United States District Court, M.D. North Carolina
MEMORANDUM OPINION AND ORDER
LORETTA C. BIGGS, District Judge.
Racing Optics, Inc. (“Racing Optics”), initiated
this action against Defendant, Clear Defense, LLC
(“Clear Defense”), alleging patent infringement
in violation of the Patent Act of 1952, 35 U.S.C. § 1.
(ECF No. 1.) Before the Court are four motions: (1) Clear
Defense's Motion for Summary Judgment on its First
Defense under 28 U.S.C. § 1498, (ECF No. 28); (2) Racing
Optics' Motion for Partial Summary Judgment to Dismiss
Defendant's First Affirmative Defense under 28 U.S.C.
§ 1498 (ECF No. 31); (3) Clear Defense's Motion to
File under Seal (ECF No. 34); and (4) Racing Optics'
Motion to Seal Documents Filed in Support of Response in
Opposition to Defendant's Motion for Summary Judgment
Regarding Defendant's First Affirmative Defense under 28
U.S.C. § 1498 (ECF No. 42).
reasons stated below, the Court (1) grants Clear
Defense's motion for summary judgment; (2) denies Racing
Optics' motion for partial summary judgment; (3) grants
Clear Defense's motion to seal; and (4) grants in part
and denies in part Racing Optics' motion to seal.
Optics owns U.S. Patent No. 6, 847, 492 (“the
‘492 patent”), entitled “Optical Stack of
Laminated Removable Lenses for Face Shields, Windows, and
Displays, ” which contains three independent and six
dependent claims. (ECF No. 1 ¶¶ 9, 11.) Racing
Optics also owns U.S. Patent No. 7, 184, 217 (“the
‘217 patent”), entitled Optical Stack of
Laminated Removable Lenses for Face Shields, Windows, and
Displays, ” which contains four independent and twelve
dependent claims. (Id. ¶¶ 10-11.) Each
claim of the ‘492 and ‘217 Patents recites a
stack of removable lenses with an adhesive between each of
the lenses to laminate the layers together. (Id.
¶¶ 12-13; see generally ECF No. 7.)
Defense manufactures and sells to the United States
Government five products comprised of five layers of
laminated polymer film, with alternating layers of material
and adhesive. (ECF No. 36 ¶¶ 4, 9.) These products
are designed to be applied to the windows of the Cougar Mine
Resistant Ambush Protected vehicle (“Cougar
vehicle”), which is developed and owned by the United
States Military. (Id. ¶ 4.) Each of the five
products manufactured by Clear Defense for the Cougar vehicle
has a National Stock Number (“NSN”), which is a
code created by the United States Government to identify
specific products to purchase from Clear Defense.
(Id. ¶¶ 5, 7.) To purchase one of the five
products, a Government contracting officer posts a request on
the Defense Logistics Agency Internet Bid Board System
(“DIBBS) using that product's assigned NSN.
(Id. ¶¶ 21-22.) Once posted, Clear Defense
responds to the request with an offer to fill the order, and
then the contracting officer generates an Order for Supplies
or Services, which is the contract for the particular order.
(Id. ¶ 23.) Afterwards, Clear Defense ships the
requested products to the Government. (Id.) In the
last six years,  Clear Defense has sold the five products
exclusively to the United States Government or one of its
contractors for use by the United States Military.
(Id. ¶ 19.) The Government has also designated
Clear Defense as its sole provider of the five products.
(See Id. ¶ 12.)
April 6, 2016, Racing Optics filed this lawsuit, alleging two
claims of patent infringement against Clear Defense for
selling the five products (“Accused
Products”) to the United States Military.
(See ECF No. 1 at 4-7.) Clear Defense then filed its
Answer, Counterclaims, and Defenses, admitting that it sold
the Accused Products to the United States Military, and
further raising certain defenses. (ECF No. 10 at 4, 7-9.)
Specifically, in its First Defense, Clear Defense asserted
that “Racing Optics failed to bring suit against the
proper party” pursuant to 28 U.S.C. § 1498.
(Id. at 7.) After Racing Optics moved to strike
Clear Defense's First Defense, the Magistrate Judge
directed the parties to file position papers and to propose a
schedule for addressing Clear Defense's asserted defense.
(See ECF No. 20.) The parties filed a joint position
paper and proposed an abbreviated period of discovery to
address only Clear Defense's asserted defense under 28
U.S.C. § 1498. (ECF No. 22.) In approving the
parties' proposed discovery schedule, the Magistrate
Judge also ordered that any dispositive motion addressing the
§ 1498 defense be filed on or before January 13, 2017.
(ECF No. 23.)
parties have timely moved, pursuant to Rule 56 of the Federal
Rules of Civil Procedure, for summary judgment related to
Clear Defense's First Defense under 28 U.S.C. §
1498. (ECF No. 28; ECF No. 31.) Clear Defense, in support of
its motion for summary judgment on its defense under §
1498, contends the evidence establishes its manufacture or
use of the Accused Products was “for the
Government” and with its “authorization or
consent.” (ECF No. 29 at 14-15.) Therefore, according
to Clear Defense, Racing Optics' exclusive remedy for the
alleged patent infringement is in an action against the
United States in the United States Court of Federal Claims.
(Id. at 2.) Racing Optics, in its motion for partial
summary judgment, requests dismissal of Clear Defense's
§ 1498 defense, asserting that Clear Defense has failed
to present sufficient evidence that its use of the Accused
Products was with the Government's “authorization
or consent.” (ECF No. 32 at 2-4.)
judgment is appropriate when “there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed.R.Civ.P. 56(a). A
fact is “material” if it might affect the outcome
of the litigation, and a dispute is “genuine” if
the evidence would permit a reasonable jury to find for the
nonmoving party. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986). When the nonmoving party bears the
burden of proof on an issue, the moving party is entitled to
judgment as a matter of law if the nonmoving party
“fail[s] to make a sufficient showing on an essential
element of her case.” Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986) (noting that a
“complete failure of proof” on an essential
element of the case renders all other facts immaterial).
party seeking summary judgment bears the initial burden of
“pointing out to the district court . . . that there is
an absence of evidence to support the nonmoving party's
case.” Id. at 325. To defeat summary judgment,
the nonmoving party must designate “specific facts
showing that there is a genuine issue for trial.”
Id. at 324. The nonmoving party must support its
assertions by citing to particular parts of the record, such
as affidavits, depositions, answers to interrogatories, and
admissions on file. Fed.R.Civ.P. 56(c)(1)(A); Celotex
Corp., 477 U.S. at 324.
role of the court is not “to weigh the evidence and
determine the truth of the matter” but rather “to
determine whether there is a genuine issue for trial.”
Liberty Lobby, 477 U.S. at 249. A genuine issue for
trial exists only when “there is sufficient evidence
favoring the nonmoving party for a jury to return a verdict
for that party.” Id. “If the evidence is
merely colorable or is not significantly probative, summary
judgment may be granted.” Id. at 249-50
(citations omitted). When reviewing a motion for summary
judgment, the court must “resolve all factual disputes
and any competing, rational inferences in the light most
favorable” to the nonmoving party. Rossignol v.
Voorhaar, 316 F.3d 516, 523 (4th Cir. 2003) (quoting
Wightman v. Springfield Terminal Ry. Co., 100 F.3d
228, 230 (1st Cir. 1996)). Further, where, as in this case,
the court has before it cross-motions for summary judgment,
the court reviews each of them separately to determine if
either party is entitled to judgment as a matter of law.
applicability of 28 U.S.C. § 1498(a) is the sole issue
presented in the parties' motions for summary judgment.
In construing § 1498(a), this Court must apply Federal
Circuit law. Madey v. Duke Univ., 307 F.3d 1351,
1359 (Fed. Cir. 2002). ...