Background
Geospatial Technology Associates, LLC sued the United States in 2016, alleging that the government, acting through the National Geospatial-Intelligence Agency and potentially other agencies, infringed its Patent No. 8,897,489 and an associated copyright. In 2021, the court accepted the Secretary of Defense’s invocation of the State Secrets Privilege over six categories of geospatial-intelligence information, including government research and development, hyperspectral-imagery capabilities, spectral analysis, software functions, specific military or intelligence systems, and particular geospatial images and data.
After reconsideration of an earlier patent-invalidity ruling and extensive motion practice, questions concerning obviousness and indefiniteness remained for trial. The privilege, however, required the court to exclude numerous documents, portions of expert reports, proposed testimony, and damages evidence. Following repeated attempts to construct a trial record that avoided privileged information, the government moved to dismiss, arguing that the exclusions prevented it from presenting essential defenses and that a trial would create an unacceptable risk of disclosing state secrets.
The Court’s Holding
The court granted the government’s motion and dismissed the case. It held that the privilege would severely impair the government’s ability to litigate patent validity, particularly obviousness, because government experts could not fully address the state of the art or rebut evidence concerning secondary considerations such as long-felt need, commercial success, copying, industry praise, and the nexus between the patented features and any claimed success.
The court also found that the government could not fully present or defend its damages theory, including its position that compensation should be valued through a single paid-up lump-sum license and its response to attempts to apportion value between protected and unprotected software elements. More fundamentally, the court concluded that trial would either require constant restrictions imposed without meaningful participation by plaintiff’s counsel or produce disclosures threatening national security. It did not decide whether the plaintiff could establish a prima facie damages case, finding dismissal warranted on the other grounds.
Key Takeaways
- A properly invoked State Secrets Privilege may require dismissal when excluding privileged evidence would severely impair a party’s ability to present essential claims or defenses.
- The privilege affected both liability and damages because the government could not fully litigate obviousness, secondary considerations, valuation, or apportionment without protected information.
- The court found that trial-management measures could not adequately protect national security while producing a fair and usable record.
Why It Matters
The decision illustrates that intellectual-property litigation against the government may become nonjusticiable when the merits depend heavily on classified military or intelligence information. Even after years of efforts to exclude specific evidence and develop alternative presentations, dismissal may be necessary if the remaining record would unfairly constrain the government’s defense or risk disclosure of protected information.
The court acknowledged the apparent unfairness of dismissing the action on the eve of trial after substantial expenditures by the parties, but held that national-security interests were paramount.