Giesecke & Devrient GmbH v. United States
| Decision Date | 22 October 2020 |
| Docket Number | No. 17-1812,17-1812 |
| Parties | GIESECKE+DEVRIENT GMBH, Plaintiff, v. THE UNITED STATES, Defendant. |
| Court | U.S. Claims Court |
Patent Infringement; Motion for Attorneys' Fees; 35 U.S.C. § 285; 28 U.S.C. § 1498; Jurisdiction.
Plaintiff Giesecke & Devrient GmbH ("Giesecke") filed the present action alleging the government infringed U.S. Patent No. 7,837,119 (the "'119 patent"). After receiving notice pursuant to Rule 14 of the Rules of the Court of Federal Claims ("RCFC"), third-party HID Global Corporation joined the case by filing a Rule 12(b)(6) motion to dismiss. Giesecke sought leave to amend the complaint prior to the Court's resolution of HID's motion to dismiss, removing allegations of infringement implicating HID-origin products. HID moved for an award of attorneys' fees as a result of its involvement in this case. After bifurcating the issues of entitlement to, and quantum of, attorneys' fees, this Court issued an opinion and order granting HID entitlement to attorneys' fees pursuant to 35 U.S.C. § 285. Following transfer of this case to the undersigned Judge, additional briefing was ordered regarding the Court's jurisdiction to award attorneys' fees pursuant to § 285. The Court held oral argument on the jurisdictional issue. For the following reasons, the Court finds it lacks jurisdiction to award attorneys' fees pursuant to 35 U.S.C. § 285.
Giesecke, a German technology company offering "pioneering passport technologies," is the owner of U.S. Patent No. 7,837,119 ("the '119 patent"), entitled "Contactless Data Carrier." See Pl. Giesecke's First Am. Compl. ¶¶ 2, 9, ECF No. 13 ("First Am. Compl.). The '119 patent"generally describes the apparatuses and methods for reliably determining the deliberate use of a contactless data carrier," which are defined as "all arrangements[] which have a microchip and an antenna connected to [them] . . . and are adapted to exchange data with a suitable reading device." Id. ¶¶ 12, Ex. A at 7. The contactless data carriers "include 'contactlessly readable identification documents, such as passports and identity cards with built-in microchip as well as . . . RFID [Radio Frequency Identification] labels.'" Opinion and Order at 2, ECF No. 137 ("Order on Att'y Fees"). Giesecke alleges the government infringes the '119 patent through the use of "electronically enabled machine readable travel documents (eMRTDs) . . . such as . . . United States Passport Cards, Permanent Resident Cards (a.k.a Green Cards), and Global Entry cards." Compl. ¶ 20. Third-party defendant HID "provides the United States with . . . Permanent Resident Cards . . . and Global Entry cards." Order on Att'y Fees at 2.
Plaintiff filed the present action on 17 November 2017. See Compl., ECF No. 1. On 16 March 2018, the government filed an unopposed motion to notify interested parties pursuant to RCFC 14(b). See The United States' Unopposed Mot. for Notice to Third Parties Pursuant to Rule 14(b), ECF No. 7. HID was one of 35 third parties to receive notice pursuant to RCFC 14(b). See id at 1-5. The Court granted the government's unopposed motion on 2 April 2018, with notice being sent to the interested third parties on 4 April 2018. See Order, ECF No. 10; Notice to Third Parties Pursuant to Rule 14(b)(1), ECF No. 11.
On 6 April 2018, plaintiff filed a first amended complaint. See First Am. Compl., ECF No. 13. Prior to answering the complaint, on 9 July 2018, HID filed a Rule 12(b)(6) motion to dismiss "all allegations in the First Amended Complaint." HID Global Corporation's Rule 12(b)(6) Mot. to Dismiss at 1, ECF No. 41 ("HID MTD"). HID argued plaintiff "fail[ed] to allege any facts to support the claims of infringement." Id. at 7 (emphasis in original). Additionally, HID "reserve[d] the right to" file a motion for sanctions against plaintiff under Rule 11 for failing to conduct an adequate prefiling investigation under Rule 11(b). Id. at 8 n.3.1 On 6 August 2018, plaintiff filed its opposition to HID's motion to dismiss, arguing "the [complaint] makes the well-supported allegation that the [card-based products] . . . meet the limitations of the asserted claims." See Pl. Giesecke's Resp. in Opp'n to HID Global Corporation's Rule 12(b)(6) Mot. to Dismiss at 12, ECF No. 44 ("Pl. Opp'n to MTD"). HID filed a reply brief in support of the motion to dismiss on 20 August 2018. See HID Global Corporation's Reply in Supp. of Rule 12(b)(6) Mot. to Dismiss, ECF No. 45 ("HID Reply in Supp.").
Following the completion of briefing on HID's motion to dismiss, plaintiff filed a motion for leave to file a second amended complaint to drop the claims against the card-based products. Pl. Giesecke's Mot. for Second Am. Compl., ECF No. 52. HID filed a response in opposition to plaintiff's motion to file a second amended complaint on 24 October 2018. See HID's Resp. to Pl.'s Mot. for Leave to File Second Am. Compl., ECF No. 54 ("HID Opp'n to Mot. to Am. Compl."). HID argued "having the claims against the card-based products dismissed withoutprejudice would leave" open the possibility of plaintiff bringing the card-based products back into the case at a later date. Order on Att'y Fees at 5; (citing Tr., ECF No. 58). Rather than allow plaintiff to amend the complaint for a second time, HID asked this court to "deny [plaintiff's] motion for leave to amend in its entirety or, at a minimum, dismiss any withdrawn claims with prejudice." HID Opp'n to Mot. to Am. Compl. at 1. On 28 December 2018, this Court granted plaintiff's motion to file a second amended complaint. See Order, ECF No. 59 ("Order on Second Am. Compl."). Plaintiff "sought to withdraw [claims] against several accused card-based technologies—including HID's," and this court dismissed said claims "without prejudice." Order on Att'y Fees at 6; see also Order on Second Am. Compl. Further, the court denied HID's motion to dismiss with prejudice as moot because "dismissal of the withdrawn claims with prejudice [would be] . . . inappropriate given that no adjudication of these claims had occurred." Order on Att'y Fees at 6 (citing Power Mosfet Techs., LLC v. Siemens AG, 378 F.3d 1396, 1416 (Fed. Cir 2004)).
On 28 January 2019, HID filed a motion for attorneys' fees and costs resulting from its involvement in this case. See HID's Motion for Attorneys' Fees and Costs ECF No. 63 ("Mot. for Att. Fees"). HID sought to recover its "attorney fees and costs under 35 U.S.C. § 285, or, in the alternative, this Court's inherent authority." Order on Att'y Fees at 6. Concerning its § 285 request, HID argued both it is a prevailing party "because its motion to dismiss caused plaintiff to drop" its claims against HID, and this case is exceptional in part because plaintiff "failed to conduct an adequate prefiling investigation." Id. HID also filed a motion to bifurcate the issues of entitlement to, and quantum of, attorneys' fees. See HID Global Corporation's Mot. to Bifurcate Issues of Entitlement to and Quantum of Att'ys' Fees, ECF No. 62.
On 25 February 2019, plaintiff responded in opposition to HID's motion for attorneys' fees. See Pl.'s Resp. to HID's Mot. for Att'ys' Fees and Costs, ECF No. 72 ("Opp'n to Mot. for Att'y Fees"). On 27 February 2019, this court granted HID's motion to bifurcate the issues of entitlement to, and quantum of, attorneys' fees. See Order, ECF No. 76. This court heard oral argument on the issue of entitlement to attorneys' fees on 8 July 2019. See Tr., ECF No. 111 ("Fee Hr'g Tr."). At oral argument, this court raised jurisdictional concerns regarding "disputes solely involving private entities for money damages" before determining "if the Court doesn't have the authority to issue an opinion in this case, it would really eviscerate the authority of the Court to control its own docket . . . [and] discourage" frivolous cases. Id. at 86. In "an off-record colloquy," this court granted HID's motion as to entitlement to attorneys' fees. Order on Att'y Fees at 6.
On 29 July 2019, this case was reassigned to the undersigned Judge. See Order, ECF No. 116. Also on 29 July 2019, "counsel for HID and Giesecke informed the Court they wished to pursue settlement as to the quantum of any Section 285 fees [with Judge Mary Ellen Coster Williams] through the Court of Federal Claims' Alternative Dispute Resolution ('ADR') program." Order on Att'y Fees at 7 (citing Order, EFC No. 118). Accordingly, HID's motion for attorneys' fees was referred to Judge Williams for ADR proceedings. Order, ECF No. 118. ADR proceedings proved unsuccessful. On 24 January 2020, Judge Williams issued an opinion memorializing her July 2019 ruling from the bench granting HID entitlement to attorneys' fees,finding "HID is entitled to attorney fees under Section 285." Order on Att'y Fees at 13 n.12 (). The 24 January order did "not address the issue of quantum" of attorneys' fees. Id. at 7.
On 10 February 2020, with ADR complete and the entirety of the case now before the undersigned Judge, HID filed its motion for quantum of attorneys' fees and costs. See HID's Mot. for Quantum of Att'ys' Fees and Costs, ECF No. 140. On 9 March 2020, plaintiff filed its response to HID's motion. See Pl.'s Resp. in Opp'n to HID Global Corporation's Mot. for Quantum of Att'ys' Fees and Costs, ECF No. 145 ("Pl. Opp'n to HID's Mot. for Quantum"). Therein, plaintiff raised the question of this Court's jurisdiction to award attorneys' fees, expenses, and costs to third-party defendants under § 285. Id. at 5. HID filed a reply brief in support of its motion for quantum of attorneys' fees on 23 March 2020. See HID Global Corporation's Reply in Supp. of Mot. for Quantum of Att'ys' Fees...
To continue reading
Request your trial