# In the United States Court of Federal Claims

No. 1 7

- 307 (Filed: 1 2 January 2021 )

*************************************** MICHAEL HADDAD, *

* Plaintiff, *

*

v. * Patent Infringement; 28 U.S.C. § 2514;

* Motion for Summary Judgment; RCFC 56 ; THE UNITED STATES, * Motion for Forfeiture; Fraud.

* Defendant, *
and *

*
TRANS DIGITAL TECHNOLOGIES *
LIMITED LIABILITY COMPANY and *
IDEMIA IDENTITY & SECURITY USA * LLC, *

*
Third

- Party Defendants. *

*

***************************************

Geoffrey Mason

, MOARBES, LLP, of Washington, DC , for plaintiff

.

Conrad Joseph DeWitte, Jr., Trial Attorney, Commercial Litigation Branch , Civil
Division , Department of Justice, with whom were Joseph H. Hunt , Assistant Attorney General,
and Gary L. Hausken , Director, all of Washington, DC, for defendant.

Richard L. Brophy , Armstrong Teasdale, LLP, of St. Louis, MO, for third

- party defendants Tran s Digital Technologies Limited Liability Company and Idemia Identity & Security USA LLC.

OPINION AND ORDER

HOLTE

, Judge

.

Plaintiff , originally proceeding pro se , accuses the government of infringing his patent. The government , along with noticed third

- party defendant s , filed three separate motions for summary judgment under Rule 5 6 of the Rules of the United States Court of Federal Claims on the following grounds: invalidity of plaintiff’s patent; the government’s counterclaim results in a forfeiture of plaintiff’s claim; and non

- infringement of plaintiff’s patent. This case was transferred to the undersigned Judge on 29 July 2019. All three motions are fully briefed. The
Court deferred consideration of the motion s for summary judgment on the issues of invalidity- 2

-

and non

- infringement pending resolution of the government’s motion for summary judgment on
the counterclaim. Oral argument was scheduled for 13 February 2020. Prior to oral argument,

p laintiff , now represented by counsel, file d a motion for reconsideration of th is Court’s 28 February 2018 order dismis sing certain claims for lack of standing

. The Court held oral argument on both the government’s motion for summary judgment on the counterclaim and plaintiff’s motion for reconsid eration on 4 September 2020 . For the following reasons, the Court DENIES the government’s motion for summary judgment on the counterclaim and DENIES plaintiff’s motion for reconsideration.

I. Factual History

The background and facts of this case are set out in t hree previous opinions by this c ourt: Haddad v. United States , No. 12

- 165 (Fed. Cl. 5 June 2012) (hereinafter Haddad 2012 ), Haddad
v. United States , 128 Fed. Cl. 373 (2016) (hereinafter Haddad I )

, and Haddad v. United States

, 136 Fed. Cl. 572 (2018) (hereinafter Haddad II ) . Any remaining facts necessary for resolving the present motion s are drawn from the parties ’ f ilings and

, unless otherwise noted, are undisputed.

U.S. P atent N o. 7,6 3 9,844 (the ‘ 844 patent) 1 issued to plaintiff Michael Haddad on 29
December 2009

. Haddad II

, 136 Fed. Cl. at 574

. In June 2009, the Transportation Security Agency (“TSA”) sought solicitation proposals for an “improved security system [] ” known as the

“ C redential Authentication Te chnology

- Boarding Pass Scanning System (‘CAT/BPSS’).” Compl. ¶ 13. Plaintiff, acting through his company Astornet Technologies, Inc. (“Astornet”), “submitted a proposal and was selected for testing and advanced to the next stage” of the
solicitation

. Ha ddad II

, 136 Fed. Cl. at 574 (internal quotation marks omitted) . Astornet was
not awarded the solicitation. Id. Following a delay in the procurement of the CAT/BPSS in June 2012, “the TSA issued a new solicitation

. . . seeking proposals for a slightly revised CAT/BPSS.” Id. (internal quotation marks omitted). Proposals for the new solicitation were due no later than 21 January 2014. Id.

In 2012

, with a case already pending in the United States District Court for the District of Maryland, Mr. Haddad filed a case in the Court of Federal Claims. See Haddad 2012 , No. 12

- 165 at 1 (order dismissing the case pursuant to 28 U.S.C. §1500). After plaintiff a cknowledged
the claims in both cases were based on the same operative facts

, the Court of F ederal Claims
action was dismissed without prejudice pursuant to 28 U.S.C. § 1500. Id

. at 2. While the Court of Federal Claims was considering the § 1500 dismissal, however, Mr. Haddad moved to dismiss the district court action with prejudice. Astornet Techs. Inc. v. BAE Systems, Inc. , 802 F.3d 1271, 127 4

– 7 5 (Fed Cir. 2015). After some procedural confusion, and obtaining counsel, the district court action was “reopened solely for the purpose of dismissing it without prejudice.” Id. (internal quotation marks and emphasis omitted).

1 Mr. Haddad on the first page of his complaint labels the patent as “U.S. Patent No. 7,649,844

, ” but on page two of his complaint he labels the patent as “U.S. Patent No. 7,639,844.” Compl. ¶ 1 , 5

. T he c orrect number is U.S. Patent No. 7,639,844. See U.S. Patent No. 7,639,844 B2, front page (“Inventor: Michael A. Haddad . . .”); U.S. Patent No. 7,6 4 9,844 B2, front page (“Inventors: Rajeev Bector . . . ; Sachin Jain . . . ; Ramana Mellacheruvu . . . ; Umesh Mahajan . . .”).- 3

-

On 27 January 2014, “Astornet filed a lawsuit for infringement of the ‘ 844 Patent . . . in the United States District Court for the District of Maryland,” hereinafter referred to as the “District of Maryland Litigation.” Ha ddad v. United States , 136 Fed. Cl. 572 (2018) . In the
District of Maryland Litigation, the complaint “alleged that Astornet was the sole exclusive licensee of, and owns all right, title, and interest to litigate in this matter . . . the ‘ 844 Patent.” Id. (internal quotation marks omitted). On 1 February 2014, plaintiff “signed another letter dated February 1, 2014,” hereinaf ter referred to as the “2014 Assignment.” Id

. The 2014 Assignment purported to “assign Astornet . . . the exclusive rights in [the] ‘ 844 [patent] to litigate the CAT/BPSS matter . . . in the United States Federal Court.” Id. Astornet was not awarded th e new solicitation. Id. The District of Maryland Litigation was dismissed in August 2014, see Astornet Techs. Inc. v. BAE Systems, Inc. , Nos. 14

- 245, 14

- 543, 14

- 547, 2014 WL 10919516 (D. Md. Aug. 28, 2014), and the dismissal was affirmed by the Federal C ircuit on 17 September
2015. See Astornet Techs. , 802 F.3d at 12 83

.

On 6 October 2015 , plaintiff “filed two pro se Complaints in the United States Court of Federal Claims for infringement of [the ‘ 844 patent]

. . . .” Haddad I , 128 Fed. Cl. at 374. I n Haddad I , plaintiff “was ordered to provide documentation to establish that, at the time the October 6, 2015 Complaints were filed, he owned the ‘ 844 Patent or it reverted to him, either by agreement with Astornet Technologies, Inc., or otherwise under r elevant state law.” Id. In response to this c ourt’s order, plaintiff provided a copy of the 2014 Assignment and represented the 2014 Assignment “was notarized on August 19, 2016.” Id. This c ourt found the 2014 Assignment insufficient to establish plaintiff’s individual ownership of the ‘ 844 patent at the time the complaints were filed

, as “ nunc pro tunc assignments do not confer retroactive patent ownership

. ” Id. (citing Diamond Coating Techs., LLC v. Hyundai Motor Am. , 823 F.3d 615, 621 (Fed. Cir. 2016) (“[plaintiff] asserts these nunc pro tunc agreements effectively establish Diamond's status as a patentee. . . . We conclude they do not.” ) )

. 2 Haddad I was dismissed for plaintiff’s failure to establish standing. Id.

Astornet execut ed a return assignment on 27 October 2016 (hereinafter the “Return Assignment”) , returning “all rights assigned to and/or acquired by Astornet in any form, in and to the [ ‘ 844 ] Patent, including the right to enforce the [ ‘ 844] Patent and to collect for any and all past damages.” Haddad II , 136 Fed. Cl. at 575. Plaintiff filed the complaint in th is cas e pro se on 6 March 2017. Id

. at 575 . Once again, the government moved to dismiss the case pursuant to
Rule 12 of the Rules of the Court of Federal Claims (“RCFC”) “for lack of subject matter jurisdiction and/or for failure to state a claim upon which relief may be granted.” United States’ Motion for Partial Dismissal Under RCFC 12(B)(1) and RCFC 12(B)(6) (“Def.’s Mot. for Partial
Dismissal ” ) , ECF No . 20 at 1

.

In response to the government’s motion to dismiss, plaintiff attached a copy of an assignment letter dated 1 May 2009 (the ‘2009 Assignment’) accompanied by “a signed and notarized statement dated July 10, 2017 (the ‘Notarized Statement’), executed by p laintiff, in his

2 The phrase “nunc pro tunc” is Latin for “now for the n.” Nunc pro tunc , Black’s La w Dictionary (11th ed. 2019). The phrase is generally used in a legal sense to confer “retroactive legal effect through a court’s inherent power.”
Id.- 4

-

personal capacity and in his capacity as ‘CEO/President’ of Astornet.” Haddad II

, 136 Fed. Cl.
at 57 6

. The 2009 Assignment app ointed Astornet the “exclusive licensee to pursue [the] TSA opportunity” concerning the CAT/BPSS. Id

. at 575. The Notarized Statement represented the original grant of an exclusive license from plaintiff to Astornet “ took place on May 1 st 2009,”
while fu rther indicating plaintiff “signed a letter dated 5/1/2009 granting Astornet . . . a license.”
Id. at 576

. As this c ourt previously noted, “plaintiff did not represent that he signed the [2009 Assignment] in 2014. Instead, p laintiff stated the licensing letter ‘was provided to Astornet on 5/1/2009. ’ ” Id. at 57 4 n.3.

This c ourt issued a show cause order on 22 Septem ber 2017, ECF No. 31, addressing an inconsistency with the 2009 Assignment: the 2009 Assignment listed the patent number of the

‘ 844 patent, despite being dated “more than six months before the ‘ 844 Patent would have been assigned its patent number.” Id. at 576

– 77. This Court ordered plaintiff to “explain[] how [he] knew the patent number of the ‘ 844 Patent on May 1, 2009.” Id. Plaintiff responded he “never affirmed . . . that he signed a letter ON 5/1/2009, but specifically signed a letter dated 5/1/20 09.”
Haddad II

, 136 Fed. Cl. at 577 (emphasis in original) . Plaintiff further stated the 2009 Assignment was prepared by his attorney “in 2014 [,] signed in [January] 2014, and predated to the period when [the TSA] issued the [original solicitation].” Id

. Plaintiff explained the 2009 Assignment was predated in this manner to permit plaintiff to file a patent infringement lawsuit
in district court. Id

. at 57 4 n.3. T his c ourt found plaintiff’s explanation “inconsistent with prior representations to the c ourt” in which p laintiff indicated “the Licensing Letter was written . . . prior to June 2009

. ” Id . at 581

– 82. As a result, the court determined “that the [2009 Assignment] does not meet the requirements of [the Federal Rules of Evidence 901(a) ]” for “authenticating or identifying an item of evidence” which requires “the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.’” Id

. at 58 2

– 8 3

.

In Haddad II , this c ourt found the Assignment of Claims Act, 31 U.S.C. § 3727, barred plaintiff from recovering for any infringement arising prior to 27 October 2016 (the date the Return Assignment wa s executed ), r egardless of the effect of the 2009 Assignment

. Id. at 584. Plaintiff’s claims of patent infringement prior to 27 October 2016 were dismissed for a failure to “establish the court’s jurisdiction under 28 U.S.C. § 1498(a).” Id.

II. Procedur al History

Plaintiff filed the present complaint on 6 March 2017. See Compl. On 3 May 2017, this Court issued notices to interested third parties BAE Systems Information Solutions, Inc., NCR Government Systems, LLC, Trans Digital Technologies, Inc. (“Trans”) , and MorphoTrust USA

, Inc

. (“Idemia”). 3 See Notice, ECF No. 11. On 28 February 2018, this Court dismissed plaintiff’s claims for patent inf

ringement accruing prior to 27 October 2016. See Memorandum Opinion and Order Granting the Government’s Motion for Partial Dismissal , ECF No. 39 at 15

.

3 MorphoTrust USA, Inc. has also been referred to as MorphoTrust USA, LLC throughout these proceedings.
P ursuant to the RCFC 7.1 disclosure statement filed 15 March 2019, the previous MorphoTrust entity is now identified in these proceedings as Idemia Identity & Security USA LLC. See Idemia Identity & Security USA
LLC’s Su pplemental RCFC 7.1 Disclosure Statement, ECF No. 61

.- 5

-

The government answered the complaint on 13 July 2018

. See Answer, ECF No. 44. In its answer, the government alleged a counterclaim against plaintiff pursuant to the special plea in fraud statute, 28 U.S.C. § 2514: “ [p] laintiff practiced or attempted to practice fraud against the United States in proof, statement, establishment, or allowance of a clai m against the United
States

. . . . ” Id. at ¶¶ 63

– 64. According to the government, plaintiff thereby forfeited his claims against the United States

. Id. at ¶ 63. P laintiff responded to the government’s counterclaim on 1 August 2018

, denying all allegations of fraud and further included his own counterclaim accusing the defendant of “trying to induce the court into falsified information that has no basis” and “using its power as an official entity to affect the decision of the court.” Reply to D efendant
Answer (“Def.’s Answer to Gov’t Countercl.”)

, ECF No. 4 6 at 1

– 2 . On 19 December 2018, plaintiff amended his answer to the government’s counterclaim

, responding to the government’s
counterclaim in more detail and requesting the Court to dismiss th e government’s counterclaim

. See Motion to Dismiss Defendant Counterclaims and Request for Case Documentation (“MTD Def.’s Countercl.”)

, ECF No. 52.

On 27 July 2018, this c ourt dismissed third

- party defendants BAE Systems Information Solutions, Inc. and NCR Government Systems, LLC. See Order Dismissing Third

- Party
Defendants , ECF No. 45

. On 26 October 2018 , still proceeding pro se , plaintiff filed a motion to dismiss the case without prejudice. See Plaintiff’s Motion for Entry of Order Dismissing Case Without Prejudice, ECF No. 47. Plaintiff stated he was not “able to defend this case properly,”
and further indicat ed his intent “to file the case, at a future time, represented by a legal counsel, based on similar facts.” Id. at 1. This Court denied pl aintiff’s motion to dismiss the case without prejudice because “[i ]f the court dismisses Plaintiff’s claim against the Government, the Government’s counterclaim can no longer ‘remain pending for independent adjudication.’” Memorandum Opinion and Order, ECF No. 51 at 2 (quoting RCFC 41(a)(2)).

On 30 April 2019 , the go vernment filed a motion for summary judgment on its
counterclaim. See Motion for Summary Judgment on Defendant’s Counterclaim Arising Under 28 U.S.C. § 2514 (“MSJ on Countercl

. ”), ECF No. 65. On 20 May 2019, plaintiff filed a response to the government’s motion for summary judgment. See Reply to Defendant’ Motion for Summary Judgement on Counterclaim and Invalidity of 844’ [sic] Patent (“Resp. to MSJ on
Countercl

. ”), ECF No. 66. Plaintiff further filed a cross

- motion for summary judgment on the

governme nt’s counterclaim on 20 May 2019. See Motion to D ismiss Defendant Counterclaims and Request for Case Documentation (“Cross

- MSJ on Countercl

. ”), ECF No. 67. 4

4 Originally filed as a motion to dismiss the government’s counterclaim, the c ourt deemed plaintiff’ s second 20 May 2019 filing, ECF No. 67, as a cross

- motion for summary judgment. See Order, ECF No. 68. Given language in plaintiff’s response to the government’s motion for summary judgment, ECF No. 66, referencing ECF No. 67 as Exhibit 1 to that filing, it appears the docketing of ECF No. 67 as a cross

- motion for summary judgment was done in error. This is further supported by the fact ECF No. 67 is an identical document to plaintiff’s amended answer, ECF No. 52, filed 19 December 2018. At oral argumen t it was clarified and agreed by both parties ECF No. 67 was identical to ECF No. 52 and was filed simply in opposition to the gov ernment’s summary judgement motion and
was not intended to be a cross

- motion for summary judgement. See Tr. at 15:10

– 24. Acc ordingly, plaintiff’s Cross Motion for Summary Judgment, ECF No. 67, is denied as moot and considered as part of plaintiff’s opposition to
the g overnment’s summary judgement motion

. The Court thus addresses only the government’s motion for summary judgmen t on the counterclaim, taking account of all briefing associated with the counterclaim and plaintiff’s previously recognized cross

- motion for summary judgment on the counterclaim.- 6

-

The government filed a reply in support of its motion for summary judgment on the
counterclaim a nd a response to plaintiff’s cross

- motion for summary judgment on the
counterclaim on 24 June 2019. See Defendant’s Combined Reply in Support of its Motion for Summary Judgment on Defendant’s Counterclaim Arising Under 28 U.S.C. § 2514 and Response to Pla intiff’s Cross

- Motion for Summary Judgment on Defendant’s Counterclaim (“Gov’t Reply in Supp. of MSJ on Countercl. ”), ECF No. 7 5

. P laintiff filed on 24 June 2019 a

sur

- reply to the government’s motion for summary judgment on the counterclaim. See Reply t o Defendant’ Reply in Support of Motion for Summary Judgment of Invalidity by Defendant the
United States and Third

- Party Defendants Trans Digital Technologies LLC and Idemia Identity & Security USA LLC (“Pl .’s First Sur

- Reply”), ECF No. 76. On 1 July 201 9, plaintiff filed a reply to the government’s response to plaintiff’s cross

- motion for summary judgment on the
counterclaim. See Reply to Defendant’s Combined Reply in Support of its Motion for Summary Judgment on Defendant’s Counterclaim Arising Under 2 8 U.S.C. § 2514 and Response to Plaintiff’s Cross

- Motion for Summary (“Pl .’ s Second Reply”), ECF No. 79. This case was reassigned to the undersigned Judge on 29 July 2019

. See Order, ECF N o. 81.

Third

- party defendants Idemia and Trans’ have also filed joint motions for summary judgment on the issues of patent invalidity and non

- infringement. See Mot. for Summ. Judgment of Invalidity by Def. the U.S. and Third

- Party Defs . Trans Digital Tech. LLC and Idemia Identity & Security USA LLC, ECF No. 63; Mot. for Summ. Judgment of Non

- Infringement by Def. the
U.S. and Third

- Party Defs. Trans Digital Tech. LLC and Idemia Identity & Security USA LLC,
ECF No. 88. On 25 October 2019 , this Court stayed consideration of Idemia and Trans’ motions for summary judgment pending resolution of the government’s motion for summary judgment on
the counterclaim. See Order, ECF No. 92.

Oral argument on the government’s motion for summary judgme nt on the counterclaim and plaintiff’s cross

- motion for summary judgment on the counterclaim was set for 25
November 2019. See id

. This Court canceled the 25 November hearing on 20 November 2019

, noting “the Court anticipates forthcoming filing from plai ntiff regarding plaintiff’s attempts to obtain counsel.” Order, ECF No. 95 at 1

. 5 On 27 January 2020, the C ourt set oral argument to be held 13 February 2020 , recognizing plaintiff’s “desire to be represented by counsel at oral argument

. ” Order, ECF No . 9 7 at 1.

On 6 February 2020, p laintiff, now represented by counsel, filed a m otion for

r econsideration of th is Court’s 28 February 201 8 order dismissing claims for patent infringement accruing prior to 27 October 2016. See Motion for Reconsideration of February 28, 2018 Order (“Mot. for Recons.”), ECF No. 98 . Plaintiff asks the Court to reconsider the 28 February 2018
order because: (1) “Mr. Haddad’s claims against the United States arose in 2012 at the latest” ; (2) “the Assignment of Claims Act, 31 U.S.C. § 3727(b) , . . . rendered ineffective all of his

5 On 2 December 2019, plaintiff filed an unopposed motion to postpone the 25 November hearing for 30 days, explaining “[t]his delay would help Plaintiff to secure a counsel for representing Plaintiff in this Court.” Motion, ECF No. 96 at 1. Although this filing was not received and docketed by the Clerk’s Office until 2 Decemb er 2019, plaintiff’s filing is dated 13 November 2019. The delay in receiving plaintiff’s filing seeking to postpone the 25 November hearing resulted in the Court’s 20 November 2019 order preemptively granting plaintiff the very relief sought in his 2 Dec ember 2019 motion. Accordingly, the Court found no occasion to rule on plaintiff’s 2 December
2019 motion.- 7

-

assignments after 2012 , including his 2014 assignment and his later re

- assignment ” ; and (3) his previous claims “should not have been dismissed as having been assigned to non

- party Astornet in January 2014. ” Id at 1 (emphasis in original )

.

The p arties expressed disagreement regarding how plaintiff’s motion for reconsideration would affect the 13 February oral argument in a joint status report filed 11 February 2020. See Joint Status Report, ECF No. 10 0 at 1 , 3

. The Court thus canceled the 13 February oral argument, ordering the parties to confer and submit a joint status report “providing a proposed briefing schedule for plaintiff’s motion for reconsideration, as well as a proposed date for oral argument addressing” both the government’s motion for summary judgment and plaintiff’s motion for reconsideration. Order, ECF No. 101 at 2

. On 25 February 2020, the Court set a briefing schedule for plaintiff’s motion for reconsideration to conclude on 29 May 2020, with oral argu ment to be scheduled no sooner than 25 June 2020. See Order, ECF No. 103.

Pursuant to the 25 February 2020 order, the Government filed a response to Plaintiff’s
motion for reconsideration on 15 May 2020

. See Def s

. ’ Opp ’ n to Pl

. ’s Mot

. for Recons

. of
F ebruary 28, 2018 Order (“Gov’s Response to Mot. for Recons.”) , ECF No. 105

. On 29 May 2020, p laintiff filed a reply in support of the motion for reconsideration

. See Reply in Support of Motion for Reconsideration of February 28, 2018 Order (“Reply in Sup p

. of Mot. for Recons.”)

, ECF No. 107

. Oral argument on both the government’s motion for summary judgment on the counterclaim and plaintiff’s motion for reconsideration was scheduled for 1 July 2020

. See Order, ECF No. 106. On 5 June 2020, the Chief Judge of the Court of Federal Claims issued a general order indicating “[a]ll proceedings in this c ourt scheduled to occur before July 6, 2020, shall be held by telephone conference or video conference

. . . .” General Order (Jun e 5, 2020). In response to the general order, the Court contacted the parties to determine whether they preferred to move forward with either a telephonic or videoconference proceeding, or alternatively to postpone oral argument until the National Courts Building reopened for proceedings. Upon request of the parties, the Court rescheduled oral argument for 15 July 2020.
See Order, ECF No. 108. On 26 June 2020, the prohibition on in

- person proceedings at the National Courts Building was extended until 14 August 2020. See Order Restricting Court Access to the National Courts Building Until August 14, 2020 (June 26, 2020). Oral argument scheduled for 15 July 2020 was thus canceled. See Order, ECF No. 109

. Oral a rgument was held on 4 September 2020

. See Order, ECF No. 110.

III. The Government’s Motion for Summary Judgment on Its Counterclaim Pursuant to 28 U.S.C. § 2514

A. Applicable Law

1. Legal Standard for Summary Judgment

RCFC 56(a) states “[t]he court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” This Court’s interpretation of the 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 J uly 1, 2019 ) (“ [I] nterpretation of the court's rules will be- 8

-

guided by case law and the Advisory Committee Notes that acco mpany the Federal Rules of Civil Procedure.”). A grant of summary judgment is proper when the moving party, based on the evidence and materials in the record, “show[s] that there is no genuine issue as to any material fact and that the moving party is ent itled to a judgment as a matter of law.” Celotex Corp. v.
Catrett , 477 U.S. 317, 322 (1986) (internal quotation marks omitted). “Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted.” Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 24 8 (1986).

2. Legal Standard for Applying the Forfeiture Statute, 28 U.S.C. § 2514

Pursuant to 28 U.S.C. § 2514, “[a] claim against the United States shall be forfeited to the United States by any person who corruptly practices or attempts to practice a ny fraud against the United States in the proof, statement, establishment, or allowance thereof.” The government is tasked with an elevated burden to establish the perpetuation of fraud on the United States. “To prevail under § 2514, the government must ‘establish by clear and convincing evidence that the [party alleged to have undertaken fraud] knew that its submitted claims were false and that it intended to defraud the government by submitting those claims. ’” Daewoo Eng’r. and Constr. Co., Ltd. v. Uni ted States , 557 F.3d 1332, 1341 (Fed. Cir. 2009) (quoting Comm ercial Contractors, Inc. v. United States , 154 F.3d 1357, 1362 (Fed. Cir. 1998)). When such fraud occurs, this Court “shall specifically find such fraud or attempt and render judgment of
forfei ture.” 28 U.S.C. § 251 4.

“A valid cause of action under [the forfeiture statute ] must be tied to the submission of a claim, whether in producing false proof to support a claim . . . or in falsely establishing the claim.” Kellogg Brown & Root Servs. v. United State s , 728 F.3d 1348 , 1366 ( Fed. Cir. 2013) (quoting Kellogg Brown & Root Servs. v. United States , 99 Fed. Cl. 488, 501, (2011)) (internal citations omitted)

. “Mere negligence, inconsistency, or discrepancies are not actionable” under 28 U.S.C. § 2514. Oasis Int’l Waters, Inc. v. United States , 134 Fed. Cl. 405, 428 (2016)

. “Once fraud is established, ‘[t]he use of the word “shall”

. . . makes the judgment of forfeiture obligatory on the court; the court has no discretion to turn a blind eye to an attempt, whether successful or not, to commit fraud in the statement of a claim against the United States.’” Id. at 429 (quoting Am. Heritage Bancorp v. United States , 61 Fed. Cl. 376, 385 (2004)).

B. Parties’ Arguments

The government seeks summary judgment on its counterclaim pursuant to 28 U.S.C. §
2514 , arguing plaintiff made “misleading statements and submitt[ed] to the Court at least one document containing information that was false for the purpose of practicing a fraud on the United States in the proof, statement, establishment or allowance of his claim.” See MSJ on
Countercl

. at 1. The alleged fraud includes plaintiff’s submission of the 2017 Notarized
Statement

, w hich the government argues contained “a misleading statement by Mr. Haddad

. . . in the second paragraph [saying] ‘Whereas Mr. Haddad certifies that as per the record that he signed a letter dated May 1 st

, [ 20 0 9 ] granting Asto r net Technologies a license.’” Tr. at 18:3

– 7.- 9

-

The government advances the 2009 Assignment a s the “ false proof ” of this misleading

statement. Tr. at 18:10

– 12

. The government argues “[e]ven [Mr. Haddad’s] own post hoc explanation

— that the 2009 Assignment was actually signed in January 2014 and backdated to May 2009

—

provides clear and convincing evidence that Mr. Haddad knew he was attempting to mislead the Court through the documents he submitted to the Court and the statements about
those documents

. ” Se e MSJ on Countercl. at 1 0 (internal citations omitted). 6

The government argue s the 2017 Notarized Statement and the 2009 Assignment were “an attempt of Mr. Haddad to try and recapture even more claims against the Government” and further emphasis that “[Mr. Haddad] could have explained how they came about in his statements to the court. He did not.” Tr. at 36: 18

– 25. The government argues further that ha d the patent number not bee n on the 2009 Assignment, then both the government and the Court would have accepted the 2009 licensing letter as having been executed in 2009, thus recapturing
those claim s previously dismissed in Haddad I

. Tr. at 42: 10

– 1 9

. Th e government argues § 2514 necessitates forfeiture of Mr. Haddad’s entire claim. See MSJ on Countercl. at 9 (“[t]he use of the word ‘shall’ [in § 2514] makes the judgment of forfeiture obligatory on the court [if fraud against the United States is shown]. ” (citation and quotation marks omitted)).

Plaintiff denies all allegations of fraud throughout his several filings

. See Resp. to MSJ on Countercl. at 3 (“Plaintiff committed NO FRAUD in the matter, not in the letter, nor in any
other document presented to this court.”) (emphasis in original )

. During o ral a rgument, counsel for plaintiff reiterated plaintiff did not commit fraud. See Tr. at 20:7

– 11 (“[The 2009 Assignment] was intended to be something that we could represent truthfully to the Co urt that Astornet had all the relevant rights to proceed in that case, but nothing more than that.”)

. Plaintiff’s counsel also noted Mr. Haddad, as a pro se plaintiff, had filed documents which are “confusing, but not fraud.” Tr. at 21:25

– 22:5 (“[P]ro se plaintiffs do a lot of things on their own and they can create a lot of confusion

. . . at the end of the day with all of the inferences drawn in our favor, I think what we’ve got is a set of documents that are confusing, but not fraud.”); see also id . at 37:5

– 7 (“Obviously a lot of confusion resulted from [The 2009 Assignment] , but

. . . I don’t think this is fraud.”); id. at 37:1 4

– 16 (“Mr. Haddad drafted things when standing alone are confusing, but I don’t think they’re fraud.”). At oral argument, p laintiff’s counsel advanced separate arguments relating to the 2017 Notarized Statement and the 2009 Assignment. Regarding the 2017 Notarized Statement, p laintiff’s counsel was unable to provide direct knowledge of p laintiff’s intent. 7 Tr. at 29:20

– 22. Plaintiff’s counsel instead represented his
belief

, through drawing “reasonable inferences

, ” is p laintiff intended the factual statements in the

6 The government further points to this Court’s opinion in Haddad II to support these allegations, stating “Judge Braden has already made specifi c findings as to the false nature of the May 2009 Licensing Letter.” Id . at 9 (citing Haddad II, 136 Fed. Cl. a t 582

– 584 ) . The government also contends “Mr. Haddad’s previous presentation (and reliance upon) the February 2015 Assignment Letter in the 2015 Court of Federal Claims action . . . provides additional grounds for forfeiture.” Id . at 1 1

. 7 During the filing peri od with this Court and at the time the 2017 Notarized Statement was drafted, Plaintiff was pro

se , and at Oral Argument Plaintiff was represented by counsel. Plaintiff’s counsel was unable at Oral Argument to speak to the Plaintiff’s direct knowledge and i ntentions at the time of filing the 2009 Assignment and 2017
Notarized Statement with this C ourt. Tr. at 25:11

– 12. Plaintiff’s counsel was also unable at Oral Argument to speak to the Plaintiff’s direct knowledge and intention when the 2017 Notarized Sta tement was created. Tr. at
29:18

– 22.- 10

-

2017 Notarized Statement to “ be used as a preamble, to sort of set the situation.” Tr. at 30:14

– 16

, 34:3

– 4.

Regarding the 2009 Assignment, p laintiff ’s counsel clarifie s the 2009 Assignment was originally drafted for use in the District of Maryland L itigation. Tr. at 19:14

– 1 8

. Plaintiff ’s
counsel , the original drafter of the 2009 Assignment, argue s the purpose of the 2009 Assignment

was to create a retroactive assignment

. 8 Tr. at 23:7

– 14. Plaintiff’s counsel further emphasized

, had he been representing Mr. Haddad at the time the 2009 Assignment was produced in response
to the sh ow cause order of 22 September 2017, he would have additionally produced a chain of emails to show the intent of the 2009 Assignment was to create the retroactive assignment. Tr

. at 23:7

– 24:2

, 37:2

– 7. Plaintiff’s counsel concludes : “the record here is im mense, but not something that’s beyond a reasonable doubt

. . . you know

, clear and convincing evidence, drawing inferences in our favor, finding intent on Mr. Haddad’s behalf.” Tr. 46 :6

– 1 0

.

C. Analysis of Summary Judgment Pursuant to § 2514 Forfeiture Statute

W hen analyzing a motion for forfeiture due to fraud against the government under §
2514 , the government must show, through clear and convincing evidence

, not only that it was
known by the party opp osing the government’s motion the facts in question were false, but also
that these facts were submitted with the intent by the party to defraud the government. See Daewoo Eng’r. , 557 F.3d at 1341. Here, the government does not argue plaintiff’s statemen ts are “false” statements , but rather asserts plaintiff made “misleading” statements to the court

. See
Tr. at 39:17

– 22 (“I would say that Mr. Haddad probably didn’t perjure himself in signing this 2017 ownership statement. It appears to be a true stateme nt, but even though it’s a true statement, it was a misleading statement, and that’s something to look at under 28 U.S.C. 2514.”)

. The government can only identify a single case where this c ourt found the government
satisfied its burden under § 2514 at the summary judgment stage: H e ger v. United States , 112
Fed. Cl

. 224 (2013)

. In Heger

, plaintiff “steadfastly contended that he had no income whatsoever, and furthermore that he was unemployed during the relevant time periods

. ” Heg er , 112 Fed. Cl at 229. T he evidence proffered by the government , however, affirmed plaintiff was “in actuality employed by at least two different companies during that time.” Id . Accordingly,
th e court found § 2514 was satisfied when one of the claims m ade by the plaintiff was “proven to be patently false

, ” and the false claim was made with the intent to defraud the Court

. Id. at 229

– 30

. Here, t he government admits plaintiff’s statement in the 2017 Notarized Statement is not inherently false , but rather “putting a gloss on the truth

. ” Tr. at 43:2 0

– 2 1

. The government offers up the 2009 Assignment as proof of the misrepresentation in the 2017 Notarized
Statement. Tr. at 18:10

– 12.

W hether a misleading , but not false, statement is sufficient to trigger application of §
2514 is a novel question before this Court. In order to resolve the present dispute, however, the
Court need not decide th e issue at this time

. Assuming the premise a misleading statement, which is not false, is sufficient to tr igger application of § 2514, the Court moves on to consider
whether plaintiff ’s intent in submitting the 2017 Notarized Statement

, along with the 2009 Assignment

, was “to defraud the government by submitting those claims.” Daewoo Eng ’ g

. , 557

8 Plaintiff’s counsel was under the impression that a nunc pro tunc assignment was allowed

, but acknowledged Judge Braden had ruled a nunc pro tunc assignment cannot confer patent ownership

. See Tr. at 24: 21

– 25.- 11

-

F.3d at 1341. At the s ummary j udgment stage , as the government noted during oral argument, it is inappropriate to directly question a plaintiff represented by counsel regarding his intent behind
certain actions

. Tr. at 25:11

– 24. Therefore, the only evidence of plaintiff’s intent at this stage is

to “ link inferences drawn from each proffered fact and offer the whole as clear and convincing evidence that [the party] committed fraud

. . . .” Liquidating Tr. Ester Duval of KI Liquida tion v. U nited States , 89 Fed. Cl. 29, 42 (2009) ( denying the government’s summary judgment motion
on the issue of fraud because “the inferences that [the government] asks the court to draw from
those facts [proffered by the government] are too attenuated ); 9 see also Kamen Soap Products
Co. v. United States , 129 Ct. Cl. 6 19, 644 (1954) ( Ruling the plaintiff committed fraud after a
trial revealed “ a number of

. . . circumstances from which [the court] must conclude that the questioned documents are inconsistent with and contrary to the established facts” )

. 10

In examining the evidence on the record, this C ourt must draw all inferences in “the light most favorable to the party opposing the motion.” Mat sushita Elec. Indus. Co. v. Zenith Radio Corp. 475 U.S. 574, 587 ( quoting United States v. Diebold, Inc. , 369 U.S. 654, 655 (1962)).

9 In Liquidating , the government moved for summary judgment based on “the factual assertion that [plaintiff] falsely certified that it had paid its ‘subcontractors and suppliers in the mont hly progress payment requests’ that were submitted to [the government].” Liquidating Tr. Ester Duval of KI Liquidation , 89 Fed. Cl. at 37

. The court found plaintiff established, by “proffer of and citation to numerous record documents,” the government knew plaintiff did not have enough money to pay it s subcontractors and supplie r s, and the government’s knowledge “preclude[d] [the government] from establishing intent as a matter of fact and law.” Id. at 42. The court also found defendants fa iled to offer sufficient facts in support of its fraud claim, as “the inferences that defendant asks the court to draw from those facts are too attenuated: [plaintiff] was paid all the money billed for line item STF 1074; line item STF 1074 was the only li ne item that included the amounts billed by [plaintiff’s subcontractor] and owed to this supplier for supplies; [plaintiff] did not pay [plaintiff’s subcontractor] the full amount invoiced for supplies; therefore, [plaintiff]
knew that its submitted and ce rtified invoices were false, and [plaintiff] intended to defraud [the government] by submitting those claims in order to induce payment.” Id. Accordingly, the court held the government did not provide “clear and convincing evidence that [plaintiff] comm itted fraud under 28 U.S.C. § 2514” and denied the government’s summary judgment motion. Id. at 42

, 44.

10 In Kamen Soap Products Co., the government filed a special plea in fraud, which was the sole issue before the
court at trial. 129 Ct. Cl at 622. The government’s special plea in fraud was based on seven interoffice memoranda that allegedly had not been prepared in 1947, as claimed by plaintiff. Id. at 639. The court found “[t]he undisputed evidence shows that the originals of the seven interoffice m emoranda ” could not have actually been prepared before
1949. Id. at 641. When faced with this evidence, plaintiff “ denied that he had represented that the questioned
documents were the true documents prepared in 1947, but said

. . . he meant only that t he contents of the questioned
memoranda were the same as those of the true documents. ” Id. at 642. The court was thus “face to face with the question of whether fraud was practiced in the presentation of [plaintiff’s] claim ” that the contents of the questioned
memoranda were the same as those of the true documents

. Id. The court noted “[o]rdinarily fraud can only be established from circumstances,” which “must be clear and convincing.” Id. The court made the following factual finding s : (1) “ plaint iff had [ n ] ever referred to any of the questioned documents until after [the government] had advised plaintiff's attorney on September 15, 1948 ;” (2) “ in his letter of September 22, 1949, [plaintiff] made the unqualified statement that he was transmitting photostatic copies of four of the memoranda of 1947 that he had
located in his files ;” and (3) “[a] fter it had been established beyond any question that

. . . the seven interoffice
memoranda

. . . were prepared in 1949, plaintiff offered no evidence in exp lanation of its inability to produce any one of these 14 documents which it says were prepared in 1947. ” Id. at 642

– 43. Based on these findings, t he court “[found] it altogether strange that if plaintiff located and had copies made of the true documents, it was unable to produce a witness who prepared or saw any of the 1947 documents, or who made any of the copies which the evidence shows without dispute to have been prepared in 1949 .” Id. at 644. Moreover, the court had “ pointed out a
number of other c ircumstances from which we must conclude that the questioned documents are inconsistent with and contrary to the established facts. ” Id. Accordingly, the court “ reluctantly

. . . [found] that fraud was practiced in
the presence of [plaintiff’s] claim ” that the contents of the questioned memoranda were the same as those of the true
documents

. Id. at 645. The government’s special plea of fraud was therefore sustained, and the claim forfeited

. Id.- 12

-

This C ourt

, based on the record

, must therefore draw a reasonable inference regarding plaintiff’s
intent in considering these documents in the light most favorable to plaintiff. In Heger , the court inferred the intent of Mr. Heger to defraud the government from the record because two
documents in the record (the false statement that Mr. Heger was unemployed and the
docume ntation which showed he was employed) showed “explicitly and convincingly that Mr. Heger has attempted to mislead the court to further his quest to avoid paying taxes.” 112 Fed.
Cl. at 230. Such “explicit[] and convincing[]” evidence does not appear in t he record before the
Court here

. Id. The government attempts to point to the 2009 Assignment as such evidence

, and the 2017 Notarized Statement as the “false proof

. ” Tr. at 18:10

– 12, 42:5

– 7. The government argues plaintiff submitted the 2009 Assignment and 2017 Notarized Statement with the intent to “demonstrate standing to recover on his claims on this case.” MSJ on Countercl. at 12.

Plaintiff’s counsel represented at oral argument the 2009 Assignment was believed to be
authentic under the incorrec t belief that nunc pro tunc assignments can occur. Tr. at 24:7

– 22

. Plaintiff also argues the 2009 Assignment was authentic in his pro se reply. Resp. to MSJ on
Countercl. at 2

– 3. Plaintiff argues “ I think what we’ve got is a set of documents that are

c onfusing, but not fraud

. ” Tr. at 21:25

– 22:5 (“[P]ro se plaintiffs do a lot of things on their own and they can create a lot of confusion

. . . at the end of the day with all of the inferences drawn in our favor, I think what we’ve got is a set of documents that are confusing, but not fraud.”); see also id . at 37:5

– 7 (“Obviously a lot of confusion resulted from [The 2009 Assignment] , but

. . . I don’t think this is fraud.”); id. at 37:1 4

– 16 (“Mr. Haddad drafted things when standing alone are confusing, but I don’t think they’re fraud.”) ; id . at 35:16

– 20 (“[Mr. Haddad] executed a second document to confirm, in fact, that he had returned rights to h imself and created a preamble that had these statements in it that I think are inartful, but I don’t think are fraud.”)

.

The government fails to offer sufficient facts , as those proffered by defendants in Heger ̧

to show “explicitly and convincingly that [ plaintiff ] has attempted to mislead the Court ” to further plaintiff’s argument. Heger, 112 Fed. Cl. at 230. Both plaintiff’s counsel and plaintiff, when acting pro se, manifest the 2009 Assignment was executed by plaintiff under a mistaken
belief of la w, but not with the intent to defraud the court or the government. See Resp. to MSJ
on Countercl. at 2

– 3 and Tr. at 21:25

– 22:5

. Drawing all inferences in plaintiff’s favor, th e government is unable to show, by clear and convincing evidence, plaintiff, when proceeding pro

se , intended to mislead the government in the submission of the 2009 Assignment and 2017 Agreement. A “genuine issue as to [a] material fact” related to the g overnment’s counterclaim therefore exists, and the government’s motion for summary judgment pursuant to the counterclaim under 28 U.S.C. § 2514 must be denied. Celotex , 477 U.S. at 322 (stating there can be no genuine dispute as to any material fact for a court to rule in favor of a motion for summary judgment).

IV. Plaintiff’s Motion for Reconsideration of the February 28, 2018 Order Granting the
Government’s Motion for Partial Dismissal

A. Legal Standard for Motion for Reconsideration

RCFC 59(a)(1) provides the Court may grant a motion for reconsideration: “(A) for any reason for which a new trial has heretofore been granted in an action at law in federal court; [or]- 13

-

(B) for any reason for which a rehearing has heretofore been granted in a suit in equity in federal
court.” Motions for reconsideration “may not be used to relitigate old matters, or to raise arguments or present evidence that could have been raised prior to the entry of judgment.” Exxon Shipping Co. v. Baker , 554 U.S. 471 , 485 n.5 (2008) (quoting 11 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 2810.1 at 127

– 28 (2d ed. 1995)). “Motions for reconsideration must be supported ‘by a showing of extraordinary circumstances which justify relief.’” Caldwell v. United States , 391 F.3d 122 6 , 1235 (Fed. Cir. 2004) (quoting Fru

- Con Constr. Corp. v. United States , 44 Fed. Cl. 298, 300 (1999 ), aff’d , 250 F.3d 762 (Fed. Cir. 2000) (per curiam)).

“Under [RCFC] 59(a)(1), a court, in its discretion, ‘may grant a motion for reconsideration when there has been an intervening change in the controlling law, newly discovered evidence, or a need to correct clear factual or legal error or prevent manifest injustice.’” Biery v. United States , 818 F.3d 704, 711 (Fed. Cir. 2016) (quoting Young v. United
States , 94 Fed. Cl. 671, 674 (2010)). “Manifest, as in manifest injustice, is defined as clearly

app arent or obvious

, ” and a party “seek[ing] reconsideration on the ground of manifest injustice

. . . cannot prevail unless it demonstrates that any injustice is apparent to the point of being almost indisputable.” Lucier v. United States , 138 Fed. Cl. 793, 799 ( internal citations and quotation marks omitted)

.

B. Parties’ Arguments

Plaintiff presents three fundamental arguments in support of its motion for
reconsideration of the court’s 28 February 2018 order . First, p laintiff argues “Mr. Haddad’s claims against the United States arose in 2012 at the latest . . . and thus should not have been dismissed as having been assigned to non

- party Astornet in January, 2014.” Mot. for Recons. at
1. Plaintiff supports t his by st ating “[government’s prior counsel] implicitly conceded [ plaintiff
had a claim in 2012 ] by failing to dismiss [the earlier] claim as many years premature” and instead “mov[ed] to have it dismissed for lack of jurisdiction

. ” Id. at 2

– 3. Plaintiff characte rizes the government’s current position in this case as “inconsistent” with that taken in Haddad 2012

, which was ultimately dismissed pursuant to 28 U.S.C. § 1500. Id. at 3

.

Second, plaintiff seeks to invoke the Assignment of Claims Act to void any prev ious assignments of the ‘ 844 patent from Mr. Haddad to Astornet, or vice versa. Mot. for Recons. at
8. Plaintiff argues the Assignment of Claims Act operates in the following way:

THE COURT: Is that how the Assignment of Claims Act works?

MR. MASON: Ye ah. My understanding is that when you have a claim against the Government, that you are not allowed to assign it, unless under a certain condition, which is actually if the claim is allowed, the claim isn’t decided, and they weren’t apparent
when the clam was issued. So Mr. Haddad had actually brought suit, adding that Mr. Haddad had won a suit here in the Court of Claims and been issued a judgment, at that point he could assign whatever he wanted, as opposed to those conditions being tru e at the time. A t the time he had a potential claim for infringement, but not an issued warrant- 14

-

on the side of the Court. And so therefore under 3727, it could not be assigned back when it was not assigned out in the first place.

Tr. at 47: 18

– 48:8

. Plaintiff argues “th e Assignment of Claims Act would have barred both Mr. Haddad’s 2014 assignment to Astornet as well as his assignment back in which case Mr. Ha ddad
has in fact always had possession of these claims.” Mot. for Recons. at 3

. Plaintiff argues
because he had valid claims against the government in 2012, both his 2014 assignment to Astornet and Astornet’s 2016 assignment back to p laintiff “[were] ineffective given the Assignment of Claims Act” barred such assignments. I d . Plaintiff notes “Mr. Haddad’s assignme nts . . . do satisfy the Act on its plain language and so while the Act’s purposes are surely important to issues where plain language is ambiguous, they do nothing to undermine

p laintiff’s position that neither of Mr. Haddad’s assignments should be given force or effect against the United States.” Reply in Supp. of Mot. for Recons. at 7. Plaintiff asserts :

[T]he assignment was effective and we were allowed to proceed in a lawsuit against private parties, but the portion of the assignment that covered the actual claims against
the United State s Government, which is what we’re pursuing here and are the only things left in this case, it was ineffective as to that. We were not allowed to assign those claims. It’s really hard to assign both things , private claims as well as claims against the
Government.

Tr. at 50:24

– 51:7. Plaintiff argues his understanding of the Assignment of the Claims Act is based solely on the plain language of the act and offers no case law to support this position. See
T r . at 48:12

– 13.

Finally, plaintiff argues the government induced infringement of various government contractors pursuant to 35 U.S.C. § 271, and plaintiff further argues this inducement of infringement provid es an alternative start date on which the gove rnment’s infringement allegedly began: as early as 2011. Reply in Supp. of Mot. for Recons. at 2 . Plaintiff states the government infringed the ‘ 844 patent prior to 2012 by actively inducing third parties as defined in 35 U.S.C. § 271(a) and (b). Mot. for Recons. at 6. Specifically, p laintiff claims the following
affirmative acts constitute inducement by the TSA: “(1) enter [ing] into three contracts for delivery of CAT/BPSS systems on September 30, 2011” ; and “(2) conduct [ ing ] pilot tests of these systems in three different airports in early 2012.” Reply in Supp. of Mot. for Recons. at 2 (internal quotation marks omitted). Plaintiff further argues the government waived sovereign immunity in this case because “the Federal Circ uit [] completely up

- ended [and expanded] the careful waiver of sovereign immunity that Zoltek and Decca were based on” by holding “all agencies entering into any contracts immunize all conduct of government contractors without any reference to authorizati on or consent.” Reply in Supp. of Mot. for Recons. at 5 ( citing Astornet Techs. Inc. v. BAE Systems, Inc. , 802 F.3d 1271, 1278 (Fed Cir. 2015) ).

According to the government, plaintiff’s motion under RCFC 54(b) fails to meet any of the three possible alte rnative showings required under this rule: “(1) the occurrence of an intervening change in the controlling law; (2) the availability of previously unavailable evidence; or (3) the necessity of allowing the motion to prevent manifest injustice.” Gov’s Res ponse to Mot. for Recons. at 7 (quoting Webster v. United States , 93 Fed. Cl. 676, 679 (2010)). In- 15

-

response to plaintiff’s argument his claim arose on or before 2012, t he government rejects

p laintiff’s assertion that by “seeking to dismiss the 2012 CFC co mplaint on jurisdictional grounds, Defendant somehow waived its right to raise jurisdictional and substantive defenses in the present case.” Id . at 8.

The government further argues plaintiff’s interpretation of the Assignment of Claims Act
is incorrec t, stating “[p]laintiff’s argument [regarding the ACA] is contrary to decades of law interpreting the Assignment of Claims Act

. ” Id . at 11 (internal citations omitted). The government notes “[t]he purpose of the Act is not to invalidate any contractual rights or equities as between the private parties to an assignment that does not satisfy the Act.” Id. at 10 (citing
Martin v. Nat ’ l Sur. Co. , 300 U.S. 588, 596

– 97 (1937)). Rather, the Assignment of Claims Act is “‘intended for the protection of the government.’” Id. (quoting Delmarva Power & Light Co.
v. United States , 79 Fed. Cl. 205, 214

– 15 (2007)).

Lastly, t he government argues p laintif f misapprehends the applicability of 3 5 U.S.C. § 271 to the case at hand, noting “the Federal Circuit in Astornet was discussing [a] private party ” when it discussed this statute and the government’s waiver of sovereign immunity thereby fails
to extend to cases of alleged induced patent infringement. I d . at 11

– 12. The government did not respond to plaintiff’s argument regarding Astornet overruling Zoltek and Decca in a brief because it was brought up only in plaintiff’s reply . At oral argument the govern ment argued “ the Court of Appeals for the Federal Circuit in the Ast ornet appeal explained that § 1498 was the proper statute

. . . for Ast or net to bring its claims of infringement against the Government

. . . . ”
Tr. at 59:4

– 7.

C. Analysis of Reconsideration Claims

1. The Government’s Inconsistent Positions

To establish his claims arose in 2012, plaintiff points to the government’s previous position in Haddad 2012

. 11 Mot. for Recons. at 3. Plaintiff alleges the government implicitly
conced ed the existence of the claims by “not

. . . mov[ing] to dismiss [ the ] . . . premature suit” and instead “moving to have [the complaint] dismissed for lack of jurisdiction under 28 U.S.C. §
1500.” Id

. at 2

– 3. Plaintiff cites no authority supporting this argument, relying merely on an implication from the government’s previous actions. Tr. at 48:9

– 13. Plaintiff thus poses the following question in the abstract: “was [the government] wrong not to move to dismiss for premature suit or is the [government] wrong today ?” Mot. for Recons. At 3. Implicit in plaintiff’s argument is the position the government has to choose between presenting any defense on the merits and arguing jurisdiction. See id.

A motion to dismiss a suit for lack of jurisdiction under 28 U.S.C. § 1500 is based on a lack of subject

- matter jurisdiction. See Cent. Pines Land Co., L.L.C. v. United States , 697 F.3d

11 Although p laintiff’s counsel clarified at oral argument plaintiff was not making a “waiver argument” regarding whether the government waived substantive arguments by pursuing a dismissal under Section 1500 in the 2012 Case, the Court nonetheless will address the cla im since it arises in the Plaintiff’s Motion for Reconsideration. See
Tr. at 62: 17

– 21; Mot. for Recons. at 2

– 3.- 16

-

1360, 1362 (Fed. Cir. 2012) (indicating that a decision based on § 15 00 is brought through a motion to dismiss for lack of subject

- matter jurisdiction)

. A review of Haddad I I provides helpful context regarding the disposal of threshold jurisdictional matters in cases before this
C ourt. In Haddad II, this c ourt noted “[a]s a threshold matter, the court must consider jurisdiction before reaching the substantive merits of a case

. ” Haddad II , 136 Fed. Cl. at 577 (citing Gonalez v. Thaler , 565 U.S. 134, 141 (2012))

. The citation in Haddad II to Gonzalez v.
Thaler provides an important foundational principle regarding subject

- matter jurisdiction: “When a requirement goes to subject

- matter jurisdiction, courts are obligated to consider sua sponte issues that the parties have disclaimed or have not presented.” Gonzalez , 565 U.S. at 141.

In Janicki Logging Co. v. United States

, another judge on this court concluded if a motion to dismiss for lack of jurisdiction under § 1500 is granted, an issue is not precluded in future litigation so long as th e grant of dismissal did not make a determination on the specific issue
which wa s “necessary and essential to the resulting judgement.” Janicki Logging Co. v. United States, 3 6 Fed. Cl. 338, 341 (1996)

, aff’d, 124 F.3d 226 (Fed. Cir. 1997) (denying defend ant’s motion to dismiss based on issue preclusion because “the trial court ’ s determinations with respect to the statute of limitations and the viability of a Fifth Amendment takings claim were

not ‘ necessary and essential to the resulting judgment ’ ”)

. In Haddad 2012 , th is c ourt did not
determine whether plaintiff’s claims had merit , because the court could not reach the substantive
merits of the case without considering the jurisdictional issue. Haddad II , 136 Fed. Cl. at 577 ; see also Haddad 2012

, No. 12

- 165

. Instead, t h is c ourt solely dismissed plaintiff’s claims due to lack of jurisdiction under § 1500 because Mr. Haddad had cases pending in both District Court

a n d this C ourt. See, Haddad 2012 , No. 12

- 165 (order dismissing pursuant to 28 U.S.C. §1500).

Under plaintiff’s theory, were the Court to raise an issue of subject

- matter jurisdiction
sua sponte and dismiss the case

, and were the plaintiff to later cure such jurisdictional
deficiencies and bring the case forward anew

, the governm ent would be required to waive any potential defenses on the merits of the action not raised prior to the Court’s sua sponte dismissal

— t his is not the law

. The government’s position in this case is not inconsistent with its position in Haddad 2012 , where the only action the government took was seeking dismissal of
the case based on this c ourt’s lack of subject

- matter jurisdiction. See Haddad 2012 , No. 12

- 165C (order dismissing pursuant to 28 U.S.C. §1500). Arguing for dismissal on procedural or j urisdictional deficiencies does not result in any subsequent waiver of substantive arguments.
See Janicki Logging Co. , 35 Fed. Cl. at 341

, aff’d, 124 F.3d 226 (Fed. Cir. 1997) ; s ee also RCFC 12(h) (delineating the limited defenses a party waives by faili ng to raise prior to trial).

2. The Assignment of Claims Act

Next, t he Court must determine whether plaintiff’s interpretation of the Assignment of Claims Act, 31 U.S.C. § 3727(b) , supports invalidation of all previous agreements and transfers of ownership between Mr. Haddad and Astornet. Plaintiff attempts to show “the Court erred in dismissing these claims” because the assignments “satisfy the Act on its plain language” which “b ar[red] Mr. Haddad’s January, 2014 assignment to Astornet of his claims against the United
States.” Mot. for Recons. at 3 ; Reply in Supp. of Mot. for Recons. at 7. The government argues plaintiff’s interpretation of the Assignment of Claims Act is unsup ported and goes against- 17

-

decades of judicial interpretation of the Act itself, in addition to the well

- understood purpose of
the Act. See Gov’s Resp. to Mot. for Recons. at 10

– 11.

Specific to the jurisdiction of this Court, the Assignment of Claims Act governs the “transfer or assignment of any part of a claim against the United States Government or of an
interest in the claim

. . . .” 31 U.S.C. § 3727(a)(1). “An assignment may be made only after a claim is allowed, the amount of the claim is decided, and a warrant for payment of the claim has been issued.” 31 U.S.C. 3727(b). As another judge on this court has noted, “[a]ssignments of patent rights are subject to the Assignment of Claims Act, and voluntary assignments of patent
claims are ineffective against the government unless they qualify for one of the[] judicially

recognized exceptions or otherwise do not run afoul of the purposes of the Act.” 3 rd Eye Surveillance, LLC v. United States , 133 Fed. Cl. 273, 277 (2017). “Plaintiffs are the original claimants only for infringement claims that arose after the patents [are] assigned to [plaintiffs].”
Id. at 278.

The Assignment of Claims Act does not void agreements between private parties in the event an attempted assignment violates the Act. Id. at 277; 31 U.S.C. § 3727(a)(1). Rather, “voluntary assignment of patent claims are ineffective against the government

. . . .” 3rd Eye
Surveillance , 133 Fed. Cl. at 277 (emphasis added ) . Plaintiff does not point to any Federal
Circuit or Court of Feder al Claims case where the Assignment of Claims Act was used to invalidate assignments between two private parties retroactively. See Tr. at 52:17

– 55:8. Rather, plaintiff argues “the Assignment of Claims Act would have barred both Mr. Haddad’s 2014 assignment to Astornet as well as his assignment back in which case Mr. Haddad has in fact always had possession of these claims

. . . .” Mot. for Recons. at 3 . Assuming the existence of assignments between Mr. Haddad and Astornet, the Assignment of Claims Act does not operate to void these assignments. All the Assignment of Claims Act does i s render these assignments
unable to transfer between the parties a r ight to sue the government for past

- accrued infringement. 31 U.S.C. § 3727(a)(1); 3 rd Eye Surveillance , 133 Fed. Cl. at 277.

To the extent plaintiff attempts to make a policy argument as to how the Assignment of
Claims Act should be applied, the Supreme Court has weighed in on this issue on multiple occasions. According to the Supreme Court, “the statute must be interpreted in the light of its purpose to give protection to the Government.” Martin v. Nat’l Sur. Co. , 300 U.S. 588, 596 (1937). The Supreme Court further noted the primary purpose of the Assignment of Claims Act
as follows:

[U]ndoubtedly to prevent persons of influence from buying up claims against the United States, which might then be improperly urged upon officers of the Government, and

. . . to prevent possible multiple payment of claims, to make unnecessary the investigation of alleged assignments, and to enable the Government to deal only with the original claimant. Other courts have identified a third purpose of the ACA, namely, to sa ve to the United States defenses which it has to claims by an assignor by way of set

- off, counter claim, etc., which might not be applicable to an assignee.

United States v. Shannon , 342 U.S. 288, 291

– 92 (1952) ( internal quotation marks and footnote
omitt ed) (quoting United States v. Aetna Cas. & Sur. Co. , 338 U.S. 366, 373 (1949)) (reversing a- 18

-

decision by the Court of Appeals for the Fourth Circuit because “[the Fourth Circuit’s] judgment
is based entirely on the assignment [ of a claim against the United States for property damage ] ”)

. In view of the Supreme Court’s guidance, the purpose of the Assignment of Claims Act was never to void entire assignments between private parties; it was to protect the government from unwieldly plaintiffs “buying up claims against the United States.” Id. Insofar as plaintiff’s motion relies on a novel interpretation of the Assignment of Claims Act, plaintiff has provided

no authority to support such an argument. The Assignment of Claims Act does not function to
retroactiv ely void previous assignments between private parties. Shannon , 342 U.S. at 291

– 92; 31 U.S.C. § 3727(a)(1).

3. The Date Plaintiff’s Claims Arose

Plaintiff claims the court’s 28 February 2018 order improperly “dismissed all of [plaintiff’s] infringement claims from 2014 to 2016 on the grounds that [plaintiff] lacked standing to bring them given his assignment of his claims against the United States to Astornet in January 2014.” Mot. for Recons. at 2

– 3. According to plaintiff, his “claims against the United States arose in 2012 at the latest . . . and thus should not have been dismissed as having been assigned to non

- party Astornet in January

, 2014. ” Id . at 1.

Plaintiff argues in his motion for reconsideration the Court specifically erred in finding infringement occurred when the United States “order[ed] and [took] delivery” of the allegedly infringing products, as since at least 2012 “the TSA and the United States had in fact been taking ‘affirmative act[s] to encourage infringement with the knowledge that the induced acts constitute patent infringement . . . .’” Mot. for Recons. at 5. Plaintiff further speculates his claims may
have arisen as e arly as 2011, when the TSA solicited contracts “that ultimately led to the 2013 contracts and the 2014 orders and deliveries.” Id . The government’s actions allegedly indicate plaintiff’s “claims arose no later than 2012 based on the United States’ induce ment of three government contractors to infringe his patents . . . .” Id . at 6. At oral argument, plaintiff’s
counsel argued instead it was the government responsible for direct infringement, and third

- party defendants induced the infringement :

“[A]t l east in terms of recovering against the United States, we don’t have to make inducement allegation[s]. But as to the conduct of BAE and NCR, of course, their conduct is an inducement type conduct and that’s what we said here as well.”

Tr. at 61:11

– 15.

At oral argument, the parties disputed whether the Federal Circuit’s decision in Astornet Techs. Inc. v. BAE Systems, Inc. , 802 F.3d 1271 (Fed Cir. 2015) (“ Astornet ”) directs “35 U.S.C. 271(b) claims or (c) claims should be brought . . . in the Court of F ederal Claims.” Tr. at 59:20

– 22. Plaintiff further argued at oral argument the Astornet decision should be understood as instructing “that authorization and consent [do not] matter anymore, and that such claims, as long as they involve government contractors, need to be brought [in the Court of Federal Claims].”
Id . at 61:2

– 5. The Court need not address the legal question of whether A stornet negated considerations of authorization and consent, or the factual question of w hether plaintiff’s claims against the United States arose in 2011, 2012 or 2014, however, because this Court has already- 19

-

previously dismissed all patent infringement c laims “arising prior to October 27, 2016 under the ‘844 patent.” 12 Haddad II , 136 Fed. Cl. at 584.

Plaintiff asserts a showing “that his claims arose in 2012” would “therefore bar[] both his original assignment of rights to Astornet as well as his late r attempted assignment back.” Reply in Supp. of Mot. for Recons. at 4. This is because, according to plaintiff, his “claims could not be assigned after they arose in 2012 by virtue of the Assignment of Claims Act, 31 U.S.C. § 3727(b), which rendered inef fective all of his assignments after 2012, including his 2014 assignment and his later re

- assignment.” Id . at 1. The Court has already noted the Assignment of Claims Act does not function to retroactively void previous assignments between private parties. See Supra at Section IV(C)(2)

.

The Court’s 28 February 2018 Order ruled plaintiff failed to meet his burden to e stablish this Court’s jurisdiction under 28 U.S.C. § 1498(a) on any claim arising prior to 27 October
2016. Haddad II , 136 Fed. Cl. at 584 . The Order notes “[t]he record reflects that . . . at some point” plaintiff transferred the right to sue for patent infringement under the ‘844 Patent to Astornet, and the specific point in time “when Plaintiff made that transfer is dispositive of whether the claims of infringement at issue in this case are barred by the Assignment of Claims
Act.” Id . at 582 (emphasis added). The only evidence plaintiff offered the C ourt to establish the date when he transferred the right to sue for patent infringement under the ‘844 Patent was the 2009 Assignment letter, which the Court previously determined “does not meet the requir ements of [Federal Rule of Evidence] 901(a)” and therefore did not consider. Id . at 583 (“Other than the Licensing Letter . . . [p]laintiff has proffered no evidence establishing the date when he transferred the right to sue for patent infringement under the ‘844 Patent to Astornet.”)

. Even assuming in the alternative the 2009 Assignment letter satisfied the requirements of Federal Rule
of E vidence 901(a), the Court previously concluded the letter “transferred the right to ‘legally pursue infringers of the [‘844 P]atent in relation to [the] CAT/BPSS opportunity’ to Astornet as of May 1, 2009 . . . [and t]his right to sue for patent infringeme nt did not revert to [p]laintiff until October 27, 2016, when Astornet executed the Return Agreement.” Id . at 584 (“[A]ny right to sue for infringement arising between May 1, 2009 and October 27, 2016 resided solely in Astornet.”).

12 To the extent plaintiff now argues the Federal Circuit’s 2015 Astornet decision should be used to reconsider this Court’s 2018 ruling, he ma y not use a motion for reconsideration to “reassert the same arguments they made in earlier proceedings . . . [or] raise new arguments that could have been made earlier.” Lee v. United States , 130 Fed. Cl. 243, 252 (2017), aff’d , 895 F.3d 1363 (Fed. Cir. 2018) (internal citations omitted) (denying plaintiffs’ motion for reconsideration of an order granting the government’s motion to dismiss the case). The Court’s 2018 order did not rely on Astornet to conclude plaintiff failed t o meet his burden of proving this Court’s jurisdiction over claims related to the ‘844 patent arising prior to October 27, 2016, and plaintiff did not cite the Federal Circuit’s Astornet decision in his briefing on the government’s motion to dismiss. See generally Haddad II , 136 Fed. Cl. 572; Reply to Def. Mot. for Partial Dismissal, ECF No. 27; Reply to Def. Mot. for Partial Dismissal In Supp. of Pl. Mot. to Dismiss Def. Patial[sic] Dismissal Mot., ECF No. 29; Reply to Court Mem. Opinion and Show Cause Or der, ECF No. 32; Reply to Def. Supp. Brief in Supp. of its Motionfor[sic] Partial Dismissal U8nder[sic] RCFC 12(b)(1) and RCFC 12(b)(6), ECF No. 35. Plaintiff therefore cannot “raise new arguments that could have been made earlier”
related to the Federal Circuit’s decision in Astornet at the motion for reconsideration stage. Lee , 130 Fed. Cl. at 252.- 20

-

Plaintiff does not argue there has been an intervening change in controlling law or newly discovered evidence warranting the Court’s reconsideration of it 28 February 2018 order. See generally Mot. for Recons. Therefore, plaintiff’s arguments related to the date his claims accrued against the government would warrant reconsideration only if they show “a need to correct clear factual or legal error or prevent manifest injustice.” Biery v. United States , 818 F.3d 704, 711 (Fed. Cir. 2016) (internal quotati on marks omitted). To prevail on a motion for reconsideration on the ground of manifest injustice, plaintiff must “demonstrate[] that any injustice is apparent to the point of being almost indisputable.” Lucier v. United States , 138 Fed. Cl. 793, 799 (in ternal citations and quotation marks omitted). Even if plaintiff is correct his claims against the United States arose in 2011 or 2012 instead of 2014, this fact would not negate the 28 February 2018 Order’s underlying conclusion that plaintiff failed to meet the burden to
establish this Court’s jurisdiction over any infringement claim related to the ‘844 Patent arising
between 1 May, 2009 and 27 October, 20 16

. Haddad II, 136 Fed. Cl. at 584 . Plaintiff has not shown how the government’s alleged infringem ent occurring in 2011 or 2012 instead of 2014 , if true, results in an injustice “apparent to the point of being almost indisputable” in the Court’s 28 February 2018 Order. Lucier , 138 Fed. Cl. at 799 ; s ee also Biery v. United States , 818 F.3d 704,

711 (Fed. Cir. 2016) ( internal quotation marks and citations omitted ) (“Under [RCFC] 59(a)(1) a court, in its discretion, may grant a motion for reconsideration when there has been an intervening change in the controlling law, newly discovered evidence, or a n eed to correct clear factual or legal error or prevent manifest injustice.” ). Plaintiff, therefore, cannot rely on this argument as grounds for reconsideration of the Court’s order.

4. Conclusion Regarding Plaintiff’s Motion for Reconsideration

“[A] co urt, in its discretion, ‘may grant a motion for reconsideration when there has been an intervening change in the controlling law, newly discovered evidence, or a need to correct clear factual or legal error or prevent manifest injustice.’” Biery , 818 F.3d at 711 (quoting Young , 94 Fed. Cl. at 674). Plaintiff does not allege “ there has been an intervening change in the controlling law [or] newly discovered evidence ” that warrant s reconsideration of this Court’s 28 February 2018 order. See generally Mot. for Recons. Plaintiff’s arguments focus on whether there is “ a need to correct clear factual or legal error or prevent manifest injustice .” Id. As
discussed supra, t he government did not waive any substantive argument by moving to dismiss plaintiff ’s claim for lack of jurisdiction under 28 U.S.C. § 1500. See Janicki Logging Co. , 35
Fed. Cl. at 341. The Assignment of Claims Act does not function to retroactively void previous agreements and transfers of ownership between Mr. Haddad and Astornet. S ee Shannon , 342
U.S. at 291

– 92; 31 U.S.C. § 3727(a)(1). Plaintiff’s contention his claims arose in 2011 or 2012, instead of 2014, does not negate the grounds for the Court’s 28 February 2018 ruling dismissing all patent infringement claims “arising prior to October 27, 2016 under the ‘844 patent.”
Haddad II , 136 Fed. Cl. at 584. Accordingly, none of plaintiff’s arguments meet any of the three possible alternative showings required under RCFC 54(b) for the Court to grant a motion
for reconsideration.

V. Conclusion- 21

-

A s a n issue of fact exists as to whether plaintiff intended to commit fraud on the government with his submission of the 2017 Notarized Statement, the government’s motion for summary judgment on the counterclaim is DENIED

. Further, none of plaintiff’s arguments meet any of the three poss ible alternative showings required under RCFC 54(b) for the Court to grant a motion for reconsideration. Plaintiff ’ s motion for reconsideration of the 28 February
2018 order is DENIED

.

Plaintiff’s Cross Motion for Summary judgment (ECF No. 67) is DENIE D as moot

, as the docketing of ECF No. 67 as a cross

- motion for summary judgment was done in error

. Idemia and Trans’ motion s for summary judgment on the issues of patent invalidity (ECF No. 63) and

non

- infringement (ECF No. 88) hereby remain STAYED pendi ng the parties’ proposed further proceedings

.

T he parties shall meet and confer on further proceedings for this case in view of the Court’s Order. The parties shall then file a joint status report on or before 2 February 2021

. The joint status report will summarize the parties ’ respective positions regarding: (1) a proposed discovery schedule ; (2) whether the parties have claim construction disputes ; and (3) a proposed schedule for claim construction briefing if the parties have claim construction disputes

. If the parties propose a schedule for claim construction briefing, the Court encourages the parties to contemplate a schedule similar to that of Judge Albright in the United States District Court, Western District of Texas (Order Governing Proceedings

– Patent Cases , current version as of 2 February 2021 ). As agreed by counsel for the parties during the 4 September 2020 oral argument , the Court will schedule a status conference to discuss further proceedings after reviewing the parties’ respective positions in the joint status report.

IT IS SO ORDERED.

s/ Ryan Holte Ryan T. Holte Judge