Wednesday, October 22, 2014

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.”
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

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
(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.”).


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