- Government doesn’t have to pay musician for bullet design
- Florida company had been seeking millions in patent royalties
The U.S. military spent 20 years and millions of dollars searching for a more environmentally friendly -- yet deadlier -- bullet.
Musician-turned-ammo-maker PJ Marx said the government was stuck until he showed how it could be done.
An appeals court rejected the Florida man’s claim Friday, saying the government’s final redesign of bullets used in the standard-issue M16 rifle and M4 carbine for U.S. troops doesn’t match the design in his patents. As a result, he won’t collect the millions of dollars a lower court said he was entitled to.
Marx and the company he founded, Liberty Ammunition Inc., almost hit it rich. A judge with the U.S. Court of Federal Claims had said they were entitled to $15.6 million in damages plus a 1.4-cent royalty payment on each of the more than 1 billion M855A1 and M80A1 bullets the government buys for the weapons used by most troops. Those royalties would have been paid until the patent expires in 2027.
Marx isn’t your typical bullet designer. Before the Sept. 11, 2001 attacks in New York and Washington he was a musician and inventor. He was best known in musical circles for his guitar pickup, a complicated device that sits under the strings and can affect the tone of the instrument. He also led a company that made vacuum-tube amplifiers and transducers.
War Effort Contribution
Also an avid shooter, Marx told the government he was inspired by the 2001 attacks to “try to make a contribution to the war effort” and develop a higher-density bullet compatible with existing Army weapons. He founded Liberty Ammunition in 2005 and serves as its chief of research. The Bradenton, Florida, company promotes its “high performance lead-free ammunition.”
In court filings, the government expressed incredulity that Marx could have come up with a workable design despite “no ammunition-specific experience or education.” Liberty countered that it was a combination of Marx’s knowledge of shooting and his inventive mind that made the difference.
“That’s really the dream of every gun or firearms inventor -- to have their invention chosen by the military as the newest standard,” said Bennet Langlotz, a Dallas-based patent lawyer who specializes in firearms patents and isn’t involved in the dispute.
The dispute has its origins in 1990s, when then-President Bill Clinton ordered the military to make bullets that didn’t use lead, which could potentially poison the land and groundwater, especially around training ranges. Early plans to replace the lead with tungsten were rejected because of rising tungsten prices in the mid-2000s.
As researchers were working on that problem, another arose. Troops in Iraq and Afghanistan complained their ammunition was insufficiently lethal. Too often, rounds would simply pass through enemy fighters, leaving them able to return fire.
A total redesign was needed. The government set up a joint project with government contractor Alliant Techsystems Inc., now Orbital ATK, and the U.S. Army Research Laboratory.
It also solicited help from the public, and Marx responded. There’s no question that Marx met with Army officials beginning in late 2004 with the idea of commercializing his rounds. Marx claims military officials saw his ideas and used them without telling him. The government, in court documents, said Marx’s ideas had been unworkable.
Marx’s patent, issued in 2010 from a 2005 application, covers a three-piece projectile featuring a steel nose and copper tail that can separate when striking a “soft target” like the human body. He called his prototype the Enhanced Performance Incapacitative Composite, or EPIC.
A three-judge panel with the U.S. Court of Appeals for the Federal Circuit said Friday the military bullet was different because it didn’t include an interface designed by Marx that connects the nose and tail portion of the bullet.
The bullet was the first designed for the Army’s standard rifle in more than 30 years and eliminates as much as 2,000 tons of lead from the manufacturing process, according to Army estimates.
Circuit Judge Pauline Newman said Marx should have been able to pursue claims that a ranking military officer violated obligations not to disclose information received from Marx.
Breach of Confidentiality
In a partial dissent, Newman said she agreed with the non-infringement decision, but would have revived breach of contract claims.
“The record shows multiple failures until receipt and review of the Marx technology provided the successful direction,” said Newman. While she agreed the final bullet design didn’t infringe the patent, she said Marx should be compensated for that breach of confidentiality.
Liberty’s lawyer, Daniel Corrigan of Lakewood, New Jersey’s Bathgate, Wegener & Wolf PC, said he was disappointed in the ruling and considering future options. He declined to comment further.
Marx and Liberty can ask that the case be heard by all active judges in the court, though those types of request are rarely granted.
The case is Liberty Ammunition Inc. v. U.S., 15-5057, U.S. Court of Appeals For the Federal Circuit (Washington).