Zoltek Corp. v. United States, 672 F.3d 1309

Zoltek, assignee of RE '162 patent, sues the United States under 28 U.S.C. §1498(a) alleging government use of its patented process in US commerce.
Original complaint (1996) asserted government use; initially no claim against Lockheed Martin; §1498(c) argued by Government as a bar to recovery.
Zoltek I/II decisions addressed whether §1498(c) precluded recovery for foreign-use aspects and whether the Government could be sued for infringement under §1498(a); the court held that §1498(a) could be narrowed to §271(a) liability in Zoltek III.
On remand, Zoltek sought to amend to add Lockheed claim under §271(g) and transfer the case to the Northern District of Georgia under 28 U.S.C. §1631.
The trial court allowed amendment and transfer, invoking §1631 to transfer to Georgia; the Court of Federal Claims certified a controlling question of law for interlocutory appeal.
The Federal Circuit en banc vacated Zoltek III and held that §1498(a) provides an independent liability mechanism extending to §271(g) and that §1498(c) does not bar the claim; the case is remanded for further proceedings consistent with the opinion.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether §1498(a) provides an independent government liability beyond §271(a).	Zoltek contends §1498(a) permits government liability based on direct infringement, including §271(g).	Government contends §1498(a) is limited to §271(a) direct infringement.	§1498(a) is independent and covers §271(g) infringement product use.
Whether §1498(c) applies to this foreign/international patent-use scenario.	Zoltek argues §1498(c) should bar liability for claims arising abroad.	Government argues §1498(c) does not apply because acts occurred in the United States.	§1498(c) does not apply; acts occurred in the United States, so liability is possible.
Whether a government contractor (Lockheed) is immune or liable under §1498(a).	Zoltek argues government liability extends to contractor actions.	Lockheed seeks immunity under §1498(a).	The United States is liable under §1498(a) for direct infringement; contractor is immune from individual liability.
Whether the en banc decision complies with extraterritoriality and statutory coherence (e.g., 19 U.S.C. §1337(l)).	Zoltek argues Zoltek III and §1337(l) were superseded improperly and extraterritorial reach must be recognized.	Government maintains constraints of extraterritoriality and §1498(c) apply.	En banc vacates Zoltek III to preserve §1498(a) scope and §1337(l) remediation; case remanded.

NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed.Cir.2005) (dicta on §1498 relation to §271; not binding authority for §1498 scope here)
Motorola, Inc. v. United States, 729 F.2d 762 (Fed.Cir.1984) (distinguishes between direct infringement and other §271 concepts; context for 1498 relation)
Decca Ltd. v. United States, 640 F.2d 1156 (Ct.Cl.1980) (holds §1498(a) does not incorporate §271(b)/(c) inducement/contributory infringement)
Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 516 (Supreme Court 1972) (limits §271(a) infringement to activity within the United States; extraterritoriality principle)
Small v. United States, 544 U.S. 385 (Supreme Court 2005) (presumption against extraterritoriality in statutory interpretation)
Morrison v. National Australia Bank Ltd., 130 S. Ct. 2869 (Supreme Court 2010) (presumption against extraterritoriality; domestic focus of conduct)
Brown v. Duchesne, 60 U.S. 183 (Supreme Court 1856) (early articulation of domestic scope of patent law)