CAFC discusses 28 U.S.C. § 1498(a) in IRIS v. Japan Airlines; JAL wins dismissal of infringement complaint

The outcome of IRIS v. Japan Airlines


IRIS Corporation brought suit in district court, alleg-
ing that Japan Airlines Corporation
committed patent infringement by examining the electronic passports of its
passengers within the United States.
Because the alleg-
edly infringing acts were carried out “for the United
States ” under 28 U.S.C. §
1498(a), we affirm the district
court’s decision to dismiss IRIS’s complaint.



The patent in question relates to security


IRIS owns U.S. Patent No. 6,111,506 (the ’506 pa-
tent), titled “Method of Making an Improved Security
Identification Document Including Contactless Communi-
cation Insert Unit.”
The ’506 patent discloses methods for making
a secure identification document containing
an embedded computer chip that stores
biographical or biometric data.
’506 patent col. 20 ll. 11 – 64.



Japan Airlines argued 1498(a):


Among other things, JAL argued that federal laws requir-
ing the examination of passports conflict with
the patent laws and therefore exempt JAL from infringement liabil-
ity. It also argued that IRIS’s exclusive
remedy is an action against the United States under 28 U.S.C. § 1498(a)




Of 1498(a):

The statute further clarifies that
an accused activity is “for the United
States” if two requirements are met:

(1) it is conducted “for the Government,”and
(2) it is conducted “with the
authorization or consent of the Government.”
Id.;
accord Advanced Software Design Co. v. Fed. Reserve
Bank of St.Louis, 583 F.3d 1371, 137 5–76 (Fed. Cir. 2009).


Footnote 1 addresses 271(g):


When the district court ruled on JAL’s motion to
dismiss, the law strongly suggested that alleged acts of
infringement under §271(g) fell outside the scope of §1498(a).
See , e.g. , NTP, Inc. v. Research in Motion, Ltd.,
418 F.3d 1282, 1316 (Fed. Cir. 2005);
Zoltek Corp. v. United States
, 51 Fed. Cl. 829, 838 (2002). Relying on those
suggestions, the district court concluded that § 1498(a) did not
apply in this case. We have subsequent-
ly ruled, however, that §1498(a) does
encompass alleged acts of infringement under § 271(g).
Zoltek Corp. v.United States, 672 F.3d 1309, 1323 (Fed. Cir. 2012) (en
banc).



Madey v. Duke University is cited:



To qualify, the alleged use or manufacture
must also be done “for the benefit of the government.”
Advanced Software, 583 F.3d at 1378;
see also Madey v. Duke Univ., 413 F. Supp. 2d 601, 607
(M.D.N.C. 2006)(“A use is ‘for the Government’if it is‘
in furtherance and fulfillment of a stated Government policy’
which serves the Government ’s interests and which is ‘for the Govern-
ment’ s benefit.’



Oral argument is cited:


Oral Argument at 16: 52–17: 26,
IRIS Corp. v. Japan Airlines Corp.,
No. 2010-1051 (Fed. Cir.Sept.8, 2014),
available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
10-1051.mp3
(Counsel for the United States as amicus curiae : “
If [JAL] weren’t doing this, [the government]
would have to do it.
We have to know who is going in and
out of our country.. .. So this is a uniquely governmental
function that we’re talking about here.”).