Government contractor entitled to patent infringement immunity

February 21, 2007
Post by Blog Staff

The Federal Circuit ruled today that a contractor working for the government was entitled to immunity from a patent infringement suit under 28 U.S.C. § 1498(a). The contractor was hired to clean up various sites contaminated by hazardous waste, and the terms of the contract required the contractor to use a particular method to perform the cleanup. This method was patented, and the patent holder sued. The Federal Circuit affirmed the lower court's grant of summary judgment, finding that § 1498(a) immunity applied, and the patent holder's remedy was instead against the Government in the Court of Claims. More details of the case after the jump.Sevenson Environmental Services holds several patents on hazardous waste cleanup, including several relating to treatment of hazardous waste by application of phosphoric acid. Sevenson asserted five patents, Numbers 5,527,982, 5,732,367, 5,916,123, 5,994,608, and 6,139,485. The defendant, Shaw Environmental, was under contract with the government to clean up a parcel of land near Colonie, New York contaminated with lead. As part of the contract, Shaw was required to use "a phosphoric acid based stabilization system." Shaw asserted immunity from infringement liability under 28 U.S.C. § 1498(a), which provides in part:

(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured 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.
The district court granted summary judgment in Shaw's favor. § 1498(a) essentially has two requirements for immunity: (1) the use must be "for the Government," and (2) the use must be "with the authorization and consent of the Government." Here, the Government specifically contracted with Shaw to clean up the Colonie site, so the court found that the use of the patented methods was "for the Government." Further, because the contract specifically required that the cleanup be done with "a phosphoric acid based stabilization system," the use of the patented methods was also "with the authorization and consent of the Government." As a result, § 1498(a) immunity was appropriate, and the Federal Circuit affirmed the grant of summary judgment. Sevenson isn't without a remedy totally, of course, it just must pursue its case against the Government in the Court of Federal Claims as opposed to against Shaw directly. To read the full decision in Stevenson Envtl. Servs., Inc. v. Shaw Envtl., Inc., click here.

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