NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
BENJAMIN GAL-OR,
Plaintiff-Appellant,
v.
UNITED STATES,
Defendant-Appellee.
__________________________
2011-5122
__________________________
Appeal from the United States Court of Federal
Claims in Case No. 09-CV-869, Judge Eric G. Bruggink
_________________________
Decided: February 9, 2012
_________________________
BENJAMIN GAL-OR, of Mindanao, Philippines, pro se.
SCOTT D. SLATER, Trial Attorney, Civil Division,
Commercial Litigation Branch, United States Department
of Justice, of Washington, DC, for defendant-appellee.
With him on the brief were TONY WEST, Assistant Attor-
ney General, JEANNE E. DAVIDSON, Director, and DONALD
E. KINNER, Assistant Director.
__________________________
GAL-OR v. US 2
Before BRYSON, DYK, and O’MALLEY, Circuit Judges.
PER CURIAM.
Benjamin Gal-Or (“Mr. Gal-Or”) appeals an order of
the United States Court of Federal Claims (“Court of
Federal Claims”) dismissing his claims against the United
States (“Government”). In two decisions, the Court of
Federal Claims dismissed Mr. Gal-Or’s claims because it
found: (1) it lacked subject matter jurisdiction over his
takings claims; (2) most of his allegations of patent in-
fringement were untimely; and (3) with respect to his
timely patent infringement claims, Mr. Gal-Or lacked
standing to sue because his complaint failed to join co-
owners of the patent in suit. For the reasons explained
below, we vacate and remand.
BACKGROUND
Resolution of this appeal does not require a detailed
recitation of the factual background of this case; accord-
ingly, only the facts relevant to this appeal are discussed
below. 1 Mr. Gal-Or, proceeding pro se, filed this suit on
December 16, 2009. Shortly thereafter, in response to the
Government’s motion to dismiss, the Court of Federal
Claims ordered Mr. Gal-Or to file an amended complaint,
“setting out his claims with more precision.” Gal-Or v.
United States, 97 Fed. Cl. 476, 478 (2011). Specifically,
the Court of Federal Claims ordered Mr. Gal-Or to “iden-
tify what property interests he owns and that he claims
were infringed upon, including a copy of any patents”;
“the dates of any patent issuances and whether they are
foreign or domestic”; and “to assert when the claim ac-
crued.” Id.
In response, Mr. Gal-Or filed a forty-one page
1 For a complete recitation of the facts see Gal-Or v.
United States, 97 Fed. Cl. 476, 478 (2011).
3 GAL-OR v. US
amended complaint. Id. at 478 n.1. Although the
amended complaint alleges patent infringement and
takings of trade secrets, the Court of Federal Claims
summarized it as follows:
[T]he basis of [Mr. Gal-Or’s] claims [i]s United
States Patent 5,782,431 (“the Patent”), 2 which he
co-owned with Dr. Valery Sherbaum and Dr. Mi-
chael Lichtsinder from 1998 to 2006, when the
Patent expired because plaintiff chose to quit pay-
ing the required maintenance fees. Plaintiff al-
leges that at least six of his inventions have been,
or are currently being, used by at least 35 differ-
ent governmental agencies.
Id. at 478 (footnote added). The amended complaint
discusses a series of meetings that Mr. Gal-Or had with
various Government representatives between 1986 and
1997. Id. During these meetings, Mr. Gal-Or says he
disclosed his trade secrets and details of the Patent. Id.
Finally, the amended complaint identifies a number of
Government projects that allegedly utilized the informa-
tion he disclosed to produce various products. Id. at 478–
80.
Once the amended complaint was filed, the Govern-
ment moved to have it dismissed. Id. at 478. Specifically,
the Government’s motion argued that: (1) the Court of
Federal Claims lacked subject matter jurisdiction over
Mr. Gal-Or’s Fifth Amendment takings claims; (2) the
remaining claims were either untimely or failed to ade-
quately state a claim for relief; and (3) Mr. Gal-Or lacked
standing to sue because the co-owners of the Patent were
not joined as plaintiffs to the suit. Addressing the merits
2 The Patent relates to a thrust vectoring and re-
versing system utilized in flight control systems. U.S.
Patent No. 5,782,431 abstract (filed Aug. 18, 1995).
GAL-OR v. US 4
of the Government’s motion, the Court of Federal Claims
construed Mr. Gal-Or’s amended complaint as asserting
that the Government infringed the Patent. Id. at 477
(“He claims that defendant has utilized his inventions
without paying him compensation, thereby infringing on
his patent and committing a taking under the Fifth
Amendment of the United States Constitution.”). Relying
on Zoltek Corp. v. United States, 422 F.3d 1345, 1352
(Fed. Cir. 2006), the Court of Federal Claims dismissed
all of Mr. Gal-Or’s Fifth Amendment takings claims
because “a patent infringement claim . . . cannot be
evaluated as a Fifth Amendment claim under the Tucker
Act”; instead it must be asserted under 28 U.S.C.
§ 1498(a). 3 Gal-Or, 97 Fed. Cl. at 480.
With respect to Mr. Gal-Or’s claims for patent in-
fringement filed pursuant to § 1498(a), the Court of
Federal Claims noted that these claims were untimely
unless the complaint was filed within six years after the
claims first accrued. Id. (citing 28 U.S.C. § 2501 (“Every
claim of which the United States Court of Federal Claims
has jurisdiction shall be barred unless the petition
thereon is filed within six years after such claim first
accrues.”)). Accordingly, all of Mr. Gal-Or’s claims that
first accrued before December 16, 2003, were untimely.
Id. The Court of Federal Claims, moreover, concluded
that, because the Patent expired in 2006, the Government
could not be liable for its use of the Patent after 2006. Id.
3 This section states that:
Whenever an invention described in and covered
by a patent of the United States is used or manu-
factured by or for the United States without li-
cense of the owner thereof or lawful right to use or
manufacture the same, the owner’s remedy shall
be by action against the United States in the
United States Court of Federal Claims . . . .
§ 1498(a).
5 GAL-OR v. US
at 481. In light of these conclusions, the Court of Federal
Claims determined that, except for his two claims related
to the 2005 production of drone aircraft, all of Mr. Gal-
Or’s claims were untimely. Id. at 480–81.
After determining that Mr. Gal-Or’s two timely in-
fringement allegations stated a claim to relief that was
plausible on its face, the Court of Federal Claims ad-
dressed the Government’s standing argument. Because
all co-owners of a patent must be joined in an infringe-
ment suit to create standing and not all of the co-owners
of the Patent were plaintiffs to the suit, the Court of
Federal Claims gave Mr. Gal-Or until April 1, 2011 to join
the two other co-owners. 4 Prior to reaching this conclu-
sion, the Court of Federal Claims determined that the
signed statements from the co-owners authorizing Mr.
Gal-Or to “represent them in this action” were insufficient
to join them to the suit. Id. at 482.
In response to the Court of Federal Claims’ order, Mr.
Gal-Or filed a motion to join Drs. Sherbaum and
Lichtsinder on April 8, 2011. Pl.’s Joinder Mot. at 1 Gal-
Or v. United States, No. 1:09-cv-869 (Fed. Cl. Apr. 8,
2011), ECF No. 22. In this motion, however, Mr. Gal-Or
simply resubmitted the co-owners’ statements that the
Court of Federal Claims had previously found to be insuf-
ficient. Order Granting Mot. to Dismiss at 1–2 Gal-Or v.
United States, No. 1:09-cv-869 (Fed. Cl. July 21, 2011),
ECF No. 26 (“July 21, 2011 Order”). In its response, the
Government pointed out this deficiency. Mr. Gal-Or then
obtained signed statements from Drs. Sherbaum and
Lichtsinder asking to be joined as plaintiffs to the lawsuit
4 Mr. Gal-Or filed a motion to reconsider the Feb.
28, 2010 decision. The Court of Federal Claims denied
this motion. Order Den. Mot. for Recons. at 1–2 Gal-Or v.
United States, No. 1:09-cv-869 (Fed. Cl. Apr. 12, 2011),
ECF No. 24.
GAL-OR v. US 6
supported by their signed request. Mr. Gal-Or then sent
his reply, including a motion to join Drs. Sherbaum and
Lichtsinder, to Judge Bruggink’s law clerk’s email ad-
dress. Joint Appendix 1–17. Mr. Gal-Or never filed this
document, however. Because Judge Bruggink transi-
tioned from one law clerk to another before the reply and
motion to join were forwarded, moreover, it appears that
the Court of Federal Claims either never received or did
not realize it had received Mr. Gal-Or’s reply. The Court
of Federal Claims dismissed the amended complaint,
finding that Mr. Gal-Or had not properly joined Drs.
Sherbaum and Lichtsinder. July 21, 2011 Order at 2.
This conclusion was based on Mr. Gal-Or’s original re-
sponse to Judge Bruggnik’s show cause order, with no
reference to Mr. Gal-Or’s undocketed reply.
Mr. Gal-Or timely appealed, and we have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(3).
DISCUSSION
This court reviews the Court of Federal Claims’ legal
determinations de novo. Frazer v. United States, 288 F.3d
1347, 1351 (Fed. Cir. 2002). We review all of its factual
determinations for clear error, which occurs when we are
left with a “definite and firm conviction” that the Court of
Federal Claims committed a mistake. Hendler v. United
States, 175 F.3d 1374, 1378 (Fed. Cir. 1999) (quoting
United States v. U.S. Gypsum Co., 333 U.S. 364, 396
(1948)).
On appeal, Mr. Gal-Or argues that the Court of Fed-
eral Claims erred by: (1) dismissing his takings claims; (2)
dismissing his patent infringement claims; and (3) mis-
construing the amended complaint’s factual allegations.
For the reasons explained below, we partially agree with
Mr. Gal-Or.
7 GAL-OR v. US
Because the amended complaint is not a model of clar-
ity, the Court of Federal Claims’ task was a difficult one.
After reviewing the amended complaint, Mr. Gal-Or’s
motion for reconsideration, and his briefs before this
court, however, we conclude that the Court of Federal
Claims erred when it dismissed all of Mr. Gal-Or’s tak-
ings claims. With respect to those claims, the Court of
Federal Claims determined that, because the asserted
taking involved a patent, the claims were not takings
claims. Gal-Or, 97 Fed. Cl. at 480. Instead, the court
characterized the claims as though they had been as-
serted under § 1498(a). Id. In light of Zoltek, the court’s
decision to characterize the claims based upon the Patent
as claims brought under § 1498(a) is undoubtedly correct.
See Zoltek, 442 F.3d at 1352–53 (concluding that a claim
for the government’s infringement of a patent is cogniza-
ble under §1498(a) and it is not a Fifth Amendment
takings claim).
But, this conclusion does not address the entirety of
Mr. Gal-Or’s takings claims. While the amended com-
plaint is difficult to follow, it clearly alleges that Count I
is based upon takings of “trade secrets.” Pl.’s Amended
Compl. at 31 Gal-or v. United States, No. 1:09-cv-869
(Fed. Cl. Aug. 2, 2010), ECF No. 14. Review of Mr. Gal-
Or’s motion for reconsideration, moreover, identifies two
different types of intellectual property, which he asserts
provide the bases for his claims: (1) the Patent; and (2)
thirty-five trade secrets. Pl.’s Objections and Recons.
Mot. at 1–2 Gal-Or v. United States, No. 1:09-cv-869 (Fed.
Cl. Apr. 8, 2011), ECF No. 23. In combination, the
amended complaint and this motion make clear that Mr.
Gal-Or not only asserted that the Government infringed
the Patent, but also asserted that the Government misap-
propriated certain of his trade secrets, giving rise to Fifth
Amendment takings claims. Id. at 11 (“What was claimed
GAL-OR v. US 8
are multiple takings of Property B [the Trade Secrets]
throughout 1986-2009 and multiple infringement
throughout 1995-2006.”). Despite this, the Court of
Federal Claims interpreted the amended complaint as
alleging only that the Government “utilized his inventions
without paying him compensation, thereby infringing on
his patent and committing a taking under the Fifth
Amendment of the United States Constitution.” Gal-Or,
97 Fed. Cl. at 477; see also id. at 478 (“Plaintiff identifies
the basis of his claims as United States Patent 5,782,431 .
. . .”). On appeal, Mr. Gal-Or asks this court to take
account of his trade secret claims and to direct the Court
of Federal Claims to do so as well. Appellant’s Br. 10.
It is undisputed that trade secrets are protected by
the Taking Clause of the Fifth Amendment. Ruckelshaus
v. Monsanto Co., 467 U.S. 986, 1003–04 (1984) (“We
therefore hold that to the extent that Monsanto has an
interest in its health, safety, and environmental data
cognizable as a trade-secret property right under Missouri
law, that property right is protected by the Taking Clause
of the Fifth Amendment.”). In light of this fact, the Court
of Federal Claims erred when it determined that the
amended complaint did not state Fifth Amendment
takings claims with respect to Mr. Gal-Or’s alleged trade
secrets. We express no opinion on the merits of these
claims; we find only that they were alleged in the
amended complaint, and, thus, that the Court of Federal
Claims must address them in the context of the Govern-
ment’s motion to dismiss.
Although we acknowledge that the Court of Federal
Claims raised, in a footnote, the possibility that Mr. Gal-
Or asserted claims with respect to other property, Gal-Or,
97 Fed. Cl. at 480 n.10, its conclusion that these claims
would, nonetheless, be disposed of by its statute of limita-
tions analysis was incorrect. Even if the Court of Federal
9 GAL-OR v. US
Claims were correct that only two of Mr. Gal-Or’s in-
fringement claims were timely, which we find it was, the
court’s analysis of those claims does not resolve the time-
liness of Mr. Gal-Or’s trade secret takings claims.
First, the amended complaint seems to assert that all
of the Government’s actions involved use of both the
Patent and Mr. Gal-Or’s trade secrets. Accordingly, to the
extent that Mr. Gal-Or has asserted two timely claims of
infringement, it appears likely that he has also asserted
two timely takings claims with respect to his trade se-
crets. Second, because the Patent expired in 2006, the
Court of Federal Claims determined that there could be
no valid infringement claims after this date. Mr. Gal-Or’s
trade secrets did not, however, cease to exist merely
because the Patent, covering different technology, ex-
pired. It is entirely possible, therefore, that Mr. Gal-Or
has additional timely takings claims after 2006. Finally,
we have not yet had occasion to address the rules govern-
ing accrual and tolling of trade secret related takings
claims. The Court of Federal Claims, therefore, erred
when it determined that Mr. Gal-Or did not assert any
takings claims and that, even if he did, they were all
untimely. On remand, the Court of Federal Claims needs
to address these issues.
Next, Mr. Gal-Or argues that the Court of Federal
Claims erred when it dismissed his two timely claims for
infringement because he failed to join all of the co-owners
of the Patent. We disagree. “Absent the voluntary join-
der of all co-owners of a patent, a co-owner alone will lack
standing” to sue for patent infringement. Isr. Bio-Eng’g
Project v. Amgen Inc., 475 F.3d 1256, 1264-65 (Fed. Cir.
2007) (citation omitted). Here, it is undisputed that Drs.
Sherbaum and Lichtsinder are co-owners of the Patent.
Gal-Or, 97 Fed. Cl. at 478. The letters from Drs. Sher-
baum and Lichtsinder, stating that Mr. Gal-Or will fully
GAL-OR v. US 10
represent them in this action, standing alone, are insuffi-
cient to join them as plaintiffs to the suit. For this rea-
son, the Court of Federal Claims did not err when it
dismissed Mr. Gal-Or’s remaining infringement claims
based on the record before it.
This conclusion does not necessarily dispose of his
takings claims, however. As with the Patent, Drs. Sher-
baum and Lichtsinder are also co-owners of the trade
secrets at issue in this case. It is unclear whether, as a
matter of law, all co-owners of a trade secret must be
joined to an action to provide standing. See Tullett Prebon
PLC v. BGC Partners, 427 F. App’x 236, 239 (3d Cir.
2011) (unpublished) (holding that, under the facts of the
case, two co-owners of a trade secret were necessary
parties to a suit for misappropriation of that trade secret).
Because determining whether a party is a necessary party
is a fact intensive inquiry, moreover, the Court of Federal
Claims should address this question in the first instance.
Accordingly, we vacate the Court of Federal Claims’
judgment dismissing the amended complaint. 5
Because we are vacating the Court of Federal Claims’
judgment, on remand, the trial court may consider Mr.
Gal-Or’s assertion that he forwarded to the court a reply
memorandum and motion to join Drs. Sherbaum and
Lichtsinder, which included more detailed documentation
regarding their desire to participate in this action. Given
the leniency with which it is to review pro se filings, the
Court of Federal Claims may consider this filing as a
Motion for Relief from Judgment pursuant to Rule
5 In light of our conclusions that the Court of Fed-
eral Claims’ judgment must be vacated, Mr. Gal-Or’s
arguments with respect to the court’s misconstruction of
certain factual allegations contained in his complaint are
moot.
11 GAL-OR v. US
12(b)(6) with respect to the judgment dismissing Mr. Gal-
Or’s infringement claims. The court may also weigh that
submission in connection with its assessment of Mr. Gal-
Or’s takings claims.
CONCLUSION
While we find no fault with respect to the Court of
Federal Claims’ dismissal of Mr. Gal-Or’s infringement
claims, because we conclude that it incorrectly determined
that Mr. Gal-Or did not allege any takings claims with
respect to his trade secrets, we vacate the Court of Fed-
eral Claims’ judgment and remand for further proceed-
ings. On remand, the Court of Federal Claims should
determine whether these takings claims are timely and
whether Drs. Sherbaum and Lichtsinder must be joined to
this suit. In addition, it should determine what consid-
eration it should give to Mr. Gal-Or’s reply to the court’s
show cause order.
VACATED AND REMANDED