ZOLTEK CORP V. US

CAREY LEE MECHANICAL ENGINEERINGUC BERKELEY IEOR190G FALL 2008

PATENT INFRINGEMENT BY THE US GOVERNMENT – COMPOSITE MANUFACTURING TECHNOLOGY

OUTLINE

Major Players

Composites

Dispute

Ruling

Impact

THE MAJOR PLAYERS

Zoltek Corporation Manufactures Carbon

Composite Raw Material Panex – low cost Pyron – flame resistant

United States Lockheed Martin

Corporation Defense Contractor Aerospace Manufacturer

F22 Raptor http://www.aviationnews.eu/blog/wp-content/uploads/2007/08/f-22.jpg

“COMPOSITES”

What are composites?1) two or more constituent materials2) significantly different physical or chemical properties

3) remain separate and distinct on a macroscopic level within the finished structure

carbon fiber plywood

http://en.wikipedia.org/wiki/Composite_material

MAKING COMPOSITES

1) Heat polyacrylonitrile (PAN) until carbonized

2) Ply typeUniaxial Woven

3) ResinPre-preg

(sticker)Wet Layup

MAKING A PART

4) Layers

0 °

90 °

45 °

Core

45 °

-45 °

MAKING A PART

5) Debulk – Vacuum Bag- Removes excess resin

6) Oven - Cures resin- Cure cycles produce different properties

http://www.dcc-concept.com/images/fibres-cure-cyvle.jpg

BENEFITS AND APPLICATIONS Lightweight Strong Configurable

Applications include: Airplanes Racing Cars Bikes

http://www.zoltek.com/products/panexuses.php

PATENTS (1993)

Zoltek owns patents for “Controlled Surface Electrical Resistance Carbon Fiber Sheet Product”

Claim 1: A method of manufacturing a plurality of different value controlled resistivity

carbon fiber sheet products employing a carbonizable fiber starting material; said method comprising selectively partially carbonizing previously oxidized and stabilized fiber starting material for a predetermined time period in an oxygen free atmosphere within a furnace at selected temperature values…

Claim 2: …and thereafter processing the partially carbonized fibers into homogeneous

carbon fiber sheet products...

Basically: 1) Heat fiber until carbonized 2) Form fibers into sheets

http://209.85.173.104/search?q=cache:Dr6N4kiSrP4J:www.fedcir.gov/opinions/04-5100.pdf+zoltek+v+us&hl=en&ct=clnk&cd=1&gl=us&client=firefox-aZ

DISPUTE

US contracts Lockheed Martin to build the F22

Lockheed subcontracts to Japan1) Pre-preg silicon carbide sheets

Fibers are carbonized and made into sheets in Japan

Imported to US

2) Silicide fiber mat Fibers are carbonized made in Japan Processed into mats in US

DISPUTE

1498(a)“…whenever an invention described in and covered by a patent of the United States is used. .. by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, 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 and manufacture.”

1498(c)“…does not apply to any claim arising in a foreign country.”

http://patentbaristas.com/archives/2007/04/22/zoltek-corp-v-us-protecting-patent-holders-from-government-infringement/

DISPUTE (2006)

Zoltek brings suit against US under 1498(a)

Federal Circuit court bars Zoltek’s claim under 1498(c)

“We conclude that under § 1498, the United States is liable for the use of a method patent only when it practices every step of the claimed method in the United States.”

RULING

Court directs Zoltek to pursue case as a taking in violation of the Fifth Amendment

Zoltek amends its complaint Federal Circuit denies claim based on

271(a)“a process cannot be used ‘within’ the United States as required by the [infringement statutes] unless each of the steps is performed within this country.”

IMPACT

Since one of the claimed processes (fibers manufactured in Japan) occurred outside the US

NO INFRINGEMENT under 271(a) 1498(a) does not apply

US government and contractors have an easy way around patents outsource at least one step

QUESTIONS?