Linick v. United States

104 Fed. Cl. 319, 2012 WL 1255131
CourtUnited States Court of Federal Claims
DecidedApril 13, 2012
DocketNo. 10-635C
StatusPublished
Cited by1 cases

This text of 104 Fed. Cl. 319 (Linick v. United States) is published on Counsel Stack Legal Research, covering United States Court of Federal Claims primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Linick v. United States, 104 Fed. Cl. 319, 2012 WL 1255131 (uscfc 2012).

Opinion

OPINION AND ORDER1

WHEELER, Judge.

Plaintiff, James M. Linick seeks compensation in the amount of $2.5 million for damages allegedly resulting from secrecy orders the Government imposed on three of his patent applications. Compl. ¶¶ 20-21 (Sept. 22, 2010). The secrecy orders, which remain in effect, prohibit Mr. Linick from disclosing the contents of his patent, applications to unauthorized individuals. See PX .48 at 2067-69; PX 64; PX 65. By virtue of this prohibition, Mi-. Linick claims that the secrecy orders interfered with his ability to market and sell the technology in his patent applications. Pl.’s Br. 29, 35-36 (Dec. 19, 2011). Mr. Linick brought this action under 35 U.S.C. § 183 (2006), which grants a patent owner the right to seek “just compensation” for damage caused by a secrecy order. As set forth below, the Court finds that Mr. Linick is not entitled to relief because he [320]*320failed to show any actual damage or a causal connection between the secrecy orders at issue and the damage he is claiming.

Background

Mr. Liniek is a semi-retired professional engineer, who holds at least one Swiss patent and nine United States patents. See Stips. 1-3.2 Of these ten patents, the Swiss patent and four of the U.S. patents relate to Trajectory Correetible Munitions (“TCMs”), or munitions fitted with technology to ensure greater accuracy. See JXs 1-5; Tr. 38-39 (Linick).3 Likewise, the three patent applications at issue — i.e., those under secrecy orders — all relate to TCMs. See PX 48; PX 65; PX 66.

The first of these applications, serial number 10/071,215 (“the '215 application”), claims a method for determining the [* * *] orientation of munitions moving through space (hereinafter “the vertical reference system”). See PX 48 at 2085. Mr. Linick claims that the '215 application is an improvement on his earlier patents related to TCMs. Stip. 13. The other two applications subject to secrecy orders, serial number 10/584,614 (“the '614 application”) and serial number 10/584,615 (“the '615 application”), are related “divisional” applications of the '215 application. See PX 64 at 2299; PX 65 at 2403. The '614 application claims [* * *] a cargo round that Mr. Linick refers to as “Red Rain.” PX 64 at 2308; see also Tr. 58-61 (Linick). The '615 application claims a “trajectory correction mechanism,” including an “impulse motor” (hereinafter “the impulse motor system”). PX 65 at 2428.

Mr. Liniek filed the '215 application on February 11, 2002. Stip. 13. Based upon a recommendation from the U.S. Army Armament Research Development and Engineering Command (“ARDEC”), the U.S. Patent and Trademark Office (“USPTO”) imposed a secrecy order on the '215 application on August 14, 2002. Stip. 16; PX 48 at 2067. The order stated that the '215 application would be classifiable at the level of “confidential” and provided that “[t]he subject matter of this application may not be published or disclosed to any person except as specifically authorized herein or subsequently authorized by written modification of this Secrecy Order granted by the Commissioner of Patents & Trademarks.” PX 48 at 2067. In addition, the order prohibited the filing of foreign patent applications without the USPTO’s prior approval. See id. at 2069. On December 11, 2007, the USPTO issued a Notice of Allowability4 on the '215 patent application but withheld issuance of the patent application due to the secrecy order. Stip. 17; see also PX 48 at 2061-62.

On February 6, 2008, Mr. Linick filed the '614 and '615 applications. Stip. 14; see also PX 64 at 2299; PX 65 at 2403. The USPTO imposed secrecy orders on both of these applications on June 20, 2008. Stip. 18; see also PX 64; PX 65. Like the secrecy order covering the '215 application, the secrecy orders for the '614 and '615 applications prohibit disclosure to unauthorized individuals. See PX 64; PX 65. Unlike the '215 order, however, the orders covering the '614 and '615 applications include permits for foreign filing. See PX 64; PX 65. The USPTO issued Notices of Allowability on the '614 and '615 applications on January 4, 2011 and October 7, 2009, respectively, but withheld issuance of the patent applications due to the secrecy orders. Stips. 19, 21.

On March 12, 2008, pursuant to the Invention Secrecy Act, 35 U.S.C. § 183, Mr. Linick submitted an administrative claim to the Secretary of the Army and the Commanding [321]*321General of the Army Military Command for just compensation due to the imposition of the secrecy order on his '215 application. See PX 100. The Army did not respond substantively to Mr. Linick’s administrative claim until February 2011. See PX 122; PX 124. In the meantime, on February 22, 2010, counsel for Mr. Linick filed a Rule 27 Verified Petition in this Court to preserve Mr. Linick’s testimony on account of his failing health. See No. 10-118M, Dkt. No. 1. The Court granted Plaintiffs request, see id., Dkt. No. 6, allowing Mr. Linick to perpetuate his own testimony regarding the harm he claims to have suffered as a result of the secrecy orders. Mr. Linick’s attorney and government counsel conducted an oral examination of Mr. Linick in the presence of the Court on April 21-22, 2010.

Having failed to receive a substantive response from the Army, Mr. Linick commenced this action on September 22, 2010, seeking just compensation under § 183 for the injury he allegedly suffered as a result of the three secrecy orders. No. 10-635C, Dkt. No. 1. The Army finally responded to Mr. Linick’s administrative claim, issuing a tentative denial of his claim on February 8, 2011, see PX 122, followed by a final denial on March 3, 2011, see PX 124. The Court held a three-day trial in this ease on October 12-14, 2011 at the National Courts Building in Washington, DC.

Discussion

Section 181 of the Invention Secrecy Act (“the Act”) authorizes the Commissioner of Patents (“the Commissioner”), upon the recommendation of a specified federal agency, to order that an invention be kept secret and to withhold the publication of an application or the grant of a patent if publication or disclosure “might ... be detrimental to the national security.” 35 U.S.C. § 181. To justify the imposition of a secrecy order, the Government itself need not have any interest in the invention. Hornback v. United States, 36 Fed.Cl. 552, 554 (1996). The only requirement under § 181 is that the appropriate government agency determine that divulgence might harm national security. Id.; § 181.5 After the Commissioner orders an invention to be kept secret, § 186 of the Act makes it a criminal offense to disclose the invention, or material information about the invention, without authorization.

For a patent owner who has been affected by a secrecy order, § 183 of the Act provides a means of relief, granting the owner the right to seek just compensation “for the damage caused by the order of secrecy.” The mere existence of a secrecy order does not give rise to damages. Weiss v. United States,

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104 Fed. Cl. 319, 2012 WL 1255131, Counsel Stack Legal Research, https://law.counselstack.com/opinion/linick-v-united-states-uscfc-2012.