetSZ SmartShield G300
Radiation Detector Samsung Galaxy s6 Smartphone; NetSZ SmartShield G500
Radiation Detector Samsung Galaxy s6 Smartphone; and the Passport Systems '
Base Control Unit (BCU) “TOUGHBOOK 31” Panasonic Laptop the United States j
has used, authorized the use, and manufactured, without license or legal right, §
Plaintiff’s inventions described in and covered by the ’497, ’439, ’752, and ’990 ‘
Patents. l

8/10/17 Am. Compl. 1111 161_62, 165, 167.

But, the conclusion tha , “[a]s a result of contracts With the DNDO . . . the United States
has used, authorized the use, and manufactured . . . Plaintiff’s inventions,”’ is not plausibly
supported by factual allegations in the Fifth Amended Complaint. 8/10/17 Am. Compl. 11 167

35

(ernphasis added). Indeed, the Fifth Amended Complaint fails to identify a single “contract” With
the DNDO. lnstead, it alleges only that the DNDO issued a BAA; a BAA, however, is not a
“contract.” See 48 C.F.R. § 2.101(b) (defining a “BAA” as “a general announcement of an
agency’s research interest including criteria for selecting proposals and soliciting the participation
of all offerors capable of satisfying the Government’s needs”). Again, without more, the Fifth
Amended Complaint has not met the requirements of Twombly and Iql)al. And, conclusory
allegations that the Government used or authorized the use of the “Sarnsung Galaxy s6
Smartphone” in a manner that infringes Plaintiff’s patents are likewise insufficient, as such
“[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
statements, do not suffice.” Iqbal, 556 U.S. at 678; see also Sionx Honey Ass ’n, 672 F.3d at 1062
(holding that a complaint “require[s] more than labels and conclusions”).

For these reasons, the court has determined that the patent infringement allegations
contained in 1111 161~67 of the August 10, 2017 Fifth Amended Complaint must be dismissed under
RCFC 12(1))(6).

f. Patent Infringement Allegations Concerning The ’033 Patent
Must Be Disrnissed Under RCFC 12(b)(1).

The Government argues that patent infringement allegations concerning the ’033 Patent
should be dismissed under RCFC l?,(b)(l), because “this patent Was surrendered When it was
reissued as [the ’891 Patent] and [the ’990 Patent].” 10/20/ 17 Gov’t Mot. at 22,

An application for reissue of a patent constitutes an offer to surrender the patent. See 35
U.S.C. § 251(a) (“[T]he Director shall, on the surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention disclosed in the original patent[.]”).
“The surrender of the original patent . . . take[s] effect upon the issue of the reissued patent.” 35
U.S.C. § 252. Therefore, as a matter of law, “[a]n original patent cannot be infringed once a reissue
patent has issued, for the original patent is surrendered . . . [and t]he original claims are dead.”
Seattle Box Co., Inc. v. Indnst Cratz`ng & Packing, Inc., 731 F.2d 818, 827 (Fed. Cir. 1984).

In this case, on two occasions, Plaintiff applied for reissuance of the ’033 Patent via the
’837 Application and the ’853 Application, thereby offering to surrender the ’033 Patent in
accordance With 35 U.S.C. § 251(a). 2/12/ 16 Am. Compl. Ex. G, H. Thereafter, the USPTO
issued both of these reissue applications, as the ’89l Patent and the ’990 Patent, respectively, on
January 1, 2013 and February 12, 2013. 2/12/16 Am. Compl. EX. G, H. As such, the ’033 Patent
Was surrendered as of January 1, 2013, i.e., the earliest reissue date. See 35 U.S.C. § 252 (“The
surrender of the original patent . . . take[s] effect upon the issue of the reissued patent.”). Therefore,
the court does not have jurisdiction to adjudicate patent infringement allegations concerning
the ’033 Patent, because the ’033 Patent is no longer a “patent of the United States.” See 35
U.S.C. §§ 251(a), 252; see also 28 U.S.C. § 1498(a) (requiring “an invention described in and
covered by a patent of the United States”).

36

For these reasons, the court has determined that patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the ’033 Patent30 failed to satisfy Plaintiff’ s
burden to establish jurisdiction under 28 U.S.C. § 1498(a). Accordingly, these allegations of the
Fifth Amended Complaint must be dismissed under RCFC 12(b)(1).

g. Patent Infringement Allegations Concerning Unissued Patent
Applications And Pre-Issuance Use Or Manufacture Must Be
Dismissed Under RCFC 12(b)(1).

Fl`he Government argues that patent infringement allegations concerning the ’839
Application and pre-issuance use or manufacture of the ’439 Patent should be dismissed under
RCFC 12(b)(1). 10/20/ 17 Gov’t Mot. at 23.

The ’839 Application has not issued, nevertheless the Fifth Amended Complaint alleges
that the Government “infringed, and continues to infringe” claims of the ’839 Application. 8/10/17
Am. Compl. ll 91. ln addition, the ’439 Patent issued on March 7, 2017, but the Fifth Amended
Complaint alleges infringement of the ’439 Patent, based on Government “progranis” that were
cancelled in April 2014, almost three years prior to issuance of the ’439 Patent. Compare 8/10/17
Arn. Compl. 1111 315-"16, with 10/20/ 17 Gov’t Mot. Ex. 22 (a June 10, 2014 United States
Government Accountability Office Report, explaining the DHS’s decision to cancel the
“BioWatch Gen~3” program in April 2014). In addition, the Fifth Amended Complaint alleges
infringement of the ’439 Patent, based on NSF grants that expired prior to issuance of the ’439
Patent. Compare 8/10/ 17 Am. Compl. 1111 184_85, 199-200, 260461, 275-76, 280-81, 295~96,
305-06, with 10/20/17 Gov’t Mot. EX. 6-8, 10, 12.

The court’s jurisdiction under 28 U.S.C. § 1498(a) is limited to allegations “against the
[G]overnment arising out of post~issuance [G]overnment use [or manufacturej of an invention.”
Hornback v. United States, 601 F.3d 1382, 1386 (Fed. Cir. 2010) (“"l`he language of section
1498(a) is mandatory, and therefore grants the [United States] Court of F ederal Claims exclusive
jurisdiction to hear all claims against the [G]overnrnent arising out of post-issuance [G]overnment
use of an invention.”).

For these reasons, the court has determined that patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the ’839 Application31 and pre-issuance

30 Infringement of the ’033 Patent is alleged in jill 91-92 of the August 10, 2017 Fifth
Amended Complaint, the relevant portions of which the court has highlighted in purple in the
attached Court EXhibit B. These paragraphs, however, contain patent infringement allegations
concerning other patents and therefore are dismissed to the extent they concern the ’033 Patent.

31 Infringement of the ’839 Application is alleged in 1111 91-92 of the August 10, 2017 Fifth
Amended Complaint, the relevant portions of which the court also has highlighted in purple in the
attached Court Exhibit B. These paragraphs, however, contain patent infringement allegations
concerning other patents and therefore are dismissed to the extent they concern the ’839
Application.

37

use or manufacture of the ’439 Patent32 failed to satisfy Plaintiff’ s burden to establish jurisdiction
under 28 U.S.C. § l498(a). Accordingly, these allegations of the Fifth Amended Complaint must

be dismissed under RCFC 12(b)(l).

h. Patent Infringement Allegations Concerning The ’761, ’280,
And ’189 Patents Must Be Dismissed Under RCFC 12(b)(6).

Finally, the Government argues that patent infringement allegations concerning the ’761,
’280, and ’189 Patents should be dismissed under RCFC 12(b)(6), because the Fifth Amended
Complaint “alleges no infringement of any claims of these patents.” 10/20/ 17 Gov’t Mot. at 23.

With regard to the ’761, ’280, and ’189 Patents, the Fifth Amended Complaint alleges:

Upon information and belief, the United States has infringed, and continues
to infringe, . . . Plaintiff’s 'l`angible Patented Claimed Inventions of . . . [the ’761,

’280, and ’189 Patents.]

=l= =l< >l=

As a result of contracts, agreements, procurements, and grants, for the
development and commercialization of Plaintiff’s tangible patented claimed
inventions, the United States . . . has used, authorized the use, manufactured
and developed, without license or legal right, or authorization and consent,
Plaintiff’ s tangible patented claimed inventions as described in and covered by the
Plaintiff’s . . . ’761, ’280, . . . [and] ’189 . . . [P]atents.

8/10/17 Am. Compl. 1111 9l~»92.

To survive a motion to dismiss under RCFC 12(b)(6), “[t]here must be some allegation of
specific services or products of the defendants which are being accused.” Addicfion and
Detoxificarion Inst. L.L_C. v. Carpcnfer, 620 F. App’x 934, 937 (Fed. Cir. 2015). The Fifth
Amended Complaint, however, does not contain any allegation about how the ’761, ’280, and ’189
Patents Were infringed and by What action of the Government

32 Infringement of the ’439 Patent is alleged in 1111 91-92, 96-97, 101-02, 106-07, 111-12,
116-17, 121-22, 126~27, 131~32, 136~37, 141#42, 146»47, 151-52, 156~57, 161*67, 171~72,
176-80, 184-85, 189-90, 194-95, 199_200, 204-05, 209»10, 214-»15, 2l9m20, 224»26, 230-31,
235~36, 240~41, 245-46, 250~51, 255-56, 260-61, 265-66, 270-71, 275-76, 280-81, 285-86,
290_91, 295_96, 300-01, 305~06, 3l0~11, 315~16, 320~21, 325~26, 330-31, 335~36, 340-41,
345~46, 350~»51, 355-56, 360-61, and 365-66 of the August 10, 2017 Fifth Amended Complaint,
the relevant portions of which the court has highlighted in pink in the attached Court Exhibit B, if
not otherwise highlighted in a difference color. These paragraphs, however, contain patent
infringement allegations concerning other patents and therefore are dismissed to the extent they
concern the ’439 Patent. lf Plaintiff can identify post-issuance activity incorporated Within these
paragraphs that is not otherwise dismissed, the court Will reconsider dismissal of those relevant

portions.

38

For these reasons, the court has determined that the patent infringement allegations of the
August 10, 2017 Fifth Amended Complaint concerning the ’761, ’280, and ’189 Patents must be
dismissed under RCFC 12(b)(6).33

V. CONCLUSION.

For the reasons discussed herein, the Government’s October 20, 2017 Motion For Partial
Dismissal, pursuant to RCFC 12(b)(1) and 12(b)(6), is granted-in-part and denied-in-part.
Plaintiff`s November 17, 2017 Motion For Leave To File A Motion For Summary Judgment,
is denied, as the Government “has not had an opportunity to make full discovery.” Celofex
Corp. v. Catren‘, 477 U.S. 317, 326 (1986).

The court will convene a telephone status conference Within the next two Weeks to identify
What, if any, patent infringement allegations are viable and may be adj udicated, and how the parties
propose proceeding

IT IS SO OR])ERED.

Chief Judge

33 Infringement of the ’761 , ’280, and ’ 189 Patents is alleged in 1111 91_92 of the August 10,
2017 Fifth Amended Complaint, the relevant portions of Which the court also has highlighted in
purple in the attached Court Exhibit B. These paragraphs, however, contain patent infringement
allegations concerning other patents and therefore are dismissed to the extent they concern the
’761, ’280, and ’189 Patents.

39