Unitrac, LLC v. United States
113 Fed. Cl. 156
| Fed. Cl. | 2013Background
- Unitrac sued the United States alleging unlicensed use of two patents related to an Item Unique Identification (IUID) system; Complaint filed September 9, 2011 in the Court of Federal Claims.
- DoD promulgated an IUID policy in 2003 requiring UID for solicitations after January 1, 2004; DoD used and tested an IUID prototype available on a government server (GDSBeta Box) in mid‑2003.
- Northrop developed and demonstrated a working IUID prototype; evidence shows core functionality (receiving, storing, tracking, retrieving pedigree/ID data) was available and tested by August 22, 2003.
- Unitrac first contacted DoD about the patents in 2007 but did not convert its submissions into a formal DFARS claim until March 30, 2009; DoD issued an initial denial June 29, 2010 and a final denial November 18, 2010.
- The Court treated 28 U.S.C. § 2501 as jurisdictional (per John R. Sand), assessed accrual, and applied tolling under 35 U.S.C. § 286; concluded claim accrued no later than August 22, 2003 and statutory tolling ran March 30, 2009–November 18, 2010 (598 days).
- Applying a six‑year limitations period plus the 598‑day toll, the limitations period expired April 12, 2011; Unitrac filed on September 9, 2011—after the deadline—so the Court dismissed for lack of jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Accrual date (when § 1498 claim accrued) | Accrual occurred later (after system completion/testing; may be May–Aug 2004); ongoing actions mean claim continued | Accrual occurred when the accused instrumentality was first available for use (by Aug 22, 2003) | Claim accrued no later than Aug 22, 2003; ongoing/late acts do not change accrual date |
| Government use secrecy / inquiry notice | DoD kept IUID use limited/secret; Unitrac did not know and could not reasonably discover use until 2005 | Public DoD memorandum (July 29, 2003) and demonstrable prototype put Unitrac on inquiry notice | DoD use was not concealed; memorandum and available system put Unitrac on inquiry notice (no tolling for concealment) |
| Tolling start date under 35 U.S.C. § 286 | Tolling should start at first contact (June 5, 2007) when Unitrac began communications | Tolling begins when Unitrac converted submissions into a formal DFARS claim (Mar 30, 2009) | Tolling begins Mar 30, 2009 (Unitrac’s conversion to DFARS claim required for statutory tolling) |
| Tolling end date under § 286 (what constitutes denial) | Tolling ends at initial DoD determination (June 29, 2010) | Tolling ends at final agency action (Nov 18, 2010) | Tolling ends Nov 18, 2010 (initial determination invited reconsideration and was not final) |
Key Cases Cited
- John R. Sand & Gravel Co. v. United States, 552 U.S. 130 (statute of limitations in the CFC is jurisdictional)
- Decca Ltd. v. United States, 544 F.2d 1070 (Ct. Cl.) (patent taking accrues when accused instrumentality is first available for use)
- Paper Converting Machine Co. v. Magna-Graphics Corp., 745 F.2d 11 (Fed. Cir. 1984) (testing of a machine can constitute infringement/use)
- Dow Chemical Co. v. United States, 32 Fed. Cl. 11 (policy behind § 286 tolling to allow agency consideration)
- Lane v. Pena, 518 U.S. 187 (1996) (waiver of sovereign immunity construed narrowly)