      In the United States Court of Federal Claims
                                No. 15-175C
                          (Filed: October 26, 2018)
                         NOT FOR PUBLICATION

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IRIS CORPORATION BERHAD,

                            Plaintiff,       Patent infringement; RCFC
                                             12(b)(6); Patent prosecution
v.                                           history estoppel; Doctrine of
                                             equivalents.
THE UNITED STATES,

                            Defendant.

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                                   ORDER

       Plaintiff, Iris Corporation Berhad, alleges that the United States has
infringed its patent for a method of manufacturing an electronic passport
(“the ‘506 patent”). The amended complaint alleges that “agents of the
United States Government” have used United States and foreign passports
“that have been manufactured . . . according to one or more claims of the
‘506 patent by a company that has not been authorized by IRIS to practice
said method when government agents examine passports at U.S. entry
points.” Am. Compl. ¶ 17. Plaintiff also alleges that the United States
issues such passports manufactured in the United States by third parties and
that those manufacturers use plaintiff’s method without authorization. Id.
¶¶ 13, 18. Paragraph 14 begins “By way of example:” and then goes on to
describe the claims of the patent and how they are infringed. Regarding
Claim 1, paragraph 14 of the Amended Complaint describes the disposition
of a “metal ring to surround the integrated circuit.” The alleged
infringement of that part of Claim 1 is described as “disposing an equivalent
of a metal ring to surround the integrated circuit.” Id. ¶ 14 at p. 5 (emphasis
added). In paragraph 14, plaintiff has invoked the doctrine of equivalents as

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an example of the infringement it believes has occurred by and for the United
States. There are no other exemplary infringement allegations in the
Amended Complaint.

        The Amended Complaint was filed on April 30, 2018, shortly after
which the court entered a briefing schedule for claim construction which
would have concluded on March 1, 2019. Fact discovery was to conclude
60 days after our claim construction order and expert reports would have
been exchanged 30 days after that. See Scheduling Order of May 9, 2018
(ECF No. 40). Infringement contentions were not yet due. The Answer to
the Amended Complaint was due on June 14, 2018. Instead of answering,
defendant filed a motion to dismiss pursuant to Rule 12(b)(6), prompting
plaintiff to file a motion to vacate the claim construction schedule, which we
granted. The motion to dismiss is fully briefed, and oral argument was held
on September 11, 2018.

        Defendant moves to dismiss on a theory of prosecution history
estoppel. The thrust of the argument is that plaintiff has waived the right to
allege the doctrine of equivalents with respect to the metal ring surrounding
the integrated circuit because it was forced during patent prosecution to
include the disposition of the metal ring as part of independent claim 1 in
order to overcome an obviousness or anticipation objection by the patent
examiner. See generally Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., Ltd., 535 U.S. 772 (2002) (holding that patent prosecution estoppel may
bar assertions of infringement against equivalents). Citing paragraph 14,
defendant argues that the Amended Complaint alleges only an equivalence
theory of infringement, and thus the complaint should be dismissed because
it only alleges a claim that plaintiff waived during patent prosecution.

       Plaintiff responds that it has in fact alleged literal infringement,
pointing to its general allegations of infringement in paragraphs 17 through
21 of the Amended Complaint. During oral argument, plaintiff gave an
example of how a certain construction of the term “metal ring” would lead it
to make a well-founded contention of literal infringement. Plaintiff also
argues that that it has not foresworn any of the exceptions to prosecution
history estoppel. Thus it finds defendant’s motion premature given that
neither claim construction has taken place nor has plaintiff yet provided its
more particular infringement contentions.




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       Plaintiff also argues that the doctrine of equivalents is not a cause of
action; instead it argues that, like literal infringement, equivalence is merely
a method of proving infringement. The inference is that, having alleged
infringement generally, the complaint survives 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.1 We agree.

        Defendant’s argument regarding patent prosecution history estoppel
may well ultimately prove to be successful, but the case is not yet developed
to the point where the issue is joined.2 The terms of the patent are not yet
construed nor have specific infringement contentions been made by plaintiff.
After those two events, both the parties and the court will be better positioned
to weigh the merits of the estoppel issue, if it remains. Defendant’s motion
to dismiss is denied without prejudice. The parties are directed to file a joint
status report on or before November 16, 2018, with a proposed schedule or
schedules for further proceedings.



                                                  s/Eric G. Bruggink
                                                  ERIC G. BRUGGINK
                                                  Senior Judge




1 Plaintiff did not request to amend its complaint to allege a particular
example of literal infringement, nor do we think it is necessary given that
infringement contentions are outstanding.
2 We note that plaintiff did not argue that it has preserved equivalence with
regard to the metal ring during patent prosecution. It did, however, point
out that it might prove one or more of the exceptions to prosecution history
estoppel, which would preserve proving infringement by equivalents. We
do not reach the issue of the exceptions to estoppel given our holding that the
issue of prosecution history estoppel generally is premature.

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