Last week, this cert. petition (with appendix) was filed in the case of Zoltek Corp. v. U.S.; it has been docketed as 06-1155. Dean Monco of Wood Philips in Chicago is counsel of record; with him on the brief are Erik Jaffe of Erik Jaffe, P.C.; Garry Grossman of Schiff Hardin; and John Mortimer and Bert Bertoglio, also of Wood Philips.
The full question presented can be found after the jump.
“Patent infringement under 35 U.S.C. § 271(a) includes “us[ing] * * * any patented invention, within the United States.†Patent infringement under 35 U.S.C. § 271(g) includes “import[ing] into the United States or * * * us[ing] within the United States a product which is made by a process patented in the United States.†Where a patented invention is “used or manufactured by or for the United States†28 U.S.C. § 1498(a) provides that the “owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use or manufacture.†Under 28 U.S.C § 1498(c), § 1498 does “not apply to any claim arising in a foreign country.â€
Where a government-authorized contractor performed some or all of the steps of a patented process outside the United States, but the products of that process were imported into and used in the United States by and for the United States, the questions presented by this Petition are:
1. Whether conduct by the government through its authorized contractors that would otherwise constitute patent infringement under § 271(g) or § 271(a) is a taking of property subject to the Fifth Amendment?
2. Whether a patent-holder can seek compensation in the Court of Federal Claims for such otherwise infringing conduct either: (A) under § 1498, notwithstanding that some or all steps of the process were performed outside the United States; or, if not, (B) as a claim for just compensation under the Fifth Amendment cognizable pursuant to the Tucker Act, 28 U.S.C. § 1491(a)?”
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