No. 15-175C

(Filed: April 27, 2020)

(Re-filed: May 14, 2020)1

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

IRIS CORPORATION BERHAD,

 

Plaintiff, 

 

v. 

 

THE UNITED STATES, 

 

Defendant.

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

Stephen Norman Weiss, New York, NY, for plaintiff. 

Philip Charles Sternhell, United States Department of Justice, Civil 

Division, Commercial Litigation Branch, Washington, DC, with whom were 

Joseph H. Hunt, Assistant Attorney General, and Gary L. Hausken, Director, 

for defendant. Conrad J. DeWitte, Jr., United States Department of Justice, 

of counsel. 

OPINION

BRUGGINK, Judge.

This is a patent infringement case brought under 28 U.S.C. § 1498 

(2018). Plaintiff IRIS Corporation Berhad (“IRIS”) alleges that the United 

States Department of State has infringed U.S. Patent No. 6,111,506 (“the 

‘506 Patent”) by its manufacture and importation of certain electronic 

passports. Before the court is the government’s motion for summary 

1Due to the protective order in this case, this opinion was issued under seal. 

The parties reported that they do not have any proposed redactions. The 

opinion is therefore released publicly without redaction.

Patents; motion for 

summary judgment; 

infringement; doctrine 

of equivalents; 

tangential exception. 
2

judgment on the issue of infringement. For the reasons discussed below, we 

grant the government’s motion.

BACKGROUND

The ‘506 Patent concerns a method of making an improved security 

identification document containing a contactless communication insert. The 

‘506 Patent is comprised of one independent claim and six dependent claims.

Claim 1, the independent claim, describes:

1. A method of making an identification document 

comprising the steps of:

forming a contactless communication insert unit by 

electrically connecting an integrated circuit including a 

microprocessor, a controller, a memory unit, a radio 

frequency input/output device and an antenna, and 

disposing a metal ring to surround the integrated circuit; 

disposing the contactless communication insert unit on a 

substrate and laminating it to form a laminated substrate;

supplying a first sheet of base material;

supplying a second sheet of base material;

disposing the second sheet of base material on top of the 

first sheet of base material and inserting the laminated 

substrate including the contactless communication insert 

unit between the first and second sheets of base material; 

and

joining a third sheet of base material to the first and second 

sheets of base material having the laminated 

substrate disposed therebetween, the third sheet of base 

material containing printed text data located so as to be 

readable by humans. 

‘506 Patent, col. 20, ll. 10–34.

When presented in prosecution, Application Claim 1 did not include 

the step of “disposing a metal ring to surround the integrated circuit.” Def.’s 
3

Ex. B at 45. Instead, Application Claim 4, a dependent claim, recited a 

“method of making an identification document according to claim 1, wherein 

the step of forming a contactless communication insert unit includes the step 

of disposing a metal ring to surround the integrated circuit.” Id. at 46. The 

Examiner’s Office rejected Application Claims 1-3 and 5-8 as obvious. Id. at 

78-87. The claims were obvious in light of two preceding patents, which both 

taught a method to construct and insert or otherwise use a communication 

unit to control, process, and coordinate data in an identification device. Two 

other preceding patents taught methods of adhesion and certain uses of a 

memory unit that made the IRIS patent claims obvious. The IRIS method 

would add a microprocessor and controller, a different way of placing the 

insert unit between sheets of material, and cover page, but the Examiner’s 

Office found that these steps would have been obvious to one of ordinary 

skill in the art at the time of the claimed invention. Under “Allowable Subject 

Matter,” the Examiner’s Office wrote, “Claim 4 is objected to as being 

dependent on the rejected base claim but would be allowable if rewritten in 

independent form including all of the limitations of the base claim and any 

intervening claims.” Id. at 85. 

In response, IRIS requested to 

amend claim 1 as follows: 1. (Amended) A method of making 

an identification document comprising the steps of: forming a 

contactless communication insert unit by electrically 

connecting an integrated circuit included a microprocessor, a 

controller, a memory unit, a radio frequency input/output 

device and an antenna, and disposing a metal ring to surround 

the integrated circuit . . . .

Id. at 91 (emphasis in original). IRIS concluded, “Please cancel claim 4 

without prejudice or disclaimer of the subject matter recited therein.” Id. at 

92. In its remarks, IRIS stated, “Applicant amends claim 1 to include claim 

4 and cancels claim 4.” Id. Its explanation for the amendment was concise: 

IRIS thanked the Examiner for indicating that Claim 4, if rewritten as part of 

the independent claim, was allowable over prior art and stated that it accepted 

the Examiner’s recommendation. IRIS submitted that the prior art did not 

teach the method of making an identification document with the added 

limitation of “disposing a metal ring to surround the integrated circuit.” Id. 

at 93. IRIS provided no further explanation. The Examiner’s Office later

issued IRIS a patent for the claims as amended, the ‘506 Patent. 
4

IRIS brought its claim in this court on February 24, 2015, alleging that 

“all electronic passport inlays that have been in use since the issuance of the 

‘506 patent have been manufactured according to the method, or to an 

equivalent of the method, disclosed and claimed by said ‘506 patent.” ECF 

No. 1 at ¶ 10. It alleged infringement under 35 U.S.C. § 271(g), relating to 

importation, use, or sale of a product made by a process patented in the 

United States. 

During discovery, IRIS responded to a request for admission by 

“qualifiedly admit[ing] that the structure [i.e., the accused electronic 

passport] appears not to literally include a metal ring.” Def.’s Ex. D at 1-7. 

IRIS later responded to interrogatories by stating that the samples the 

government had produced showed “a cutout” or “equivalent structure for ‘a 

metal ring to surround the integrated circuit’.” Id. at Ex. E. 

In April 2018, IRIS filed an Amended Complaint, which added a 

theory of infringement under 35 U.S.C. § 271(a), direct infringement by use 

of a process. The government moved to dismiss the Amended Complaint for 

failure to state a claim on which relief can be granted, because the complaint 

did not allege literal infringement regarding “disposing a metal ring to 

surround an integrated circuit” and infringement under the doctrine of 

equivalents was unavailable to IRIS as a matter of law due to patent 

prosecution estoppel. At the hearing on the government’s motion, IRIS 

represented that succeeding on its literal infringement claim would require 

the court to construe “metal” as “made of metal and other material.” Id. at 

Ex. F (Transcript 30:16-25). The court denied the government’s motion, 

because the complaint alleged infringement generally and, therefore,

“survive[d] a 12(b)(6) motion because no method of proof is claimed nor 

waived by such an allegation, even if the one example provided by the 

complaint happens to be by way of the doctrine of equivalents.” IRIS Corp. 

Berhad v. United States, No. 1:15-cv-00175, 2018 WL 5305324 at *2 (Fed. 

Cl. Oct. 26, 2018). Moving forward, the court ordered IRIS to disclose, in 

addition to its infringement contentions and other disclosures, any invocation 

of a recognized exception to the doctrine of equivalents as set out in Festo 

Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002) 

(Festo I), including all supporting evidence. 

IRIS served infringement contentions on the government in January 

2019, followed by amended infringement contentions in May 2019 to comply

with the court’s order to particularly identify which products and where on 

those products the infringing use could be seen. Additionally, regarding 

exceptions to Festo I, IRIS limited itself to arguing the “tangentiality” 
5

exception. Id. at Ex. G at 12. In correspondence with the government to 

clarify its contentions, IRIS further stated, “IRIS is identifying the same 

Teslin or Durasoft for . . . ‘disposing a metal ring to surround the integrated 

circuit;’ and, ‘disposing the contactless communication insert unit on a 

substrate and laminating it to form a laminated substrate’.” Id. at Ex. I. 

Following claim construction briefing and the Markman hearing, the 

court concluded that the following constructions of terms in the ‘506 Patent 

were appropriate:

Term The Court’s Construction

encrypted information that has been 

transformed from plain text to 

coded text or ciphertext

Order of steps in which the method 

must be performed

The limitations in Claim 1 must be 

performed in the sequence claimed.

integrated circuit a microprocessor, a controller, a 

memory unit, a radio frequency 

input/output device, an antenna, 

and the connections thereto

ring

metal

disposing a metal ring to surround 

the integrated circuit

a structure that surrounds the 

integrated circuit 

metal

The metal ring must surround the 

integrated circuit. The metal ring 

and the substrate are separate 

components.

laminating it to form a laminated 

substrate

bonding the contactless 

communication insert unit and the 

substrate with one or more layers of 

a coating material

base material material separate from the claimed 

cover

tamper-proof stitching stitching that cannot readily be 

altered or tampered with

IRIS Corp. Berhad v. United States, 147 Fed. Cl. 160, 171 (2020).
6

The government filed this motion for summary judgment on 

infringement on March 6, 2020. The motion is fully briefed. Oral argument 

is deemed unnecessary. 

DISCUSSION

Summary judgment is proper when “there is no genuine dispute as to 

any material fact and the movant is entitled to judgment as a matter of law.”

Rules of the United States Court of Federal Claims (“RCFC”) 56(a). Entry 

of summary judgment is proper when a party “fails to make a showing 

sufficient to establish the existence of an element essential to that party’s

case, and on which that party will bear the burden of proof at trial.” Celotex 

Corp. v. Catrett, 477 U.S. 317, 322 (1986). The party moving for summary 

judgment bears the initial burden of showing that no genuine dispute of 

material fact exists, which it may do by showing an absence of proof 

regarding an essential element of the non-moving party’s case. Id. at 323-25. 

Once the moving party has supported its motion, the burden shifts to 

the non-moving party to identify specific facts on which a genuine dispute 

exists for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).

The non-moving party “must do more than simply show that there is some 

metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. 

Zenith Radio Corp., 475 U.S. 574, 586 (1986). “Where the record taken as a 

whole could not lead a rational trier of fact to find for the non-moving party, 

there is no ‘genuine issue for trial.’” Id. (quoting First Nat’l Bank of Arizona 

v. Cities Serv. Co., 391 U.S. 253, 289 (1968)).

I. The United States Electronic Passports do not Literally Infringe the ‘506 

Patent.

After claim construction, “[s]ummary judgment on the issue of 

infringement is proper when no reasonable jury could find that every 

limitation recited in a properly construed claim either is or is not found in the 

accused device either literally or under the doctrine of equivalents.” PC 

Connector Sols. LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 

2005). “To prove literal infringement, the patentee must show that the 

accused device contains every limitation in the asserted claims. If even one 

limitation is missing or not met as claimed, there is no literal infringement.” 

Mas–Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998)

(internal citations omitted). 
7

A. Creating an Integrated Circuit

Claim 1 statesthe step of “forming a contactless communication insert 

unit by electrically connecting an integrated circuit including a 

microprocessor, a controller, a memory unit, a radio frequency input/output

device and an antenna.” ‘506 Patent, col. 20, ll. 13–18. In the claim 

construction order, the court held that this step requires the antenna to be a 

part of the integrated circuit, not a separate component that is simply 

connected to the integrated circuit. 

The government argues that there is no evidence in the record that 

accused electronic passports feature an integrated circuit that includes an 

antenna as part of the integrated circuit, meaning that there is no “integrated 

circuit” as stated in the ‘506 Patent. Moreover, the government points out 

that plaintiff’s infringement contentions did not allege that the integrated 

circuit in accused devices includes an antenna. Rather IRIS alleged that 

Gemalto, Infineon, Toppan, ASK, or Smartrac inlays or contactless 

communication inserts “connect[] an antenna via the [input/output] area of 

the [integrated circuit] . . . .” Def.’s Ex. H at 2-3. IRIS further stated in its 

contentions that “the antenna has been electrically connected to the 

[integrated circuit], and the [integrated circuit] includes a controller, a

microprocessor and a memory unit along with the [input/output].” Id. 

In its response to the motion for summary judgment, however, IRIS 

argues that a disputed fact exists regarding whether Gemalto and ASK inlays 

“come with chips that have an antenna as part of the integrated circuit.” Pl.’s 

Resp. 7-8, Ex. C. Plaintiff supports its argument with a March 31, 2020 

declaration from an electrical engineer, David Ferguson, who examined 

United States electronic passports for IRIS on June 12, 2018. Mr. Ferguson

concluded that the Gemalto and ASK inlays have an integrated circuit that 

includes an antenna. His conclusion is based on an article from the website 

EDN which states that a predecessor company to Gemalto supplied such 

samples to the United States. He also cites x-rays of United States electronic 

passports that he has labeled to show an antenna connecting to the frame of 

the integrated circuit. 

We agree with the government that there is no genuine dispute of fact 

regarding the step of forming an integrated circuit that includes an antenna. 

First, IRIS only argues that a triable question exists as it relates to Gemalto 

or ASK inlays. IRIS did not point to any facts that suggest that an antenna 

can be found in the integrated circuit of the Infineon, Toppan, or Smartrac 

inlays or contactless communication inserts. Thus, as it relates to those 
8

accused devices, there is an absence of evidence that a claim limitation of the 

‘506 Patent is present.

As to the Gemalto or ASK inlays, IRIS has pivoted from its

infringement contentions that it disclosed prior to claim construction. Despite 

Mr. Ferguson analyzing the samples provided by the United States in June 

2018, IRIS made no mention of its theory that certain inlays included an 

antenna in the integrated circuit in its original January 2019 infringement 

contentions or in its revised May 2019 infringement contentions. This 

approach is at odds with the purpose of the disclosure requirement, 

particularly when IRIS effectively seeks to amend its contentions without a 

showing of good cause, as required by this court’s Patent Rule 24. The court

will not consider a novel, undisclosed infringement contention that should

have been disclosed to the government during the time set for serving 

infringement contentions. 

In any event, as the government points out, the declaration does not 

raise a genuine dispute of material fact. First, the article Mr. Ferguson cites 

refers to a predecessor of Gemalto providing “manufactured initial 

production samples for the US government to evaluate.” Pl.’s Ex. D. The 

article does not support an inference that those samples were used to 

manufacture United States electronic passports. The x-rays Mr. Ferguson 

labeled show a piece of an antenna connected to a frame or some outer part 

of an inlay. At best, these x-rays support plaintiff’s disclosed contention that 

the antenna is connected to the integrated circuit. Finally, IRIS does not 

argue, as we discuss below, that the Gemalto or ASK inlays include an 

antenna that is surrounded by a metal enclosure. Thus, even if the antenna on 

the Gemalto or ASK inlays were a part of the integrated circuit, there is a 

lack of evidence that the integrated circuit is surrounded by a metal ring. For 

each of the foregoing reasons, the court grants the government’s motion on 

the issue of literal infringement of the integrated circuit step of Claim 1.

B. Surrounding an Integrated Circuit with a Metal Ring

Claim 1 also includes the step of “forming a contactless 

communication insert unit by electrically connecting an integrated circuit . . 

. and disposing a metal ring to surround the integrated circuit.” ‘506 Patent, 

col. 20, ll. 13–19. In the claim construction order, the court held that a “ring” 

is a structure that surrounds the integrated circuit; “metal” means metal, as 

typically understood; and that the metal ring and the substrate that appears in 

the next step of Claim 1 are separate components.
9

The government argues that there is an absence of proof that the 

United States electronic passports use the method of surrounding an 

integrated circuit with a metal ring. Defendant dissects the infringement 

contentions from several angles. First, it argues, that metal appears, at most,

on two sides of the circuit in the accused devices, which shows there is no 

ring. In other words, there is no evidence that metal surrounds the integrated 

circuit. Second, the other two sides of the integrated circuit are set on top of

Teslin or Durasoft materials which are not metal, showing that there is no 

evidence of a metal ring. And, third, the Teslin or Durasoft is in fact the 

substrate upon which a contactless communication unit is disposed—the next 

step of Claim 1—which means that the material cannot form the ring. 

IRIS qualifiedly admitted in 2016 that the United States electronic 

passports do not use the method of surrounding, or enclosing, an integrated 

circuit with a metal structure, suggesting instead that there was an equivalent 

used in the passports. Def.’s Exs. D, E. As this case continued, IRIS conceded 

in 2018 that if the court determined that a metal ring means that metal must 

surround the integrated circuit, the United States electronic passport does not 

literally infringe the ‘506 Patent. Def.’s Ex. F. In its revised infringement 

contentions, IRIS stated that Gemalto, Infineon, Toppan, ASK, or Smartrac,

suppliers of inlays for electronic passports, surround the integrated circuit

“by a perimetric enclosure, at least a portion of which includes metal, said 

enclosure comprising both metal and Teslin or Durasoft.” Def.’s Ex. H.

In its response to the motion for summary judgment, however, IRIS 

argues that the step of “disposing a metal ring to surround the integrated 

circuit,” ‘506 Patent, col. 20, ll. 17–18, is literally infringed when Infineon

attaches “a metal carrier . . . to the chip.” Pl.’s Resp. 4. IRIS supports this 

argument with a few lines from Infineon’s deposition representative in which

the deponent agreed that a “chip is glued onto a metal part that forms part of 

the module.” Id. IRIS argues that this citation, and only this citation, 

“creat[es] an issue of fact which cannot be resolved by summary judgment.” 

Id. IRIS does not reference any other inlay manufacturers in this section of 

its response.

Plaintiff’s lone citation does not create a genuine dispute on the issue 

of whether a metal ring surrounds the integrated circuit on the accused 

devices. First, IRIS only argues that a triable question exists as it relates to 

Infineon inlays regarding the step of “disposing a metal ring to surround the 

integrated circuit.” ‘506 Patent, col. 20, ll. 17–18. IRIS did not point to any 

facts that suggest that such a metal ring is disposed to surround the integrated 

circuits supplied by Gemalto, Toppan, ASK, or Smartrac. Thus, as it relates 
10

to those accused devices, there is no evidence that a claim limitation is 

present.

Second, as to the Infineon inlays, IRIS argues that there is a dispute 

as to whether “a metal carrier is attached to the chip” surrounds the integrated 

circuit. Pl.’s Resp. 4. IRIS did not disclose in its infringement contentions 

that it alleges that a carrier glued to a chip on the Infineon inlays constitutes 

a metal ring. IRIS took the Rule 30(b)(6) deposition of Infineon’s 

representative in 2016, giving IRIS ample time to disclose this theory in its 

infringement contentions. Here again, IRIS attempts to change its 

contentions. IRIS only disclosed its theory that a mix of metal and Teslin or 

Durasoft constitutes the ring. In other words, IRIS contended that metal on

less than all sides of the integrated circuit combined with a sheet of Teslin or 

Durasoft creates a “metal ring.” Plaintiff now argues, without prior 

disclosure, that a carrier or frame or other metal piece associated with the 

Infineon inlay surrounds the integrated circuit. The court will not consider 

this undisclosed infringement contention. 

Even if plaintiff had timely disclosed this theory, the testimony that 

IRIS cites of Infineon’s Rule 30(b)(6) witness, Joerg Borchert, when read in 

context, does not support the existence of a triable question on whether this 

“carrier” is a piece of metal that surrounds the integrated circuit. When asked 

in several different ways, the deponent consistently describes Infineon’s 

inlay as a package of a chip and a carrier and a mold, never suggesting that 

the carrier surrounds the chip. Def.’s Ex. L. IRIS represents that the deponent 

could not say whether the metal piece surrounds the chip, but the deponent 

simply did agree with counsel and explained “[t]he chip is attached to this 

metal with a glue” along with the rest of the inlay manufacture process. Id.

at 8 (Borchert Deposition 24:8-9). The identified section of the deposition 

does not even suggest what functions the “carrier” or the “chip” serve in 

relation to forming the inlay. Gluing a piece of metal to a chip, which is all 

the deposition suggests, does not constitute surrounding an integrated circuit 

with a metal ring. We agree with the government that IRIS cannot 

manufacture a dispute of fact from a selection of ambiguous quotes from a 

single deposition.

Finally, IRIS argues that “[t]he court’s construction did not mandate 

that the metal ring could not include other material in addition to metal,”

returning to its theory that Teslin or Durasoft coupled with the metal 

constitutes a metal ring. Pl.’s Resp. 3. Plaintiff argues that, even if the 

Infineon carrier does not surround the integrated circuit, a Teslin or Durasoft 

sheet can complete the ring. IRIS draws a distinction without meaning, 
11

because what the court did hold was that metal must surround the integrated 

circuit, as stated in Claim 1. That metal might be mixed with some other 

substance, certainly, but metal must nevertheless enclose the circuit. Teslin 

or Durasoft are not metal. IRIS has not identified any evidence in the record 

that Infineon manufactures an integrated circuit and then surrounds it with a 

metal enclosure prior to adhering it to a sheet of substrate material. 

In sum, the government demonstrated that there is an absence of 

evidence that any accused device “dispos[es] a metal ring to surround the 

integrated circuit.” Plaintiff conceded as much during discovery, and its 

response to the motion for summary judgment does nothing to dispel that 

concession. The court grants the government’s motion on the issue of literal 

infringement of this step of Claim 1.

C. Performing the Claim 1 Steps in the Order Recited 

Claim 1 further states the steps of “forming a contactless 

communication insert unit by electrically connecting an integrated circuit . . 

. and disposing a metal ring to surround the integrated circuit; disposing the 

contactless communication insert unit on a substrate and laminating it to form 

a laminated substrate . . . .” ‘506 Patent, col. 20, ll. 13–20. In the claim 

construction order, the court held that the limitations in Claim 1 must be 

performed in the sequence claimed.

The government argues that there is no evidence in the record that the 

accused electronic passports are manufactured by (1) forming an integrated 

circuit, (2) surrounding the integrated circuit with a metal ring, and (3)

disposing the newly-formed contactless communication insert on a 

substrate—in that order. Defendant points out that a metal piece that attaches 

the antenna to other components of the circuit cannot perform both the step 

of connecting the integrated circuit and surrounding it with a metal ring. 

Likewise, defendant contends that the Teslin or Durasoft piece that 

constitutes the substrate cannot also be a part of the metal ring. We agree.

In its response, IRIS again isolates only the Infineon inlay. IRIS 

argues that, based on the same lines of Mr. Borchert’s deposition discussed 

above, a disputed material fact exists. IRIS also cites a picture, which it 

represents is an Infineon inlay, that shows what IRIS labels as an 

“equivalent” of a metal ring on one side of the picture and the “substrate upon 

which the contactless communication insert has been disposed” on the other 

side of the picture. Pl.’s Ex. B.
12

We conclude that there is no genuine dispute on the issue of whether 

United States electronic passports use the steps of Claim 1 in the order recited 

in the ‘506 Patent. First, IRIS only argues that a triable question exists as it 

relates to Infineon method. Therefore, as it relates to the Gemalto, Toppan, 

ASK, or Smartrac method, there is an absence of evidence that the inlays are 

manufactured using the steps as set out in Claim 1. We grant the

government’s motion as to those accused products.

Despite years of discovery and stripping down samples, plaintiff’s 

only response is that there is a triable question as to how Infineon puts its 

inlays together. We find that IRIS has not identified any facts that would 

allow a reasonable factfinder to conclude that a metallic carrier attached to a 

chip fulfills the step of disposing a metal ring to surround the integrated 

circuit; so that step is missing from the sequence. Plaintiff’s alternative 

theory is that the Teslin or Durasoft material is used as both a part of the 

“ring” and the “substrate” on which the contactless communication insert is 

placed. Def.’s Exs. H, I. To the extent IRIS argues that the substrate performs

both steps, there is no dispute of material fact that the accused devices do not 

follow the patented method because the Teslin or Durasoft cannot be both 

the ring and the substrate. The court thus grants the government’s motion for 

summary judgment as to the issue of literal infringement overall for each of 

the reasons discussed in Section I. 

II. The Doctrine of Equivalents is Unavailable to Plaintiff, and, even if it 

were Available, the United States Electronic Passports do not Infringe the 

‘506 Patent under the Doctrine of Equivalents. 

When a patentee cannot show literal infringement, it may resort to the 

doctrine of equivalents “to claim those insubstantial alterations that were not 

captured in drafting the original patent claim but which could be created 

through trivial changes.” Festo I, 535 U.S. at 733. Here, IRIS is “relying 

upon an equivalent for the ‘metal’ element of ‘metal ring.’” Pl.’s Resp. 6. 

IRIS argues that the difference between a “metal” ring and a “metal along 

with some other substance” ring is insubstantial. The government argues that 

prosecution history estoppel bars plaintiff’s reliance on the doctrine of 

equivalents; that the doctrine of equivalents cannot save plaintiff’s claim; and 

that application of the doctrine would vitiate limitations of the ‘506 Patent.

A. IRIS cannot rely on the doctrine of equivalents to support its 

infringement claim. 
13

When an applicant during patent prosecution narrows a claim to avoid 

prior art, “[e]stoppel then bars the applicant from later invoking the doctrine 

of equivalents to recapture the surrendered ground.” EMD Millipore Corp. v. 

AllPure Techs., Inc., 768 F.3d 1196, 1203 (Fed. Cir. 2014). The Federal 

Circuit explained the effect of rewriting an independent claim to include 

material from a dependent claim in Honeywell International, Inc. v. Hamilton 

Sundstrand Corp.:

When a claim is rewritten from dependent into independent 

form and the original independent claim is cancelled . . . the 

surrendered subject matter is defined by the cancellation of 

independent claims that do not include a particular limitation 

and the rewriting into independent form of dependent claims 

that do include that limitation. Equivalents are presumptively 

not available with respect to that added limitation.

370 F.3d 1131, 1144 (Fed. Cir. 2004). In Festo I, the Federal Circuit noted, 

“Were it otherwise, the inventor might avoid the PTO’s gatekeeping role and 

seek to recapture in an infringement action the very subject matter 

surrendered as a condition of receiving the patent.” 535 U.S. at 734. 

In this case, the Examiner’s Office rejected the application as 

originally written. IRIS then rewrote its Application Claim 1, the 

independent claim, to include its dependent Application Claim 4, “disposing 

a metal ring to surround the integrated circuit,” and cancelled the original 

dependent claim. Def.’s Ex. B at 91-92. The government contends that the 

metal ring step constitutes the surrendered subject matter. In other words, 

IRIS cannot recapture other methods of forming a contactless 

communication insert. IRIS responds that “nothing was surrendered so there 

is nothing to recapture.” Pl.’s Resp. 5. 

We agree with the government. The surrendered subject matter is a 

method of forming a contactless communication insert unit that does not

include the step of “disposing a metal ring to surround the integrated circuit.” 

IRIS is therefore presumptively precluded from arguing that equivalents to

metal used to form a ring in the United States electronic passports constitute 

infringement of the ‘506 Patent.

A patentee may rebut the presumption of prosecution history estoppel, 

however. To rebut the presumption, the patentee must demonstrate one of 

three possibilities: (1) “the alleged equivalent would have been unforeseeable 

at the time of the narrowing amendment”; (2) “the rationale underlying the 
14

narrowing amendment bore no more than a tangential relation to the 

equivalent in question”; or (3) “there was ‘some other reason’ suggesting that 

the patentee could not reasonably have been expected to have described the 

alleged equivalent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 

344 F.3d 1359, 1368 (Fed. Cir. 2003) (en banc) (Festo II) (quoting Festo I, 

535 U.S. at 741). The Supreme Court has “made clear that the patentee bears 

the burden of showing that a narrowing amendment did not surrender a 

particular equivalent.” Id. In its disclosures, IRIS limited itself to arguing 

only the second option: the tangentiality exception. Def.’s Ex. G at 12.

To decide whether “the rationale underlying the narrowing 

amendment bore no more than a tangential relation to the equivalent,” the 

court asks whether there is an “objectively apparent reason for the narrowing 

amendment[, which must be] discernible from the prosecution history 

record.” Felix v. American Honda Motor Co., 562 F.3d 1167, 

1184 (Fed. Cir. 2009) (quoting Festo II, 344 F.3d at 1369) (brackets in 

original). “The tangential relation criterion for overcoming the Festo 

presumption is very narrow.” Honeywell, 523 F.3d at 1315. “When the 

patentee is unable to explain the reason for amendment, estoppel not only 

applies but also ‘bar[s] the application of the doctrine of equivalents as to 

that element.’” Festo I, 535 U.S. at 740 (quoting Warner-Jenkinson Co. v. 

Hilton Davis Chem. Co., 520 U.S. 17, 33 (1997)). “Where no explanation is 

established . . . the court should presume that the patent applicant had a 

substantial reason related to patentability for including the limiting element 

added by amendment.” Warner-Jenkinson Co., 520 U.S. at 33.

The government correctly observes that the objectively apparent 

reason for the narrowing amendment is the Examiner’s indication that Claim 

1 with the added step of “disposing a metal ring to surround the integrated 

circuit” would be allowable. Def.’s Ex. G. IRIS then amended its 

independent claim, exactly as directed, to include the entire limitation: 

“disposing a metal ring to surround the integrated circuit.” Id. 

IRIS responds, “The type of material used for the ring was never at 

issue and was never a factor during prosecution of the application that 

matured into the ‘506 Patent. The type of material used for the ring is 

tangential to the accused equivalent.” Pl.’s Resp. 6. IRIS cites the Examiner’s 

Office Action for the proposition that the prior art did not include a “ring,” 

regardless of material, and thus the choice of “metal” is tangential to 

amendment of adding a ring. In other words, metal is an irrelevant descriptor.
15

We disagree. The explanation IRIS provides is not in the prosecution 

history. There is, however, an objectively apparent explanation in the 

prosecution history: The Examiner’s Office stated that the entire dependent 

claim 4 would be allowable if rewritten in independent form, and IRIS did 

just that. IRIS did not attempt to exclude “metal” from its amendment or 

provide any explanation in its amendment as to why “ring” was a sufficient 

amendment without “metal.” Its argument now is, in essence, too late. Not 

having drawn the distinction before the examiner, the court cannot come 

behind and red line the claim in plaintiff’s favor. 

Because IRIS has not offered an explanation from the prosecution 

history as to why “metal” was included in Claim 1 but should be considered 

superfluous now, it has not met its burden of proof in rebutting the 

presumption that prosecution history estoppel applies. It is therefore barred 

from reliance on the doctrine of equivalents for the term “metal.”

B. Even if IRIS relied on the doctrine of equivalents, IRIS cannot 

point to a triable question. Furthermore, applying the doctrine of 

equivalents would vitiate elements of Claim 1.

Even if IRIS were not barred from relying on the doctrine of 

equivalents, it only preserved the argument as it relates to the term “metal” 

in independent Claim 1. As discussed in Section I, the United States 

electronic passports do not include a “ring” that surrounds an integrated 

circuit. Nor does the integrated circuit in the United States electronic passport 

include an antenna. As the government argues, IRIS would need to rely on 

the doctrine of equivalents for those steps in Claim 1 as well, which it does 

not attempt to do. Therefore, even if the use of materials such as Teslin or 

Durasoft can take the place of metal under the doctrine of equivalents, the 

steps of forming an “integrated circuit,” surrounding it with a “ring,” and 

“disposing” it on a separate substrate are not infringed by accused electronic 

passports. 

Relatedly, “if a court determines that a finding of infringement under 

the doctrine of equivalents ‘would entirely vitiate a particular claim[ed] 

element,’ then the court should rule that there is no infringement under the 

doctrine of equivalents.” Lockheed Martin Corp. v. Space Sys./Loral, Inc., 

324 F.3d 1308, 1321 (Fed. Cir. 2003) (quoting Bell Atlantic Network Sers., 

Inc. v. Covad Commc’ns Grp., 262 F.3d 1258, 1279-80 (Fed. Cir. 2001)).

Part of the patented method is using a “metal” ring, preferably one made of 

SUS 303 stainless steel, to surround an integrated circuit to form a contactless 

communication insert. Claim 1 includes the term “metal,” and the patent 
16

repeatedly shows in figures and describes a method by which a metal 

structure is used to enclose the integrated circuit. Finding infringement of the 

‘506 Patent by a structure of any combination of metal and other materials, 

in any proportion, would effectively read the term “metal” out of Claim 1. 

Furthermore, reading Claim 1 to mean that the step of “disposing a metal ring 

to surround the integrated circuit” is interchangeable with or the same step 

as “disposing the contactless communication insert on a substrate” collapses 

separate steps into one, again vitiating the purpose of particular elements of 

Claim 1. Therefore, even if IRIS were not barred from relying on the doctrine 

of equivalents, the court would grant the government’s motion for summary 

judgment on the issue of infringement under the doctrine of equivalents. 

III. The United States does not Infringe the ‘506 Patent through Devices or 

Activities Not Identified in Plaintiff’s Infringement Contentions. 

When plaintiff fails to identify an accused product, there is no 

infringement as a matter of law. See Celotex, 477 U.S. at 323. Regarding 

broad infringement claims relating to electronic passports or other activities 

not identified in plaintiff’s infringement contentions, IRIS cannot 

demonstrate infringement as a matter of law. The court grants the 

government’s motion for summary judgment on any theories of infringement 

beyond those identified in plaintiffs’ infringement contentions. 

CONCLUSION

For the foregoing reasons, the court grants defendant’s motion for 

summary judgment. The Clerk is directed to enter judgment accordingly. No 

costs. 

s/Eric G. Bruggink 

ERIC G. BRUGGINK

Senior Judge