In the United States Court of Federal Claims
No. 11-201C
(Filed: September 19, 2018)1
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Patent Infringement; Motion
*
to Dismiss; Statute of
ROSS-HIME DESIGNS, INC., *
Limitations; Claim Accrual;
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Accrual Suspension; Tolling;
Plaintiff, *
35 U.S.C. § 286.
*
v. *
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THE UNITED STATES, *
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Defendant. *
*
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Vytas M. Rimas, Rimas Law Firm, PLLC, 5101 Thimsen Ave., Suite 204, Minnetonka,
MN, 55345, for Plaintiff.
Chad A. Readler, Gary L. Hausken, and Conrad J. DeWitte, Jr., U.S. Department of
Justice, Civil Division, Commercial Litigation Branch, P.O. Box 480, Ben Franklin Station,
Washington, D.C. 20044, for Defendant. Kurt G. Hammerle, Office of the Chief Counsel, NASA
Johnson Space Center, Of Counsel.
_________________________________________________________
OPINION AND ORDER GRANTING IN PART
DEFENDANT’S MOTION TO DISMISS
_________________________________________________________
WILLIAMS, Senior Judge.
This patent infringement case comes before the Court on Defendant’s motion to dismiss
some claims as time-barred. In this action, Plaintiff, Ross-Hime Designs, Inc. (“Ross-Hime”)
asserts that the National Aeronautics and Space Administration (“NASA”) infringed two of Ross-
Hime’s patents through NASA’s use and manufacture of robotic hand-like manipulators in two
anthropomorphic robotics systems, designated Robonaut 1 and Robonaut 2. Ross-Hime filed suit
on April 1, 2011, asserting that Robonaut 1 infringes claims 1, 3, 4, 5, 7, 8, 10, and 14 of the ’580
1
The Court issued this opinion under seal on August 24, 2018, and directed the parties to
file proposed redactions by September 7, 2018. Neither party has proposed redactions.
Accordingly, the Court publishes this opinion correcting errata.
patent and that Robonaut 2 infringes claims 1, 5, 14 and 15 of the ’580 Patent and claims 11, 14,
and 16 of the ’962 patent. Defendant seeks dismissal of Ross-Hime’s infringement claims with
respect to two iterations of Robonaut 1—Robonaut 1A and Robonaut 1B.2 Defendant contends
that these claims are time-barred because Ross-Hime’s cause of action accrued no later than June
16, 2003, and this suit was not filed until almost eight years later on April 1, 2011.
Because Ross-Hime submitted an administrative claim regarding Robonaut 1A on
September 1, 2001, the statute of limitations was tolled for six years while that administrative
claim was pending, and its infringement claim as to that device is timely. However, Ross-Hime’s
claim against Robonaut 1B accrued later—in 2002—was not the subject of an administrative
claim, and is time-barred. As such, Ross-Hime’s claim as to Robonaut 1B is dismissed as time-
barred.
Findings of Fact3
Ross-Hime is a Minnesota corporation specializing in the design of humanoid robotic
systems, including robotic manipulators and is the assignee of United States Patents 5,967,580
(“the ’580 patent”) and 6,658,962 (“the ’962 patent”). The inventions of the ’580 and ’962 patents
relate to anthropomorphic robotic manipulators in which the robot mimics the movements
performed by a human operator. Only the ’580 patent is asserted against Robonaut 1. The
invention of the ’580 patent more specifically “relates to controlled motion mechanical members
used as a mechanical manipulator and, more particularly, to a motion controllable,
anthropomorphic mechanical manipulator providing some of the capabilities of an upper human
torso.” ’580 Patent 1:8-12. Plaintiff asserts that the hands of Robonaut 1 infringe on independent
Claims 1 and 5 of the ’580 patent, and dependent Claims 3, 4, 7, 8, 10, 14, and 15, all of which
depend on Claim 1. Compl. ¶¶ 5-11; Ross-Hime Designs, Inc. v. United States, 126 Fed. Cl. 299,
314 (2016).
The asserted claims of the ’580 patent aim to robotically simulate a gripping mechanism,
and describe various actuators using differential movement to achieve the dexterous motion of a
thumb and forefinger and grasping motion of a human palm. Claim 1 of the ’580 patent is
illustrative:
1. An articulated manipulating system for mounting on a base in a robotic
manipulator and capable of engaging selected objects, and said system comprising:
a support frame having a base support for mounting on said base with said base
support having a first frame extension so as to extend therefrom in a first direction
2
Robonaut 1A’s right hand was assembled, attached to a robotic frame, and tested in 1999,
and its left hand was assembled, combined with the right hand on the robotic frame, and tested in
2000. J. Ex. 38, at 5. Robonaut 1B was built and tested in 2002. Id. NASA’s first Robonaut was
referred to as simply “Robonaut” until NASA built the second unit in 2002, and the units were
then called Robonaut A and Robonaut B. After NASA began developing a second Robonaut series
in 2006, the first two Robonaut models were renamed Robonaut 1A and Robonaut 1B.
3
These findings of fact are based upon evidence adduced at a hearing on Defendant’s motion
to dismiss. “Tr.” refers to that evidentiary hearing, and “J. Ex.” refers to joint exhibits.
2
and a second frame extension rotatable connected to said base support and
extending therefrom in a second direction at an angle to said first direction;
a first effector base rotatably connected to said first frame extension so as to be
rotatable with respect thereto in plural different directions;
a second effector base rotatable connected to said second frame extension so as to
be rotatable with respect thereto in plural different directions;
first pair of base linear actuators each having an end thereof rotatably connected to
said first frame extension at corresponding extension connection locations thereon,
and each having that opposite end thereof rotatably connected to said first effector
base at corresponding effector connection locations thereon so that any substantial
differentials in movement of these actuators cause corresponding substantial
motions of said first effector base towards a corresponding one of said extension
connection locations and so that substantial common movements of these actuators
causes substantial motions of said first said effector toward or away from both of
said extension connection locations; and
a second pair of base linear actuators each having an end thereof rotatable
connected to said second frame extension at corresponding extension connection
locations thereon, and each having that opposite end thereof rotatably connected to
said second effector base at corresponding effector connections locations thereon.
’580 Patent 27:42-28:9.
The hand-like manipulator of Claim 1 is depicted in Figure 11 of the ’580 patent:
3
’580 Patent Fig. 11.
The ’580 Patent issued on October 19, 1999, named Ross-Hime Designs, Inc., as the
assignee, and Mark Rosheim, Ross-Hime’s founder, as the inventor. Id. at 1. Mr. Rosheim initially
submitted the application for the ’580 patent on November 25, 1997, and that application was a
continuation of an abandoned application dated September 8, 1995, and a continuation-in-part of
another abandoned application dated June 30, 1995. ’580 Patent. In addition to the ’580 patent
and ’962 patent, Mark Rosheim is the named inventor on numerous other patents in the field of
robotic manipulators and has published several articles and books on the topic. Ross-Hime claims
that the Robonaut 1 hands infringe on the ’580 patent, in part, because the “differential drive of
the thumb and dexterous finger” of the Robonaut 1 are effectuated using “actuators,” as in the
invention described in the ’580 patent. See, e.g., J. Ex. 7.
4
Development of the Robonaut
NASA developed the Robonaut hand to assist with extravehicular activity on the then-in-
progress International Space Station. J. Ex. 25. Because many space station systems and tools
were designed for human operators, it was essential that this robotic system have a high degree of
anthropomorphic dexterity. Id. The Robonaut hand was one of several robotic hands that were
being developed to reduce the number of instances where astronauts were forced to leave the space
vehicle and expose themselves to the dangers of space. Id. In order to limit an astronaut’s
extravehicular time, the Robonaut hand needed to possess the dexterity equal to that of an astronaut
wearing a pressurized spacesuit. J. Ex. 26. This would allow the robotic hand to work with human-
rated tools and interface with systems on the space vehicle that were designed for human operation.
J. Ex. 17.
Work on the Robonaut hand began in Fiscal Year 1997, at NASA Johnson Space Center
in Houston, Texas, and was initially funded by NASA and later by the Defense Advanced Research
Projects Agency. J. Ex. 38, at 4. In the fall of 1998, NASA assembled the first Robonaut hand
for testing, and manufactured an arm to attach the hand to a torso. Id. at 5; Tr. 93 (Sept. 26, 2017).
On January 25, 1999, Dr. Myron Diftler, who was at the time an employee of Lockheed
Martin and is currently employed by NASA, and Mr. Christopher Lovchik, who was at the time a
NASA employee, filed for a patent on the technology utilized in the Robonaut hand listing NASA
as assignee. ’644 Patent. The United States Patent and Trademark Office issued U.S. Patent No.
6,244,644 (“the ’644 patent”) entitled “Compact Dexterous Robotic Hand,” on June 12, 2001,
listing NASA as assignee and naming Dr. Diftler and Mr. Lovchik as the inventors. Id. The
invention of the ’644 patent “relates to a compact, rugged, dexterous robotic hand that closely
resembles the function of a human hand . . . . Force is mechanically transmitted from drive
components in a forearm portion through the wrist section to operate the plurality of fingers and
thumbs.” Id. 1:10-17. The ’644 specification goes on to describe the operation of the hand, and
the patent includes the following model of the hand:
5
FIG. 2
Id. Fig. 2. “Fig. 2 [above] is an exploded view of the robotic hand including the flexible fingers,
palm member, palm housing, and lead screw assemblies.” Id. 7:52-54.
The Robonaut hand was publicly presented at the 1999 International Conference on
Robotics and Automation of the Institute of Electrical and Electronics Engineers. Tr. 84-85 (Sept.
26, 2017). At that conference, which took place in May in Detroit, Michigan, Dr. Diftler and Mr.
Lovchik presented the assembled hand with an accompanying paper entitled The Robonaut Hand:
A Dexterous Robot Hand for Space, subsequently published in the proceedings of the conference.
J. Ex. 25; Tr. 84-85, 272 (Sept. 26, 2017). The paper explained the purpose, design philosophy
and the resulting design, challenges faced, and the next steps to be taken, and included a
photograph of the hand and a figure breaking out the components:
6
Figure 1: Robonaut Hand Figure 2: Hand components
J. Ex. 25, at 1-2.
The paper also featured exploded views of the models and detailed descriptions of the
finger drive train, the dexterous fingers, grasping fingers, thumb, palm, and wrist/forearm. Id. at
2-5. The paper described the hand as “consist[ing] of a forearm which houses the motors and drive
electronics, a two degree of freedom wrist, and a five finger, twelve degree of freedom hand . . . .
The hand itself is broken down into two sections [Figure 2, above]: a dexterous work set which is
used for manipulation, and a grasping set which allows the hand to maintain a stable grasp while
manipulating or actuating a given object.” Id. at 2. The figures in the paper displaying the finger
leadscrew assembly, dexterous finger, decoupling links, grasping fingers, forearm base cam,
forearm assembly, and wrist mechanism are identical to drawings in the ’644 Patent. Compare
’644 Patent Figs. 2-14 with J. Ex. 25, at 2-5.
In the fall of 1999, after Dr. Diftler and Mr. Lovchik had presented the paper at the IEEE
conference, NASA integrated the hand with a partial torso and head mechanism. Tr. 93 (Sept. 26,
2017). The assembled unit was videotaped as part of an educational NASA video entitled
“Robonaut,” released on December 29, 1999. J. Ex. 11. In that video, a voice-over narrates as the
hand demonstrates several capabilities, including using tools intended for human operation and
dexterously manipulating objects. Id. The following stills taken from the video show the
Robonaut hand operating a power drill similar to a space torque wrench used to loosen or tighten
bolts on a spacecraft, and manipulating a tether of the sort used by astronauts to anchor themselves
to a spacecraft:
7
Id.
The video concluded with contact information:
J. Ex. 11.
The content of the video was taken from a resource reel dated December 1, 1999. See
Green Decl. ¶¶ 6-7 (stating that her search of NASA’s video archive “revealed a resource reel from
which content was taken to be used” in the December 29, 1999 video, and “the production date of
the resource reel . . . is December 1, 1999”).4
NASA added a second arm to Robonaut in October 2000, and a second hand to Robonaut
between October and December 2000. Tr. 93-95 (Sept. 26, 2017). NASA published a video
entitled “Robonaut: The Next Step in Robotics” on March 13, 2001, which showed both hands
working together, performing tasks such as stripping wire, opening packages, hooking and
unhooking tethers, tying a knot, and digging through simulated Martian soil. Id. at 40-45; J. Ex.
12; Green Decl. ¶ 5. The following still taken from the March 2001 video shows the Robonaut
“working with two tools, a simulated space screw driver and a hand drill”:
4
Ms. Green is a NASA employee “responsible for overseeing preservation projects,
providing oversight for cataloging support, and ensuring the successful maintenance of [Johnson
Space] Center imagery repositories.” Green Decl. ¶ 1. She “authorized and reviewed a search” of
NASA’s video archives regarding the subject Robonaut videos, and she “personally reviewed”
NASA’s records of the video and resource reel. Id. at ¶¶ 3, 9.
8
Tr. 41 (Sept. 26, 2017); J. Ex. 12. The video ended with the same slide as the previous video
advising the viewer on how to obtain additional information.
NASA began work on a second generation Robonaut unit in the fall of 2002, which was
given the moniker Robonaut B; the original unit was then renamed Robonaut A. J. Ex. 38, at 5.
Later, NASA would begin development of an operational Robonaut unit to be launched into orbit
for work aboard the International Space Station. That unit was designated as Robonaut 2, and
Robonauts A and B were renamed Robonaut 1A and 1B. Tr. 154-55 (Sept. 26, 2017).5
During the week of June 16, 2003, NASA conducted Human-Robot Spacewalk Squad
Tests, to evaluate Robonauts 1A and 1B in the role of assisting a human astronaut. J. Ex. 2. During
the experiment both Robonaut units, under the control of human teleoperators, helped NASA
astronaut Colonel Nancy Currie assemble a simulated truss structure. Id. In the video taken of
those tests, Robonaut 1A and Robonaut 1B can each be seen using both hands to assist in the
construction of the truss. Id. One of the gripping fingers on Robonaut 1B can be seen
malfunctioning and locked in an open position, but otherwise all four hands adequately perform
the required tasks, including picking up truss components and handing them to Astronaut Currie
and manipulating flexible cables. Id. In the 2003 video NASA had added tactile gloves over the
Robonaut hands in order to improve the grip and give enhanced feedback to the teleoperators. Tr.
35 (Sept. 26, 2017). The following stills taken from the June 2003 video show Colonel Currie
working with Robonaut 1A and Robonaut 1B to raise the truss structure and the Robonauts
“working to take a cable with a connector and hand it to [Colonel] Currie so she can connect it to
the truss, simulating assembly operations in space”:
5
In addition to Robonaut 1A and 1B, Defendant constructed two test fingers referred to as
the “Robonaut 1C finger[s].” Tr. 154 (Sept. 26, 2017). These fingers were used for vacuum
chamber testing designed to mimic the conditions of space. This testing was performed at the
Johnson Space Center from September 26, 2006, to September 30, 2006. Def.’s Ex. V. The 1C
fingers were not part of a complete hand or wrist assembly, and no complete Robonaut 1C device
was ever constructed. Tr. 71-72 (Sept. 26, 2017).
9
J. Ex. 2; Tr. 24, 28 (Sept. 26, 2017).
Technical Articles and Publications
In addition to the 1999 paper presenting the Robonaut hand, the Robonaut was the subject
of several technical publications throughout its development. A July 9, 2000 article published in
The Daily News of Galveston County, Texas, contained close-up pictures of the Robonaut hand
and discussed the grip strength, degrees of dexterity, and functions of the hand. J. Ex. 18. Articles
detailing the progress NASA had made on the Robonaut were featured in Volume 14 of
Autonomous Robots, published in 2003, in the 2005 and 2007 Proceedings of the IEEE
International Conference on Robotics and Automation, and in the Proceedings of the 2004
Conference on Human-Computer Interaction. J. Exs. 15-17, 26.
Correspondence Between Ross-Hime and NASA
From June 24, 2000, to October 1, 2001, NASA and various representatives of Ross-Hime
exchanged a series of six letters. In a June 24, 2000 letter to Chris Culbert6 at NASA Johnson
Space Center, Mr. Rosheim wrote:
Thank you for speaking with me regarding the fate of the Robotic Surrogate and
other matters.
Regarding the Robonaut Hand I believe that NASA is infringing on one of our basic
patents (see enclosure). This was made clear to Edith Taylor, Charles Price and
Chriss Lovchik when we delivered the Surrogate a few years ago. It is my
understanding that Chriss based his hand on drawings delivered under our NASA
contract for a direct drive hand.[7] A [sic] approach that still offers higher forces,
greater simplicity and lighter weight.
6
The addressee’s name is misspelled as “Chriss Culvert,” but Mr. Rosheim intended the
letter to be sent to Chris Culbert. J. Ex. 4; Tr. 348 (Sept. 27, 2017). Mr. Rosheim recalled that
Mr. Culbert was an engineer in NASA’s robotics group. Tr. 349 (Sept. 27, 2017).
7
Ross-Hime began developing robotic hands under a NASA contract in the late 1980s, and
produced a second generation of its robotic hand design under a subcontract with Lockheed
10
I would appreciate a response regarding the above at your earliest convenience. We
are very interested in granting NASA a license to continue this work and please
don’t misconstrue this letter in any other light.
J. Ex. 4. NASA did not respond to this letter. While the parties could not locate the referenced
enclosed patent, Mr. Rosheim testified that the reference was likely to the ’580 patent. Tr. 349,
386-88 (Sept. 27, 2018).
David Jasper, Ross-Hime’s CEO, sent a letter on July 22, 2001, to Walter Guy, “the
manager of an umbrella group” at the Johnson Space Center that “encompassed all robotics,”
according to Mr. Rosheim’s recollection. J. Ex. 5; Tr. 359 (Sept. 27, 2017). In that letter, Mr.
Jasper stated Ross-Hime’s belief that the ’644 Patent recently issued to NASA “reads on patents
held by Ross-Hime Designs” and that due to that perceived “overlap of our existing patents” Ross-
Hime was “seeking restitution including license fees and possible damages.” J. Ex. 5. Mr. Jasper
testified that Ross-Hime’s purpose in sending this letter was to “negotiate a license.” Tr. 315 (Sept.
27, 2017). He continued: “we felt they were using our technology and they should be paying for
it.” Id.
Hardie Barr, an attorney in NASA’s Office of Patent Counsel at Johnson Space Center,
responded in the following letter on August 16, 2001, seeking clarification about Ross-Hime’s
concerns:
We were somewhat surprised by the overall tone of subject letter which suggests a
feeling by Ross-Hime-Designs, Inc. that NASA has somehow acted improperly to
the detriment of Ross-Hime-Designs, Inc. Let me assure you, Mr. Jasper, that we
have no intention of depriving Ross-Hime Designs, Inc. of any rights to which it is
entitled. Perhaps you could help us understand your concern by expressing more
clearly what is the nature of any perceived impropriety.
As noted in subject letter, a patent (specifically, U.S. Patent No. 6,244,644,
Compact Dexterous Robotic Hand) issued to NASA (on June 12, 2001) naming
Christopher Lovchik and Myron Diftler as inventors. Subject letter suggests,
generally, that there are similarities between the screw drive of the fingers and
thumb of that patent and patents held by Ross-Hime Designs, but the nature of any
perceived similarities is not given.
***
Subject letter concludes with references to several legal concepts, including
“restitution,” “license fees,” and “damages,” but we are at a loss to understand why
Ross-Hime Designs, Inc. feels that these concepts are pertinent.
Engineering Sciences Company. Tr. 333-34 (Sept. 27, 2017). Ross-Hime’s subcontract was
completed on October 1, 1994. Id.
11
Mr. Jasper, we earnestly solicit your support in helping us resolve the perceived
conflict that your letter alludes to. Please provide us with more specific information
regarding the reason for your concern.
J. Ex. 6.
The parties agree that Ross-Hime responded to this letter with a letter dated September 1,
2001, but neither Ross-Hime nor NASA has been able to locate a copy of that letter. Tr. 319-22,
336-37, 416 (Sept. 27, 2017). NASA responded to this missing letter on September 13, 2001, “Re:
Letter: David P. Jasper, Ross-Hime Designs, Inc. to Hardie Barr, NASA Johnson Space Center,
dated September 1, 2001,” stating:
I wish to again express a desire on the Part of NASA to resolve any perception that
NASA has, somehow, deprived Ross-Hime Designs, Inc. of any rights.
In my response to your earlier letter (dated July 22, 2001), I requested (by letter
dated August 16, 2001) more specific information regarding why you felt that
NASA’s hand violated any of Ross-Hime Design’s patent rights. Subject letter
suggests that without “direct knowledge of [NASA’s] implementation of a hand,
[you] cannot be very specific.” In Subject letter you also suggested that we should
supply you with drawings and photographs of our “implementation of a hand” and
thus enable you to “elucidate” all of your claims.
***
Subject letter refers to your previous letter that mentioned a “differential drive of
the thumb and dexterous finger [that] is a very basic concept protected by [your]
patent #5967580 (specifically claim #1).” Rather than discuss general similarities,
I would like to point out some specific differences between Claim 1 of your Patent
No. 5,967,580 (‘580) and our implementation of the hand as described in our ‘644
patent.
***
While both patents involve “differential drives” as you suggest, they are vastly
dissimilar in the way they operate. The similarities: (a) Claim 1 of your ‘580 patent
claims “differentials in movement” of actuators that cause a desired movement of
the finger and (b) the actuators used in the NASA hand move cables in a
“differential manner” thus effecting a desired movement of the finger. The
differences: (a) As pointed out above; the ‘580 patent uses linear actuators, the
NASA hand (as described in the ‘644 patent) uses rotary actuators;[8] (b) in the ‘580
patent, the linear actuators are connected directly to the finger segment, whereas in
the NASA hand as described in the ‘644 patent, there are three intermediate
8
Defendant’s expert witness at the claim construction hearing, Dr. J. Kenneth Salisbury, Jr.,
testified that the difference between a rotary actuator and a linear actuator is that a rotary actuator
“causes rotation, and [a linear actuator] causes translation, straight line translation.” Tr. 342 (May
28, 2015). Plaintiff’s expert, Mr. Theodore F. Neils, testified that a rotational actuator “only goes
in a rotational mode.” Id. at 399.
12
elements between a rotary actuator and the finger segment. In summary, the
differential drive aspects of the ‘580 patent and the implementation of the NASA
hand as described in the ‘644 patent are different in kind and in manner of operation.
Accordingly, I cannot agree that the Ross-Hime Designs, Inc. patent (U.S. Patent
No. 5,967,580 reads on any implementation of the NASA hand as described in U.S.
Patent No. 6,244,644.
J. Ex. 7.
In an October 1, 2001 letter to Hardie Barr, Ross-Hime’s David Jasper responded to
NASA’s September 13, 2001 letter, and stated that “the purpose of our communication [was] to
seek proper licensing agreements for those implementations that read on our issued patents.” J.
Ex. 8. Mr. Jasper continued that “[w]e assert that the ‘644 patent provides differential movement
of the dextrous fingers and thumb in the same manner as the finger-like segments in our ‘580
patent. The distinctions in actuator methods that you emphasize are not the only point of overlap.”
Id.
In this October 1, 2001 letter Mr. Jasper further addressed NASA’s “interpretations of
actuator differences,” stating:
1. A linear actuator is nothing more than a powered device having an end output
which is a linear motion. Linear actuators are typically a package which
consists of a electric motor which can rotate in either direction that has been
connected to a mechanical system that converts the motion to back and forth
or in/out action. Some form of screw drive is the typical mechanical system
but the use of cams and levers also produces linear from rotary motion.
NASA’s dexterous hand is no different in that regard. In Col. 10 of ‘644 patent
in the paragraph beginning at line 28 where it clearly states that a rotary
actuator [91] is connected to a lead screw assembly to translate rotational
movement into linear movement to operate the fingers. In other words, the
packaging of the screw drive does not change its essential function, there is no
difference in kind.
2. The actuators set out in claim 1 of the ‘580 patent describe those actuators as
being connected to a structure consisting of bases, frames, and extensions,
none of which are limited to simulating a palm portion of a hand. Any other
structure supporting the manipulating system in that claim serves as a base
including palm-like portions, wrist-like portions, arm-like portions, or other
structures supporting the manipulating system. In patent ‘644 your location of
the actuators on/in the forearm is not different from our claim 1.
3. The actuators set out in claim 1 of the ‘580 patent are stated to be rotatably
connected to what you term the first finger segments, but there is no
requirement in our claims as to direct or indirect attachment. It is obvious in
both the ‘580 and ‘644 patents that the thumb and finger segments can rotate
with respect to the actuators. Such a connection is necessarily a rotatable
connection of the actuators and the dexterous finger and thumb segments for
13
purposes of claim 1. A flexible shaft is not different in kind and would be
included in our more broadly stated claim 1.
In other words, the ‘644 patent provides differential movement of the dexterous
fingers and thumb in the same manner as the finger-like segments in the ‘580 patent
by mounting those dexterous fingers on a two-degree of freedom joint just as the
finger-like segments in the ‘580 patent. Although the ‘644 patent device moves the
actuators further from those dexterous fingers and thumb, this is done by merely
using a longer drive to rotatably connect them to the effective linear actuators.
Id. (emphasis in original).
Mr. Jasper concluded the letter by stating that “[w]hile this discussion is stimulating it is
not moving us forward toward a license agreement.” Id. NASA did not respond to Ross-Hime’s
October 1, 2001 letter, and there is no further correspondence in the record.
Procedural History
Ross-Hime filed suit on April 1, 2011, asserting that Robonaut 1 infringes claims 1, 3, 4,
5, 7, 8, 10, and 14 of the ’580 patent and that Robonaut 2 infringes claims 1, 5, 14 and 15 of the
’580 Patent and claims 11, 14, and 16 of the ’962 patent. The Court held a claim construction
hearing and construed three terms common to the ’580 and ’962 patents and one term that appears
only in the ’962 patent. Ross-Hime Designs, Inc., 126 Fed. Cl. at 327. Defendant then moved to
dismiss the infringement claims directed against Robonaut 1 under Rule 12(b)(1)—namely, that
Robonaut 1 infringes on independent claims 1 and 5 and dependent claims 3, 4, 8, and 14
(dependent on claim 1), 7 (dependent on claim 3), and 10 (dependent on claim 4) of the ’580 patent.
The Court conducted an evidentiary hearing in St. Paul, Minnesota, on September 26-27, 2017, on
Defendant’s motion to dismiss.9
Discussion
Defendant asserts that Plaintiff’s claims with respect to Robonaut 1 are time-barred under
this Court’s six-year statute of limitations, 28 U.S.C. § 2501. Plaintiff counters that its claims are
timely because Robonaut 1 was not available for use until the six-year period before Plaintiff filed
suit. Plaintiff further argues that the statute of limitations was suspended under the accrual
suspension doctrine or tolled under 35 U.S.C. § 286.
Dismissal Under Rule 12(b)(1)
The Government waived its sovereign immunity and consented to be sued for patent
infringement in this Court under 28 U.S.C. § 1498(a), but that waiver is limited to claims of
infringement that are brought within the six-year jurisdictional time limit of § 2501. MacLean v.
United States, 454 F.3d 1334, 1336 (Fed. Cir. 2006) (holding that the jurisdictional limits of §
9
Because Plaintiff elected not to purchase a transcript of the evidentiary hearing, the parties
jointly requested that the post-hearing briefs be submitted 45 days after the transcript became
publically available. The Court granted the parties’ request and ordered that post-hearing briefs
would be due on March 1, 2018. The parties subsequently moved for several extensions to
complete post-hearing briefing, until May 18, 2018.
14
2501 are a condition on the Government’s waiver of sovereign immunity); Unitrac, LLC v. United
States, 113 Fed. Cl. 156, 160 (2013). Such waivers of sovereign immunity must be construed
narrowly and in favor of the Government. Lane v. Pena, 518 U.S. 187, 192 (1996). Subject-matter
jurisdiction is a threshold requirement and cannot be waived by the parties. Arbaugh v. Y&H
Corp., 546 U.S. 500, 514 (2006); Starobin v. United States, 662 F.2d 747, 750 (Ct. Cl. 1981) (per
curiam). The Court lacks subject-matter jurisdiction over claims that are barred by § 2501, and
such claims must be dismissed. John R. Sand & Gravel Co. v. United States, 552 U.S. 130, 133-
34 (2008).
Once subject-matter jurisdiction has been challenged, the plaintiff bears the burden of
establishing the Court’s jurisdiction by a preponderance of the evidence. Reynolds v. Army & Air
Force Exch. Serv., 846 F.2d 746, 748 (Fed. Cir. 1988). To carry that burden, the plaintiff must
present “competent proof” and affirmatively show that the Court has jurisdiction. McNutt v. Gen.
Motors Acceptance Corp., 298 U.S. 178, 189 (1936). The Court may consider this evidence and
resolve factual disputes when evaluating whether it has jurisdiction over the challenged claims.
Unitrac, 113 Fed. Cl. at 159; see Moyer v. United States, 190 F.3d 1314, 1318 (Fed. Cir. 1999)
(finding that fact-finding is proper when considering a motion to dismiss where the jurisdictional
facts are challenged.); Schultz v. United States, 92 Fed. Cl. 213, 218 (2010).
Accrual of Causes of Action for Patent Infringement
Under the statute of limitations in 28 U.S.C. § 2501, a patent infringement claim against
the Government must be brought within six years after that claim “first accrues.” A patent owner’s
cause of action for infringement under 28 U.S.C. § 1498(a) accrues when the accused device is
“first used or manufactured by the Government.” Decca Ltd. v. United States, 640 F.2d 1156,
1166 (Ct. Cl. 1980). An accused device is deemed to have been “manufactured” when it is “made
to include each limitation in the thing invented and is therefore suitable for use.” FastShip, LLC
v. United States, 892 F.3d 1298, 1306 (Fed. Cir. 2018). “Generally, infringement can occur only
when the claimed combination has been assembled and is used or is available for use.” Lemelson
v. United States, 752 F.2d 1538, 1548 (Fed. Cir. 1985). “A device may be ‘used’ in many different
ways, and all uses that rely on the teachings of a patent constitute infringement.” Hughes Aircraft
Co. v. United States, 29 Fed. Cl. 197, 226 (1993). “[N]either complete assembly nor complete
testing” is necessary in order for a device to be “available for use.” Id. at 218 (citing Paper
Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 19-20 (Fed. Cir. 1984)).
For the purposes of 28 U.S.C. §1498(a) the Government effects a one-time taking of a
license to a specific device the instant that it is first available for use. Starobin, 662 F.2d at 749;
see also Decca Ltd. v. United States, 544 F.2d 1070, 1082 (Ct. Cl. 1976) (cause of action “arises
when the accused equipment is first available for use”). Alleged 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. Starobin, 662 F.2d at 749; Unitrac, 113 Fed Cl. at 160-61.
The first hand of what was later referred to as Robonaut 1A was assembled and presented
to the public at the May 1999 IEEE International Conference on Robotics and Automation. In an
accompanying paper, Dr. Diftler and Christopher Lovchik explained the mechanisms of the robotic
hand and included exploded views of the various components and described “[s]everal novel
mechanisms . . . . that allow the Robonaut hand to achieve capabilities approaching that of an
15
astronaut wearing a pressurized space suited glove.”10 J. Ex. 25, at 6. For example, the paper
described the hand as “[having] a total of fourteen degrees of freedom. It consists of a forearm
which houses the motors and drive electronics, a two degree of freedom wrist, and a five finger,
twelve degree of freedom hand.” Id. at 2. The paper elaborated that “the motors are mounted
outside the hand, and mechanical power is transmitted through a flexible drive train” and that “[t]o
avoid the problems associated with using tendons, the hand uses flex shafts to transmit power from
the motors in the forearm to the fingers. The rotary motion of the flex shafts is converted to linear
motion in the hand using small modular leadscrew assemblies.” Id.
The ’580 patent issued on October 19, 1999. Any claim for infringement of the ’580 patent
could accrue only after that date. Starobin, 662 F.2d at 750 (when a patent is issued after an item
has been procured by the Government, the claim for infringement accrues at the time of “the first
use of the item subsequent to the issuance of the patent”); see 28 U.S.C. § 1498(a) (2012)
(“Whenever an invention described in and covered by a [U.S.] patent . . . . is used or manufactured
by or for the United States . . . .”) (emphasis added). While the extent of the functionality of the
hand at the time of the May 1999 conference is uncertain, it is clear that the hand was functional
when it was videotaped performing several core functions in an educational video NASA released
on December 29, 1999. J. Ex. 11. This video, and the 2001, 2003, and 2006 videos that also show
the Robonaut hand, were released by NASA to “let people know what [NASA was] working on.”
Tr. 39 (Sept. 26, 2017). In the December 1999 video, entitled “Robonaut,” the hand can be seen
turning the page of a book, opening and closing its dexterous fingers and gripping fingers
independently, manipulating a nut and bolt combination and a screwdriver, gripping and lifting a
15-pound dumbbell, operating a standard household power drill, clipping a tether to an anchor
using a carabiner, removing and replacing Velcro strips, using tweezers to pick up small objects,
and being teleoperated by a human operator. J. Ex. 11.
The asserted claims of the ’580 patent describe the mechanics for “[a]n articulated
manipulating system for mounting on a base in a robotic manipulator and capable of engaging
selected objects,” and aim to robotically simulate a gripping mechanism. ’580 Patent 27:42-44.
In the December 1999 video, the first Robonaut 1A hand is seen performing a core function as it
relates to the asserted claims of the ’580 patent—anthropomorphically manipulating objects. J.
Ex. 11. Because the first Robonaut 1A hand was available to the Government for its use no later
than the time NASA filmed the December 29, 1999 video on December 1, 1999, Ross-Hime’s
claim that the first Robonaut 1A hand infringed the ’580 patent accrued no later than December 1,
1999.
NASA built a second Robonaut 1A hand in 2000. J. Ex. 38, at 5; Tr. 93-95 (Sept. 26,
2017). The record does not reflect the precise dates NASA built and assembled the second
Robonaut 1A hand. According to a tutorial NASA created in 2014, for the claim construction
hearing in this case—which was admitted into evidence without objection—in “Fall 2000,” NASA
added to Robonaut 1A the “right wrist,” “left arm,” “left hand,” “waist and torso,” “left limb
10
Dr. Myron Diftler is a NASA employee and one of the two named inventors, along with
Christopher Lovchik, on the ’640 Patent. J. Ex. 24. He testified on NASA’s behalf at the
evidentiary hearing. Dr. Diftler has a doctorate in mechanical engineering from Rice University,
a master’s degree in electrical engineering from Yale University, and a bachelor’s degree in
mechanical and aerospace engineering from Princeton University. Tr. 9 (Sept. 26, 2017).
16
control,” “voice interface,” and “tested force feedback.” J. Ex. 38, at 7. Dr. Diftler testified that
based on a picture in the tutorial dated October 10, 2000, Robonaut 1A had two arms by that date,
and based on another photo labeled “Fall 2000,” that it had a second hand later in 2000, “as in
November or December . . . or maybe even later in October.” Tr. 94-95 (Sept. 26, 2017). NASA
did not order any additional parts for Robonaut 1A after December 2000. Id. at 158.
NASA later manufactured an additional Robonaut 1 device, Robonaut 1B. As with the
second Robonaut 1A hand, the record does not clearly reflect Robonaut 1B’s stages of
development. NASA’s 2014 claim construction tutorial provides a “Robonaut development
history” that lists a date of “Fall 2002” for “Unit B,” and includes photos of Robonaut 1B dated
“October 2002.” J. Ex. 38, at 5, 10. Dr. Diftler testified that Robonaut 1B was fully operational
no later than October 2002, when Dr. Diftler himself displayed the Robonaut 1B “performing
simple motions” at the 2002 World Space Conference in Houston, Texas. Tr. 95-96 (Sept. 26,
2017) (Dr. Diftler testifying he is “very confident” of October 2002 date); see J. Ex. 38, at 10
(photo of completed Robonaut 1B dated October 2002). Dr. Diftler also testified that NASA did
not order any additional parts for Robonaut 1B after December 2002, although it may have ordered
spare parts in 2003. Tr. 158-60 (Sept. 26, 2017).
NASA’s manufacture of the second Robonaut 1A hand and Robonaut 1B gave rise to new
causes of action. Starobin, 662 F.2d at 749 (“[F]or each particular device only one right to recovery
can arise, and that right must occur upon the first manufacture or use by or for the government of
that specific device.”). The second Robonaut 1A hand was available for the Government’s use in
“Fall 2000,” between October 10, 2000, and December 2000. Robonaut 1B was available for the
Government’s use in “Fall 2002,” between September and October 2002. Accordingly, Ross-
Hime’s causes of action for infringement by the second Robonaut 1A hand and Robonaut 1B
accrued at latest in December 2000, and October 2002, respectively.11
Accrual Suspension
Although NASA completed the first Robonaut 1A hand by December 1999, the second
Robonaut 1A hand by December 2000, and Robonaut 1B by October 2002, Ross-Hime argues that
NASA’s “lawful concealment” of the Robonaut technology should trigger the accrual suspension
doctrine. Ross-Hime does not articulate when it believes the limitations period began to be
11
Relying on the fact that NASA mounted the completed Robonaut 1 hands and torso on
various lower bodies after 2002, Ross-Hime asserts that its claims regarding Robonaut 1 did not
accrue until 2006, because Robonaut 1 was in development until then. Pl.’s Post-Hearing Br. 7-9.
The critical question is whether subsequent development of the device created substantial
differences with respect to those aspects of the device that allegedly infringe on the patent. Unitrac,
LLC v. United States, 113 Fed. Cl. 156, 162 (2013). The asserted claims of the ’580 patent
describe the mechanics of a robotic hand, and in particular, the differential movement of the
dexterous fingers and thumb. ’580 Patent 27:42-28:9. NASA’s mounting of the completed upper
body and hands on different robotic lower bodies had no impact on the ability of the device to
interact with and manipulate objects as described by the ’580 patent. Tr. 242-43, 284-85 (Sept.
26, 2017). As such, the fact that NASA mounted the completed Robonaut 1 hands on different
robotic lower bodies does not affect the accrual of Ross-Hime’s claims with respect to Robonaut
1.
17
suspended or was reinstated, although it suggests that the limitations period was suspended at least
until this case was filed in April 2011.
“[A]ccrual of a claim against the United States is suspended, for purposes of 28 U.S.C.
§ 2501, until the claimant knew or should have known that the claim existed.” Martinez v. United
States, 333 F.3d 1295, 1319 (Fed. Cir. 2003) (en banc). To invoke this rule, a plaintiff “must either
show that defendant has concealed its acts with the result that plaintiff was unaware of their
existence or it must show that its injury was inherently unknowable at the accrual date.” Id.
(internal citation and quotation marks omitted); see also Ingrum v. United States, 81 Fed. Cl. 661,
667 (2008), aff’d 560 F.3d 1311 (Fed. Cir. 2009) (citing Japanese War Notes Claimants Ass’n of
Phil., Inc. v. United States, 373 F.2d 356, 358-59 (Ct. Cl. 1967)). “The accrual suspension rule is
strictly and narrowly applied.” Ingrum, 560 F.3d at 1315 (internal citations and quotation marks
omitted).
Ross-Hime does not allege that the infringement was inherently unknowable. Rather,
Ross-Hime argues that NASA “kept the development of Robonaut 1 secret,” “restricted any public
disclosures of Robonaut 1,” and “has continued to restrict” information regarding the Robonaut 1
technology “throughout this litigation.” Pl.’s Post-Hearing Br. 16-18. The record provides no
support for Ross-Hime’s contention. The first Robonaut 1A hand was featured in a public
educational video in December 1999, the complete Robonaut 1A was featured in a video in March
2001, and Robonaut 1A and Robonaut 1B were shown working side-by-side in a video in June
2003. All three videos specifically listed a NASA contact for additional information. J. Exs. 2,
11, 12; see Tr. 34, 39, 46 (Sept. 26, 2017) (Dr. Diftler explaining that videos of Robonaut were
prepared in 1999, 2001, and 2003 for public affairs purposes “to let people know what we were
working on” and that the videos were publicly released). NASA’s Robonaut hands were discussed
in scholarly and news articles and technical papers released in July 2000, 2003, April 2004, April
2005, and April 2007. J. Exs. 15-18, 25-26.
Additionally, NASA filed its ’644 patent application on January 25, 1999, and the patent
issued on June 12, 2001. J. Ex. 24. The ’644 patent further disclosed the technology used in the
Robonaut 1, as evidenced by the identical drawings in the ’644 patent and Dr. Diftler’s 1999
technical paper regarding the Robonaut. Compare ’644 Patent Figs. 2-14 with J. Ex. 25, at 2-5;
see also J. Ex. 7.
To invoke the accrual suspension rule, Ross-Hime must demonstrate “that defendant has
concealed its acts with the result that plaintiff was unaware of their existence . . . .” Martinez, 333
F.3d at 1319 (internal citation and quotation marks omitted). Not only has Ross-Hime failed to
demonstrate that NASA concealed the Robonaut 1 technology, but Ross-Hime’s own writings
establish that Ross-Hime was aware that Robonaut 1 allegedly infringed the ’580 patent as early
as June 24, 2000, when Mr. Rosheim first informed NASA by letter that he believed “the Robonaut
Hand” was “infringing on one of [Ross-Hime’s] basic patents.” J. Ex. 4. Because NASA did not
conceal the Robonaut, the limitations period was not suspended.
Administrative Tolling Under 35 U.S.C. § 286
The six-year statute of limitations is subject to an administrative tolling period of up to six
additional years under 35 U.S.C. § 286. This statute provides:
18
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 notice to the claimant that his claim has been denied shall not be
counted as part of the [six-year] period referred to in the preceding paragraph.
35 U.S.C. § 286 (2012).
This provision is intended to allow the Government “time to carefully consider potential
claims, and possibly correct its mistakes, before having to proceed with costly litigation.” Dow
Chem. Co. v. United States, 32 Fed. Cl. 11, 20 (1994), aff’d in part and rev’d in part on other
grounds, 226 F.3d 1334 (Fed. Cir. 2000); Custer v. United States, 622 F.2d 554, 558 (Ct. Cl. 1980);
Fairchild Engine & Airplane Corp. v. United States, 285 F.2d 131, 133 (Ct. Cl. 1961) (“[T]he
tolling provision of [35 U.S.C. § 286] is as much for the benefit of the Government as it is for the
benefit of patentees. It permits Government agencies to dispose of such claims outside of court.”).
“The tolling period under 35 U.S.C. § 286 is equal to the shorter of: (i) six years or (ii) the time
between the receipt of the claim by the government and the mailing of a notice of denial of the
claim by that agency or department.” McCreary v. United States, 35 Fed. Cl. 533, 545 (1996).
In order to satisfy the statutory requirement of a “written claim for compensation,” “a
writing must be calculated to make a Government officer reasonably aware that a claim is being
made.” Motorola, Inc. v. United States, 13 Cl. Ct. 420, 428 (1987). Thus, “[i]n determining the
applicability of the tolling provision of 35 U.S.C. § 286 . . . the decisive question is whether the
patent owner’s notice to the Government of its claim for infringement is sufficiently detailed to
afford the Government a realistic opportunity to consider and settle the claim.” Custer, 622 F.2d
at 558.12
Ross-Hime sent three letters to NASA between June 24, 2000, and October 1, 2001. The
first letter, sent by Mr. Rosheim to Chris Culbert at NASA Johnson Space Center, set forth Ross-
Hime’s position that “[r]egarding the Robonaut Hand I believe that NASA is infringing on one of
our basic patents (see enclosure).” J. Ex. 4. The enclosure was likely the ’580 patent, according
to Mr. Rosheim, although he could not be certain. Tr. 350, 386 (Sept. 27, 2017). The record does
not include a response by NASA.
12
Defendant asserts that an administrative claim must state a demand for a “sum certain” to
constitute a “written claim for compensation” under 35 U.S.C. § 286. However, Defendant relies
exclusively on cases addressing claims submitted under the Contract Disputes Act, 41 U.S.C. §
7101 et seq., and the Federal Tort Claims Act, 28 U.S.C. § 2674. These cases are inapposite. The
Federal Acquisition Regulation mandates that a “claim” include a demand for “a sum certain.” 48
C.F.R. § 2.101 (2017). Similarly, the implementing regulations under the Federal Tort Claims Act
expressly require that a claim contain a demand for “a sum certain.” 28 C.F.R. § 14.2(a) (2018).
Here, Section 286 makes no mention that a claim demand a sum certain.
19
About a year later, on July 22, 2001, David Jasper, Ross-Hime’s Chief Executive Officer,
sent a letter to Walter Guy, NASA’s “manager of an umbrella group” that “encompassed all
robotics” at the Johnson Space Center, stating that the ’644 patent “reads on patents held by Ross-
Hime Designs” and that due to that perceived “overlap of our existing patents” Ross-Hime was
“seeking restitution including license fees and possible damages.” J. Ex. 5; Tr. 359 (Sept. 27,
2017). NASA’s Hardie Barr, of Johnson Space Center’s Office of Patent Counsel, responded to
Ross-Hime’s July 22, 2001 letter on August 16, 2001, requesting “more specific information
regarding the reason for” Ross-Hime’s concerns that NASA infringed its ’580 patent. J. Ex. 6.
Ross-Hime provided the requested information in a letter dated September 1, 2001. Tr. 319-21,
336-38 (Sept. 27, 2017).
Despite comprehensive searches, neither party could locate a copy of Ross-Hime’s
September 1, 2001 letter. Tr. 416, 475-76 (Sept. 27, 2017). Nonetheless, its contents can be
gleaned from NASA’s September 13, 2001 response. Mr. Jasper testified that he has no doubt that
quotes from the September 1, 2001 letter included in NASA’s September 13, 2001 are accurate.
Tr. 320-23 (Sept. 27, 2017). The September 13, 2001 letter, whose subject line stated “Letter:
David P. Jasper, Ross-Hime Designs, Inc. to Hardie Barr, NASA Johnson Space Center, dated
September 1, 2001,” recounted Ross-Hime’s claims in its September 1, 2001 letter and set out
NASA’s position on Ross-Hime’s claims that NASA infringed its patents:
Ross-Hime’s September 1, 2001 letter addressed NASA’s “implementation of a hand” and
addressed the “differential drive of the thumb and dexterous finger [that] is a very basic
concept protected by [Ross-Hime’s] patent #5967580 (specifically claim #1).” J. Ex. 7, at
1.
NASA wished “to resolve any perception that NASA has, somehow, deprived Ross-Hime
Designs, Inc. of any rights.” Id.
Mr. Barr identified specific differences between the ’580 patent “and [NASA’s]
implementation of the hand as described in [NASA’s] ’644 patent.” Id.
Mr. Barr concluded that he could “not agree that the Ross-Hime Designs, Inc. patent (U.S.
Patent No. 5,967,580 reads on any implementation of the NASA hand as described in U.S.
Patent No. 6,244,644.” Id. at 2.
Ross-Hime’s David Jasper responded to NASA’s September 13, 2001 letter in an October
1, 2001 letter, addressed to attorney Hardie Barr in NASA’s Office of Patent Counsel, reiterating
that “the purpose of our communication is to seek proper licensing agreements for those
implementations that read on our issued patents.” J. Ex. 8. Ross-Hime disputed NASA’s
contention in its September 13, 2001 letter that the ’580 patent was distinguishable from the
Robonaut 1A, and reiterated that Ross-Hime was requesting that NASA obtain a license from
Ross-Hime for NASA’s alleged infringement of the ’580 patent. Id.
A license is a means of obtaining compensation for use of intellectual property. See, e.g.,
Pratt & Whitney Can., Inc. v. United States, 17 Cl. Ct. 777, 790 (1989), aff’d, 897 F.2d 539 (Fed.
Cir. 1990) (letter from the plaintiff asserting infringement and offering to discuss a license “stated
the elements of an administrative claim”). Mr. Jasper testified that Ross-Hime’s purpose in
sending the July 22, 2001 letter was to “negotiate a license” because Ross-Hime believed NASA
20
was “using our technology and . . . should be paying for it.” Tr. 315 (Sept. 27, 2017). The record
of the parties’ correspondence establishes that Ross-Hime’s claim in its September 1, 2001 letter
was clear: Robonaut 1A infringed Ross-Hime’s ’580 patent because of specifically identified
overlap between the claims in ’580 patent and Robonaut 1A, and Ross-Hime was seeking
compensation by way of a license agreement. Accordingly, Ross-Hime’s September 1, 2001 letter
constituted a claim that NASA’s Robonaut 1A infringed the ’580 patent and NASA owed Ross-
Hime compensation. As recounted in NASA’s September 13, 2001 letter, this claim was
sufficiently detailed to permit NASA to resolve it. As such, Ross-Hime’s September 1, 2001 letter
began tolling the statute of limitations under 35 U.S.C. § 286 until NASA denied its claim in
writing or the tolling period expired. 35 U.S.C. § 286; see Dynamics Corp. of Am. v. United
States, 5 Cl. Ct. 591, 598 (1984), aff’d in part and rev’d in part on other grounds, 766 F.2d 518
(Fed. Cir. 1985) (tolling statute of limitations under § 286 where the plaintiff had sent letters to 13
departments and agencies sufficiently identifying the patent at issue and the accused items); cf.;
Motorola, 13 Cl. Ct. at 428 (declining to apply § 286 where the purported infringement claim was
a single sentence in a bid stating that a specified Motorola patent “applies against the transponder
of the subject proposal” as illustrated in an accompanying schematic drawing, and did not include
“a request for compensation, either express or implied.”).
Although Ross-Hime’s September 1, 2001 letter was an administrative claim, it only
addressed Robonaut 1A because, as of September 2001, Robonaut 1A was the only Robonaut in
existence. NASA manufactured the first Robonaut 1A hand in 1999, and the second Robonaut 1A
hand in 2000. NASA did not manufacture Robonaut 1B until 2002. See J. Ex. 38, at 5; Tr. 94-96
(Sept. 26, 2017). Ross-Hime did not submit additional correspondence to NASA after Robonaut
1B was manufactured in 2002. As such, only Robonaut 1A was the subject of Ross-Hime’s
September 1, 2001 administrative claim.
Defendant contends that even if Ross-Hime submitted an administrative claim, NASA’s
September 13, 2001 letter to Ross-Hime denied that claim and the statute of limitations stopped
being tolled as of that date. The Court disagrees. Section 286 tolls the statute of limitations from
the date the Government receives a written claim for compensation until “the date of mailing by
the Government of a notice to the claimant that his claim has been denied . . . .” 35 U.S.C. § 286.
Here, the Government did not provide “notice” to Ross-Hime that its claim had been denied. In
his September 13, 2001 response to Ross-Hime’s September 1, 2001 letter, Hardie Barr, of
NASA’s Office of Patent Counsel at the NASA Johnson Space Center, listed “specific differences
between Claim 1 of” the ’580 Patent and NASA’s “implementation of the [Robonaut] hand.” J.
Ex. 7. While Mr. Barr could not “agree that the Ross-Hime Designs, Inc. patent (U.S. Patent No.
5,967,580) reads on any implementation of the NASA hand as described in U.S. Patent No.
6,244,644,” he did not expressly deny Ross-Hime’s claim or indicate that his letter constituted the
agency’s final action. Id.; cf. Unitrac, 113 Fed. Cl. at 165 (concluding that claim was denied where
agency letter provided that it was a “final agency action”); Ideal Innovations Inc. v. United States,
No. 17-889C, 2018 WL 2949464, at *6 (Fed. Cl. June 13, 2018) (claim was denied where agency
letter expressly stated that “we have denied your Administrative Claim”). Ross-Hime itself did
not view NASA’s September 13, 2001 letter as a denial of its claim, as it responded to NASA’s
September 13, 2001 letter on October 1, 2001, disputing NASA’s assertion that Robonaut 1 was
distinguishable from the ’580 patent. J. Ex. 8. NASA did not send Ross-Hime further
correspondence. Tr. 324, 368-69 (Sept. 27, 2017).
21
In order for agency conduct to constitute “final agency action” such that a claim is ripe for
judicial review, it must satisfy two factors: the action must mark the “consummation of the
agency’s decision making process—it must not be of a merely tentative or interlocutory nature,”
and “must be one by which rights or obligations have been determined or from which legal
consequences will flow.” Sys. Application & Techs., Inc. v. United States, 691 F.3d 1374, 1384
(Fed. Cir. 2012) (internal citations and quotation marks omitted). Mr. Barr’s September 13, 2001
letter lacked indicia that it constituted “final agency action” or was the conclusion of the agency’s
decisionmaking process.
Contrary to Defendant’s suggestion, Mr. Barr’s September 1, 2001 letter could not have
constituted a denial of Ross-Hime’s claim under NASA’s governing procedures at the time.13
NASA’s procedures were not published regulations, and there is no suggestion in the record that
Ross-Hime was aware of NASA’s internal procedures governing administrative patent
infringement claims as of the dates of its correspondence with NASA between 2000 and 2001.
NASA’s procedures did not authorize Mr. Barr to deny claims. Those procedures provided that
“[a]ll correspondence appearing to allege patent . . . infringement, whether or not the
correspondence satisfies all of the requirements of a claim, should be forwarded to Headquarters,
along with any information known about the alleged claim, for processing and reply.” Dvorscak
Decl. Attach. 2, at 2. NASA’s procedures further required that NASA Headquarters either “inform
the prospective claimant that a claim has not been made, and specifically identify the information
needed to perfect the claim,” or otherwise conduct a preliminary investigation and thereafter
acknowledge the claim. Id. at 2-3.
NASA’s procedures specified that “claims should not be denied or settlement negotiations
initiated without the prior approval of Headquarters.” Id. at 6. NASA Headquarters had the
exclusive authority to reject a claim, and Mr. Barr, a patent counsel at a local NASA installation,
did not have such authority. Tr. 470-71 (Sept. 27, 2017). NASA’s procedures further provided
that if Headquarters determined that the claim should be denied, “[t]he claimant should be provided
with the basis on which the claim is being denied . . . .” Dvorscak Decl. Attach. 2, at 9. NASA
did not forward Ross-Hime’s letters to NASA Headquarters, and Headquarters did not deny Ross-
Hime’s claim, or inform Ross-Hime of “the basis on which the claim [was] being denied.” Id.; Tr.
473-74 (Sept. 27, 2017). Mark Dvorscak, Intellectual Property counsel at NASA Headquarters,
testified that if Ross-Hime submitted an effective administrative claim that was not acted upon by
Headquarters, then the statute of limitations would be tolled for six years. Tr. 474 (Sept. 27, 2017).
Here, because NASA never denied Ross-Hime’s claim, the statute of limitations with respect to
Robonaut 1A was tolled under § 286 for six years from NASA’s receipt of Ross-Hime’s
13
Mark Dvorscak, Intellectual Property counsel at NASA Headquarters, testified that NASA
had procedures in place for handling administrative claims for patent infringement at the time of
Ross-Hime’s correspondence with NASA regarding the Robonaut. Tr. 446-49 (Sept. 27, 2017);
see Dvorscak Decl. Years later, on March 13, 2012, NASA’s internal procedures were codified at
14 C.F.R. § 1245.200-205. Rules and Regulations for National Aeronautics and Space
Administration, 77 Fed. Reg. 14,686-01 (Mar. 13. 2012) (codified at 14 C.F.R. Part 1245). Prior
to the notice of proposed rulemaking on July 26, 2011, NASA’s procedures were not published in
the Code of Federal Regulations. Tr. 469 (Sept. 27, 2017).
22
administrative claim on September 1, 2001, until September 1, 2007. See McCreary, 35 Fed. Cl.
at 545-46; Dynamics, 5 Cl. Ct. at 598.
Conclusion
Ross-Hime’s claim that Robonaut 1 infringes claims 1, 3, 4, 5, 7, 8, 10, and 14 of the ’580
patent accrued in December 1999, with respect to the first hand of Robonaut 1A, in December
2000, with respect to the second Robonaut 1A hand, and in October 2002, with respect to Robonaut
1B. Ross-Hime’s September 1, 2001 letter to NASA was an administrative claim seeking
compensation for NASA’s patent infringement under 35 U.S.C. § 286 with respect to Robonaut
1A, the only Robonaut that existed at that time. Because NASA never denied Ross-Hime’s claim,
the statute of limitations regarding Robonaut 1A was tolled from September 1, 2001, until
September 1, 2007, while its administrative claim was pending. Ross-Hime timely filed this action
on April 1, 2011, with respect to Robonaut 1A.
The statute of limitations was not tolled with respect to Ross-Hime’s cause of action for
infringement as to Robonaut 1B. Ross-Hime’s September 1, 2001 administrative claim did not
address Robonaut 1B, and Ross-Hime did submit any correspondence to NASA after Robonaut
1B was manufactured in 2002. Accordingly, Ross-Hime was required to file suit no later than
October 2008, with respect to Robonaut 1B.
Because Ross-Hime’s filing of this action on April 1, 2011, was within the jurisdictional
time limitations of § 2501 with respect to Robonaut 1A, but outside the jurisdictional time
limitations with respect to Robonaut 1B, Defendant’s motion is GRANTED IN PART as to
Robonaut 1B.
s/Mary Ellen Coster Williams
MARY ELLEN COSTER WILLIAMS
Senior Judge
23