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United States Court of Claims
May 4, 1982
[*938] Plaintiff brings this patent suit under 28 U.S.C. § 1498 (1976 & Supp. III 1979) for infringement of an invention covered by allowed claims in three patent applications, and under 35 U.S.C. § 183 (1976) for damages associated with the imposition by the Central Intelligence Agency (CIA) of a secrecy order on the subject matter of those applications. The rights associated with the patent applications were originally co-owned by plaintiff, but were subsequently assigned to Zenith Radio Corporation (Zenith), and reassigned by Zenith to Itek Corporation (Itek) with certain reservations. Itek eventually reassigned to plaintiff its rights to two of the patent applications [**2] in 1978 and to the third application in 1980. After filing an initial administrative claim with the CIA on June 18, 1979, plaintiff filed suit in this court on August 25, 1980. Defendant has moved for dismissal and/or summary judgment on the bulk of plaintiff's claims. We agree with the substance of defendant's motion and dispose of plaintiff's petition in accordance with the views expressed below.
Defendant first moves to dismiss plaintiff's section 1498 infringement claims for lack of jurisdiction, since such [*939] claims must be based on the existence of a validly issued patent. See, e.g., Fulmer v. United States, 144 Ct. Cl. 812, 838 (1959); Patton v. United States, 110 Ct. Cl. 195, 202, 75 F. Supp. 470, 473 (1948) (citing Gayler v. Wilder, 51 U.S. (10 How.) 477 (1850)). Plaintiff has rights only in three allowed patent applications; defendant contends, therefore, that plaintiff has no property rights protected by section 1498. In his opposition brief, plaintiff expresses his desire to dismiss his section 1498 claim without conceding the merits of defendant's argument. Accordingly, we will allow plaintiff's section 1498 claim to be dismissed, [**3] without prejudice, however, to his renewal of the claim should the patents applied for be validly issued at some later date.
Plaintiff's second claim is brought ] under 35 U.S.C. § 183, which permits recovery against the Government where imposition of a secrecy order on a patent application has deprived the owner of patent rights. Defendant argues that any claims plaintiff may be urging for alleged infringement or inability to commercialize his invention, where these claims arose prior to the time plaintiff again became owner of the patent rights, are barred by the Anti-Assignment Act, 31 U.S.C. § 203 (1976). This statute provides, in relevant part, that "[a]ll transfers and assignments made of any claim upon the United States * * * shall be absolutely null and void" in the absence of certain formalities and limited exceptions not applicable in this case. Defendant contends that the Anti-Assignment Act bars any claims against the Government which arose under 35 U.S.C. § 183 prior to plaintiff's return to ownership. 1
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
230 Ct. Cl. 938 *; 1982 U.S. Ct. Cl. LEXIS 237 **
L. Curtis Foster v. The United States
infringement, patent, patent application, rights, Anti-Assignment Act, plaintiff's claim, cause of action, patent rights, commercialize, defense motion, anti-assignment, procurement, reassigned, invention, assigned, contends, deprived, damages, secrecy, validly
Patent Law, Jurisdiction & Review, Subject Matter Jurisdiction, General Overview, Business & Corporate Compliance, Ownership, Conveyances, Assignments, Remedies, Damages, Subject Matter, Utility Patents, Inventions Related to National Security, Patent Law, Federal Government Inventions, Infringement Actions, Exclusive Rights