Case 1:15-cv-01307-VJW Document 10 Filed 03/04/16 Page 1 of 4
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`No. 15-1307
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`Judge Victor J. Wolski
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`)))))))))))
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`CELLCAST TECHNOLOGIES, LLC and
`ENVISIONIT LLC,
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`v.
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`Plaintiff,
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`THE UNITED STATES,
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`Defendant.
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`UNITED STATES' UNOPPOSED MOTION TO NOTICE THIRD PARTY
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`Pursuant to Rule 14(b) of the Rules of the United States Court of Federal Claims (RCFC),
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`defendant the United States (government) moves this Court to issue a notice to International
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`Business Machines Corporation (IBM), to appear, if it so desires, as a party and assert whatever
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`interest it may have in this action. Notice should be sent to:
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`International Business Machines Corporation (IBM)
`6710 Rockledge Drive
`Bethesda, Maryland 20817-1826
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`On March 4, 2016, counsel for the government conferred with counsel for plaintiffs to
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`determine whether plaintiffs would oppose the motion. Plaintiffs’ counsel indicated to counsel for
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`the government that plaintiffs will not oppose this motion.
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`Statement in Support of Motion
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`In this lawsuit, plaintiffs, CellCast Technologies, LLC (CellCast) and EnvisionIT, LLC
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`(EnvisionIT) are seeking compensation pursuant to 28 U.S.C. § 1498. The Complaint references
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`“the Integrated Public Alert Warning System (‘IPAWS’)” and alleges that “IPAWS utilizes the
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`inventions claimed in the Asserted Patents.” Complaint at ¶ 20. The Complaint specifically
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`IBM EX. 1018
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`Case 1:15-cv-01307-VJW Document 10 Filed 03/04/16 Page 2 of 4
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`identifies IPAWS as the system whose manufacture or use is allegedly covered by each asserted
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`patent. See Complaint at ¶¶ 50, 55, 60, 65, and 70.
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`Upon information and belief, aspects of the Integrated Public Alert Warning System were
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`developed in work performed by IBM under a multi-part contracting vehicle. More specifically,
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`upon information and belief, the Department of Homeland Security (DHS) awarded an umbrella
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`contract referred to as the EAGLE contract for Information Technology Support Services. See A1
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`-81 (Exhibit A) (copy of basic contract award terms for DHS’ EAGLE contract).1 Section C.1.1.
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`of the EAGLE contract provides in pertinent part that:
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`The primary goal of this acquisition is to establish a suite of indefinite-delivery
`indefinite-quantity contracts for IT support services that will enable DHS business
`and program units to accomplish their mission objectives.
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`A13 (Exhibit A at Section C.1.1). Upon information and belief, IBM was awarded an EAGLE
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`Contract from DHS, which was assigned EAGLE Contract No. HSHQDC-06-D-00019. On
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`further information and belief, Task Order No. HSFEHQ-08-J-2009 was issued to IBM under the
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`terms and conditions of EAGLE Contract No. HSHQDC-06-D-00019. Task Order No.
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`HSFEHQ-08-J-2009 was issued to IBM by the Federal Emergency Management Agency Office of
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`Acquisition Management. See A82-92 (Exhibit B) (copy of Order for Supplies or Services under
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`Task Order No. HSFEHQ-08-J-2009).2 In an amendment identified as amendment no. “P00072”
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`under Task Order No. HSFEHQ-08-J-2009, a new Work Order (WO) was incorporated entitled
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`“Integrated Public Alert & Warning System (IPAWS)” as WO No. 35. See A93-95 (Exhibit C)
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`(copy of Task Order No. HSFEHQ-08-J-2009, Amendment No. P00072). Upon information and
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`1 “A___” refers to the corresponding page number in the attached Appendix.
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`2 The monetary terms of the price schedules in this document and in Exhibit C have been redacted
`pending the entry of a protective order in this matter.
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`Case 1:15-cv-01307-VJW Document 10 Filed 03/04/16 Page 3 of 4
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`belief, Work Order 35 under Task Order No. HSFEHQ-08-J-2009 includes a seven page document
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`listing a Statement of Objectives. See A96-A102 (Exhibit D) (copy of Work Order No. 35). A
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`number of Objectives are listed in Work Order 35, such as, for example, the following work relating
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`to IPAWS: “[l]ead CAP Alerting Tool solution engineering, system development, testing and
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`deployment efforts.” A99 (WO No. 35, page 4).
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`Upon information and belief, in Section I., DHS’ EAGLE Contract, including EAGLE
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`Contract No. HSHQDC-06-D-00019 incorporated by reference, among others, Federal Acquisition
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`Regulation (FAR) Clause 52.227-3 (APR 1984). See generally A58-61 (Section I.1 Clauses
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`Incorporated By Reference, Page 53-56 of 76); see also A60 (listing FAR Clause 52.227-3 (APR
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`1984)). This clause, in turn, provides in pertinent part as follows:
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`Patent Indemnity (a) The Contractor shall indemnify the Government and its
`officers, agents, and employees against liability, including costs, for infringement of
`any United States patent (except a patent issued upon an application that is now or
`may hereafter be withheld from issue pursuant to a Secrecy Order under 35 U.S.C.
`181) arising out of the manufacture or delivery of supplies, the performance of
`services, or the construction, alteration, modification, or repair of real property
`(hereinafter referred to as construction work) under this contract, or out of the use or
`disposal by or for the account of the Government of such supplies or construction
`work.
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`48 C.F.R. § 52.227-3 (Apr 1984). Accordingly, pursuant to the patent indemnity clause in
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`Contract No. HSHQDC-06-D-00019, IBM may have an interest in the subject matter of this suit
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`within the meaning of RCFC 14(b).
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`Conclusion
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` The issuance of the requested notices to the above-listed companies conforms to the
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`established practice of the United States Court of Federal Claims, as exemplified by Carrier Corp.
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`v. United States, 534 F.2d 250, 251-52 (Ct. Cl. 1976); Bowser, Inc. v. United States, 420 F.2d 1057,
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`1060 (Ct. Cl. 1970); and Rockwell Int’l Corp. v. United States, 31 Fed. Cl. 536, 539-40 (1994). See
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`also In re Uusi, LLC, No. 2013-155, 549 Fed. Appx. 964, 2013 WL 6136602 (Fed. Cir. 2013). For
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`the reasons stated above, the government respectfully requests that this motion be granted and the
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`requested notice be issued.
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`Of Counsel:
`WALTER W. BROWN
`Civil Division
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`U.S. Department of Justice
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`March 4, 2016
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`Respectfully submitted,
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`BENJAMIN C. MIZER
`Principal Deputy Assistant Attorney General
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`JOHN FARGO
`Director
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`s/ David M. Ruddy
`DAVID M. RUDDY
`Attorney
`Commercial Litigation Branch
`Civil Division
`U.S. Department of Justice
`Washington, DC 20530
`Telephone: (202) 353-0517
`Facsimile: (202) 307-0345
`E-Mail: david.ruddy@usdoj.gov
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`Attorneys for Defendant United States
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