This appeal requires that we apply once again settled precedent from the Supreme Court regarding 28 U.S.C. § 1498(a). Toxgon Corporation (“Toxgon”) claims that the district court erroneously dismissed its patent infringement action against BNFL, Inc., and GTS Duratek (collectively, the “Defendants”) for lack of subject matter jurisdiction. Because we determine that the district court did not apply the correct controlling law, we vacate the trial court’s order dismissing Tox-gon’s lawsuit and remand for proceedings consistent with this opinion.
I
In 1998, BNFL, Inc. (“BNFL”) entered into a fixed price contract with the Department of Energy (“DOE”) to develop a process for treating and- immobilizing certain radioactive wastes from the Hanford, Maryland, nuclear site. As provided by the contract, GTS Duratek (“Duratek”) was a designated subcontractor to BNFL.
Because the necessary technology for treating and removing radioactive material was not available, the contract provided for a twenty-month period for the development of that technology. In due course, BNFL and Duratek developed a process that included the use of a “pilot melter,” which is a single-chamber vitrification system that converts nuclear waste into glass.
In a complaint filed on May 30, 2000, Toxgon alleged that the Defendants’ use of the phot melter infringed U.S. Patent No. 4,299,611 (issued Nov. 10, 1981). In response, the Defendants moved to dismiss the case for lack of subject matter jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(1). In their motion to dismiss, the Defendants asserted that any alleged infringement occurred “under the authority of and for the sole benefit of the United States,” requiring that the litigation proceed in the Court of Federal Claims under 28 U.S.C. § 1498(a). After reviewing the parties’ briefings and related declarations, the district court granted the motion to dismiss.
Toxgon filed an appeal to the Court of Appeals for the Ninth Circuit, which subsequently transferred this case to us pursuant to 28 U.S.C. § 1631. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II
We review a dismissal for lack of subject matter jurisdiction according to regional circuit law, since it is a procedural question not unique to patent law.
Madey v. Duke Univ.,
Ill
A
In this appeal, we must decide whether the district court properly concluded that section 1498(a) deprived it of jurisdiction over this action. Section 1498(a) provides in relevant part:
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 ....
For the purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authorization or consent of the Government, shall be construed as use or manufacture for the United States.
28 U.S.C. § 1498(a) (2000). In addition to restricting suit against the United States to monetary compensation for infringing uses, section 1498 relieves a federal contractor of liability where the contractor uses or manufactures an infringing invention for the United States.
Richmond Screw Anchor Co. v. United States,
In such litigation between private parties, this court has long complied with Supreme Court precedent holding that section 1498(a) acts “as a codification of a defense and not as a jurisdictional statute.”
Manville,
*1382
We have reemphasized and applied that settled rule in two recent cases.
See Madey,
Indeed, as the Supreme Court held in
Sperry
and as we underscored in
Man-mile,
section 1498(a) does not deprive a district court of jurisdiction.
Sperry,
Since section 1498(a) is an affirmative defense rather than a jurisdictional bar, the district court cannot dismiss this action under Federal Rule of Civil Procedure 12(b)(1). If appropriate, a defense arising under section 1498(a) should be resolved by summary judgment under Rule 56 rather than a motion to dismiss under Rule 12.
See Crater,
B
Although the dismissal was legally incorrect, BNFL and Duratek argue that the district court’s ruling may nonetheless be harmless error if there is sufficient evidence in the record to grant summary judgment in their favor on a section 1498(a) affirmative defense. To support this argument, they cite
Crater,
The procedural posture in
Crater,
however, differs from the present case.
Crater
involved a dismissal under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim.
Id.
at 1366,
The present case involves a dismissal under Rule 12(b)(1), rather than under Rule 12(b)(6). Unlike a Rule 12(b)(6) motion, a Rule 12(b)(1) motion cannot be converted into a motion for summary judgment. See generally Fed.R.Civ.P. 12. In fact, Rule 12(b)(6) is the only rule under which a court may treat a motion to dismiss as a summary judgment motion. See id. We would exceed our authority and bend the law if we acceded to the Defendants’ request.
Moreover, treating a Rule 12(b)(1) motion as a summary judgment would raise substantial procedural problems related to the allocation of the burden of proof. In a Rule 12(b)(1) motion, the plaintiff bears the burden to show by a preponderance of the evidence that the district court has subject matter jurisdiction.
See Harris v. Provident Life & Accident Ins. Co.,
Even if we entertained BNFL and Duratek’s request, we. would decline tq grant summary judgment given the current record. Summary judgment is proper if the moving party shows that “there is no genuine issue as to any material- fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c);
Celotex,
In this case, the parties present us with additional facts that were not before the district court. In its order, the district court indicated that “neither party point [sic] to Contract language limiting authorization nor expressly granting authorization for the Defendants to use patented inventions.” Instead of presenting evidence to the trial court, the parties improperly introduce for the first time on appeal allegedly relevant evidence. For instance, Toxgon submits an “authorization and consent” clause from the DOE contract. This document was not present *1384 ed to the trial court because Toxgon allegedly found it only after the filing of this appeal. In preparing its appendix for this appeal, Toxgon also retrieved website documents and submitted them to us, knowing full well that the district court never saw them. Moreover, Toxgon’s briefs are replete with unsupported factual assertions. BNFL and Duratek have also done likewise by submitting evidence outside of the appellate record. Although they knew that appellate rules prohibit the submission of new evidence, they relied on provision HI and section C of the DOE contract in their briefs that were never presented to the district court. The Defendants even attempted, unsuccessfully, to file a supplemental appendix which allegedly showed that the DOE exercised its option to purchase the pilot melter pursuant to the contract.
Instead of turning this appeal into an evidentiary hearing, the parties should submit the contract and other evidence to the district court. As we have admonished, “we sit as a court to review claims that a trial judge erred, and not as a court of first instance.”
Baxter Healthcare Corp. v. Spectramed, Inc.,
IV
Consequently, we vacate the district court’s dismissal for lack of subject matter jurisdiction and remand to the district court for proceedings consistent with this opinion.
COSTS
No costs.
VACATED AND REMANDED.