By George Basharis
Claims of patent infringement against NASA based on the use of robotic hands by the space agency were only partially time-barred by the six-year jurisdictional statute of limitations, the U.S. Court of Federal Claims has decided. NASA began to use the allegedly infringing hands more than six years before the patent holder filed its infringement lawsuit against the agency. However, the patent holder sent NASA a letter within the limitations period claiming that NASA’s hands violated its patents for robotic manipulators. Although NASA responded to the letter by stating that the agency believed that its implementation of the robotic hands was different from the patent holder’s designs, NASA’s response did not expressly deny the patent holder’s demand for compensation nor did it constitute final action by the agency. Consequently, the six-year time limitations period was tolled for an additional six years as to infringement claims based on robotic hands in use by NASA on the date of the patent holder’s demand letter (Ross-Hime Designs, Inc. v. U.S., September 19, 2018, Williams, M.).
Ross-Hime Designs, Inc. was a former NASA contractor that developed and patented hand-like robotic manipulators. The aim of the manipulators was to simulate a gripping mechanism and to mimic hand movements performed by a human operator. NASA also developed and patented a robotic hand that closely resembled the function of a human hand. NASA publicly presented its "Robonaut" hand at an industry event on robotics and automation. NASA also released to the public an educational video demonstrating Robonaut. The agency later developed a second hand to work together with the first hand. The hands were designated Robonaut 1 and Robonaut 2.
Dispute. Sometime after Robonaut 1 was developed by NASA, Ross-Hime’s CEO sent a letter to the agency claiming that Robonaut 1 infringed upon Ross-Hime’s robotic arm patent and asking for "restitution including license fees and possible damages." NASA responded to the letter by requesting clarification of the perceived similarities of the two robotic hands. After additional correspondence between the parties, the agency concluded that NASA’s implementation of the robotic hand was "different in kind and in the manner of operation" from the Ross-Hime robotic hand. Eight years later, Ross-Hime filed its patent infringement lawsuit.
NASA argued that Ross-Hime’s claims were time-barred by the six-year statute of limitations that applies to claims filed in the U.S. Court of Federal Claims against the government. Ross-Hime responded that its claims were timely because NASA did not use or concealed the use of its robotic hands during the six-year limitations period.
Accrual of patent infringement claims. The six-year limitations period begins to run when a claim "first accrues." A claim for patent infringement accrues when the accused device is first used or manufactured by the defendant. NASA assembled and presented its first robotic hand to the public a decade before the lawsuit in this case was filed. The agency also released a video that showed the hand performing functions that were within the scope of the Ross-Hime patent. Robonaut 1 was obviously available to NASA at that time and Ross-Hime’s patent infringement claim against Robonaut 1 accrued then. Its claim against Robonaut 2 accrued shortly thereafter when that device was revealed at a public conference.
Ross-Hime also failed to demonstrate that it was unaware of NASA’s robotic hands or that NASA attempted to conceal their existence. NASA released public videos and news articles regarding the hands, and Ross-Hime stated in its demand letters that it believed that NASA was infringing on its robotic hand patents.
Administrative claim tolling. The six-year limitations period also is subject to an administrative tolling period of up to an additional six years. When a party sends a written demand for compensation to the government, the tolling period is tolled from the date of the demand letter to the date when the government denies the claim, up to a maximum of six years.
Ross-Hime sent several letters to NASA claiming that the agency had infringed upon its robotic hand patents and asking for restitution and possible damages. The court determined that at least one of the letters was sufficiently detailed to qualify as an administrative claim against NASA. The agency responded to the letter by stating that NASA "could not agree that the [Ross-Hime] patent ... reads on any implementation of the NASA hand." NASA’s response did not qualify as a denial of Ross-Hime’s claim, the court ruled. The response letter did not purport to be a final determination by NASA, and in any event, the court observed, its author was not authorized by agency procedures to act on and deny claims. A formal decision was never made, and Ross-Hime’s claims regarding Robonaut 1 were not time-barred. However, Robonaut 2 was not developed until after the demand letters were sent to NASA. Therefore, the statute of limitations as to Robonaut 2 patent infringement claims was never tolled, and those claims were barred.
This case is No. 1:11-cv-00201-MCW.
Attorneys: Vytas M. Rimas (Rimas Law Firm, PLLC) for Ross-Hime Designs, Inc. Chad A. Readler, U.S. Department of Justice, for the United States.
Companies: Ross-Hime Designs, Inc.
MainStory: TopStory Patent
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