In the United States Court of Federal Claims
No. 16-346C
(Originally filed: November 29, 2021)
(Re-issued: January 11, 2022)1
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GEOSPATIAL TECHNOLOGY Patent infringement; 35
ASSOCIATES, LLC
U.S.C. § 102(a) (2012)
(pre-AIA); Anticipation;
Plaintiff,
Public accessibility of
v. prior art; Inherency;
Reconsideration.
THE UNITED STATES, Manifest injustice.
Defendant.
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Richard T. Matthews, Raleigh, NC, for plaintiff.
Jenna Munnelly, Trial Attorney, United States Department of Justice,
Commercial Litigation Branch, Civil Division, Washington, DC, with whom
were Brian M. Boynton, Acting Assistant Attorney General, and Gary L.
Hausken, Director, for defendant.
ORDER
BRUGGINK, Judge.
This is a patent and copyright infringement suit brought against the
United States for the alleged unauthorized use of plaintiff’s intellectual
property in its target detection system and software. On April 8, 2021, we
granted partial summary judgment to defendant, holding that the ‘489 patent
was invalid because it was anticipated by a government system in use and
1
This order was first filed under seal to afford the parties an opportunity to
propose the redaction of any protected material. The parties informed the
court that no redactions were necessary. The order thus appears as in the
original except for correction of three minor clerical errors.
publicly known at the time of invention.2 Geospatial Tech. Assocs., LLC v.
United States, No. 13-307C, 2021 WL 2325007 (Fed. Cl. April 8, 2021). The
copyright claim remains pending. Plaintiff then moved for reconsideration
on May 6, 2021, alleging six legal and procedural errors. The court held a
status conference on June 3, 2021, to discuss the issues raised in the
reconsideration motion and the government’s invocation of the state secret
privilege. A briefing schedule for the motion for reconsideration was also
set. The case was subsequently transferred to the undersigned. Briefing on
reconsideration has since been completed, and oral argument was held on
November 9, 2021. As explained below, we grant reconsideration on the
issue of the inherency of the unmixing function of the ‘489 patent.
The ‘489 claims a system for “object based identification, sorting and
ranking of target detections . . . .” ‘489 Patent at 1. In general terms, it does
this by assigning a “score for each pixel” in each image captured. Id. “A
region around one or more pixels with the determined detection scores which
are higher than the determined detection scores for the remaining pixels . . .
is identified” for each image. Id. Then, an “object based score for each
identified region” in each of the images “is determined.” Id. The software
then provides to the user of the system “one or more identified regions” with
the preset “object based score” to review for targets. Id. The patent’s figure
2 breaks this process into five steps: 1) obtaining images; 2) applying a
statistical detection filter to generate a per pixel detection score; 3) “apply
spatial process to per pixel . . . scores to identify regions” and to determine
the score “in each detection plane;” 4) determining “corresponding
geographical information for each identified region;” 5) and providing the
selected regions and object scores “with corresponding geographical
information.” Id. at 3. This method is taught by 33 claims in the patent, 30
of which were at issue and addressed by the court on summary judgment.
See Geospatial, 2021 WL 2325007, at *3. For purposes of this order, we
need not again recite the language of the claims. It appears in our earlier
opinion. Id. at *3-8
Defendant offered the Civil Air Patrol Hyperspectral Sensor System
(“Archer”) as prior art and the report of its expert, Alan Stocker, which
explains, among other things, his view of how the Archer system includes
the functions claimed by the ‘489 patent. The court relied heavily on Mr.
Stocker’s report to reach the conclusion that Archer anticipated each of the
patent claims at issue. The court found each of the limitations present in the
30 claims at issue to be present in the Archer system. Id. at *23-24. In doing
2
U.S. Patent No. 8,897,489 (‘489 patent).
2
so, it made a number of specific findings regarding features taught by the
’489 patent found in Archer.
The court began with the priority date of the patent, denying summary
judgment to plaintiff on both of its alternative offered dates: November 22,
2008, as a conception date, and January 29, 2010, for the date of a provisional
application of another patent. Id. at *17-18. The court granted summary
judgment to the United States, which offered the presumed patent priority
date of January 28, 2011, the date the application for the ‘489 patent was
filed. Id. at *18.
The court turned next to the “five ‘top level’ elements found in the
‘489 Patent—[1] obtain images, [2] apply statistical detection filtering, [3]
identify regions and determine object-based scores, [4] determine
geographical information for identified regions and [5] provide identified
regions and object-based scores with geographical information.” Id. at *19
(citing Stocker Rep. ¶ 44). The court began with the two object-based score
elements (3 and 5), finding both disclosed in Archer. The court cited two
references which describe the Archer system and disclose these features in a
way consistent with the court’s earlier claim construction of the terms
“object-based spectral identification score” and “object-based score.” Id. at
*20. The first reference is Brian Stevenson, et al., The Civil Air Patrol
ARCHER Hyperspectral Sensor System, 5787 Proc. SPIE 17 (2005)
(“Stevenson reference”). The second is Michael T. Eismann, Strategies for
Hyperspectral Target Detection in Complex Background Environments,
EEAC paper #1 626, Version 3 (Dec. 21, 2005 update) (“Eismann
reference”). The court concluded that these two elements of claims 4, 5, 12,
13, 14, 21, 22, and 23 were anticipated by Archer. Geospatial, 2021 WL
2325007, at *20-21. The same was true with respect to the “providing
identified regions with the determined object-based score” limitation
(element 5) of claims 1, 4, 5, 10, 13, 14, 19, 21, 22, and 23. Id. at 21. The
court cited the Stevenson reference’s description of how the “chip viewer”
of Archer displays cropped images of identified target regions along with
“target cue information, including scores and geolocations for each detected
target.” Id. (citing the Stevenson reference at US_003221).
The court then made a finding regarding two capabilities of the
patented system which it found to be inherent in the Archer system. The
first, “masking out,” refers to a process using the “target detection processing
apparatus” selection of “the pixels in each of the . . . images which have the
highest determined statistical detection scores in each of the . . . images” in
order to remove them to gather information regarding the surrounding region
of the image. ‘489 Patent at 7. The court stated that Archer’s target detection
3
algorithms perform the masking out step inherently as part of that system’s
“chipping” function, as explained by Mr. Stocker. Geospatial, 2021 WL
2325007, at *22. “[I]t is undisputed that the ARCHER system’s ‘chipping’
function includes defining image regions and indicates to the . . . system
operator the location and local image context surrounding identified chips . .
. ” which also includes the ability to “eliminate pixel groups that do not
conform to the detection threshold.” Id. Thus, this limitation of claims 4,
13, 22, 28, 30, and 32 was found to be anticipated by Archer. Id.
The same was true of the second of the two capabilities called out in
the opinion: unmixing. “Unmixing” or “spectral unmixing” refers to
breaking down of a pixel “into a collection of constituent spectra, or
endmembers, and a set of corresponding fractions, or abundances, that
indicate the proportion of each . . . present in the pixel.” Id. at *23 (citing
Stocker Report ¶ 60).3 Although the Archer system does not employ an
unmixing algorithm, the court was persuaded by defendant that it could
“support such an unmixing algorithm, because unmixing is inherent within
the ARCHER system’s capabilities. Id. at *22 (citing Oral Arg. Tr. at 69
(March 24, 2021)). The court noted that the Eismann reference summarized
different unmixing techniques which could be used with the Archer system
and further noted that the Air Force was pursuing those types of algorithms
for use with the Archer system. Id. at *23 (citing Eismann reference at
US_003319). The conclusion was then that, because Archer could be used
in such a way, the unmixing algorithm was inherent in its capabilities.
Claims 5, 14, 23, 29, and 33, containing the unmixing capability, were thus
anticipated by Archer. Id.
Lastly, the court stated that the Archer system anticipated every claim
of the ‘489 patent, noting that the elements and features discussed above were
present in 17 of the claims and that plaintiff did not dispute that Archer
anticipated the other limitations of those claims. Id. The court cited
examples from Mr. Stocker’s report discussing several of those claims. The
final conclusion was that the holdings above regarding the object-based score
elements and the masking out and unmixing features of the patent meant that
all 30 of the claims at issue were disclosed either explicitly or inherently in
the Archer system. Id. at *23-24. Summary judgment on the validity of the
patent was granted to defendant.
3
Also citing N. Keshava & J.F. Mustard, Spectral Unmixing, 1053-5888
IEE Signal Processing Magazine 44, 44 (Jan. 2002), for the proposition that
this process was well known in the art prior to 2011.
4
Reconsideration:
Plaintiff raises six arguments for reconsideration and one general
objection that the Archer system was undisclosed by the government in its
preliminary contentions. The latter objection we can dispense with because
the opportunity to have raised that omission as an issue was prior to summary
judgment. Defendant clearly proffered Archer in its brief on patent invalidity
and again in its motion for summary judgment. Plaintiff, rather than raise
the procedural objection, briefed its defense of the patent and asked for
summary judgment on validity. The timeliness of the Archer disclosure was
thus waived, and it would be fundamentally unfair to grant reconsideration
on that basis.
The six more principled arguments are briefly summarized as follows:
1) misapplication of the “known or used” prong of 35 U.S.C. § 102(a); 2) a
failure to address the claims as a whole and specifically whether Archer
disclosed each of them as arranged in the patent’s claims themselves; 3)
failure to address the three claims of the patent; 4) legal error applying the
law of inherency; 5) insufficiency of evidence to support the court’s
understanding of Archer; and 6) improper determination of the priority date
or date of conception.
Defendant responds that only two of the arguments raised by plaintiff
are proper for a motion for reconsideration, the first (the publicly used or
known requirement of section 102(a)) and the fourth (inherency). Although
we agree, we begin with the others to make clear why they are unavailable
on reconsideration or are otherwise unavailing.
Reconsideration under Rule 59 is available only when the plaintiff can
show an intervening change in the law, previously unavailable material
evidence, or if it is necessary to avoid a manifest injustice. Fru-Con Const.
Corp. v. United States, 44 Fed. Cl. 298, 301 (1999). The latter prong,
manifest injustice, is meant to right an error of law or fact that is “clearly
apparent or obvious.” Ammex, Inc. v. United States, 52 Fed. Cl. 555, 557
(2002). Thus, disagreements with the court’s application of the law or its
view of the evidence, or new or repeated arguments regarding that same law
or evidence, will not be entertained on reconsideration.
A. Improper Arguments:
The motion for reconsideration does not offer any new law or facts.
The only issue thus is whether there was an obvious legal or factual error.
Plaintiff’s argument that the claims were not addressed as a whole nor as
5
arranged in the patent is a disagreement with how the court organized its
discussion, which is not a proper basis for reconsideration. The court found
that each claim was anticipated. It focused on the features and capabilities
that were highlighted by the parties’ briefing regarding anticipation. A lock-
step claim-by-claim analysis was not done, but a conclusion as to each claim
was reached and, absent some compelling legal or factual error therein, those
conclusions will remain undisturbed.4 Even assuming that this is a valid
point, it comes too late. Plaintiff had every opportunity to argue why the
order of the limitations and claims in its patent distinguished it from Archer.
It cannot do so now on reconsideration.
Moreover, it is also too late now to argue that the court erred by not
specifically addressing claims 3, 12, and 21 of the patent. The parties briefed
and the court decided the validity of the patent as a whole based on the
parties’ presentation during summary judgment. Plaintiff’s point that, under
the Patent Rules, its preliminary infringement contentions control over its
amended complaint is irrelevant when it failed to assert those claims during
summary judgment, particularly when it also moved for summary judgment
on the validity issues.5 Plaintiff was on notice, even before summary
judgment, from defendant’s brief on patent invalidity, that the government
viewed those three claims as unasserted and not at issue in the suit. Nothing
raised by either party in the subsequent briefing would have given the court
a reason to think otherwise. Reconsideration cannot be granted based on a
claim not presented to the court before summary judgment.
We find the last two arguments presented by the motion—the
sufficiency of the evidence regarding the features of Archer and the patent’s
priority date—also unavailing because they are, at heart, mere disagreements
with the court’s conclusions. That plaintiff does not believe that the court
properly understood the Archer system or that the evidence regarding its
features and functions, namely the two references and Mr. Stocker’s report,
4
It is important to note that the parties’ briefing during summary judgment
likewise did not march through the patent on a claim-by-claim basis. Rather,
it centered on the salient features that allegedly set the ‘489’s invention apart
from the prior art. For the defense of anticipation, this was a comparison
with only the Archer system. Plaintiff did not raise or argue during summary
judgment that the defense must fail because the government had not argued
each and every claim and each limitation in the order presented in the patent.
5
We do not reach the issue of whether infringement contentions alone can
put at issue claims not asserted in the complaint.
6
were insufficient to support the conclusions reached are points that could and
should have been raised during briefing on summary judgment.
Reconsideration is too late to raise these points.6
The same is true on the issue of the priority date or an even earlier
date of conception. Although plaintiff argues that the issues were neither
amenable to nor necessary for disposition on summary judgment, it moved
for judgment on the issues. Plaintiff cannot have it both ways. Having
moved for summary judgment on an issue and lost, a party cannot then ask
for reconsideration on the basis that the issue should not have been decided.7
Plaintiff’s other points on the priority date are also unavailing because they
amount to mere disagreements with how the court viewed the evidence and
drew inferences therefrom.
B. Potential Basis for Reconsideration:
That leaves the two legal issues regarding whether the court properly
applied the law in concluding that the Archer system was a known or used
piece of prior art and whether the masking out and unmixing functions of the
patent were inherent in Archer.
1. Accessibility
Regarding section 102(a), prior to the America Invents Act (“AIA”)
of 2011, conditions for patentability included that the invention was not
“known or used by others in this country, . . . or described in a printed
publication in this or a foreign country” before it was conceived of by the
patentee. 35 U.S.C. § 102(a) (2012) (pre-AIA). The Federal Circuit
explained that this meant “knowledge or use which is accessible to the
public.” BASF Corp. v. SNF Holding Co., 955 F.3d 958, 964 (Fed. Cir.
2020). Plaintiff argues now that the court failed to make a finding of
6
It is also too late to supply a supplemental opinion, in the form of an
affidavit, from plaintiff’s expert, Dr. Jones, as plaintiff did in support of its
motion for reconsideration. None of the explanations in that declaration are
based on previously unavailable evidence or come as a result of a change in
the law. It would thus be unfair to consider them now.
7
Although we agree that it was not strictly necessary to decide the priority
date of the patent given the court’s conclusion regarding the Archer system,
which was not disputed to have predated plaintiff’s preferred dates of
conception and priority, the issue was presented and decided, and the
decision thus stands as the law of the case moving forward.
7
accessibility and that there were material facts in dispute concerning whether
the use of the Archer system was in fact publicly accessible.
Defendant responds that plaintiff has ignored the public availability
of the Archer system, which was made manifest by the two published
references it presented that describe the system. Thus, the court’s silence as
to whether the government’s use of the Archer system was open and
accessible to the public is immaterial and unnecessary for a legally sound
decision. We agree.
After laying out the conditions for patentability found in the pre-AIA
version of the statute, the court cited the two articles that describe Archer and
Mr. Stocker’s opinion that Archer was an “early demonstration” of the
invention. Geospatial, 2021 WL 2325007, at *19 (citing Stocker Rep. ¶ 54).
Plaintiff, in fact, only argued that the use was confidential but did not address
in its summary judgment briefing the accessibility of the second prong, the
knowledge of the invention. Thus, presented with two published references
describing that prior art and no hint in the record that the knowledge was
otherwise secret, there was no error in comparing Archer with the patent’s
claims under the pre-AIA section 102. If plaintiff’s invention was
anticipated by Archer, the public character of the use or knowledge is
established.
2. Inherency
Lastly, plaintiff asks for reconsideration of the court’s holding that
two of the capabilities of the invention are inherently present in the Archer
system. Plaintiff points out that, for a court to find a feature of a patent
obvious or anticipated by some prior art, without that feature being explicitly
taught, that feature must be “necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). It is
insufficient to find that the element claimed would probably or possibly be
present in the prior art. Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1380
(Fed. Cir. 2002). Plaintiff’s argument is thus that the court erred in finding
these two capabilities inherent in Archer when the evidence only showed that
Archer could or might otherwise be modified to perform those functions.
We conclude that this critique is accurate as to the court’s holding
regarding unmixing but not for masking out. As for the latter, the court found
that the Archer system’s targeting algorithms “include an inherent ‘masking
out’ step as part of the system’s ‘chipping’ function.” Geospatial, 2021 WL
8
2325007, at *22. Mr. Stocker explained, as cited by the court, that the
masking out of pixels refers to the removal of pixels with high scores (those
likely to indicate targets) from regions to be able to provide better statistics
about the background areas around those high-score pixels without
“contamination from potential targets.” Stocker Rep. ¶ 58. The court found
the Archer system’s provision to the operator of “chips,” or regions,
surrounding high-score pixels to necessarily include the ‘489’s masking out
capability. Geospatial, 2021 WL 2325007, at *22 (citing Stocker Rep. ¶ 79).
The court found, in essence, that “chipping” and “masking out” were doing
the same thing with background image data around high-score pixels. We
find no error with that conclusion and thus reconsideration is not warranted
on that basis.
The same is not true, however, as to the unmixing capability, a similar
but distinct, feature of the ‘489 patent. “Unmixing” refers to the
decomposition of a mixed-spectrum pixel into its constituent spectra and then
producing the corresponding fractions for the proportion of each present in
the pixel. As the court noted, defendant conceded that the Archer system, at
least at the time, did not have this capability. The court went on, however,
to find it inherent in the Archer system because the Archer system could
perform unmixing if a new algorithm was used with it that performed this
spectral unmixing function. Geospatial, 2021 WL 2325007, at *23. The
court cited as support the Eismann reference’s discussion of a particular
algorithm (N-FINDR) and a statement that this was an avenue that the Air
Force was exploring for use with the Archer system. Id. (citing Eismann
reference at US_003314, US_03319).
As stated above, it is insufficient that the prior art might be capable of
performing a function of a patented invention if only it were modified,
tweaked, or, like here, a new undisclosed algorithm were used in the
machine. For a feature to be inherent in the prior art, however, that feature
must necessarily be present in the steps, functions, or elements of the prior
art. Put another way, the prior art must actually contain that feature or
perform that step as part of its method or operation. For masking out, the
court made such a finding with regard to Archer’s chipping function. But,
the ‘489 patent’s unmixing capability was not similarly part of a differently-
named process in the Archer system. Quite the opposite. The government
conceded that Archer did not, and without modification, could not perform
this feature. It would therefore be manifestly unjust to hold the ‘489 patent
invalid for lack of novelty when the system proffered by the government as
prior art did not have one of the capabilities claimed in six of the patent’s
claims.
9
Accordingly, the following is ordered:
1. Plaintiff’s motion for reconsideration (ECF No. 252) is granted as
to the inherency of the unmixing function found in claims 5, 14,
23, 29, 31, and 33. The motion is denied in all other respects.
2. The grant of summary judgment to defendant on its defense of
anticipation under 35 U.S.C. § 102(a) is vacated.
3. Defendant’s motion to strike portions of plaintiff’s reply brief
(ECF No. 268) is denied as moot.
4. The parties are directed to file a joint status report indicating their
respective positions regarding further proceedings on or before
December 15, 2021.
s/ Eric G. Bruggink
ERIC G. BRUGGINK
Senior Judge
10