IP Law Daily, PATENT—Fed. Cl.: Claims that NYPD, FBI infringed fingerprint-operated invention were time-barred, insufficiently pleaded, (Feb 25, 2016)

By Thomas Long, J.D.

An inventor was time-barred from bringing a lawsuit against the United States, alleging that the government infringed his patent for keyless vehicle entry fingerprint technology, the U.S. Court of Federal Claims has decided (Floyd v. United States, February 24, 2016, Sweeney, M.). In addition, the Court of Federal Claims lacked subject-matter jurisdiction over the inventor’s patent infringement claims brought against the federal government under 35 U.S.C. §271, and it could not adjudicate infringement claims the inventor brought against the New York City Police Department (NYPD).

Patent-in-suit. Plaintiff Herbert R. Floyd obtained U.S. Patent No. 6,614,920 B2 (“the ’920 patent”), entitled “GOD fingerprint operated ignition switch and entry system.” The ’920 patent included two independent claims, both of which required, among other things, a fingerprint-operated system that unlocked or started a vehicle.

Alleged infringement. According to Floyd, he learned in June 2007 that the NYPD used a computerized fingerprinting apparatus embodying his patented invention. He also alleged that the United States, through the Federal Bureau of Investigation, was infringing the ’920 patent. Floyd, in his complaint filed July 27, 2015, sought monetary damages pursuant to 35 U.S.C. §271. The United States moved to dismiss the complaint for lack of subject matter jurisdiction and failure to state a claim.

Statute of limitations. A patent infringement claim against the United States was properly brought under 28 U.S.C. §1498. Infringement claims brought in the Court of Federal Claims under Section 1498 were subject to a six-year statute of limitations. A cause of action under Section 1498 accrued when the accused product or device was first available for use. Ongoing infringement did not extend or restart the limitations period. Floyd admitted that he learned of the alleged infringement on June 3, 2007, when he was arrested and fingerprinted by the NYPD. Accordingly, his cause of action fell outside the six-year limitations period.

Subject-matter jurisdiction—NYPD. In addition, the court lacked subject-matter jurisdiction to entertain Floyd’s claims based on the NYPD’s alleged infringement of the ’920 patent. The NYPD was not part of the federal government; only claims against federal defendants could be brought in the Court of Federal Claims.

Subject-matter jurisdiction—FBI. Floyd failed to sufficiently allege that the FBI used or directed the use of a device that infringed the ’920 patent, the court said. Furthermore, to the extent that Floyd did allege infringement by the FBI, his complaint failed to state a claim because 35 U.S.C. §271 did not apply to the federal government.

Even if Floyd had relied upon the proper statute, 28 U.S.C. §1498, that statute authorized recovery by a patent owner only if the patented invention was used or manufactured by or for the United States. According to the court, Floyd’s patent did not relate in any way to the alleged infringing activity. The '920 patent disclosed a fingerprint vehicle entry and engine starting system, which did not relate to the fingerprinting technology used by law enforcement agencies. In his complaint, Floyd did not even mention a vehicle security system when describing the NYPD’s device and the purported infringement. There was no indication that the ’920 patent encompassed a computer fingerprinting device that was unconnected to a vehicle security system. Therefore, Floyd did not own a patent for the device used by the NYPD.

Accordingly, the complaint was dismissed.

The case is No. 1:15-cv-00793-MMS.

Attorneys: Herbert R. Floyd, pro se. William J. Nichols, U.S. Department of Justice, for United States.

Cases: Patent