## Facts

- TVI Energy Corp. designed and manufactured disposable thermal targets for military training and owned U.S. Patent No. 4,422,646 covering such targets.
- The United States issued a competitive solicitation for disposable thermal targets requiring bidders to submit specimen targets and perform a live product demonstration at Fort Knox, Kentucky.
- Milton C. Blane and Blane Enterprises, Inc. submitted a bid and conducted the required Fort Knox demonstration.
- A TVI representative observed Blane’s demonstration and concluded Blane’s targets infringed the ’646 patent.
- TVI sued Blane in federal district court for patent infringement.
- Blane moved for summary judgment, asserting immunity under 28 U.S.C. § 1498 because the challenged conduct occurred in connection with a government procurement.

## Issues

1. Whether Blane’s alleged infringing demonstrations and related bid activities were “for the Government” and “with the authorization or consent of the Government” under 28 U.S.C. § 1498.
2. Whether, if § 1498 applied, TVI’s exclusive remedy was an action against the United States, depriving the district court of jurisdiction over TVI’s infringement claim against Blane.

## Decision

- The Federal Circuit affirmed summary judgment for Blane.
- The court held that Blane’s conduct occurred “for the Government” because it was performed to satisfy the government’s solicitation and to permit the government to evaluate products for procurement.
- The court held the government’s solicitation and mandatory demonstration requirement constituted (at least) implied “authorization or consent” for bidders to use the devices in the demonstration process.
- Because § 1498 applied, TVI’s remedy, if any, was solely an action against the United States in the Court of Federal Claims (then the Claims Court), not an infringement suit against Blane in district court.
- The district court properly dismissed for lack of jurisdiction.

## 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 a damages action against the United States in the Court of Federal Claims.
- A contractor (or potential contractor) is immune from district-court infringement liability for acts that constitute use or manufacture “for the Government” with government authorization or consent.
- Government “authorization or consent” need not be express; it may be implied from government procurement conduct, including solicitations or requirements that call for use or demonstration of the accused product as part of the bid-evaluation process.
- When § 1498 applies, it functions as a jurisdiction-channeling statute, shifting potential liability to the United States and precluding infringement suits against the contractor in district court for the covered acts.

## Conclusion

Because Blane’s allegedly infringing product demonstration was required by a government solicitation and undertaken for government evaluation, § 1498 applied and made an action against the United States the sole avenue for relief, leaving the district court without jurisdiction over TVI’s infringement suit against Blane.


TVI Energy Corp. v. Blane, 806 F.2d 1057 (Fed. Cir. 1986)