     In the United States Court of Federal Claims
                                No. 15-175C
                         (Filed: January 22, 2020)
                       (Re-Filed: February 10, 2020) 1

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IRIS CORPORATION BERHAD,
                                                   Patents; claim construction;
                            Plaintiff,             Markman hearing; plain and
                                                   ordinary meaning; extrinsic
v.                                                 evidence; sequence.
THE UNITED STATES,

                            Defendant.

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       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.

           CLAIM CONSTRUCTION ORDER AND 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 several claims of U.S. Patent No.
6,111,506 (“the ’506 Patent”) by its manufacture of electronic passports.
Before the court are the parties’ briefs regarding construction of claim terms
used in the ’506 Patent.


1
 This opinion was originally issued under seal to permit the parties an
opportunity to propose redactions on or before February 5, 2020. The parties
did not propose redactions and, thus, we reissue this opinion unredacted.
                              BACKGROUND

       IRIS is suing the United States for the State Department’s
unauthorized use of IRIS’s invention described in the ’506 Patent. The ’506
Patent concerns a method of making an improved security identification
document including 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.

       Claims 2-7, the dependent claims, continue:

                                      2
       2. A method of making an identification document according
       to claim 1, further comprising the step of attaching a cover page
       to the third sheet of base material.

       3. A method of making an identification document according
       to claim 2, wherein the third sheet of base material containing
       the printed text data is joined to the cover page and the second
       sheet of base material via tamper-proof stitching.

       4. A method of making a security document according to
       claim 1, further comprising the step of supplying a cover
       comprising a relatively rigid material compared to the first,
       second and third sheets of base material and joining the cover
       to the first, second and third sheets of base material for
       supporting the integrated circuit.

       5. A method of making a identification document according to
       claim 1, wherein the memory unit includes memory for
       storing biometrics data and memory for storing non-biometrics
       data, the memory for storing biometrics data including a
       plurality of memory locations which can only be written to
       once and prevent the stored data from ever being altered, the
       memory for storing non-biometrics data including memory
       locations which are capable of being altered.

       6. A method of making an identification document according
       to claim 5, wherein the biometrics data includes at least one of
       a still photograph, moving video images, a palm print,
       fingerprints, a retina scan, a voice print, a two-dimensional
       facial image and a three-dimensional facial image.

       7. A method of making a security document according to claim
       6, wherein data stored in the memory unit is encrypted.

Id. at ll. 35–65.

       The parties presented their positions on terms for construction, which
evolved through the course of briefing. They agree that “encrypted” should
be construed as “information that has been transformed from plain text to
coded text or ciphertext.” Joint Claim Construction Statement 1. The parties’
positions, as presented in the Joint Claim Construction Statement, on
disputed terms are:
                                      3
            Term                     Plaintiff’s Construction         Defendant’s Construction
Order of steps in which the       The claim does not specify an     Plain and ordinary meaning,
method must be performed          order in which the steps are to   subject to the other
                                  be performed.                     constructions defendant
Claim 1                                                             proposes, with the
                                                                    understanding that the
                                                                    limitations be performed as
                                                                    ordered steps in the order
                                                                    recited in the claims.
integrated circuit                “An integrated circuit means      “a microprocessor, a
                                  electronic component(s)           controller, a memory unit, a
Claim 1                           designed to perform               radio frequency input/output
                                  processing and/or memory          device and an antenna, and the
                                  functions”                        connections thereto”
Plaintiff: “metal” and “ring”     Metal: “Comprised of metal        Plain and ordinary meaning.
are two claim terms that          along with other material.”       Each word of the limitation
should be construed                                                 must, however, be given
separately.                       Ring: “A perimetric protective    effect. First, the metal ring
                                  enclosure.”                       must be “disposed” on and
Defendant: the entire phrase                                        separate from any substrate or
“disposing a metal ring to                                          base material. Second, the
surround the integrated                                             metal ring must be metal as
circuit” should be construed as                                     opposed to a non-metallic
a whole.                                                            substance or comprised of
                                                                    metal along with another
                                                                    material. Third, the metal ring
Claim 1                                                             must be a ring that encircles or
                                                                    surrounds the integrated
                                                                    circuit (including the antenna)
                                                                    and the interconnections
                                                                    thereto and provides
                                                                    mechanical strength for
                                                                    protecting the integrated
                                                                    circuit.
Defendant: “laminating it to      No construction is necessary      “uniting the contactless
form a laminated substrate.”      since plain and ordinary          communication insert and the
                                  meaning.                          substrate with one or more
Claim 1                                                             layers of polyester or similar

                                                 4
                                  “laminating” means coating;      material”
                                  “laminated” means coated or
                                  covered with a coating;
                                  “substrate” is any material
                                  which provides the surface
                                  upon which something is
                                  deposited or inscribed
base material                     “A sheet of paper, plastic or    “material separate from the
                                  similar material capable of      claimed ‘cover’”
Claims 1-4                        having thin films of ink and/or
                                  other coatings applied thereto”
tamper-proof stitching            “Stitching that is at least      “stitching that cannot be
                                  partially protected from         altered or tampered with”
Claim 3                           unintended removal or
                                  unraveling”
           Id. at 2-6. The claim construction hearing was held on January 16, 2020. We
           conclude that the following constructions are appropriate.

                                           DISCUSSION

                   Claim construction is the first step in a patent infringement action,
           because the court must understand what the invention is before it determines
           whether the United States has used the invention without permission. The
           scope and meaning of the patent is a question of law. Markman v. Westview
           Instruments, Inc., 517 U.S. 370, 390 (1996). “It is a ‘bedrock principle’ of
           patent law that ‘the claims of a patent define the invention to which the
           patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d
           1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v.
           Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The
           court’s “analytical focus must begin and remain centered on the language of
           the claims themselves, for it is that language that the patentee chose to use to
           ‘particularly point[ ] out and distinctly claim[ ] the subject matter which the
           patentee regards as his invention.’” Interactive Gift Express, Inc. v.
           Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (quoting 35 U.S.C.
           § 112(b)).

                  The court construes the claim terms according to their “ordinary and
           customary meaning” as understood by “a person of ordinary skill in the art
           in question at the time of invention.” Phillips, 415 F.3d at 1313. Here, the
           parties agree that


                                                  5
       [a] person of ordinary skill in the art of the ’506 Patent at the
       time of the alleged invention would have had at least a
       Bachelor’s degree in Electrical Engineering or Computer
       Science, or related field, as well as at least two years of work
       experience relating to working with integrated circuit cards and
       smart cards, including familiarity with identification cards as
       reflected ISO/IEC 7816 as it existed on October 14, 1997,
       which is an international standard related to electronic
       identification cards.

Pl.’s Opening Br. 4; Def.’s Opening Br. 17. 2 At times “the ordinary meaning
of claim language as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such cases involves
little more than the application of the widely accepted meaning of commonly
understood words.” Phillips, 415 F.3d at 1314.

        “The meaning of a term ‘must be considered in the context of all the
intrinsic evidence, including the claims, specification, and prosecution
history.’” Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345,
1350 (Fed. Cir. 2019) (quoting Biogen Idec, Inc. v. GlaxoSmithKline LLC,
713 F.3d 1090, 1094 (Fed. Cir. 2013) (citing Phillips, 415 F.3d at 1314)).
The court may consult extrinsic evidence, such as dictionaries, treatises, and
expert testimony, however, as necessary, without using it to vary the meaning
of terms contrary to the claims, specification, and prosecution history.
Phillips, 415 F.3d at 1319. We turn now to the disputed terms.

A. Claim 1: The Claimed Method Steps Must be Performed in the Sequence
   Claimed.

        In the Joint Claim Construction Statement, the parties disputed
whether one must perform the steps of Claim 1 in the sequence claimed.
Although this dispute appeared near the end of their joint statement and
briefing, understanding whether the claimed method must be performed in
the sequence claimed is a helpful starting point before parsing the individual
words and phrases.

       Defendant argues that “a logical reading of the claim language plainly

2
 Although the parties agreed on the definition of a person of ordinary skill in
the art, the parties did not further discuss a particular field of art. Because the
construction of these terms turned on intrinsic evidence using terms
understandable even to laymen, a definition of the field of art was not needed.
                                        6
requires ordered or sequential performance.” Def.’s Opening Br. 36. The
government asks the court to hold that the steps in Claim 1 must be performed
in the following sequence:

       • Before the metal ring is disposed “to surround the
         integrated circuit,” one must first have formed the
         integrated circuit;
       • Before the contactless communication insert unit is
         laminated “to form a laminated substrate,” one must have
         formed that contactless communication insert unit and
         disposed it on a substrate;
       • Before the laminated substrate is inserted “between the first
         and second sheets of base material,” one must have
         supplied the laminated substrate and a first and second
         sheet of base material;
       • Before one joins “a third sheet of base material to the first
         and second sheets of base material having the laminated
         substrate disposed therebetween,” one must already have
         the laminated substrate disposed between the first and
         second sheets of material.

Id. at 37.

       After initially disputing this construction, IRIS agreed in its
responsive brief to the exact sequence that the government proposed.
Plaintiff wrote, “There is no dispute that the steps must be performed as per
the above Government bullet points.” Pl.’s Resp. Br. 10-11, 12-13. Plaintiff
restated its agreement during the claim construction hearing.

        The parties thus agree that, at least as to the steps quoted above, the
steps articulated in Claim 1 must be performed in the sequence that they
appear in the claim. For clarity, we further hold that, to the extent that there
is any remaining disagreement regarding the sequence of the steps, Claim 1’s
language both logically and grammatically dictates that the claimed method
steps must be performed in the sequence claimed. See Altiris, Inc. v.
Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (citing Interactive
Gift Express, Inc., 256 F.3d at 1342-43).

B. Claim 1: Integrated Circuit

     Plaintiff contends that “[a]n integrated circuit means electronic
component(s) designed to perform processing and/or memory functions.”
                                       7
Joint Statement 2. Specifically, plaintiff argues that Claim 1’s integrated
circuit is a microprocessor, a controller, a memory unit, and a radio frequency
input/output device. Plaintiff argues that the antenna is not a part of the
integrated circuit but is connected to the integrated circuit.

       IRIS argues that the language of Claim 1 reads that one must
“connect[] an integrated circuit . . . and an antenna.” ’506 Patent, col. 20, ll.
14-16. Plaintiff suggests that “and” in that phrase is interchangeable with
words such as “to” or “with.” IRIS points to “the ISO/IEC7816[, which] is
an international standard related to electronic identification cards,” defining
an integrated circuit as electronic components that perform processing or
memory functions. Pl’s Opening Br. 6. Plaintiff next relies on a statement
made in the government’s petition for inter partes review (“IPR”) before the
Patent Trial and Appeal Board in which the government wrote that “‘the
broadest reasonable interpretation of the claim language ‘integrated circuit’
means electronic circuitry or components including microprocessors.’” Id. at
6, Ex. B. 3

        Defendant responds that an “integrated circuit,” whatever it might be
in the abstract, within the meaning of the ’506 Patent, is “a microprocessor,
a controller, a memory unit, a radio frequency input/output device and an
antenna, and the connections thereto.” Joint Statement 2. Defendant points
to the express language of Claim 1 that the integrated circuit “includ[es]”

3
 Plaintiff argues that defendant’s statements in a petition to PTAB seeking
an IPR constitute intrinsic evidence, but it overstates the holdings of the cases
it cites. Plaintiff cites a single Federal Circuit decision in which the court
wrote, “[W]e hold that statements made by a patent owner during an IPR
proceeding, whether before or after an institution decision, can be considered
for claim construction and relied upon to support a finding of prosecution
disclaimer.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed.
Cir. 2017) (emphasis added). Plaintiff also cites Evolutionary Intelligence,
LLC v. Sprint Nextel Corp., 2014 WL 4802426 *4 (N.D. Cal. Sept. 26, 2014),
but the court in that case noted that the patentee’s statements during an IPR
could disclaim scope. Plaintiff finally cites Corel Software, LLC v. Microsoft
Corp., 2016 WL 4444747 *2 (D. Utah Aug. 23, 2016), where the court
granted a motion for a stay while PTAB determined whether to institute an
IPR, reasoning that an IPR may add to the intrinsic record. The court has not
found legal support for plaintiff’s position that statements by the government
when seeking an IPR constitute part of the intrinsic record. The government’s
statement in its petition to PTAB is extrinsic evidence that is unpersuasive
on the meaning of “integrated circuit.”
                                       8
each of the components listed in defendant’s construction. ’506 Patent, col.
20, ll. 10–20. Defendant argues that five components form the integrated
circuit and that “connecting” instructs the maker to connect those five
components to one another to form the integrated circuit. Defendant notes
that the “and” precedes “an antenna,” not “a radio frequency input/output
device,” grammatically placing “an antenna” within the list of components
of the integrated circuit.

       The government also points to the specification where Figure 1 shows
an antenna within the metal ring, which, the government argues, supports the
antenna being part of the integrated circuit surrounded by the metal ring.
Defendant cites definitions that use “interconnection” to mean the connection
between the components. Finally, defendant notes a page from the
prosecution history in which handwritten notes, by someone other than the
patentee, group the antenna into the integrated circuit.

        The dispute between the parties boils down to whether the antenna is
a part of the integrated circuit or merely connected to it. We need look no
further than the plain language in Claim 1, expressly defining the
components of an integrated circuit. Claim 1 begins, “[F]orming 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[.]” ’506 Patent, col. 20, ll. 10-20. First,
a list of five components follows the word “including,” which
unambiguously shows that the integrated circuit in this patent includes an
antenna. Whatever an integrated circuit could mean in a different context,
here it must include the five parts specifically listed as components in Claim
1 of the patent.

        Furthermore, the last part on the list is “an antenna.” Grammatically,
if the list were meant to end with the input/output device, the conjunction
“and” would appear before that phrase rather than before “an antenna.”
Plaintiff’s construction makes the step ambiguous because the list is missing
a conjunction. Nor is the conjunction “and” interchangeable with
prepositions such as “to” or “with.” While it is possible that “and” could
indicate a pair of items that will connect, in this case the foregoing use of
“including” indicates that “and” is a conjunction concluding a list. This
construction does not leave “connecting” floating freely without an object;
rather, the term “by electrically connecting” is an instruction to connect the
parts of an integrated circuit. We thus construe the term “integrated circuit”
to mean a microprocessor, a controller, a memory unit, a radio frequency
                                        9
input/output device, an antenna, and the connections thereto.

C. Claim 1: Disposing a Metal Ring to Surround the Integrated Circuit

       The parties disagree on the meaning of the terms “metal” and “ring.”
Plaintiff argues that “metal” means “comprised of metal along with other
material.” Joint Statement 2. Plaintiff cites the specification to support its
construction; the preferred embodiment found in the specification is
“preferably made of SUS 304 stainless steel.” ’506 Patent, col. 12, ll. 45–50.
Plaintiff requests that the court take judicial notice, under Federal Rules of
Evidence 201(b)(2) and (c)(2), that SUS 304 stainless steel contains carbon,
which is not a metal. From this, plaintiff extrapolates that, when Claim 1
expressly, and only, uses the word “metal,” it means metal plus something
else.

       Defendant responds that “metal” must mean “metal, as opposed to a
non-metallic substance or comprised of metal along with another material.”
Joint Statement 2. Defendant acknowledges that the patent states that “SUS
304 stainless steel” is the preferred material for the “metal” ring. Defendant
objects to the court taking judicial notice that SUS 304 stainless steel is metal
plus other substances, because scientific dictionaries and standards name
SUS 304 stainless steel as simply metal, a “specific type of steel having
defined amounts of chromium and nickel added to an iron-carbon alloy
to improve corrosion resistance.” Def.’s Opening Br. 25. Defendant also
points out that carbon is a specific non-metal substance alloyed into the
single final product of stainless steel. It is not an extra material added to the
metal, such as the substrate material. The government contends that the
presence of carbon in stainless steel is insufficient evidence to construe
“metal” in the ’506 Patent to mean metal plus any other substance in any
amount.

        Plaintiff next argues that “ring” means “a perimetric protective
enclosure.” Joint Statement 2. Plaintiff points to the patent drawings and the
preferred embodiment as showing a rectangular enclosure that surrounds the
integrated circuit. The parties agree that the ring must surround the integrated
circuit. Plaintiff contended at the claim construction hearing that the claim
language does not require the ring to be protective or to supply mechanical
strength, despite its own proposed construction including the term
“protective.” Id.

      Defendant proposes that “the metal ring must be a ring that encircles
or surrounds the integrated circuit (including the antenna) and the
                                       10
interconnections thereto and provides mechanical strength for protecting the
integrated circuit.” Id. Although defendant notes that the parties appear to
agree that the purpose of a ring is to provide the necessary strength to protect
the integrated circuit, defendant objects to a “perimetric protective
enclosure” as too vague, because it would allow plaintiff to argue that a
cavity in the substrate is a perimetric protective enclosure. Defendant argues
that the prosecution history shows that the “ring” must surround the entire
integrated circuit and protect the circuit.

        Finally, defendant proposes that the court should construe the entire
phrase “disposing a metal ring to surround the integrated circuit” as a whole.
Id. Defendant argues that “the metal ring must be ‘disposed’ on and separate
from any substrate or base material.” Id. at 3. The government highlights that
the claim language makes the metal ring distinct from the integrated circuit
and from the substrate. Defendant particularly notes that the metal ring is
disposed on the substrate, in the words of Claim 1, or located on the substrate,
in the words of the specification, which indicates that the metal ring and the
substrate are separate components. At the claim construction hearing,
plaintiff agreed that “disposing” means “to place,” in other words, that one
places the metal ring around the integrated circuit.

        We begin with “metal.” Metal modifies ring, and we find that “metal”
means metal, not metal plus something else. Plaintiff’s argument that “metal”
means “metal plus something else” relies on the fact that the specification
names stainless steel as the preferred substance to make the metal ring.
Plaintiff’s reliance is misplaced. The specification refers to stainless steel as
a metal. The parties agree that SUS 304 stainless steel is a metal, albeit one
whose makeup includes a non-metallic substance. The court concludes that
stainless steel is, in fact, a metal. Plaintiff may not use the presence of carbon
in stainless steel to transform its claim into a ring that may be partially metal
and may be combined with any other substance in no particular ratio. This
improperly removes a limitation from a patent that specifically claimed a
“metal” ring. Thus, metal means metal, as commonly understood, not metal
along with other materials.

        We turn next to “ring.” The language of Claim 1 is unambiguous: a
ring “surround[s]” or encloses. ’506 Patent, col. 20, l. 17. The parties agree
that the ring exists to protect the integrated circuit. The specification likewise
endorses the construction that the ring exists “to provide mechanical
strength.” Id. at col. 12, ll. 45-51. We therefore construe the term “ring” to
mean a structure that surrounds the integrated circuit, and a metal ring is a
metal structure that surrounds the integrated circuit.
                                       11
        Finally, the term metal ring is one of two components of “a contactless
communication insert” described in the first step of Claim 1. The court agrees
with defendant that the patent sets out “disposing a metal ring to surround
the integrated circuit” and “disposing the contactless communication insert
unit on a substrate” as distinct steps. At the claim construction hearing,
plaintiff agreed that the steps are distinct. Moreover, plaintiff has not pointed
to any evidence within or beyond the patent to suggest that the metal ring and
the substrate are interchangeable. The metal ring must surround the entire
integrated circuit, as construed above, which is followed by—and distinct
from—placing the contactless communication insert unit (made up of the
integrated circuit surrounded by the metal ring) on a substrate. The metal ring
and the substrate are, thus, separate components of the invention.

D. Claim 1: Laminating it to Form a Laminated Substrate

        Plaintiff argues that the court can read “laminating” according to its
plain and ordinary meaning, i.e., that “laminating” means coating and
“laminated” means coated or covered with a coating. Joint Statement 3.
Plaintiff contends that “‘substrate’ is any material which provides the surface
upon which something is deposited or inscribed.” Id. Defendant responds
that the term in Claim 1 “laminating it to form a laminated substrate” means
“uniting the contactless communication insert and the substrate with one or
more layers of polyester or similar material.” Id.

        The difference between these two positions is subtle. Defendant
objects to plaintiff’s definition of “laminating” as “coating,” because coating
could include simply applying an adhesive to the contactless communication
insert to attach it to two sheets of base material. Defendant argues that this
understanding of lamination reads out the step of forming a laminated
substrate and then inserting that laminated substrate between the sheets of
base material. Plaintiff argues, however, that the language in Claim 1 does
not specify the nature of the laminate or limit it to a particular material and
that the example given in the specification cannot be used to create a
limitation not present in the claim.

        We agree that the step of laminating the contactless communication
insert unit on a substrate to form a laminated substrate is distinct from the
later step of inserting the laminated substrate between the sheets of base
material. Lamination of the unit to the substrate precedes the introduction of
base material. As to what “laminating” means, the parties agree that
laminating in this patent requires covering the unit and substrate with a
                                       12
material that bonds them together. The court therefore finds that “laminating”
means bonding the contactless communication insert unit to the substrate
with one or more layers of a coating material.

E. Claims 1 – 4: Base Material

       The parties disagreed in briefing on the construction of “base
material” in Claims 1-4. Plaintiff contended that “base material” means “[a]
sheet of paper, plastic or similar material capable of having thin films of ink
and/or other coatings applied thereto.” Joint Statement 4. Plaintiff pointed
out that Claim 1 states that the third sheet of base material has “printed text
data located so as to be readable by humans,” which shows that the third
sheet must be capable of having text data applied to it. ’506 Patent, col. 20,
ll. 30–35. (We note, however, that the first two references to “base material”
do not contemplate printed text data.) Plaintiff also pointed to the preferred
embodiment which states that the first two sheets of base material “may
preferably [be] comprise[d] of a sheet of paper, plastic or other suitable base
material for document,” supporting plaintiff’s construction that base material
may be paper, plastic, or similar material. Id. at col. 13, ll. 65-67.

        Defendant argues that the principles of claim differentiation require
that “base material” mean a “material separate from the claimed ‘cover’.”
Def.’s Opening Br. 33. Defendant points out that Claim 1 recites the supply
of a first, second, and third sheet of base material in sequence and that
dependent Claim 3 later adds the step of “attaching a cover page to the third
sheet of base material.” ’506 Patent, col. 20, ll. 35-50. Claim 4 then adds that
one must “supply[] a cover comprising a relatively rigid material compared
to the first, second and third sheets of base material and joining the cover to
the first, second and third sheets of base material for supporting the integrated
circuit.” Id. Defendant further cites the specification, noting that each
reference to “cover” in the specification is distinct from the base material. Id.
at col. 6, ll. 30-40. Based on the claim language, defendant concludes that
the base material and the cover must be separate materials.

       The dispute between the parties ultimately was whether the sheets of
base material are distinct from the claimed “cover,” rather than what is the
necessary composition of base material. At the claim construction hearing,
however, plaintiff stated that it was content with the construction that base
material is separate from the claimed cover.

      Absent plaintiff’s concession, the court would still conclude that the
base material is separate from the claimed cover. The basic definition of a
                                       13
dependent claim is one that “contain[s] a reference to a claim previously set
forth and then specif[ies] a further limitation of the subject matter claimed.”
35 U.S.C. § 112(d) (2018). Under the principles of claim differentiation, “the
presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim.” Phillips, 415 F.3d at 1315. The dependent claims make clear that the
“cover” is in addition to, or different from, the sheets of base material.
Independent Claim 1 introduces three sheets of base material that one joins
with the laminated substrate in between the first two sheets. Dependent
Claim 2 then adds that one attaches “a cover page” to the third sheet of base
material. ’506 Patent, col. 20, ll. 35–40. The specification likewise refers to
the base material sheets and the cover in different steps. Thus, the term “base
material” is material separate from the claimed cover.

F. Claim 3: Tamper-Proof Stitching

        The final dispute is the meaning of “tamper-proof stitching.” Plaintiff
argues that “tamper-proof stitching” is “[s]titching that is at least partially
protected from unintended removal or unraveling.” Joint Statement 6.
Plaintiff relied on the PTAB’s decision instituting an IPR that accepted this
construction from the government. Defendant takes the narrower view that
“tamper-proof stitching” means “stitching that cannot be altered or tampered
with.” Id. Defendant argues that the plain and ordinary meaning of “tamper-
proof” is that an object cannot be tampered with. Defendant cites the
specification, which states, “To ensure maximum security of the documents,
the third page with printed text is stitched onto the third base sheet and the
cover page using tamper-proof stitching.” ’506 Patent, col. 6, ll. 35-40.
Defendant also cites the discussion of preferred embodiments, which says
that “the data stored in the document 10 can only be accessed by an approved
and authorized interface device and therefore, cannot be altered or tampered
with.” Id. at col. 14, ll. 35-55. The government concludes that “tamper-proof”
means “that the claimed stitching must prevent intentional alteration, i.e.,
tampering.” Def.’s Opening Br. 39 (emphasis omitted).

        The parties stake out extreme positions in their proposed
constructions. The definition accepted by PTAB is unpersuasive, because the
patent does not suggest that the stitching is partial or that the only tampering
the stitching protects against is unintentional tampering or unraveling.
Defendant’s construction goes too far, however, because the specification
supports the notion that this invention “improved security” of the
identification document but did not make it impervious to any imaginable
tampering. ’506 Patent, col. 1, ll. 10–35. We note that discovery in this case
                                      14
         involved destructive examination of passports. When asked at the claim
         construction hearing, the parties agreed that a proper construction of
         “tamper-proof” is that the stitching cannot readily be tampered with. The
         court therefore holds that “tamper-proof stitching” means stitching that
         cannot readily be altered or tampered with.

                                       CONCLUSION

                The following table states the court’s holding as to each term:

                    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         The limitations in Claim 1 must be performed
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                                               a structure that surrounds the integrated
                                                   circuit

metal                                              metal

                                                   The metal ring must surround the integrated
                                                   circuit. The metal ring and the substrate are
disposing a metal ring to surround the             separate components.
integrated circuit
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

                The parties shall file a joint status report on or before February 5,
         2020, proposing a schedule for next steps in this matter.

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