Miscellaneous Docket No. 903 ZOLTEK CORPORATION v. United States

NOTE: This order is nonprecedential.

# United States Court of Appeals for the Federal Circuit

Miscellaneous Docket No. 903
ZOLTEK CORPORATION,
Plaintiff-Respondent,

V.
UNITED STATES,

Defendant,
V.
LOCKHEED MARTIN CORPORATION,

Defendant-Petitioner.

On Petition for Permission to Appeal pursuant to 28 U.S.C. § 1292(d)(2)
from the United States Court of Federal Claims in case no. 96-CV-166,
Judge Edward J. Damich.

Before GAJARSA, PLAGER, and DYK, Circuit Judges.

GAJARSA, Circuit Judge.

## ORDER

Lockheed Martin Corporation petitions for permission to appeal an order certified
by the United States Court of Federal Claims as one involving controlling issues of law
as to which there are substantial grounds for difference of opinion and for which an
immediate appeal may materially advance the ultimate termination of the litigation.
Zoltek Corporation opposes.

Zoltek owns certain patented methods for manufacturing carbon fiber sheets.
Zoltek filed suit in the Court of Federal Claims against the United States, seeking

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compensation pursuant to 28 U.S.C. § 1498 for the use of its patent in the
manufacturer of the F-22 fighter plane. The United States had contracted with
Lockheed to design and build the F-22, which included the use of certain fiber products.
Lockheed had subcontracted the manufacturer of the fiber products to a company in
Japan. In Zoltek Corp. v. United States, 442 F.3d 1345 (Fed. Cir. 2006), reh'g en banc
denied, 464 F.3d 1335 (Fed. Cir. 2006), cert. denied, 127 S.Ct. 2936 (2007), this court
held that the United States was immune from the suit under § 1498(c) because some of
the steps were performed outside of the United States and because Zoltek could not
sue the government for patent infringement as a Fifth Amendment taking.

On remand, Zoltek sought to amend its complaint to substitute the contractor,
Lockheed, as the patent infringement defendant, and transfer the matter to the United
States District Court for the Northern District of Georgia. The United States and
Lockheed opposed, arguing that Lockheed was also immune from suit under § 1498,
which provides immunity from suit for government contractors when the use or
manufacturer of a patented invention is "for the Government and with the authorization
or consent of the Government." On January 23, 2009, the Court of Federal Claims
granted Zoltek's motion to amend its complaint. The court explained that pursuant to
the plain language of § 1498, "when a claim arises in a foreign country, under §
1498(c), both the language provided for Government liability and the language
insulating government contractors from patent infringement liability for the 'use' or
'manufacture' of an invention 'for' the government are rendered inapplicable." The
court also held that there was no bar to transferring the case to the Northern District of
Georgia because Lockheed's asserted immunity argument relates to an affirmative

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defense, not an issue of jurisdiction. On February 18, 2009, the court issued an order
granting Zoltek's motion to transfer the matter and added a statement certifying the
order for interlocutory appeal.

Ultimately, this court must exercise its own discretion in deciding whether it will
grant permission to appeal interlocutory orders certified by a trial court. See In re
Convertible Rowing Exerciser Patent Litigation, 903 F.2d 822 (Fed. Cir. 1990); 28
U.S.C. § 1292(d)(2) ("the Federal Circuit may, in its discretion, permit an appeal to be
taken from such order"). We determine that granting the petition in these
circumstances is warranted. We understand that the grant of this petition brings before
the court both the issue of whether the trial court should have transferred the case and
whether the court should have allowed the complaint to be amended to add Lockheed
as a defendant.

Accordingly,

IT IS ORDERED THAT:

(1)
The petition for permission to appeal is granted.

(2)
All pending motions are moot.

FOR THE COURT

SEP 3 0 2009

/s/ Jan Horbaly

Date

Jan Horbaly
Clerk

CC:
Richard T. Ruzich, Esq.
Gary L. Hausken, Esq.
Dean A. Monco, Esq.

FILEP
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT

s19

SEP 3 0 2009
JAN HORBALY
CLERK

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