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Sevenson Environmental Services, Inc. v. Shaw Environmental, Inc.
Decided February 21, 2007  pdf
Judge Linn with Judge Dyk

 A contractor’s use of a patented invention “for the Government and with the authorization and consent of the Government’ is entitled to immunity from suit under 1.498(a).”

Shaw executed a clean up contract from the United States , which required Shaw to use phosphoric acid to treat environmental lead contamination.  This procedure was claimed in Sevenson’s patent.  Sevenson sued Shaw at the U.S. District Court for the Western District of New York but Judge Richard Arcara held summary judgment that the suit was barred by government contractor immunity under 28 U.S.C. 1498.  Sevenson appealed to the Federal Circuit.

 The Federal Circuit affirmed, noting that Sevenson could only sue the U.S. in the U.S. Court of Federal Claims.  Shaw’s contract specifically consented for “all use and manufacture, in performing this contract…of any invention described in and covered by a United States patent…whose use necessarily results from compliance by the Contractor or subcontractor with (I) specifications or written provisions forming a part of this contract.”  The contract thus met the conditions for immunity under the statute.

 A contractor who works for the federal government should have a contract that specifically authorizes use of necessary patented technology.

 

 

Fieldturf International, Inc. et al. v. Sprinturf, Inc., Sportfields et al.

Decided January 5, 2006

Judge Newman with Judges Schall and Dyk


*          “A bid to supply a product specified in a ‘request for proposal’ is a traditional offer to sell” under 35 U.S.C. 271(a).


The Folsom school district of California solicited proposals for synthetic grass fields, by offering a project specification based in part on claim elements of FieldTurf’s patent.  SportFields, a competitor, complained that the solicitation contradicted laws against sole source procurement but submitted its own proposal.  Fieldturf then sued SportFields at the U.S. District Court for the Eastern District of California, for offering to sell under 35 USC 271(a) in violation of Fieldturf’s patent.  Judge Frank Damrell, Jr. granted SportFields summary judgment of non-infringement, because SportFields had intended to sell its own product, which did not infringe the patent.  Fieldturf appealed to the Federal Circuit.

 

The Federal Circuit affirmed, after considering non-contract evidence of “the nature of the SportFields product that was intended” and differences from the product that Sprinturf had communicated to the school.  The Federal Circuit further noted that under California law, proposal requests automatically include “an ‘or equal’ provision when” the proposal “designated a patented product.”

 

The Federal Circuit noted that “efforts of commercial entities” such as Fieldturf, to “achieve specifications” in bid contracts “that favor their product are not illegal, absent fraud or deception.”  A patentee can persuade an agency to adopt a patented technology, with proposals that include elements of patent claims.  A practitioner may draft claims with this in mind

 

 

Campbell Plastics Engineering & Mfg., Inc. v. Les Brownlee, Acting Secretary of the Navy
Decided November 10, 2004    pdf copy
Judge Clevenger with Judges Michel and Dyk

*           Insufficient invention disclosure by a company to a government sponsor may trigger the transfer of all invention rights to the government

Campbell obtained an SBA grant from the U.S. Army to develop an air crew protective mask. Although the contract required Campbell to disclose inventions to the Army within 2 months of written invention disclosures, by notification in yearly reports, and by filing a final project report, Campbell did not notify the Army formally of an invention until a patent had issued. The Army subsequently demanded title to the invention and an Army appeals board affirmed. Campbell appealed to the Federal Circuit.

The Federal Circuit affirmed that Campbell's invention rights should be transferred to the Army because Campbell did not properly report the invention to the Army sponsor, as required by the contract.

This is a first case where the Federal Circuit "defined a contractor's obligation to disclose a 'subject invention' under the obligation created by the Bayh-Dole act." Recipients of Federal money under this act can retain title to new technology developed from sponsored research but now must be more vigilant in following the reporting requirements of their contracts.

 

State Contracting & Engineering Corporation, v. Condotte America et al.
Decided October 7, 2003   pdf copy
Judge Bryson with Judges Michel and Dyk

*                  A willfulness finding for patent infringement might be avoided without a written non-infringement opinion if a contract indicated that the patent was licensed

While performing work for Florida, Contracting invented a new process for constructing concrete sound barriers. Contracting obtained two patents for the process and Florida included specifications for this process in subsequent contracts with other parties (Contractors). Contracting then sued Contractors and won a jury trial of damages for patent infringement at the U.S. District Court for the Southern District of Florida. Judge William Dimitroules ruled that Contactors' infringement was not willful because Contractors believed from the language of their agreement that Florida had a license to practice the invention. Both sides appealed various issues to the Federal Circuit.

The Federal Circuit affirmed the lack of willfulness even though Contractors had not received advice of counsel regarding infringement, because Contractors had a good faith belief that they had a sub-license. Florida had "made a specific representation that it had a license to practice the invention, and it incorporated the invention in the contract specifications, thus requiring the contractors to use the patented process."

This is the second appeal from a conflict involving alleged impropriety of contracting between a Florida state agency and contractors working on roadways. In the earlier appeal, the state of Florida removed itself from the case on grounds of 11th amendment state immunity from violating Federal patent law. In this second appeal, the Federal Circuit affirmed that the contractors were reasonable in believing that Florida had rights to sublicense the patent rights