Whether Zoltek Corp. v. United States (“Zoltek III”), 442 F.3d 1345 (Fed. Cir. 2006), “which found liability under 35 U.S.C. § 271(a) to be a predicate to government liability under § 1498, must be corrected because it 1) was contrary to the plain language of § 1498; 2) relied on dicta and a fundamental misreading of the statute; 3) impermissibly rendered subsection (c) of § 1498 inoperative; and 4) caused 19 U.S.C. § 1337(l) to become ineffective while ignoring Congress’s clear intent.”
“Since a panel of this court cannot reverse a prior panel decision, the court sua sponte voted to take Part I-B of this opinion en banc for the limited purpose of vacating the Zoltek III opinion. . . . [Section] 1498(a) waives the Government’s sovereign immunity from suit when (1) an invention claimed in a United States patent; (2) is ‘used or manufactured by or for the United States,’ meaning each limitation is present in the accused product or process; and (3) the United States has no license or would be liable for direct infringement of the patent right for such use or manufacture if the United States was a private party. Section 1498 makes no reference to direct infringement as it is defined in § 271(a). Indeed, so interpreting § 1498(a) is contrary to its plain language, interpreted in light of the meaning of that language in 1910.”
