In the United States Court of Federal Claims
                                                 No. 17-1812
                                          (Filed: 22 October 2020*)

***************************************
GIESECKE+DEVRIENT GMBH,               *
                                      *
                  Plaintiff,          *                       Patent Infringement; Motion for
                                      *                       Attorneys’ Fees; 35 U.S.C. § 285;
v.                                    *                       28 U.S.C. § 1498; Jurisdiction.
                                      *
THE UNITED STATES,                    *
                                      *
                  Defendant.          *
                                      *
***************************************

                                          OPINION AND ORDER

HOLTE, Judge.

        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.

I. Factual and Procedural History

        A. Plaintiff’s Patent Infringement Claim

        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

*
 This opinion was initially filed under seal on 14 October 2020. The Court provided the parties 7 days to submit
proposed redactions, if any, before the opinion was released for publication. Neither party proposed redactions.
This opinion is now reissued for publication in its original form.
“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.”

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.

        B. Plaintiff’s Action Pursuant to 28 U.S.C. § 1498

       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.”

(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).

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 without

1
 On 26 September 2018, HID notified plaintiff it was “preparing a motion for sanctions against [plaintiff] under
Rule 11.” Order on Att’y Fees at 5. Despite HID providing such notice, it never filed a Rule 11 motion for
sanctions.

                                                       -2-
prejudice 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, 

, 1416 (Fed. Cir 2004)).

       C. HID’s Motion for Attorneys’ Fees

         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.”

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.

6. 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,

                                                -3-
finding “HID is entitled to attorney fees under Section 285.” Order on Att’y Fees at 13 n.12
(“HID is entitled to fees under Section 285, [so] the Court does not reach HID’s argument
seeking attorney fees based on the Court’s inherent authority.”). The 24 January order did “not
address the issue of quantum” of attorneys’ fees.

.
         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.
 

. 
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 and Cost, ECF No. 147. On
30 March 2020, the Court held a telephonic status conference with the parties. See Tr., ECF No.
155. During the 30 March status conference, the undersigned Judge discussed possible
jurisdictional issues regarding HID’s motion for attorneys’ fees, as first noted by the previous
judge assigned to this case. See id.; see also Fee Hr’g Tr.

         As the issue of whether the Court of Federal Claims has jurisdiction to award attorneys’
fees to a third party or noticed nonparty pursuant to 35 U.S.C. § 285 was not fully briefed prior
to the decision on entitlement to attorneys’ fees, the Court ordered supplemental briefing on the
issue. Order, ECF No. 151; see also Tr., ECF No. 155 (Judge Ryan T. Holte: “[B]efore we can
move on to a quantum issue . . . we will need to brief the jurisdictional aspect of attorneys’ fees
in the Court of Federal Claims under Section 285.”). On 29 April 2020, HID filed an initial
supplemental brief on the jurisdictional issue regarding § 285. See HID Global Corporation’s
Initial Suppl. Br. on Jurisdiction, ECF No. 156 (“HID Initial Suppl. Br.”). Also on 29 April,
plaintiff filed its initial supplemental brief on the jurisdictional issue. See Pl.’s Initial Suppl. Br.
on Jurisdiction, ECF No. 157 (“Pl.’s Initial Suppl. Br.”). On 20 May 2020, HID, plaintiff, and
the government each filed a response brief on the jurisdictional issue. See Pl.’s Resp. Suppl. Br.
on Jurisdiction, ECF No. 158 (“Pl.’s Resp. Suppl. Br.”); Def.’s Resp. to HID Global Corp.’s and
Pl.’s Suppl. Br. on Jurisdiction, ECF No. 160 (“Gov’t Suppl. Br.”); HID Global Corporation’s
Resp. Suppl. Br. on Jurisdiction, ECF No. 1612 (“HID Resp. Suppl. Br.”). The Court held oral
argument on the jurisdictional issue 8 July 2020. See Tr., ECF No. 165 (“Jurisdiction Hr’g Tr.”).

II. Parties’ Arguments

        This court awarded HID attorneys’ fees pursuant to 35 U.S.C. § 285. See Order on Att’y
Fees at 2. HID alleges this Court can grant attorneys’ fees and costs “under § 285 . . . or in the
alternative . . . its inherent authority.” HID Initial Suppl. Br. at 15. As this court awarded
attorneys’ fees to HID under § 285, however, the Court directed the parties to only address the
issue of attorneys’ fees under § 285 in the supplemental briefing on the Court’s jurisdiction. See
Order, ECF No. 151. Accordingly, the Court only considers HID’s arguments regarding
jurisdiction pursuant to § 285.

2
  HID’s response brief on the jurisdictional issue filed 20 May 2020 was originally filed as ECF No. 159, but it was
re-docketed later that same day to correct a filing error.

                                                        -4-
        HID contends the Court’s subject matter jurisdiction over the patent infringement action
pursuant to 28 U.S.C. § 1498 is sufficient to support an award of attorneys’ fees under § 285.
See HID Initial Suppl. Br. at 10. As the request for an award of attorneys’ fees is “‘not a
judgment on the merits of an action,’ but instead is ‘the determination of a collateral issue,” the
Court’s jurisdiction pursuant to § 1498 is sufficient.
 Id. at 10 
(quoting Cooter & Gell v.
Hartmarx Corp., 
496 U.S. 384
, 396 (1990)) (emphasis omitted). HID further argues § 1498 is a
“limited waiver of sovereign immunity” that “does not limit the prerogatives or rights available
to the Government.”
 Id. at 1. 
Instead, according to HID, § 1498 only “prescribes specific
remedies available to patent owners from the Government for patent infringement,” while
leaving the government free to use “any defense available to a private party.”
 Id. at 1, 6 
(quoting
S. Rep. No. 80-1559 (1948)). Additionally, HID argues “consistent with this . . . reasoning,
although § 1498 does not expressly list the remedies under Title 35, the Government (and third-
party defendants) is nevertheless entitled to those remedies . . . absent clear statutory disavowal.”

–8. 
Extending this claim to third-party defendants, HID asserts a “noticed third-party
defendant[] who share[s] aligned interests with and steps into the shoes of the Government ought
to have the same defenses and remedies available as the Government.”
 Id. at 5 
(citing S. Cal.
Edison Corp. v. United States, 43 Fed. Cl.107, 115 (1999)). Lastly, in an appeal to public policy,
HID notes § 285 is important because “[i]t is good policy to deter parties from bringing
exceptional patent cases that force taxpayers to foot the bill.” HID Initial Suppl. Br. at 13.

         In response, plaintiff argues this Court’s jurisdiction extends only to “claims against the
United States.” See Pl.’s Initial Suppl. Br. at 6. Plaintiff alleges this Court’s limited jurisdiction
does not allow it to pass judgement on “controversies between private parties, such as HID’s
statutory claim for attorneys’ fees against Giesecke.”
 Id. at 1. 
Further, plaintiff disagrees with
HID’s characterization of § 1498’s waiver of sovereign immunity and argues the statute defines
“the types of relief that may be granted by the Court of Federal Claims in a patent infringement
suit, as well as the limited circumstances under which attorneys’ fees may be awarded to the
patent holder.”
 Id. (emphasis added). Plaintiff 
goes on to note, “none of those limited
circumstances [in which fees may be awarded] is present here.”
 Id. In addition to 
its general
contention a defendant cannot seek attorneys’ fees under § 285 in a § 1498 action, plaintiff is
explicit in noting HID’s “step into the shoes” argument has been previously considered and
rejected by this court. Pl.’s Resp. Suppl. Br. at 2 (“Third-party defendants argue that in seeking
costs and attorney’s fees they ‘stand in the shoes’ of the government. This argument is
unpersuasive.”) (quoting Lemelson v. United States, 
8 Cl. Ct. 789
, 791–92 (1985)) (emphasis
omitted). Indeed, plaintiff contends HID voluntarily entered the action as a “nominal
defendant[]” against whom no claim could be filed “because of the Court’s limited subject matter
jurisdiction,” and thus HID cannot seek fees against the plaintiff in such an action.
 Id. at 2–3. 
In
summary, plaintiff argues “there is not a single case in the history of this Court that has made”
the type of fee award HID requests.
 Id. at 1.
        The government, acknowledging the Court of Federal Claims as a court of limited
jurisdiction, states “precedent clearly establishes that a claim for attorneys’ fees under 35 U.S.C.
§ 285 may not be made against the Government.” Gov’t Suppl. Br. at 2–3. The government
notes, however, it may recover fees pursuant to alternative authorities, such as RCFC 11, RCFC
37, or the Court’s inherent authority.
 

–6. 
The government thus repeatedly refers to the

                                                -5-
fee award as a “sanction,” recognizing HID has a “real and potential interest” in this litigation.

Id. at 6.3

III. 
This Court’s Jurisdiction Regarding § 285 at this Stage of the Proceedings

        A. Subject Matter Jurisdiction

        Plaintiff raised for the first time, in response to HID’s motion for quantum of attorneys’
fees, whether the Court of Federal Claims has subject matter jurisdiction to award attorneys’ fees
pursuant to 35 U.S.C. § 285. See Pl.’s Opp’n to HID’s Mot. for Quantum at 1. Although this
court previously noted possible jurisdiction-related concerns, whether an award of fees under
§ 285 is within the jurisdiction of the Court of Federal Claims was never conclusively decided.
Pursuant to RCFC 12(h)(3), “[i]f the court determines at any time that it lacks subject-matter
jurisdiction, the court must dismiss the action.” “‘[S]ubject-matter jurisdiction, because it
involves a court’s power to hear a case, can never be forfeited or waived.’” Arbaugh v. Y&H
Corp, 
546 U.S. 500
, 514 (2006) (quoting United States v. Cotton, 
535 U.S. 625
, 630 (2002)).
“The objection that a federal court lacks subject-matter jurisdiction . . . may be raised at any
stage in the litigation . . . .”
 

06; 
see also Central Pines Land Co., L.L.C. v. United States,
697 F.3d 1360
, 1364 n.1 (Fed. Cir. 2012) (“[a]n objection to a court’s subject matter jurisdiction
can be raised by any party or the court at any stage of litigation”). Thus, “courts must always
look to their jurisdiction, whether the parties raise the issue or not.” View Eng’g, Inc. v. Robotic
Vision Sys., Inc., 
115 F.3d 962
, 963 (Fed. Cir. 1997).

        B. Jurisdictional Requirements for a 28 U.S.C. § 1498 Claim

        This Court’s jurisdiction over patent infringement suits extends from 28 U.S.C. § 1498,
which waives the government’s sovereign immunity “[w]henever an invention described in and
covered by a patent of the United States is used or manufactured by or for the United States
without license of the owner thereof or lawful right to use or manufacture the same.” 28 U.S.C.
§ 1498(a). Section 1498, therefore, “creates an independent cause of action for direct
infringement by the Government or its contractors that is not dependent on 35 U.S.C. § 271(a).”
Zoltek Corp. v. United States, 
672 F.3d 1309
, 1326–27 (Fed. Cir. 2012). This limited waiver of
sovereign immunity “must be strictly construed in favor of the United States” such that “any
ambiguity in the statute must be resolved in favor of immunity.”
 Id. at 1318 
(citing Lane v.
Pena, 
518 U.S. 187
, 192 (1996)).

       While § 1498 “authorizes the Government to take, through exercise of its power of
eminent domain, a license in any United States patent,” it also provides “the sole remedy
available to a patentee for an eminent domain taking of a license in his patent,” namely,
“reasonable and entire compensation.” De Graffenried v. United States, 
228 Ct. Cl. 780
, 783
(1981) (“De Graffenried I”) (emphasis in original) (quoting Decca Ltd. v. United States, 225 Ct.
Cl. 326 (1980) (cert denied, 
454 U.S. 819 
(1981)); see also 28 U.S.C. 1498(a). The text of

3
  The government further contends “the Court may enter a fee award in favor of a third party under the Court’s
Rules or its inherent authority.”
 Id. (citing Thornton-Trump v. 
United States, 
12 Cl. Ct. 262
, 263 (1987))
(“Thornton-Trump II”). As with HID’s arguments regarding the Court’s inherent authority to award attorneys’ fees,
however, the Court does not address this issue at this time.

                                                      -6-
§ 1498 does not, however, contain language affording defenses or remedies to the government or
third-party defendants in infringement cases. 4 See e.g., Earth Res. Corp. v. United States, 
44
Fed. Cl. 274
, 281 (1999) (“Provisions [in § 1498] . . . relating to [the] right of the United States
to any general or special defense available to defendants in patent infringement suits, were
omitted.”). Following revisions to the statute in 1948, “provisions . . . relating to the right of the
United States to any . . . defense . . . were omitted as unnecessary.” Rep. No. 80-1559 (1948).
Nonetheless, both Congress and this court continue to recognize “[i]n the absence of statutory
restriction, any defense available to a private party is equally available to the United States.” Id.;
see also Lamson v. United States, 
117 Fed. Cl. 755
, 757 (2014) (“The Federal Circuit has made it
clear that the United States may avail itself of all defenses available to private parties in
infringement litigation when the United States is defending actions under § 1498(a).”);
 id. at 760
(citing Motorola, Inc. v. United States, 
729 F.2d 765
, 769 (Fed. Cir. 1984) (“It is well-settled that
the United States, in defending an action under § 1498(a), may avail itself of any defense that is
available to a private party in an infringement action brought under Title 35.”); Pratt & Whitney
Canada Inc. v. United States, 
12 Cl. Ct. 221
, 222 (1987) (“The legislative history of section 1498
makes it clear that although the [statutory language] regarding defenses available to the
government was omitted, the government is still entitled to assert any defense available to a
private party in an infringement action under Title 35.”).

         C. Attorneys’ Fees Pursuant to 35 U.S.C. § 285

        Under the Patent Act, “in exceptional cases [a court of competent jurisdiction] may award
reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285; see also De Graffenried v.
United States, 
29 Fed. Cl. 384 
(1993) (“De Graffenried II”) (“[When] patent infringement
actions are brought against private parties under 35 U.S.C. § 281 . . . the remedies potentially
available in such a civil action are set forth respectively in 35 U.S.C. §§ 283 (Injunction), 284
(Damages), and 285 (Attorney fees).”) (emphasis added). Recently, the Supreme Court clarified
“[s]ection 285 of the Patent Act authorizes a district court to award attorney fees to the
prevailing party.” Octane Fitness, LLC v. ICON Health & Fitness, 
572 U.S. 545
, 548 (2014)
(emphasis added). In Octane Fitness, the Supreme Court further defined an “exceptional case,”
describing it as “one that stands out from others with respect to the substantive strength of the
party’s litigating position . . . or the unreasonable manner in which the case was litigated.”
 

54.
        The Federal Circuit subsequently explained when determining if a party is “prevailing”
for the purposes of § 285, “the relevant inquiry . . . is not limited to whether a defendant
prevailed on the merits, but also considers whether the district court’s decision . . . effects or
rebuffs a plaintiff’s attempt to effect a ‘material alteration in the legal relationship between the
parties.’” Raniere v. Microsoft Corp., 
887 F.3d 1298
, 1305–1306 (Fed Cir. 2018) (quoting CRST

4
  Congress first codified this waiver of sovereign immunity in the “Act of June 25, 1910” and “applied the 1910 Act
[Pub. L. No. 61-305, 36 Stat. 851 (1910)] to the issue of patent infringement by government contractors . . .
 during World War I.” See Zoltek Corp. v. United States, 
672 F.3d 1309
, 1315 (citing William Cramp & Sons Ship
& Engine Bldg. Co. v. Int’l Curtis Marine Turbine Co., 
246 U.S. 28
, 38 (1918). From 1910 until the provision was
re-codified as 28 U.S.C. § 1498 in 1948, the waiver “provided further, [t]hat in such suit the United States may avail
itself of any and all defenses, general or special, which might be pleaded by a defendant in an action for
infringement.” Pub. L. No. 61-305, Ch. 423, 36 Stat. 851–52. This language was omitted from § 1498 following its
1948 revision and re-codification. See 28 U.S.C. § 1498(a); see also S. Rep. No. 80-1559 (1948).

                                                        -7-
Van Expedited, Inc. v. EEOC, 
136 S. Ct. 1642
, 1646–52 (2016)). With the ultimate goal of
deterring “frivolous filings,” the Federal Circuit therefore broadened its definition of “prevailing
party” to be consistent with that of the Supreme Court and encompass a greater number of
“exceptional” cases. See
 id. Although § 285 
is used frequently by district courts, the Court of
Federal Claims has never awarded attorneys’ fees under § 285 in a § 1498 case. See Jurisdiction
Hr’g Tr. at 35–36 (discussing the use of § 285 to award attorneys’ fees in a § 1498 case, wherein
counsel for both HID and the government confirmed such an award has heretofore never been
granted).5

        On the contrary, § 1498 specifically provides—in the Court of Federal Claims—for an
award of attorneys’ fees to a prevailing plaintiff who is “an independent inventor, a nonprofit
organization, or an entity that ha[s] no more than 500 employees.” See 28 U.S.C. § 1498(a). In
1996, Congress amended § 1498 to explicitly state, “reasonable and entire compensation shall
include the [patent] owner’s reasonable costs, including reasonable fees for . . . attorneys.” 28
U.S.C. § 1498(a) (emphasis added). Fees are not to be awarded to the patent owner, however, “if
the court finds that the position of the United States was substantially justified.” See id.; see also
Hitkansut LLC v. United States, 
958 F.3d 1162
, 1166–67 (Fed Cir. 2020) (holding “the position
referred to is that taken by the United States in the civil action”) (quoting Broad Ave. Laundry &
Tailoring v. United States, 
693 F.3d 1387
, 1390 (Fed. Cir. 1982)).

          While § 1498 allows attorneys’ fees as “the [patent] owner’s remedy,” there are other
more limited means through which the Court of Federal Claims can award the government
attorneys’ fees. For example, RCFC 11 provides “[a] sanction imposed under this rule . . . may
include . . . an order directing payment to the movant of part or all of the reasonable attorney’s
fees . . . resulting from the violation.” See RCFC (11)(c)(4). Under RCFC 37, a party may be
ordered to pay reasonable expenses, including attorneys’ fees, for failing to make proper
disclosures or otherwise cooperate in discovery. See RCFC 37. Separate and apart from this
Court’s authority to award attorneys’ fees from the government to prevailing plaintiffs in a §
1498 action under the statutory authority of § 1498 itself, in limited circumstances—including in
the context of a Rule 11 violation—the Court can award fees to the government as well. To date,

5
 Counsel for both HID and the government confirmed to the Court, to the best of their knowledge, § 285 had never
been applied to a § 1498 case:

         THE COURT: [I]s there a case that awards attorney’s fees under Section 285 in a 1498 action?
         HID COUNSEL: This—well, other than the fact that [this court in Judin v. United States, 
34 F.
         Cl
. 483] said you could, [this] would be the first.
          THE COURT: Okay. And has the government ever been awarded attorney’s fees under Section
         285?
         HID COUNSEL: No, and it’s my understanding that the government probably would never even
         ask . . . .
         THE COURT: Has the government ever even sought attorney’s fees under Section 285?
         HID COUNSEL: Not to our knowledge, Your Honor.
         THE COURT: Okay. And just to confirm, because [government counsel] is on the line, . . . has the
         government—as you understand it—ever sought or been awarded attorney’s fees under Section 285
         in a 1498 suit?
         GOVERNMENT COUNSEL: My understanding matches [HID Counsel’s] that we have neither
         sought nor received attorney’s fees under Section 285.

Jurisdiction Hr’g Tr. at 35:4–36:1.

                                                      -8-
however, this Court has never awarded such fees pursuant to 35 U.S.C. § 285. Accordingly, as
plaintiff now raises this issue, the Court must resolve whether it has subject matter jurisdiction to
award attorneys’ fees pursuant to § 285. View Eng’g, Inc. v. Robotic Vision Sys., Inc., 
115 F.3d
962
, 963 (Fed. Cir. 1997).

IV. Summary of Law Related to this Court’s Jurisdiction over Attorneys’ Fees

         “Federal courts are courts of limited jurisdiction. They possess only that power
authorized by Constitution and statute, which is not to be expanded by judicial decree.”
Kokkonen v. Guardian Life Ins. Co. of Am., 
511 U.S. 375
, 377 (1994) (internal citations
omitted); see also Gunn v. Minton, 
568 U.S. 251
, 256–57 (2013) (“There is no dispute that the
Constitution permits Congress to extend federal court jurisdiction to a case such as this one; the
question is whether Congress has done so.”) (internal citations omitted). The federal courts
cannot “employ untethered notions of what might be good public policy to expand [their]
jurisdiction,” Whitmore v. Arkansas, 
495 U.S. 149
, 161 (1990), so at times they are “restrain[ed]
. . . from acting” when they might otherwise like to. Steel Co. v. Citizens for a Better Env’t, 
523
U.S. 83
, 101 (1998). Indeed, the federal “courts . . . have an independent obligation to determine
whether subject-matter jurisdiction exists” no matter the “stage in the litigation.” 
Arbaugh, 546
U.S. at 507
, 514. “It is to be presumed that a cause lies outside this limited jurisdiction, and the
burden of establishing the contrary rests upon the party asserting the jurisdiction.” 
Kokkonen,
511 U.S. at 377 
(internal citations omitted). When subject matter jurisdiction cannot be
established, “the court must dismiss” the case. 
Arbaugh, 546 U.S. at 514
.

        A limited judiciary is central to our system of governance. This role “is founded in
concern about the proper—and properly limited—role of the courts in a democratic society.”
Warth v. Seldin, 
422 U.S. 490
, 498 (1975). As succinctly stated: “The judge is always confined
within the narrow limits of reasonable interpretation. It is not his function or within his power to
enlarge or improve or change the law. . . . By virtue of the special duty imposed upon them, our
courts are excluded from playing the part of reformers.” Elihu Root, The Importance of an
Independent Judiciary, 72 Independent 704, 704 (1912). These principles trace their roots to the
early days of this Nation. In Federalist No. 78, Alexander Hamilton recognized the courts are
“bound down by strict rules and precedents, which serve to define and point out their duty in
every particular case that comes before them.” The Federalist No. 78 (A. Hamilton) (C. Rossiter
ed. 1961). Federal courts exist to settle specific matters in specific ways. The “sole function of
the courts is to enforce [the law] according to its terms.” United States v. Ron Pair Enterprises
Inc., 
489 U.S. 235
, 241 (1989). The history of the courts is therefore one of ensuring “that the
question . . . presented . . . [is] ‘of a Judiciary Nature.’” DaimlerChrysler Corp. v. Cuno, 
547
U.S. 332
, 342 (2006) (quoting James Madison, 2 Records of the Federal Convention of 1787, p.
430 (M. Farrand ed. 1966)).

        The jurisdiction of the Court of Federal Claims is even more limited than that of other
federal district courts. In United States v. King, the Supreme Court emphasized this Court’s
jurisdiction extends only as far as the government consents to be sued. See 
395 U.S. 1
, 4 (1969)
(“[T]he Court of Claims’ jurisdiction to grant relief depends wholly upon the extent to which the
United States has waived its sovereign immunity to suit and . . . such a waiver cannot be implied
but must be unequivocally expressed.”); see also RHI Holdings, Inc. v. United States, 
142 F.3d

                                                -9-
1459, 1461 (Fed. Cir. 1998) (“[T]he jurisdiction of the Court of Federal Claims (successor to the
Court of Claims discussed in Sherwood) is prescribed by the metes and bounds of the United
States’ consent to be sued in its waiver of immunity.”). Without an express waiver of sovereign
immunity, “there is no jurisdiction in the Court of [Federal] Claims more than in any other court
to entertain suits against the United States.” United States v. Testan, 
424 U.S. 392
, 399 (1976)
(quoting United States v. Sherwood, 
312 U.S. 584
, 587–88 (1941)). Pursuant to express grants
by Congress, the jurisdiction of the Court of Federal Claims is primarily over monetary claims
against the federal government; thus, almost universally, suits between private litigants are
“beyond the jurisdiction of the court.” See 
Sherwood, 312 U.S. at 588 
(“[The Court of Federal
Claims’] jurisdiction is confined to the rendition of money judgments in suits brought for that
relief against the United States, and if relief sought is against others than the United States the
suit as to them must be ignored as beyond the jurisdiction of the court.”) (internal citation
omitted). Therefore, the limits placed upon this Court, “whether imposed by the Constitution or
by Congress,” are precise and “must neither be disregarded nor evaded.” RHI 
Holdings, 142
F.3d at 1461
.

        The Court of Federal Claims, though a court of limited jurisdiction, possesses the
jurisdictional authority to award attorneys’ fees in certain circumstances. To determine whether
§ 285 falls under this gambit of previously established authority for awarding attorneys’ fees, the
Court undertakes a thorough review of case law interpreting those authorities under which
attorneys’ fees were previously awarded by this court.

        A. Established Authority to Award Attorneys’ Fees pursuant to RCFC 11

        This Court’s interpretation of the Rules of the Court of Federal Claims (“RCFC”) is
guided by case law interpreting the Federal Rules of Civil Procedure. See 2002 Rules
Committee Note, Rules of the United States Court of Federal Claims (as amended July 1, 2019)
(“[I]nterpretation of the court’s rules will be guided by case law and the Advisory Committee
Notes that accompany the Federal Rules of Civil Procedure.”). RCFC 11(c) vests in the Court
the ability to grant sanctions “[i]f, after notice and a reasonable opportunity to respond, the court
determines that RCFC 11(b) has been violated.” The potentially sanctionable conduct provided
in RCFC 11(b) includes: presenting material to the court “for any improper purposes, such as to
harass, cause unnecessary delay, or needlessly increase the cost of litigation;” presenting
frivolous arguments; making factual contentions lacking evidentiary support; or the unwarranted
denial of factual contentions. Pursuant to RCFC 11(c)(4), sanctions may include “an order
directing payment to the movant of part or all of the reasonable attorney’s fees and other
expenses directly resulting from the violation.”

        “[T]he central purpose of Rule 11 is to deter baseless filings in district courts and thus . . .
streamline the administration and procedure of the federal courts.” Cooter & Gell v. Hartmarx
Corp., 
496 U.S. 384
, 393 (1990). Rule 11 is thus “aimed at curbing abuses of the judicial
system.”
 Id. at 397. 
Consistent with the language of Rule 11, an award of attorneys’ fees is a
proper sanction pursuant to Rule 11. See, e.g., Willy v. Coastal Corp., 
503 U.S. 131 
(1992)
(affirming district court award of attorneys’ fees despite trial court lacking jurisdiction over the
underlying cause of action); Phonometrics, Inc. v. Economy Inns of Am., 
349 F.3d 1356 
(Fed.
Cir. 2003) (affirming district court award of attorneys’ fees under Rule 11). When warranted,

                                                 - 10 -
the Court of Federal Claims has found occasion to levy sanctions against a litigant in the form of
the other party’s attorneys’ fees pursuant to RCFC 11. See e.g., Coastal Envtl. Grp. v. United
States, 
118 Fed. Cl. 15
, 38 (2014) (sanctioning counsel for the government pursuant to RCFC 11
and ordering the payment of “reasonable attorney’s fees and costs”); Thornton-Trump v. United
States, 
12 Cl. Ct. 127 
(1987) (“Thornton-Trump I”) (levying sanctions against plaintiff in the
form of third-party defendants’ attorneys’ fees pursuant to Rule 11).

       B. Established Authority to Award Attorneys’ Fees Pursuant to the Equal Access to
          Justice Act

        The Equal Access to Justice Act, 28 U.S.C. § 2412 (“EAJA”), provides for the payment
of attorneys’ fees under certain conditions. For example, under § 2412(b), a “prevailing party”
may be awarded “reasonable fees and expenses of attorneys . . . in any civil action brought by or
against the United States.” Under § 2412(d)(1)(A), a “prevailing party other than the United
States” may recover “fees and other expenses” in a civil action “brought by or against the United
States . . . unless the court finds that the position of the United States was substantially justified
or that special circumstances make an award unjust.” The government, as the defendant in all
cases before the Court of Federal Claims, can thus seek a statutory award of fees under
subsection (b) of the EAJA. See, e.g., Heger v. United States, 
114 Fed. Cl. 204
, 210 (2014)
(“Precedents confirm that the government may recover attorneys’ fees under Subsection
2412(b).”); Bregstone v. United States, 
4 Cl. Ct. 507
, 513 (1984) (“Defendant qualifies as a
prevailing party under section 2412(b) because it achieved a favorable disposition of the case.”);
St. Paul Fire & Marine Ins. Co. v. United States, 
4 Cl. Ct. 762
, 772 (1984) (holding plaintiff
“pursued th[e] action in bad faith” and awarding the government attorneys’ fees under
§ 2412(b)).

       C. Established Authority to Award Attorneys’ Fees Pursuant to the Court’s
          Inherent Authority

        “It has long been understood that ‘[c]ertain implied powers must necessarily result to our
Courts of justice from the nature of their institution,’ powers ‘which cannot be dispensed with in
a Court, because they are necessary to the exercise of all others.’” Chambers v. NASCO, Inc.,
501 U.S. 32
, 43 (1991) (quoting United States v. Hudson, 
11 U.S. 32
, 34 (1812)). “These powers
are ‘governed not by rule or statute but by the control necessarily vested in courts to manage
their own affairs so as to achieve the orderly and expeditious disposition of cases.’”
 Id. (quoting
Link v. 
Wabash R. Co., 
370 U.S. 626
, 630–31 (1962)). Such inherent powers of a federal court
allow for the award of attorneys’ fees under three circumstances: (1) when the award is “to a
party whose litigation efforts directly benefit others;” (2) “as a sanction for the ‘willful
disobedience of a court order;’” or (3) “where a party has ‘acted in bad faith, vexatiously,
wantonly, or for oppressive reasons.’”
 Id. at 45–46 
(quoting Alyeska Pipeline Serv. Co. v.
Wilderness Soc., 
421 U.S. 240
, 258–59 (1975)).

        This court has exercised its inherent authority to sanction litigants on more than one
occasion. See, e.g., Brooker v. United States, 
107 Fed. Cl. 52
, 57–58 (2012) (“Based on a review
of plaintiffs’ complaint and cases filed by plaintiffs in this court and in other courts, plaintiffs’
filings warrant sanction pursuant to the court’s inherent power.”); Tecom, Inc. v. United States,

                                                - 11 -
No. 00-475C, 
2006 WL 5616336
, at *5 (Fed. Cl. May 4, 2006) (“All judicial bodies inherently
have the power to sanction parties, or their attorneys, for failure to conform to their rules or to
respect their dignity, or for unnecessarily impeding the tribunals’ business.”); Precision Pine &
Timber, Inc. v. United States, No. 98-270C, 
2001 WL 1819224
, at *4 (Fed. Cl. Mar. 6, 2001)
(“The Court does not merely have the inherent authority to sanction conduct designed to harm a
party, but also to sanction conduct that delays and disrupts the judicial process.”). Upon a
motion to “vacate or modify its order” imposing sanctions on the plaintiff in Thornton-Trump II,
this court made clear its inherent authority does not extend only to plaintiffs, but rather “every
litigant whose right to appear here is a matter governed by the court’s rules,” including third-
party defendants. Thornton-Trump v. United States, 
12 Cl. Ct. 262
, 263 (1987) (“Thornton-
Trump II”) (“[T]he court’s power to enforce its rules—with sanctions, if necessary—does not
disappear merely because the brunt of abusive tactics befalls a third-party defendant who is not
before the court with a monetary claim of his own.”).

       D. Established Authority to Award Attorneys’ Fees Pursuant to 28 U.S.C. § 1498

        Although not directly applicable to the question of awarding attorneys’ fees to a third-
party defendant, a consideration of the Court’s authority to award attorneys’ fees under § 1498
offers an appropriate parallel for understanding this Court’s unique jurisdiction and how it
applies to patent claims.

        This court and its predecessors have understood patent owners’ claims in light of a
distinction between the eminent domain theory underlying 28 U.S.C. § 1498 litigation and tort
theory underlying Title 35 patent litigation in district courts. The Court of Claims explained in
Leesona when Congress enacted § 1498’s precursor statute, it “clearly construed it as following”
eminent domain theory, rather than “consenting to suit for a tort.” Leesona Corp. v. U.S., 
220
Ct. Cl. 234
, 248 (1979). As the Federal Circuit later noted, when a patent owner seeks to recover
under 28 U.S.C. § 1498, “[t]he theoretical basis for his recovery is the doctrine of eminent
domain.” Motorola, Inc. v. United States, 
729 F.2d 765
, 768 (Fed. Cir. 1984) (citing Crozier v.
Fried Krupp Aktiengesellschaft, 
224 U.S. 290 
(1912)). “The government’s unlicensed use of a
patented invention is properly viewed as a taking of property under the Fifth Amendment
through the government’s exercise of its power of eminent domain . . . .” Hughes Aircraft Co. v.
United States, 
86 F.3d 1566
, 1571 (Fed. Cir. 1996), vacated and remanded on other grounds,
520 U.S. 1183
, 
117 S. Ct. 1466 
(1997). On the other hand, the Court of Claims in Leesona found
“the trial judge’s award [to be] largely excessive because of his erroneous assumption that he
was adjudicating a tort claim for patent infringement under various provisions of Title 35 of the
Code.” 220 Ct. Cl. at 240
. The Federal Circuit in Motorola observed parties’ lack of clarity in
this distinction creates confusion: “[a]s occurs frequently in section 1498 patent actions, the
parties in the instant appeal are presenting and arguing the case as if it were an action brought
under Title 
35.” 729 F.2d at 768
. Although cases brought under § 1498 and Title 35 are often
“parallel,” they are “not identical,” and “the same concepts, phrases and words do not and cannot
always connote or denote the same meaning under section 1498” and Title 35.
 Id. (citing
Calhoun v. 
United States, 
453 F.2d 1385
, 1391, (Ct. Cl. 1972)). This distinction between Title
35 cases involving private parties and § 1498 eminent domain cases is crucial because “[t]here




                                               - 12 -
are numerous examples of where the patent statutes are inapplicable in an eminent domain
context.”
 Id. at 7
72 n.3.6

         Historically, the Court of Claims held although it was “specifically authorized under Title
28 U.S.C. Section 1498 to award ‘reasonable and entire compensation,’” it was “not authorized
to award specific damages and/or attorney fees as such in these cases.” Regent Jack Mfg. Co. v.
United States, 
292 F.2d 868
, 870 (Ct. Cl. 1961). The Court of Claims later explained “this court
‘is not authorized to award specific damages and/or attorney fees as such’ in patent cases under
28 U.S.C. § 1498.” Calhoun v. United 
States, 453 F.2d at 1395 
(quoting Regent Jack Mfg. Co. v.
United 
States, 292 F.2d at 870
). The Court of Claims and this court continued to hold in later
cases they lacked authority to grant attorneys’ fees in § 1498 patent cases. See Leesona 220 Ct.
Cl at 254 (declining to award attorney’s fees under section 1498 because they are a “punitive
award not necessary to provide just compensation”); Jamesbury Corp. v. United States, 
1980 WL
20818 
at *17 (Ct. Cl. 1980) (declining to award fees because “absent specific statutory authority,
the court is without power to award litigation expenses to the plaintiff.”); De Graffenried 
II, 29
Fed. Cl. at 391 
(declining to award fees because “Congress intended and provided for distinct
remedies . . . in an unauthorized use of a patent action against the United States.”). The Federal
Circuit confirmed this understanding: “increased damages and attorneys [sic] fees available
against private infringers under 35 U.S.C. §§ 284 and 285 are not permitted in an eminent
domain proceeding.” 
Motorola, 729 F.2d at 772 
n.3. Relatedly the Court of Claims held in a
patent infringement action under § 1498 it was “without jurisdiction to order a plaintiff to pay the
costs, expenses, and attorney’s fees of a third-party defendant . . . .” 
Lemelson, 8 Cl. Ct. at 791
.

       Another judge on this court recently discussed the history of § 1498’s interpretation and
amendment. See FastShip LLC v. United States, 
143 Fed. Cl. 700
, 713 (2019). Historically,
“reasonable and entire compensation” had not been delineated by the statute. See, e.g., 28
U.S.C. § 1498(a) (1994). In accord with the statute’s grounding in eminent domain, the Court of
Claims interpreted “reasonable and entire compensation” to mean “just compensation” as
“required by the Fifth Amendment for government takings by eminent domain.” H.R. Rep. No.
104-373 at 2 (1995), 1996 U.S.C.C.A.N. 4173, 4174 (citing Waite v. United States, 
282 U.S.
508
, 509 (1931)). The Fifth Amendment does not require the United States to pay litigation
expenses in eminent domain cases to comply with the “just compensation” requirement; rather,
“such fees and costs can only be authorized by statute.”
 Id. (citing United States 
v. Bodcaw Co.,
440 U.S. 202
, 203 (1979)).

        The status quo changed in 1996, however, when Congress added the provision for
“reasonable fees” to § 1498. In a significant legislative change, Congress found under the
existing statutory regime, “equity cannot be done in reimbursing patent owners for fees and costs
because the courts have generally taken the position that if Congress had intended to include

6
  Numerous scholars have noticed the traditional differences in attorneys’ fees for eminent domain claims versus tort
claims. See, e.g., Richard A. Epstein, Kelo: An American Original, 8 Green Bag 2d 355, 355, citing Dohany v.
Rogers, 
281 U.S. 362 
(1930) (“Remember the only compensation is for the property taken, typically at the time of
the taking, and thus excludes attorney and appraisal fees.”); Katrina Miriam Wyman, The Measure of Just
Compensation, 41 U.C. Davis L. Rev. 239, 254 (2007) (“Under the fair market value standard, the Fifth
Amendment’s ‘just compensation’ standard does not require government to compensate certain kinds of losses that
takees may experience. . . . These include attorney’s fees . . . .”).


                                                       - 13 -
such reimbursement, it should have said so specifically.” H.R. Rep. No. 104-373 at 2 (1995); see
also Wright v. United States, 
56 Fed. Cl. 350
, 351 (2003) (“Section 1498 was amended in 1996
to provide for [attorneys’ and expert witness] fees.”). The 1996-amended statute now states:
“the [patent] owner’s remedy shall be . . . reasonable and entire compensation . . . including
reasonable fees.” 28 U.S.C. § 1498(a). This court now interprets the amended statute to mean
“prevailing parties in a section 1498 action against the government are entitled to reasonable and
entire compensation, including reasonable fees for attorneys and expert witnesses in some
circumstances.” 
Wright, 56 Fed. Cl. at 351
.

        Contrasting the post-1996 language of § 1498 with the EAJA discussed above is helpful
to understand § 1498. Unlike the text of § 1498(a), the EAJA—amended in 1985, eleven years
before the 1996 updates to § 1498—permits “a court to award reasonable fees and expenses of
attorneys . . . to the prevailing party in any civil action brought by or against the United States.”
28 U.S.C. § 2412(b) (emphasis added); see also 
Hitkansut, 958 F.3d at 1166-67 
(using the text
and history of the EAJA to consider plaintiff’s § 1498 fees request). In a recent case awarding
plaintiff attorneys’ fees under § 1498, the Federal Circuit determined that nothing “in the
legislative history [of § 1498] indicate[s] such an intent [of Congress for § 1498(a) to mirror
EAJA].” 
Hitkansut, 958 F.3d at 1168
. Section 1498, unlike the EAJA, is a statute specifically
tailored to awarding the plaintiff patent owner compensation for the government’s infringing
acts. Thus, while the Federal Circuit’s review of the EAJA in Hitkansut was relevant in
assessing a fee award to plaintiffs under § 1498, § 1498 does not share such reciprocity with the
EAJA when evaluating a fee award to the government.7 During the 8 July 2020 oral argument
on the jurisdictional issue, the government noted “in the relatively rare instances where the
government has sought attorney’s fees, [it has] done so under [the EAJA] or the variety of . . .
Court of Federal Claims rules that provide for attorney’s fees or the court’s inherent authority.” 8
Jurisdiction Hr’g Tr. at 36:2–6.


7
  The court in Hitkansut also cited the 1995 House Judiciary Committee’s Report on “Just Compensation for Patent
Owner for Unlicensed use by United States” in describing the court’s interpretation of § 1498 relative to the EAJA.
See 
Hitkansut, 958 F.3d at 1168
. In addressing the applicability of the EAJA to patent infringement suits against the
government, it was noted “[n]o owner has yet been able to recover any of its litigation costs under the EAJA.” H.R.
Rep. No. 104-373 at 2. Regarding reason for the amendment, the report further noted, “[c]urrently [without the
amendment], equity cannot be done in reimbursing patent owners for fees and costs because the courts have
generally taken the position that if Congress had intended to include such reimbursement, it should have said so
specifically.”
 Id. at 2-3.
8
  The 1995 House Judiciary Committee Report further considered 35 U.S.C. § 285 as an analogous statute
applicable in district court litigation between private parties for an award of attorneys’ fees in a patent infringement
action. H.R. Rep. No. 104-373 at 2. The report found, however, a “problem arises in the differing nature of patent
infringement suits against a private party compared with one levied against the government.”
 Id. at 2. 
Thus, in an
attempt to provide plaintiffs with a similar statutory remedy when accusing the government of patent infringement
as is available to private party plaintiffs in a district court under § 285, the language of § 1498 was expressly
amended to “authorize[] the express recovery of reasonable costs and fees by small businesses, non-profit entities or
independent patent owners who are forced to litigate against the government to obtain compensation for
infringement by the government.”
 Id. at 3. 
Noticeably different in the final language adopted in § 1498, when
contrasted with the language of § 285, is specific reference to only the patent owner’s ability to recover attorneys’
fees under § 1498. Under § 285, fees are generally available to whichever party is deemed the prevailing party.
Compare 28 U.S.C. § 1498(a) (“[r]easonable and entire compensation shall include the owner’s reasonable costs,
including reasonable fees for expert witnesses and attorneys”) (emphasis added) with 35 U.S.C. § 285 (“[t]he court
in exceptional cases may award reasonable attorney fees to the prevailing party”) (emphasis added)).

                                                        - 14 -
       The history of the availability of plaintiff’s attorneys’ fees under § 1498 is not directly
applicable to the issue before the Court, but it is helpful for understanding § 1498’s foundation in
eminent domain law. Understanding even victorious patent owners were not able to recover
attorneys’ fees under the original § 1498 language, before explicit statutory authorization, helps
this Court understand the limits of § 1498 now.

V. Whether the Court of Federal Claims Can Award Attorneys’ Fees Pursuant to 35 U.S.C.
   § 285

        After reviewing established precedent for awards of attorneys’ fees, including the Court’s
inherent authority, the rules governing the Court’s procedure, and explicit statutory grants, the
Court now turns to the statute in question which HID seeks an award of fees in this case. When
interpreting a statute, “[a]s in all statutory construction cases, we begin with the language of the
statute.” Barnhart v. Sigmon Coal Co., 
534 U.S. 438
, 450 (2002). “A fundamental canon of
statutory construction is that, unless otherwise defined, words will be interpreted as taking their
ordinary, contemporary, common meaning.” Perrin v. United States, 
444 U.S. 37
, 42 (1979)
(citing Burns v. Alcala, 
420 U.S. 575
, 580–81 (1975). “Since it should be generally assumed that
Congress expresses its purposes through the ordinary meaning of the words it uses, we have
often stated that ‘[a]bsent a clearly expressed legislative intention to the contrary, [statutory]
language must ordinarily be regarded as conclusive.’” Escondido Mut. Water Co. v. La Jolla
Band of Mission Indians, 
466 U.S. 765
, 772 (1984) (quoting North Dakota v. United States, 
460
U.S. 300
, 312 (1983)). When interpreting the plain language of a statute, a court must also take
into consideration the “fundamental canon of statutory construction that the words of a statute
must be read in their context and with a view to their place in the overall statutory scheme.”
Utility Air Regulatory Grp. v. EPA, 
573 U.S. 302
, 320 (2014).

         The language of § 285 states in full: “The court in exceptional cases may award
reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. The Supreme Court has held
“Section 285 of the Patent Act authorizes a district court to award attorney’s fees in patent
litigation.” Octane 
Fitness, 572 U.S. at 548
. Section 285 is found in Title 35 of the Patent Act,
whereas Section 1498 falls under Title 28 of the United States Code setting forth the jurisdiction
of the Court of Federal Claims. Section 1498 specifically applies to patent owners in an “action
against the United States in the United States Court of Federal Claims.” 28 U.S.C. § 1498(a)
(emphasis added). Section 285, on the other hand, does not explicitly state which courts have the
power to apply it. Compare 35 U.S.C. § 285 with 28 U.S.C. § 1498(a). The Court of Federal
Claims, relying on “unequivocally expressed” waivers of sovereign immunity to establish
jurisdiction, frequently provides remedies for plaintiffs alleging patent infringement against the
government pursuant to 28 U.S.C. § 1498. See 
King, 395 U.S. at 4 
(“[T]he Court of Claims’
jurisdiction to grant relief depends wholly upon the extent to which the United States has waived
its sovereign immunity to suit and . . . such a waiver cannot be implied but must be
unequivocally expressed.”). To date, however, the Court of Federal Claims has never awarded
attorneys’ fees pursuant to 35 U.S.C. § 285. See Tr. at 35:10–13 (responding to the Court’s
question of whether the government has “ever been awarded attorney’s fees under Section 285,”
counsel for the government stated: “No, and it’s my understanding that the government probably
would never even ask . . . .”); see also Tr. at 52:22–25 (responding to the Court’s question of



                                               - 15 -
whether § 285 had been used to award attorneys’ fees in this court previously, counsel for HID
could not identify another case besides the current case).

          This court’s historical treatment of § 285 illustrates its lack of authority to award fees
without an express statutory grant by Congress. First, in Regent Jack Mfg. Co. v. United States,
after finding plaintiff was entitled to recover for the government’s infringing actions, the Court
of Claims noted while plaintiff sought “attorney fees under Title 35 U.S.C., Section 285,” the
Court of Claims “is specifically authorized under Title 28 U.S.C., Section 1498, to award
‘reasonable and entire compensation,’ but is not authorized to award specific damages and/or
attorney fees as such in these 
cases.” 155 Ct. Cl. at 225
. In Carrier Corp. v. United States, the
Court of Claims addressed the question of whether a third-party defendant’s “motion to quash
the . . . notice served on it” should be granted. 208 Ct. Cl 1017, 1017–18 (1976). In denying the
third-party defendant’s motion to quash, the Court of Claims noted “Section [285] only applies
to patent suits in the District Courts.”
 Id. The Court of 
Claims again reaffirmed it cannot assess
fees under 35 U.S.C. § 285 in De Graffenried I, where plaintiff alleged claims against the United
States under 35 U.S.C. §§ 271, 281, 284, and 
285. 228 Ct. Cl. at 781
. The Court of Claims
found “[t]he provisions of Title 35 which give a right of action between private parties and
remedies for infringement are not directly applicable to a suit against the United States. Instead,
plaintiff must seek relief under the provisions of 28 U.S.C. § 1498.”
 Id. at 7
83 (internal citations
omitted); see Decca Ltd. v. United 
States, 225 Ct. Cl. at 334
. Granting the government’s motion
to dismiss the causes of action under Title 35 of the United States Code, the Court of Claims
further noted “the treble damage provisions of section 284 and the attorney fee provisions of
section 285 are not incorporated by reference into section 1498.”
 Id. (citing Leesona Corp. 
v.
United States, 
220 Ct. Cl. 234
).

         HID references a 1995 Court of Federal Claims case in which a third-party defendant
raised multiple theories under which it sought to recover attorneys’ fees, arguing for such an
award under either RCFC 11 or § 285. Judin v. United States, 
34 F. Cl
. 483, 487 (1995)
(“Judin I”). According to HID, the judge in Judin I “determined his ability to award fees under §
285 to third-party defendants like HID.” HID Initial Suppl. Br. at 12. In a footnote, the court in
Judin I stated “Section 285 permits the court, ‘in exceptional cases’ to award reasonable attorney
fees to the prevailing party in patent infringement cases.” Judin I at 487 n.3 (quoting 35 U.S.C.
§ 285). What HID fails to mention, however, is the decision in Judin I explicitly chose not to
award any such fees. Judin I, 
34 F. Cl
. at 493–94 (“the court also declines to award costs or
fees under section 285.”). In fact, the Court of Federal Claims initially declined to award any
fees under either RCFC 11 or § 285. See
 id. On appeal, the 
Federal Circuit “vacate[d] the
decision of the Court of Federal Claims and remand[ed] the case for further proceedings.” Judin
v. United States, 
110 F.3d 780
, 785 (Fed. Cir. 1997) (“Judin II”). The Federal Circuit, however,
only addressed the trial court’s decision as it pertained to RCFC 11; a discussion of § 285 does
not appear in the Federal Circuit’s opinion. See generally
 id. The Court does 
not read anything
into the Federal Circuit’s discussion regarding the applicability of § 285 to infringement actions
in the Court of Federal Claims. The Court does, however, reject HID’s characterization of the
Judin I decision as standing for the proposition the Court of Federal Claims previously
“determined [its] ability to award fees under § 285 to third-party defendants like HID.” HID
Initial Suppl. Br. at 12. The recitation of statutory language in a footnote, in a decision



                                               - 16 -
ultimately rejecting the specific relief requested, does nothing to satisfy the Court’s concerns
regarding the jurisdiction of this court to award attorneys’ fees pursuant to § 285.

       HID acknowledges this court noted in Standard Mfg. Co. v. United States:

       While a section 1498 action resembles in several ways the right of action against a
       private infringer provided under the Patent Act, the actions are only parallels and
       not identical. Title 35 provides remedies which would grant recovery in excess of
       the reasonable and entire compensation provided for in section 1498. For example,
       injunctive relief, increased damages and attorneys fees available against private
       infringers under 35 U.S.C. §§ 283, 284, and 285, respectively, are not permitted in
       eminent domain proceedings.

42 Fed. Cl. 748
, 757–58 (1999) (citing Motorola v. United States, 
729 F.2d 765
, 768 n.3 (Fed.
Cir. 1984)) (abrogated in other respects by Uniloc USA, Inc. v. Microsoft Corp., 
632 F.3d 1292
(Fed. Cir. 2011)) (internal citations omitted); see HID Resp. Suppl. Br. at 7. This court thus
declined to include any Title 35 remedies in its calculation of the plaintiff’s “reasonable and
entire compensation” under § 1498. The Court of Federal Claims, and its predecessor court,
have thus heretofore declined to utilize § 285 as a means to award fees in a § 1498 action.

       A. A Review of the Statutory Structure of § 285 as a Remedy for Patent
          Infringement, Not a Defense to Liability

        HID argues as a “noticed third-party defendant[] who share[s] aligned interests with and
step[s] into the shoes of the Government,” it “ought to have the same defenses and remedies
available as the Government.” HID Initial Suppl. Br. at 5 (emphasis added). Yet the authority
HID cites for this proposition is limited only to defenses. See, e.g., S. Cal. Edison Co. v. United
States, 
43 Fed. Cl. 107
, 115 (1999) (“[T]his court’s procedure allows a third-party defendant to
assert any defenses which the third-party has to the plaintiff’s claim (including defenses
assertable by the Government).”) (emphasis added); Avocent Redmond Corp. v. United States, 
93
Fed. Cl. 399
, 403, 405 (2010) (“Avocent II”) (finding laches defense available to both the United
States and defendant-intervenor). Black’s Law Dictionary defines a defense as a “defendant’s
stated reason why the plaintiff or prosecutor has no valid case.” Defense, Black’s Law
Dictionary (11th ed. 2019). A remedy, however, is defined as the “means of enforcing a right or
preventing or redressing a wrong.” Remedy, Black’s Law Dictionary (11th ed. 2019).

        HID even refers to a fee award under § 285 as a remedy in its initial supplemental brief:
“it is well-established that ‘an award of attorney’s fees [under § 285] is a remedy that underlies a
cause of action.” HID Initial Suppl. Br. at 8; see also
 id. at 9 
(“Because they are remedies,
attorneys’ fee awards, like those under § 285, do not require express jurisdictional grants.”).
When pressed on this point further during oral argument, counsel for HID confirmed even
though it views § 285 as a remedy, it was unwilling to classify the statute as a defense:

       THE COURT: Is [§ 285] a remedy?




                                               - 17 -
       HID COUNSEL: I’m not sure how you would define the word remedy, Your
       Honor. It’s—

       THE COURT: Well, I’m just looking at 35 U.S.C., and under Chapter 29, which
       is what 285 falls under, it’s Remedies for Infringement and Other Actions.

       HID COUNSEL: Under that definition, it sounds like a remedy to me, Your Honor.

       THE COURT: And is that the same, then, as a defense?

       HID COUNSEL: I am not sure if I would parse the word defense from collateral
       issue in that way. I would have to stand on collateral issue. I am not sure about the
       defense question.

       ...

       THE COURT: Does that help you, then, that it’s a remedy, not a defense?

       HID COUNSEL: Well, again, I’m not sure that I have a clear answer on whether
       or not it’s a defense. I do believe that it falls within remedy, but as you know,
       specifically my argument is that it’s collateral. So it doesn’t have to be either,
       because it’s collateral to the Court’s ability to control its docket.

Jurisdiction Hr’g Tr. at 23:14–24:3, 32:19–33:1. As the Court noted during oral argument,
Section 285 is found in Chapter 29 of Title 35 of the Patent Act, titled “Remedies for
Infringement of Patent, and Other Actions.” 35 U.S.C. § 285. According to the Court’s review
of both the historical changes to § 1498 and the subsequent case law interpreting the statute, the
government appears only to be able to apprise itself of defenses available to private party
litigants, not remedies. 
See supra 
Section IV.D.

         This Court’s predecessor court, the Court of Claims, with precedent binding on this Court
and the Federal Circuit, addressed a third party’s ability to assert defenses on multiple occasions.
See South Corp. v. United States, 
690 F.2d 1368
, 1370 (Fed. Cir. 1982) (adopting “an established
body of law as precedent . . . represented by the holdings of the Court of Claims”). For example,
in Sun Shipbuilding & Dry Dock Co., the Court of Claims considered a third party’s ability to
“present its full defense to the plaintiff’s claim” and “protect[] its interest.” 
204 Ct. Cl. 915
(1974) (quoting Bowser, Inc. v. United States and General Steel Tank Co., 
190 Ct. Cl. 441
, 445-
46 (1970). The Court of Claims found: “It follows that third party, having been duly noticed in
without objection and having become a party to the entire case, is free and competent to present
any defense it wishes . . . . At the same time, third party is not entitled to seek any affirmative
judgment, either monetary or declaratory, against the plaintiff.”
 Id. at 916 
(emphasis in original).
A few years later, in Leesona Corporation v. United States, the United States challenged the
determination of “reasonable and entire compensation” awarded to a patent holder in an
infringement suit. See Leesona Corp. v. United States, 
599 F.2d 958 
(Ct. Cl. 1979). Agreeing
the trial judge’s award was “largely excessive,” the Court of Claims determined “[i]ncorporating
all of the remedies of Title 35 into § 1498 without the explicit consent of Congress, which

                                               - 18 -
certainly could have provided for such incorporation had it so desired, would violate that
requirement [of an express waiver of sovereign immunity].”
 Id. at 962, 968.
        Similarly, in Standard Mfg., this court grouped an award of fees under § 285 with other
Title 35 remedies, stating “injunctive relief, increased damages and attorneys fees available
against private infringers under 35 U.S.C. §§ 283, 284, and 285, respectively are not permitted in
eminent domain proceedings.” 
42 Fed. Cl. 748
, 758 (1999). Most recently, in Lamson v. United
States, this court considered whether the “medical immunity provision” of 35 U.S.C. § 287(c)
was a defense available to the government in a § 1498 action, or instead merely a “limitation on
damages.” 117 Fed. Cl. at 756
, 762. In finding the government could avail itself of § 287(c)
because it was a defense, this court stated:

         A defense . . . is a complete bar to any recovery or relief. . . . In addition to
         preventing the recovery of any damages, § 287(c) also disallows the granting of an
         injunction, awards of attorneys’ fees, and the overall remedy of a civil action for
         infringement. As a result, the provision is broader than a mere limitation on
         damages, which only prevents some recovery of damages; under § 287(c), a
         qualifying entity cannot be held to have infringed. Accordingly, the court finds that
         § 287(c) is a defense rather than a limitation on damages.

62 
(internal citation omitted). Unlike the “medical immunity provision” this court found
to be a defense in Lamson, § 285 does not act as “a complete bar to any recovery or relief.”
 Id.
Rather, § 285 
fits squarely under the definition of a remedy being used to “enforce[e] a right or
prevent[] or redress[] a wrong.” Remedy, Black’s Law Dictionary (11th ed. 2019).

        Even assuming § 1498 authorizes the government’s use of “any defense available to a
private party [in a patent action],” the Court disagrees such language would allow the
government (or noticed third-party defendants) to request all remedies available to private
parties. HID’s Initial Suppl. Brief (quoting S. Rep. No. 80-1559 (1948)). The Court’s
conclusion is supported by the plain text of § 1498, which explicitly provides the available
remedies in a § 1498 action: “the owner’s remedy shall be . . . for the recovery of his reasonable
and entire compensation for such use and manufacture.” 28 U.S.C. § 1498(a). While additional
avenues do exist for a party to seek other narrow forms of relief under certain limited
circumstances, such as the Court’s rules or inherent authority, § 285 is not one of those limited
circumstances. The Court is unable to expand the jurisdiction of the Court of Federal Claims
beyond the express intent of Congress and years of case law unanimously interpreting this
court’s narrow jurisdiction as excluding fee awards under 35 U.S.C. § 285. 
King, 395 U.S. at 4
(“[T]he Court of Claims’ jurisdiction to grant relief depends wholly upon the extent to which the
United States has waived its sovereign immunity to suit and . . . such a waiver cannot be implied
but must be unequivocally expressed.”); see also RHI 
Holdings, 142 F.3d at 1461 
(noting the
limits placed upon this Court, “whether imposed by the Constitution or by Congress,” are precise
and “must neither be disregarded nor evaded”). 9

9
  The distinction between § 1498 eminent domain cases and Title 35 cases involving private parties helps to provide
an understanding of this Court’s jurisdiction. See 
discussion supra 
Section IV.D. When Congress enacted § 1498’s
precursor statute, it “clearly construed it as following” eminent domain theory, rather than “consenting to suit for a
tort.” 
Leesona, 220 Ct. Cl. at 248
. The Federal Circuit has also held: “increased damages and attorneys fees

                                                        - 19 -
         B. Section 285 as a Collateral Issue to the Court’s Jurisdiction Under § 1498

        HID further argues the Court’s jurisdiction over the underlying controversy pursuant to
§ 1498 is sufficient to grant this Court subject matter jurisdiction over the collateral issue of a fee
award. See HID Initial Suppl. Br. at 8. According to HID, “attorneys’ fee awards under § 285
are neither ‘controversies’ between private parties nor independent causes of action—they are
collateral issues within a court’s authority to control its docket.”
 Id. (internal footnote omitted).
“Because they are remedies, attorneys’ fee awards, like those under § 285, do not require express
jurisdictional grants.”
 Id. at 9. 
HID cites a series of cases for the proposition fee awards
generally are a collateral issue to the underlying cause of action. See HID Initial Suppl. Br. at 8–
10. Among those cases cited by HID were decisions of the Supreme Court, a single unpublished
Federal Circuit decision, and myriad federal district court decisions, all of which share the same
fundamental flaw as HID’s argument in the present case. 10
 Id. Here, HID seeks 
a specific
statutory remedy neither Congress nor this Court has previously recognized.

        HID cannot point to a single case finding § 285 fees as a collateral issue to a § 1498
action. The Federal Circuit in In re Uusi, for instance, which HID cites for the proposition
proceedings regarding a third-party defendant’s general requests for attorneys’ fees and costs are
“independent and ancillary to a federal court’s subject matter jurisdiction,” does not discuss
§ 285.
 

; 
In re Uusi, 549 Fed. App’x 964, 968 (Fed. Cir. 2013). The Federal Circuit in
Uusi did not hold fees can be awarded even if the court lacks jurisdiction to do so; rather, it
determined “general requests for attorney fees” are “ancillary to a federal court’s subject matter
jurisdiction.” In re Uusi, 549 at 968. This is consistent with this Court’s acknowledgement of
power to award fees under RCFC 11 and its inherent authority, but it does not enable the Court
to ignore jurisdictional limits and award fees under every fee shifting statute Congress has
passed. Similarly, the cases the court in Uusi cited do not reference § 285, nor do they involve
this Court’s jurisdiction pursuant to § 1498. Id.; see, e.g., White v. N.H. Dep’t of Employment
Sec., 
455 U.S. 445 
(1982) (reversing the First Circuit’s decision to withhold 42 U.S.C. § 1988
attorneys’ fees from an unemployment insurance claimant); Sprague v. Ticonic Nat’l Bank, 
307
U.S. 161
, 162 (1939) (answering “an important question . . . pertaining to the exercise of federal
equity jurisdiction” in the banking context).



available against private infringers under 35 U.S.C. §§ 284 and 285 are not permitted in an eminent domain
proceeding.” 
Motorola, 729 F.2d at 772 
n.3. Without statutory authorization, it can be assumed this Court only has
jurisdiction to grant historically understood eminent domain remedies to a third-party defendant.
10
   HID cites several cases in an attempt to support its argument “[t]he power to sanction and award fees is collateral
to . . . subject matter jurisdiction.” See HID Initial Suppl. Br. at 8–10 (citing Budinich v. Becton Dickinson & Co.,
486 U.S. 196
, 200 (1988) (noting “a claim for attorney’s fees is not part of the merits of the action to which the fees
pertain”); Cooter & Gell v. Hartmar Corp., 
496 U.S. 384
, 395 (1990) (finding “district courts may award costs after
an action is dismissed for want of jurisdiction”); In re Uusi, LLC, 549 F. App’x 964, 968 (Fed. Cir. 2013) (HID
characterizes as this court finding “jurisdiction over a Rule 14 party’s request for fees”); Elan Pharm., LLC v.
Sexton, 
421 F. Supp. 3d 1119
, 1128 (D. Kan. 2019) (finding “§ 285 provides no standalone cause of action”); Lokai
Holdings LLC v. Twin Tiger USA, LLC, 
306 F. Supp. 3d 629
, 644 (S.D.N.Y. 2018) (finding an award of attorneys’
fees under § 285 to be “a remedy that underlies a cause of action”); and Gen. Protect Grp., Inc. v. Leviton Mfg. Co.,
No. 10-1020, 
2012 WL 1684573
, at *32 (D.N.M. May 12, 2012) (noting § 285 “does not provide a federal cause of
action for jurisdictional purposes.”)

                                                        - 20 -
        The same is true of the Supreme Court’s decisions in both Cooter & Gell v. Hartmarx
Corporation and Budinich v. Becton Dickinson & Co. In Cooter & Gell, the Supreme Court held
“the imposition of a Rule 11 sanction is not a judgment on the merits of an action. Rather, it
requires the determination of a collateral issue: whether the attorney has abused the judicial
process.” Cooter & Gell v. Hartmarx Corp., 
496 U.S. 384
, 396 (1990). The court in Cooter &
Gell thus did not answer the question of whether attorneys’ fees are a collateral issue to the
underlying cause of action. Instead, the court determined whether the issue of an “attorney
[who] has abused the judicial process” such that “sanction[s] would be appropriate” is related to
the merits of a case.
 Id. The Supreme Court’s 
finding such sanctionable conduct is not related to
the merits of the case is consistent with the manner in which the Court of Federal Claims and its
predecessor court have historically viewed the award of attorneys’ fees pursuant to RCFC 11 or
the Court’s inherent authority. See, e.g., Coastal Envtl. 
Grp., 118 Fed. Cl. at 38 
(sanctioning
counsel for the government pursuant to RCFC 11 and ordering the payment of “reasonable
attorney’s fees and costs”); 
Brooker, 107 Fed. Cl. at 57
–58 (awarding sanctions based on the
Court’s inherent authority); Tecom, 
2006 WL 5616336
, at *5 (awarding attorneys’ fees and costs
as a sanction pursuant to the Court’s inherent authority); Precision Pine & Timber, 
2001 WL
1819224
, at *4 (awarding reasonable fees and expenses pursuant to the Court’s inherent
authority); Thornton-Trump 
I, 12 Cl. Ct. at 131 
(sanctioning plaintiff under the court’s rules and
ordering the payment of third-party defendants attorneys’ fees and related costs).

        Similarly, in Budinich, the Supreme Court held it is “indisputable that a claim for
attorney’s fees is not part of the merits of the action to which the fees pertain.” Budinich v.
Becton Dickinson & Co., 
486 U.S. 196
, 200 (1988). In reaching this decision, however, the
Supreme Court in Budinich concluded only “an award [of attorneys’ fees] does not remedy the
injury giving rise to the action” and so should not stop a decision on the merits from being final
under 28 U.S.C. § 1291.
 Id. at 200–203 
(citing 
Sprague, 307 U.S. at 170
). In other words, the
court in Budinich considered the timing of a fee award as it impacts jurisdiction, not a court’s
jurisdiction to issue a statutory fee award. See 
Budinich, 486 U.S. at 202 
(“The time of
appealability, having jurisdictional consequences, should above all be clear.”). Cooter & Gell
and Budinich thus do not support HID’s contention “§ 285 is a collateral issue [and] not a
separate judiciable claim.” HID’s Resp. Suppl. Brief at 5. As applicable here, these cases
support only the proposition when a Court of proper jurisdiction is asked to award attorneys’ fees
under Rule 11 or following a final decision on the merits, it may do so.

        Lastly, HID is not the first third-party defendant to seek a fee award in this Court. In
Avocent I, a third-party defendant filed an answer which contained a prayer for relief asking this
court to “find [the] case to be an exceptional case and that [third-party defendant] be awarded its
costs and reasonable attorneys’ fees.” Avocent Redmond Corp. v. United States, 
85 Fed. Cl. 724
,
725 (2009) (“Avocent I”). Although the third-party defendant did not directly cite § 285, it did
reference the “exceptional case” language used in the statute.
 Id. This court cited 
a long line of
precedent in support of its holding “a third party defendant . . . is not entitled to seek an
affirmative judgement, either monetary or declaratory, against a plaintiff.”
 Id. at 7
26. The court
in Avocent I relied on the Court of Claims’ decision in Lemelson, which noted “this court
‘derives its jurisdiction from acts of Congress and cannot take cognizance of any claim which
Congress has not authorized it to decide.’” See Lemelson v. United States, 
8 Cl. Ct. 789
, 791–92.
In Lemelson, the third-party defendants sought an award of fees and costs pursuant to the EAJA.

                                              - 21 -

Id. at 7
90. The court in Lemelson thus concluded it had “no jurisdiction to consider third-party
defendants’ claims against plaintiff for costs, expenses and attorney’s fees.” Id.; see also 
King,
395 U.S. at 4 
(explaining the court’s jurisdiction only extends as far as Congress allows through
express statutory grant).

        An important distinction therefore exists between the decisions in both Avocent I and
Lemelson, as compared to Thornton Trump II. In both Avocent I and Lemelson, the third-party
defendants were seeking an affirmative judgment against the plaintiff pursuant to a specific
statutory grant of authority. See Avocent 
I, 85 Fed. Cl. at 725
; 
Lemelson, 8 Cl. Ct. at 790
. In
Thornton-Trump II, however, the third-party defendant sought an award of fees not as an
affirmative judgment pursuant to a statutory cause of action, but rather pursuant to this court’s
inherent authority. See Thornton-Trump 
II, 12 Cl. Ct. at 263 
(“[T]he court’s power to enforce its
rules—with sanctions, if necessary—does not disappear merely because the brunt of abusive
tactics befalls a third-party defendant who is not before the court with a monetary claim of his
own.”). As “the Court of Claims’ jurisdiction to grant relief depends wholly upon the extent to
which the United States has waived its sovereign immunity,” this Court cannot decide an issue—
collateral or otherwise—not expressly allowed by statute, particularly in the context of a third
party seeking redress from a plaintiff. 
King, 395 U.S. at 4
. Although the Supreme Court and
Federal Circuit have found requests for attorneys’ fees to be ancillary to the merits of a case in
other unrelated contexts, a decision from this Court to award fees pursuant to § 285 in a § 1498
action “would impermissibly expand the jurisdictional powers conferred [on it] by” Congress.
Lemelson, 8 Cl. Ct. at 791
. Nothing in this Opinion and Order shall be construed as the Court
prohibiting a third-party defendant’s ability to seek redress from this Court in response to a
violation of this Court’s rules or in the Court’s inherent authority to control the judicial process.

VI. Conclusion

       The Court’s subject matter jurisdiction is a threshold question which must be
affirmatively decided regardless of the stage of litigation. The Court lacks jurisdiction to grant
HID’s motion for entitlement to attorneys’ fees under § 285. Accordingly, this court’s Order of
24 January 2020 granting HID’s motion as to entitlement to attorneys’ fees pursuant to § 285 is
VACATED.

         The Court recognizes HID raised alternative arguments as to the Court’s authority to
award attorneys’ fees, including under the Court’s inherent authority. Neither this Opinion and
Order nor this court’s 24 January 2020 Order address such arguments. The parties shall file a
joint status report on or before 13 November 2020 proposing further proceedings on entitlement
to attorneys’ fees under legal theories other than § 285, if desired, and the need for any
supplemental briefing, with a proposed briefing schedule if necessary, on such theories. HID’s
motion for quantum of attorneys’ fees, ECF No. 140, is hereby STAYED pending further
resolution of the entitlement issue.

       IT IS SO ORDERED.

                                                        s/ Ryan T. Holte
                                                        RYAN T. HOLTE

                                               - 22 -
         Judge




- 23 -