## Facts

- Hutchinson Industries, Inc. and Hutchinson S.A. (collectively, Hutchinson) owned a U.S. patent covering an automotive wheel with an internal-valve system designed to operate with a central tire inflation system (CTIS).
- CTIS technology allows a driver to change tire pressure while driving to suit changing terrain.
- Accuride Corporation (Accuride) manufactured an automotive wheel with an internal-valve system also designed for use with CTIS.
- The United States issued a solicitation for military vehicles in which CTIS was listed as a preferred specification.
- The solicitation required bidders to provide prototype vehicles to be eligible for a contract award.
- Accuride supplied its wheels to three companies that incorporated the wheels into prototype military vehicles being developed for the purpose of bidding on the government contract.
- Hutchinson learned of Accuride’s wheel when the prototype vehicles were delivered to the government and alleged that Accuride’s wheel and internal-valve system infringed Hutchinson’s patent.
- Hutchinson sued Accuride for patent infringement in federal district court.
- Accuride sought judgment on the ground that 28 U.S.C. § 1498(a) made Hutchinson’s exclusive remedy a claim against the United States, not an infringement suit against Accuride.
- Because the court considered material outside the pleadings, it treated the request as one for summary judgment on the record presented.

## Issues

1. Whether 28 U.S.C. § 1498(a) barred Hutchinson’s district-court infringement claims because Accuride’s wheels were supplied for prototype vehicles submitted in response to a government solicitation, with the government’s authorization or consent.
2. Whether the government’s authorization or consent under § 1498(a) could be found based on the solicitation’s prototype requirement and its preference for CTIS, even absent an express authorization-and-consent clause.
3. Whether § 1498(a) can apply to pre-award prototype and bidding activity undertaken to meet solicitation requirements.

## Decision

- The court converted the matter to summary judgment and entered summary judgment for Accuride.
- The court held that § 1498(a) applied to the alleged infringement tied to the CTIS-equipped prototype vehicles developed and delivered as part of the solicitation process.
- The court concluded that Hutchinson’s remedy, if any, lay against the United States in the Court of Federal Claims rather than against Accuride in district court.

## Legal Principles

- Under 28 U.S.C. § 1498(a), when a patented invention is used or manufactured “by or for the United States” with the government’s authorization or consent, the patent owner’s exclusive remedy is an action against the United States for compensation in the Court of Federal Claims, and the contractor or supplier is not liable for infringement in district court for those acts.
- “Authorization or consent” for purposes of § 1498(a) may be express or implied from the government’s conduct in the procurement process.
- A supplier’s provision of an accused product for prototype items required to be delivered to the government as part of a solicitation can qualify as manufacture or use “for the United States” within the meaning of § 1498(a).
- When the material facts concerning the procurement setting, the prototype requirement, and the government’s role are not genuinely disputed, summary judgment may be granted on the § 1498(a) defense.

## Conclusion

In Hutchinson Industries v. Accuride Corp., the district court held that § 1498(a) barred Hutchinson’s patent-infringement suit against Accuride because the accused CTIS-compatible wheels were supplied for use on prototype military vehicles submitted under a government solicitation that required prototypes and listed CTIS as a preferred feature, making Hutchinson’s exclusive remedy a claim against the United States in the Court of Federal Claims.


Hutchinson Industries v. Accuride Corp., 2010 WL 1379720 (2010)