Liberty Ammunition, Inc. v. United States
101 Fed. Cl. 581
Fed. Cl.2011Background
- Liberty sues the United States under 28 U.S.C. § 1498(a) asserting patent infringement and related breach-of-contract and unfair-competition claims regarding the so‑called 'Green Bullet'.
- Government concedes subject matter jurisdiction over the patent claim but challenges jurisdiction over Liberty's non-patent claims and moves to dismiss them under RCFC 12(b)(1) or 12(b)(6).
- In 2005, Mr. PJ Marx sought a patent for a three-part bullet design; the 2010 patent issued as U.S. Patent No. 7,748,325.
- Marx entered into three NDAs with the DoD between 2005 and 2006, restricting disclosure of confidential bullet-design information; the NDAs contemplate transfers only to certain controlled entities.
- Liberty claims the Army’s M855A1 EPR, introduced around 2010, embodies Liberty’s design and that the Army disclosed confidential information to vendors, while Liberty seeks credit for the invention.
- The government contends disclosures were limited to Picatinny Arsenal and disputes the assignment history; the court considers Anti-Assignment Act issues and pendent jurisdiction over related claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Liberty state a valid contract-based claim despite the Anti-Assignment Act? | Liberty alleges valid NDAs were assigned to it and survive transformation of Marx's entity. | Anti-Assignment Act voids transfers; no privity with the United States. | Count II survives; non-frivolous contract allegations suffice for jurisdiction. |
| Are the Anti-Assignment Act exceptions (waiver and operation of law) applicable here? | NDAs contain waiver-like terms and corporate transformations trigger operation‑of‑law transfer. | Waivers and exceptions are not satisfied or proven at this stage. | Both exceptions are plausible; allegations state a plausible claim under Twombly/Iqbal and may be proven at trial. |
| Should the court exercise pendent jurisdiction over Liberty's Lanham Act and Florida unfair-competition claims? | Claims are closely linked to the patent and contract claims and should be heard together. | Lanham Act claims fall within district court jurisdiction; Florida claim is tort-like and not appropriate for this court. | Pendent jurisdiction over the Lanham Act and Florida unfair-competition claims is declined. |
Key Cases Cited
- Engage Learning, Inc. v. Salazar, 660 F.3d 1346 (Fed. Cir. 2011) (jurisdiction under Tucker Act requires only a non-frivolous contract allegation; merits decide actual contract existence)
- Rochester Gas & Elec. Corp. v. United States, 65 Fed.Cl. 431 (Fed. Cl. 2005) (assignment clause can evidence government recognition/consent to an assignment under Anti-Assignment Act)
- Monchamp Corp. v. United States, 19 Cl.Ct. 797 (Cl. Ct. 1990) (contract waiver of Anti-Assignment Act can be found in contract terms)
- Dominion Resources, Inc. v. United States, 641 F.3d 1359 (Fed. Cir. 2011) (agency waiver/recognition of assignment can validate transfers)
- Trek Leasing, Inc. v. United States, 62 Fed.Cl. 673 (Fed. Cl. 2004) (pendent jurisdiction considerations weigh against extending to closely linked state claims)