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Apr 03, 2006


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One of the most unusual decisions I have ever seen come out of the CAFC: one per curiam, two concurrences, and one dissent.

En banc petition virtually assured, and reversal likely. DOJ, if reversed, will certainly try to get this before the USSC. If upheld, Zoltek likely to try.

I have heard of "judicial activism". The concurrences seem to reflect "judicial ossification" with slavish reliance on Schillinger and unwillingness to accept subsequent Supreme Court jurisprudence as best exemplified by Ruckleshaus (sp?).

Prediction before USSC...unanimous decision of Fifth Amendment taking, rejection of sovereign immunity waiver theory, and, perhaps, Tucker Act applicability.

Law Review Articles available? More than I can begin to count. How to reconcile make and use in 1498 with all 5 patent rights and provisional rights. Can all of 35 USC 271 be applied to either 1498 or Tucker Act claim? What is meant in 1498 by claim arising in foreign country? What is measure of just compensation...royalty, lost profits, enhanced damages, fees, etc.? How does the phrase "authorization and consent" enter into the picture and what does it actually mean? The list is virtually endless.

This case represents some of the most fundamental issues I have ever seen concerning IP law, and has an almost infinite number of possibilities on how to use the eventual holding as either a sword of shield from a strategic vantage point.

One last practical observation. Claims Court and CCPA merged to bring stability to Patent Law. Respective jurisprudence of each court adopted at that time. Unfortunately, virtually every prior decision that causes such problems as this arose in the context of Claims Court decisions that almost slavishly, and without any meaningful caselaw support, "assumed" that patents are of the type of interests subject to waiver of sovereign immunity because private infringment sounds in tort. Zoltek per curiam and concurring opinions follow this logic as almost an article of faith.

Any doubts as to this observation are made only too clear by reference to ABA Public Contract Law Section. It actually has an IP Committee that acts totally independent of the IP Section.

"There is lots more here for a law review article." someone seems to have noticed after the original CFC opinion issued.

Richard T. Ruzich, Government Patent and Copyright Infringement Overseas Under 28 U.S.C. § 1498 (In the Shadow of the RIM Decisions), 15 Fed. Cir. B. J. 401 (2006)

Just a thought, but is anyone aware of any cogent reason why 28 USC 1498 would/should not embrace conduct arguably within the scope of 35 USC 271(g)? At least one of the two products at issue appears to have been made in Japan using the process covered in the US by Zoltek's patent. As for the second, the process appears to have been practiced in part in Japan and in part in the US.

Case law regarding the scope of 271(g) is underwhelming to say the least....

"is anyone aware of any cogent reason why 28 USC 1498 would/should not embrace conduct arguably within the scope of 35 USC 271(g)?"

The original COFC opinion addressed this issue. The language of section 1498 is limited to the acts of making and using the invention. The text of 1498 does not include the term "infringement." Thus, it could not be interpreted covering infringement other than making or using the invention.

"Thus, it could not be interpreted covering infringement other than making or using the invention."

Assuming, arguendo, this is correct, then what happens when the infringement involves "sell", "offer to sell", or "import" (also keeping in mind the reach of 271(g))? Against whom can suit be brought and for what, where can suit be brought, and what remedies may be sought?

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