Zoltek v. United States (Fed. Cir. 2006, 04–5100).
The US government contracted with Lockheed Martin to design and build F-22 stealth fighters. Zoltek has argued that manufacture of carbonized sheets used in the aircraft violates its method patents, even though the sheets were partially manufactured in Japan. The lower court dismissed Zoltek’s federal claims because they “arose in Japan.” However, the lower court also ruled that the US government’s alleged infringement could be actionable as a Fifth Amendment taking.
On appeal, the CAFC issued a decision per curiam, and three additional opinions.
Process Claims Abroad: Because a process is not infringed unless “each of the steps is performed within this country," the US has no liability under Section 1498(a).
Patent Infringement as a Taking: In the 1894 case of Schillinger v. United States, the Supreme Court ruled that a patent holder could not sue the government for patent infringement as a Fifth Amendment taking. This case remains good law.
Judge GAJARSA Concurring:
I agree that we are bound by our panel decision in NTP, Inc. v. Research in Motion, Ltd., in which we held that "direct infringement under section 271(a) is a necessary predicate for government liability under section 1498." However, the NTP proposition is, in my view, the result of an unchecked propagation of error in our case law, and its viability may eventually be challenged.
Judge DYK Concurring:
I join the court’s per curiam opinion but write separately to express my view that the court correctly held in NTP, Inc. v. Research in Motion, Ltd., that the government can only be liable for infringement under section 1498(a) if the same conduct would render a private party liable for infringement under section 271(a).
Judge PLAGER Dissenting: Patent rights are property rights protected whose taking should be compensable under the Fifth Amendment. . . .
NOTE: There is lots more more here for a law review article.