A recent Law 360 story by Daniel Siegal, “Gov’t Owes $4.4M in Fees After Losing $200K Patent Row,” reports that a U.S. Court of Federal Claims judge on tacked on nearly $4.4 million in fees and costs to a since-deceased inventor's $200,000 win on claims that the federal government infringed her patent for a metal treatment technology, finding that fees were warranted because government researchers stole the inventor's idea.  In a 30-page opinion, Federal Claims Judge Charles F. Lettow partially granted the fee request filed by Hitkansut LLC and Acceledyne Technologies Ltd. LLC, two companies owned by late inventor Donna Walker.  Judge Lettow said that under the Equal Access to Justice Act, Hitkansut had to prove that the government's opposition to its suit was not "substantially justified" to be awarded fees — and that the company had done so, through the conduct of the Oak Ridge National Laboratory researchers that did the infringing.

Judge Lettow said the government researchers did not just happen to develop a metal treatment technology and then find that it happened to infringe Hitkansut's patent, but directly took the patent pending technology Hitkansut showed them and "took sole credit for this process, publishing papers and submitting patent applications" without giving Hitkansut any credit, funding or contracts.  Judge Lettow also rejected the government's argument that it was inherently unreasonable to award this amount of fees in a case in which the plaintiff won a $200,000 judgment, and that the fee award should be capped at that amount plus interest.

The judge said the "significant" fee award was justified after the lengthy, hard-fought case, and noted, "Hitkansut’s claim, however, was vigorously contested by the government, involved highly technical subject matter, spanned six years and proceeded through a lengthy appeal.  Hitkansut also faced an opponent with vast resources whose calculus regarding settlement and the value of precedent differs from that of a private litigant."  The judge said although the government may think "it is unreasonable to spend millions to obtain a judgment of $200,000," precedent uniformly says otherwise, and added in a footnote that the government itself "likely spent far more than $200,000 to defend this case."

The judge didn't grant the full amount of fees and costs requested by Hitkansut — $4.51 million — instead making partial reductions in several fee and costs requests, ultimately awarding a total of $4.38 million.  That included roughly $3.1 million in attorneys' fees, $823,197 in expert fees and $434,327 in other expenses and costs.

Hitkansut attorney John Artz of Dickinson Wright PLLC told Law360 that Walker, the inventor and metallurgist behind Hitkansut, was inspired to create a new method for relaxing stressed metal when her son shipped off as a sailor on a U.S. Navy submarine, and then had to see the government take her idea and deny her any credit.  "I feel like the government felt like it could just take the invention, which it did, without there being any repercussions," Artz said.

Hitkansut applied for the patent in summer 2003 and, according to court documents, Walker met a few months later with researchers at Oak Ridge.  The laboratory, which receives about 80 percent of its funding from the U.S. Department of Energy, pursues research that involves metal processing, among other things.

After signing a nondisclosure agreement with the lab, Walker disclosed her as of then unpublished patent application to its researchers, who later filed multiple patent applications related to its technique for using magnetic fields and heat to relax stressed metal, according to court documents.  Hitkansut filed a lawsuit in May 2012, alleging patent infringement and, after several years of litigation, trial began in late May 2016.  In February 2017, Judge Lettow ruled in Hitkansut's favor, finding that Walker's patent was valid and had been infringed by Oak Ridge.

The $200,000 that Hitkansut was awarded represented an "upfront" fee that both sides agreed would have been part of a hypothetical licensing negotiation.  Judge Lettow rejected Hitkansut's assertion that it was entitled to an additional $4.5 million and $5.6 million in reasonable royalties, because the $4.5 million the lab received based on the infringed technology was all research funding, not the proceeds of commercialization.

The case is Hitkansut v. U.S., case number 12-303C, in the U.S. Court of Federal Claims.