Golden v. United States

In the United States Court of Federal Claims
No. 13-307C
(Filed: July 29, 2021)

******************

LARRY GOLDEN,
28 U.S.C. § 1498(a)
Plaintiff, (Jurisdiction Over Patent
Claims); Pro Se; Motion
v. to Strike; Patent
infringement contentions.
THE UNITED STATES,

Defendant.

**********************
Larry Golden, Greenville, SC, pro se.

Grant D. Johnson, Civil Division, U.S. Department of Justice, Washington,
D.C., with whom were Brian M. Boynton, Acting Assistant Attorney
General, and Gary L. Hausken, Director, Commercial Litigation Branch,
Civil Division, for Defendant.

OPINION

Pending in this patent proceeding are four procedural motions:
defendant’s May 17, 2021 motion to strike plaintiff’s infringement
contentions (ECF No. 227); plaintiff’s June 1, 2021 response and cross
motion to strike the government’s motion to strike and for summary
judgment of infringement (ECF No. 231); defendant’s June 24, 2021 motion
to strike “impertinent and scandalous matter from plaintiff’s reply” (ECF No.
234); and plaintiff’s July 1, 2021 cross motion to strike the government’s
motion (ECF No. 236). The motions are fully briefed. Oral argument is
deemed unnecessary. For reasons set out below, we grant defendant’s
motion to strike plaintiff’s infringement contentions and deny plaintiff’s
cross motion to strike and for summary judgment. The latter two motions
(ECF No. 234 and 236) would be fruitless to pursue in view of our rulings
on the first two motions and are thus denied as moot.
 BACKGROUND

On May 1, 2013, Mr. Golden (“plaintiff”) filed a complaint pursuant
to 28 U.S.C. § 1498(a), alleging that the government was infringing a single
patent, U.S. Reissue Patent No. RE43,990, (“990”). Plaintiff’s allegation of
infringement was based on three solicitations published by the U.S.
Department of Homeland Security (“DHS”) seeking to create technology for
sensing biological and chemical substances as part of DHS’ Cell-All project.
Over the course of the subsequent eight years of litigation before this court,
plaintiff has amended his complaint six times.

I. Procedural History

On August 15, 2013, plaintiff filed a “Notice [to] Supplement” in
support of his initial complaint, which the court treated as an amended
complaint. ECF No. 6. This first amended complaint alleged that three DHS
solicitations all infringed the ‘990 patent.

On October 21, 2013, the court granted defendant’s motion for a more
definite statement. Plaintiff’s more definite statement became his second
amended complaint. It continued to assert infringement of the ‘990 patent
by DHS and NASA and a host of third-party electronics manufacturers, such
as LG, Apple, and Qualcomm, all of which he alleged had “cooperative
agreements” with DHS. Second Am. Compl. ¶ 30.

On February 7, 2014, the court granted plaintiff’s December 30, 2013
motion to amend and supplement pleadings and deemed the motion to be a
third amended complaint. In it, Golden alleged infringement of the same
‘990 patent and elaborated his allegation that DHS infringed “the claims of
Golden’s [US RE43,990] patent” under 35 U.S.C. § 271(b) (2000), through
solicitation number “BAA07-10,” entitled “CELL-ALL Ubiquitous
Biological and Chemical Sensing,” which was released on October 2007.
Third Am. Compl. ¶¶ 28 (ECF No. 29).

On December 23, 2015, the court issued an order granting plaintiff
leave to file a fourth amended complaint, which plaintiff did on February 12,
2016. The fourth complaint expanded the suit beyond the ‘990 patent,
alleging that the government infringed patent no.’s ‘033, ’280, ‘189, ‘497,
‘752, ‘761, and ‘891, two of which (‘891 and ‘990) are reissue patents. In
addition, he alleged that the government violated the Fifth Amendment by

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taking for public use these same patents, as well as Published Patent
Application No. 2016-0027273 A1 under 28 U.S.C. § 1491.

On May 24, 2017, the previously assigned judge convened a
telephonic status conference, during which plaintiff was directed “to file a
[Fifth A]mended [C]omplaint that include[d] all of [Plaintiffs] concerns, all
of [Plaintiffs] charges against the Government in one document. . . . No more
supplements, no more anything else. Whatever is in that document will be
what we’re going to continue the case on.” Status Conf. Tr. at 14 (ECF No.
118). The follow-on May 25, 2017 order stated that “Plaintiff may amend
his complaint and claim chart one final time, prior to the court’s ruling on
jurisdiction. Plaintiff is ordered not to file any other motions or papers
without leave of the court.” ECF No. 116 at 2.

On August 10, 2017, plaintiff filed a fifth amended complaint (ECF
No. 120). In it, plaintiff alleged seventy-two patent infringement counts
involving ten patents, along with takings claims paralleling each patent
infringement claim. Golden, No. 13-307C, ECF No. 120.

Defendant moved to dismiss that complaint in part, and the court
granted that motion, dismissing for lack of jurisdiction allegations
concerning National Science Foundation Grants, Cooperative Agreements,
and National Institutes of Health grants because no use by the government of
plaintiff’s inventions was alleged. Golden v. United States, 137 Fed. Cl. 155,
173 (2018). The court also dismissed plaintiff’s allegations concerning the
government’s alleged use of “Smartphones and Other Consumer Devices”
made by LG, Apple, and Samsung under RCFC 12(b)(1) and 12(b)(6). We
held that plaintiff had failed to allege the government’s intent to allow or
approve use of plaintiff’s inventions through these products and otherwise
had failed to provide sufficient detail to infer authorization or intent. Claims
for infringement of the ‘033 patent were dismissed for lack of jurisdiction
because that patent had been surrendered and reissued as the ‘990 patent. In
addition, the court dismissed, under Rule 12(b)(1), infringement allegations
concerning the ‘839 patent application and any activity prior to the issuance
of the ‘439 patent. Lastly, the court dismissed plaintiff’s infringement
allegations concerning patents ‘761, ‘280, and ‘189 pursuant to RCFC
12(b)(6) because plaintiff failed to allege any specific instance of
infringement. In September 2018, the case was transferred to the
undersigned. Id.

On May 8, 2019, we granted the government’s motion to dismiss the
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taking claims. ECF No. 171. The court also catalogued the remaining patent
infringement allegations and dismissed counts that relied solely on dependent
patent claims.

After we granted leave to file a sixth amended complaint, the
government moved to dismiss. On February 26, 2021, we granted the motion
in part. Infringement allegations related to plaintiff’s unissued pending
patent applications, 16/350,683 and 16/350,847, were dismissed. The
remaining claims survived the motion to dismiss, although we warned
plaintiff that there would be no more amendments. 1 We directed the parties
to file a status report proposing a schedule for further proceedings. On March
29, 2021, we issued a scheduling order directing the parties to proceed with
claim construction. 2

II. Plaintiff’s Preliminary Infringement Contentions

On April 20, 2021, plaintiff filed his preliminary infringement
contentions. Mr. Golden asserts that the government, through the U.S.
Department of Homeland Security (“DHS”), infringes twenty-five
independent claims of patents ‘497, ‘752, ‘189, ‘439, and ‘287 through the
following: 1) ten Apple Inc. products; 2) nine Samsung products; and 3) nine
LG Electronics products. 3 Id. In addition to general allegations of
infringement, plaintiff’s contentions contain charts—one for each
manufacturer—which, purport to identify how the accused products infringe
the claim limitations. 4

1
“Plaintiff may file no further amended complaints.” ECF No. 215 at 7
(Order on defendant’s motion to dismiss) .
2
Plaintiff was directed to file his preliminary infringement contentions by
May 7, 2021. Defendant was directed to file its preliminary invalidity
contentions by July 2, 2021. On June 29, 2021, we deferred the
government’s obligation to file its invalidity contentions until resolution of
the government’s motion to strike plaintiff’s infringement contentions.
3
It is apparent that Mr. Golden is alleging that the government caused the
manufacture of the accused devices by third party electronics manufacturers,
such as LG, Apple, and Samsung, or caused these devices to use his
technology because of the DHS’ Cell-All project.
4
At this point, the remaining patents are: U.S. Patents: 7,385,497 (‘497);
4
 Defendant responded on May 17, 2021, by moving to strike those
contentions. It argues that plaintiff’s infringement contentions are deficient
and asks the court to strike them in their entirety and to dismiss the case. In
its view, Mr. Golden’s contentions fail to meet the legal standard for
infringement contentions, and because “granting Plaintiff leave to amend
would be futile . . . [as] this case has now been pending for over eight years,
with Plaintiff repeatedly shifting the patent claims he is asserting and the
products he is accusing of infringement.” 5 ECF No. 227 at 20. On June 1,
2021, plaintiff responded by filing a cross motion to strike the government’s
motion and “for summary judgment of infringement” and summary judgment
“on claim construction.” ECF No. 231 at 21, 28.

DISCUSSION

Pursuant to the court’s Patent Rules, at the outset of the claim
construction phase of patent litigation, a party claiming patent infringement
must serve preliminary infringement contentions. 6 The purpose of
infringement contentions is to “to disclose where each element of each
infringed claim is found within the accused device . . . to put a defendant on
notice of all contentions regarding how each claim limitation is allegedly met
by the accused device.” Iris Corp. Berhad v. United States, 84 Fed. Cl. 12,
16 (2008) (citing O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d
1355, 1362–63 (Fed.Cir.2006) and Refac Int’l, Ltd. v. Hitachi, Ltd., 921 F.2d

8,106,752 (‘752); 9,096,189 (‘189); 9,589,439 (‘439); and 10,163,287
(‘287). ECF No. 195 (Plaintiff’s Sixth Amended Complaint).
5
Defendant cites two prior instances of the court striking deficient patent
infringement contentions and/or dismissing infringement claims based on a
plaintiff’s failure to provide proper infringement contentions. CANVS Corp.
v. United States, 110 Fed. Cl. 19, 33 (2013) (finding dismissal of claims
regarding certain devices appropriate based on deficient infringement
contentions); Demodulation, Inc. v. United States, 126 Fed. Cl. 499, 510
(2016) (granting summary judgment of non-infringement based on deficient
infringement contention and denying as moot leave to amend the same).
6
Appendix J, Patent Rules of the United State Court of Federal Claims
(“PRCFC”), supplement the Rules of the United State Court of Federal
Claims for civil actions instituted under 28 U.S.C. § 1498(a) respecting
patent claims.

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1247, 1255 (Fed.Cir.1990)). Accordingly, deficient infringement
contentions fail to provide defendant with notice and thereby prejudice
defendant’s ability to proceed with its own invalidity and claim construction
disclosures.

Although the patents at issue (‘497, ‘752, ‘189, ‘439, and ‘287)
involve numerous claims, what each patent has in common is that they all
claim both 1) a sensor that is capable of detecting chemical, biological or
radiological compounds, and 2) a locking mechanism. Defendant argues
that, because none of plaintiff’s infringement contentions explain how these
two critical elements are infringed by any of the accused devices, the
infringement contentions are fatally deficient. For the reasons set out below,
we agree.

The thrust of the government’s motion is that Mr. Golden’s
infringement contentions do not and cannot meet the specificity requirements
of the court’s Patent Rules. First, defendant argues that there are no
biological, chemical, or radiological sensors/detectors identified by plaintiff
in the accused devices, despite the fact that plaintiff’s asserted patents (‘497,
‘752, ‘189, ‘439, and ‘287) specifically claim the inclusion of such sensors.
Second, defendant urges that plaintiff’s contentions fail because they do not
identify how the accused devices lock or unlock a product in response to
detection of a biological, chemical, or radiological substance. Defendant
argues that plaintiff’s contentions are vague or conclusory and fail “to set
forth any plausible theory for how any one of the twenty-eight accused
products allegedly infringe any one of the twenty-five asserted claims.” ECF
No. 227 at 16, 19. At best, in defendant’s view, plaintiff “merely paraphrase
the sensor/detector limitations of the asserted claims.” Id. at 13.

Mr. Golden responds that his infringement contentions are not vague
or conclusory in a way that prevents them from giving notice to defendant
and its third-party contractors and that “not all of the contentions paraphrase
the claim language, and that, further, many of its contentions have their bases
in ‘third-party statements’ and the most commonly used acronyms,
abbreviations, and terms in the electronics and telecommunications
industry.” ECF No. 231 at 2. He also argues, as discussed separately below,
that the government has kept information from him that would allow him to
be more specific in his contentions. Lastly, also separately discussed below,
he raises the doctrine of equivalents to justify his generalized contentions.

Our analysis is controlled by Rule 4 of the Patent Rules, which
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requires that infringement contentions include:

(a) the claim in each product, process, or method of each patent
at issue that is allegedly infringed by each opposing party;

(b) for each asserted claim, each product, process, or method
that allegedly infringes the identified claim. This identification
must include the name and model number, if known, of the
accused product, process, or method;

(c) a chart identifying where each element of each asserted
claim is found within each accused product, process, or
method, including the name and model number, if known;

(d) whether each element of each identified claim is alleged to
be literally present or present under the doctrine of equivalents
in the accused product, process, or method; and

(e) for each patent that claims priority to an earlier application,
the priority date to which each asserted claim allegedly is
entitled and whether the patentee is relying on the filing date
or an earlier conception date as the priority date.

PRCFC 4.

I. Plaintiff’s Contentions Do Not Identify A Sensor

After reviewing Mr. Golden’s voluminous infringement charts, we
agree that they do not identify a component in the accused products which
meets plaintiff’s claims limitation of a biological, chemical, or radiological
sensor. For instance, plaintiff’s chart concerning Apple products alleges that
the iPhone 7 and iPhone 8 infringe claim 4 of plaintiff’s ‘189 patent. 7 Claim
4 of the ‘189 patent requires the following elements:

A built-in, embedded multi sensor detection system for
monitoring products with a plurality of sensors detecting at
least two agents selected from the group consisting of

7
Given the repetitive nature of the charts submitted, we have isolated
representative samples. The deficiencies highlighted herein are present for
each accused device in each chart.
7
 chemical, biological, radiological, explosive, human, and
contraband agents;

comprising a built-in sensor array or fixed detection device into
the product that detects agents by means of two or more sensors
combined from the following list of sensors: a chemical sensor,
a biological sensor, an explosive sensor, a human sensor, a
contraband sensor, and a radiological sensor;

U.S. Patent No. 9,096,189 col.17 l. 46.

Instead of identifying which elements in the iPhone 7 or 8 infringe
plaintiff’s claims by sensing contaminants or contraband, Mr. Golden’s
charts recite the following information from the DHS ‘Cell All’ initiative as
reading on the limitations of claim 4 of the ‘189 patent:

DHS; S&T ‘Cell All’ initiative. ‘Develop detection device to
detect deadly chemicals.’ Stephen Dennis; PM: ‘Sensors will
integrate with 261 million [new and improved cell phones]’.
Agreement with Apple Inc., to manufacture a new and
improved cell phone with the detection capability for at least
CBRNE-H that is placed in, on, upon, or adjacent the new and
improved cell phones.

ECF No. 226-2 at 12 (Plaintiff’s Infringement Contentions, Ex. B, Claim 4
‘189 compared to Apple’s iPhone 7 and iPhone 8 Series).

For example, claim 1 of the ‘497 patent, discussed above, is
representative of plaintiff’s other asserted patents which similarly require
that the accused devices employ sensors for detecting chemical, biological,
and radiological agents and compounds. The claim chart lists the limitations
of claim 1 of the ‘497 patent, which include:

A multi sensor detection and lock disabling system for
monitoring products and for detecting chemical, biological,
and radiological agents and compounds so that terrorist activity
can be prevented . . .

U.S. Patent No. 7,385,497 col.10 l. 60. Once again, the infringement chart
merely cites information from the DHS ‘Cell All’ initiative as if the

8
procurement initiative itself was a product reading on the limitations of claim
1 of the ‘497 patent:

DHS; S&T ‘Cell All’ initiative. ‘Develop detection device to
detect deadly chemicals.’ Stephen Dennis; PM: ‘Sensors will
integrate with 261 million [new and improved cell phones]’.
Agreement with Apple Inc., to manufacture a new and
improved cell phone with the detection capability for at least
CBRNE-H that is placed in, on, upon, or adjacent the new and
improved cell phones.

ECF No. 226-2 at 4 (Plaintiff’s Infringement Contentions, Ex. B, Claim 1of
‘497 compared to Apple’s iPhone 7 and iPhone 8 Series). A procurement
initiative is a not a product or a method. At most, it is an ambition. Critically,
what it is not is the required identification of how the components or methods
actually employed by Apple iPhone 7 or 8 teach the limitations of “detecting
chemical, biological, and radiological agents and compounds.”

Claim 10 of the ‘752 patent also requires “a plurality of
interchangeable cell phone sensors for detecting the chemical, biological, and
radiological agents” (ECF No. 226-2 at 8); claim 9 of the ‘189 patent requires
“a multi-sensor detection system for detecting at least one explosive, nuclear,
contraband, chemical … agents” (ECF No. 226-2 at 20); claim 14 of the ‘439
patent requires “at least one of a chemical sensor, a biological sensor, an
explosive sensor, a human sensor, a contraband sensor, or a radiological
sensor” (ECF No. 226-2 at 23); and claim 5 of the ’287 patent requires “at
least one sensor for chemical, biological, or human detection.” ECF No. 226-
2 at 41. Accordingly, each of plaintiff’s asserted patents (‘497, ‘752, ‘189,
‘439, ‘287) claim sensors, nevertheless, plaintiff’s claim chart does not
identify sensors in the accused products.

Plaintiff must identify “where each element of each asserted claim is
found within each accused product.” PRCFC 4. Connectel, LLC v. Cisco
Sys., Inc., 391 F. Supp. 2d 526, 528 (E.D. Tex. 2005) (explaining that
preliminary infringement contentions “providing vague, conclusory
language or simply mimicking the language of the claims when identifying
infringement fail to comply” with that court’s similar local patent rule).
Merely paraphrasing or providing vague descriptions of plaintiff’s claim
limitations, when identifying features in the accused products, is insufficient.

Nor is it sufficient merely to claim that a device may be modified in a
9
way that makes it capable of operating in an infringing manner when the
patent claims that specific elements or components “comprise” the invention.
Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed.
Cir. 2001). We have examined the extensive charts submitted and are
satisfied that the charts utterly fail to identify any infringing structures,
components, or functionality in the accused product models that could serve
as sensors or detectors.

II. Plaintiff’s Contentions Do Not Identify A Locking Feature

Each of the asserted patents (‘497, ‘752, ‘189, ‘439, and ‘287) also
require a locking mechanism that is not identified in the accused products. 8
For instance, claim 1 of plaintiff’s ’497 patent requires:

detection of specific chemical, biological, or radiological
agents or compounds by the detectors causes the lighting of the
corresponding indicator light for visual confirmation of the
detection and initiates signal transmission from the cpu to the
automatic/mechanical lock disabler to lock or disable the lock
of the product thereby preventing further contamination about
the product and denying access to the product by unauthorized,
untrained and unequipped individuals.

U.S. Patent No. 7,385,497 col. 11 l. 18 (emphasis added).

With respect to the locking feature in the allegedly infringing product,
plaintiff’s chart recites the following:

The Samsung SmartThings contains: oneSmart Things Hub,
two SmartThings Multipurpose Sensors, one SmartThings
Motion Sensor, and one SmartThings Outlet. Connects to
appliances, lights, locks, cameras, thermostats, sensors. Get
alerts on smartphone if motion in the home. BMW Digital Key
to lock/unlock; and start it up with Samsung phones only. Cell-
All: The device detects and identify chemicals in the air using

8
The following are representative examples, from the asserted patents, which
require the limitation of a locking mechanism: 1) an “automatic/mechanical
lock disabler” (‘752 patent); 2) a “lock disabling mechanism” (‘189 patent);
3) “lock disabling mechanism” (‘439 patent); and 4) “a locking device” (‘287
patent)). ECF No. 226-2 at 9, 10, 17, 24, 25, 42.
10
 a ‘sample jet’ sends detection data to another phone.

ECF. No. 226-3 at 9. Nothing in this narrative identifies a locking feature or
explains how it operates in a way that infringes. We agree with defendant
that that this is too generalized to satisfy the requirements of an infringement
claim. Plaintiff must identify how the accused product incorporates a locking
mechanism or meets the unlocking limitations of claim 1 of plaintiff’s ‘497
patent in response to the detection of a hazardous substance. Generally
referencing consumer software applications for controlling smart home
devices or locking and unlocking car doors does not meet the requirement of
identifying which features of the accused products allegedly infringe
plaintiff’s claim limitations, as required by PRCFC 4. Plaintiff’s assertion
that his contentions are not vague or conclusory does not address the
problem: the claim limitations fail to identify in the accused devices the
limitations of a: 1) sensor; and 2) a locking mechanism.

Mr. Golden contends that it would be premature to penalize him for
deficiencies in his claim chart because DHS has not responded adequately to
his FOIA requests and further that his infringement contentions were
submitted without the benefit of having examined the accused products. He
also makes reference to several Freedom of Information Act (“FOIA”)
requests made to the Department of Homeland Security, seeking information
on the Cell-All initiative. He asserts that DHS failed to provide the
information requested.

The government points out the disconnect in Mr. Golden’s reasoning.
Plaintiff’s 2015 FOIA requests were related to DHS’ 2011 Cell-All initiative,
not the products plaintiff now accuses of infringement. 9 None of the
smartphone and smartwatch models that plaintiff now accuses of
infringement had been released at the time plaintiff submitted his FOIA
requests. The oldest product listed in plaintiff’s contentions is the iPhone 7,
which was released in 2016. 10 In any event, we cannot enforce FOIA

9
Exhibit B to his cross-motion refers to 351 FOIA requests made in 2015
(ECF No. 231-2); but none were directed to the Cell-All program.

ECF 226-2 at 163 (Plaintiff’s Apple Inc. electronics claim chart, showing
10

Apple iPhone 7 release date of September 2016).

11
requests. That is a matter for the district courts. 11 Nor has plaintiff filed any
motions to compel in this case.

Finally, plaintiff’s invocation of the doctrine of equivalents does not
salvage his claims charts, 12 which do not specify how each element of each
identified claim is alleged to be literally present or present under the doctrine
of equivalents, much less how the asserted claims are performed in
substantially the same function in substantially the same way to obtain
substantially the same results. Thus, as it concerns the sufficiency of
plaintiff’s infringement contentions, alleging infringement under the doctrine
of equivalents, plaintiff fails to meet the requirements of PRCFC 4(d).

CONCLUSION

Defendant’s motion to strike is granted. Plaintiff’s cross motion for
summary judgment and his request to strike the government’s motion to
strike are denied. While defendant asks us to dismiss for failing to comply
with court orders, we will permit plaintiff to resubmit his infringement
contentions in their entirety on or before August 27, 2021. If plaintiff fails
to file a claims chart which complies with Rule 4, the court will assume that
it cannot be done and that the complaint should be dismissed. Defendant is
directed to file its response to plaintiff’s corrected infringement contentions
within two weeks of the filing of plaintiff’s new claims charts.

11
See Am. Oversight v. United States Env't Prot. Agency, 386 F. Supp. 3d 1,
6 (D.D.C. 2019) (The Act confers jurisdiction on district courts “to enjoin
[an] agency from withholding agency records and to order the production of
any agency records improperly withheld.” 5 U.S.C. § 552(a)(4)(B).)
12
The Introduction to the claim charts states that:

Plaintiff believes that at least the Department of Homeland
Security (DHS) and at least third-party contractors . . . has
directly, indirectly, jointly, or under the ‘doctrine of
equivalents’ infringed Plaintiff’s communicating, monitoring,
detecting, and controlling (CMDC) device(s), and/or the ‘new
and improved’ cell phone, smartphone, watch, laptop, tablet . .
..

ECF No. 226-1 at 3 (emphasis added).
12
 s/Eric G. Bruggink
ERIC G. BRUGGINK
Senior Judge

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