     In the United States Court of Federal Claims
                                No. 15-175C
                            (Filed: May 8, 2019)
                          (Re-Filed: May 30, 2019) 1

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

IRIS CORPORATION BERHAD,

                             Plaintiff,

v.

THE UNITED STATES,

                             Defendant.

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

                                    ORDER

       On March 11, 2019, defendant moved under Rule 37(b) of the Rules
of the United States Court of Federal Claims for sanctions against plaintiff,
IRIS Corporation Berhad (IRIS), for failing to comply with this court’s
Patent Rules 2 and orders detailing requirements for plaintiff’s disclosures.
The government argues that plaintiff’s infringement contentions are
deficient; that its position on prosecution history estoppel includes a waived
argument; that its claim construction position includes improper citations;
and that its commercial success disclosure is lacking. The government asks
the court to strike many of plaintiff’s disclosures in their entirety and for the
court to dismiss this case. Plaintiff responds that its disclosures on each topic
comply with the Patent Rules and the court’s orders. The motion is fully
briefed, and we held argument on May 7, 2019.

      We grant defendant’s motion to strike plaintiff’s infringement
contentions because plaintiff did not sufficiently identify where on the U.S.

1
  This order was originally issued under seal to permit the parties an
opportunity to propose redactions on or before May 22, 2019. The parties did
not file any proposed redactions. We thus reissue this order unredacted.
2
  The Patent Rules are found in Appendix J of the Rules of the United States
Court of Federal Claims.
electronic passport it has identified that its patented method is used. We
direct plaintiff to amend its infringement contentions to state which U.S.
passports allegedly infringe the patent and where each element of each
asserted claim is found. The remainder of defendant’s motion is denied.

        IRIS alleges that the United States infringed its U.S. Patent 6,111,506
(“the ‘506 patent”) by using and issuing electronic passports that were
manufactured according to the claims of the ‘506 patent without
authorization from IRIS, citing the doctrine of equivalents as an example of
infringement. See Am. Compl. ¶¶ 17-22. The government moved to dismiss
plaintiff’s complaint for failure to state a claim because the doctrine of
equivalents was unavailable to plaintiff as a matter of law due to prosecution
history estoppel.

       We concluded that, although defendant’s “argument regarding patent
prosecution history estoppel may well ultimately prove to be successful,” the
issue was premature and that it should properly follow claim construction
and disclosure of plaintiff’s “specific infringement contentions.” ECF No. 51
at 3. The court’s amended scheduling order required plaintiff to disclose “its
infringement contentions, claim construction positions including all intrinsic
and extrinsic evidence that supports the proposed construction, and any
invocation of a recognized exception to Festo including all supporting
evidence.” ECF No. 57, 59.

       IRIS timely disclosed its infringement contentions, position on
prosecution history estoppel, claim construction position, and its intention to
rely on commercial success. Def.’s Ex. N. The government moved to strike
most of plaintiff’s disclosures on March 11, 2019. On April 23, the parties
stipulated to several matters, including plaintiff waiving “reliance upon
‘secondary considerations of nonobviousness,’ either affirmatively or in
response, including (1) commercial success.” ECF No. 70.

         Defendant first contends that plaintiff did not supply the required
information identifying which passports allegedly infringe plaintiff’s patent
and in what way. The Patent Rules require plaintiff to serve a Preliminary
Disclosure of Infringement Contentions, including “for each asserted claim,
each product, process, or method that allegedly infringes the identified claim.
. . . [and] a chart identifying where each element of each asserted claim is
found within each accused product, process, or method.” Patent Rule 4(b)-
(c). Both categories require “the name and model number, if known.” Id.

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       This court’s October 9, 2015 case management order likewise
provides that plaintiff must disclose “[t]he identity of each apparatus,
product, device, process, method, act or other instrumentality of each
opposing party which allegedly infringes each claim; . . . [and] [w]here each
element of each infringed claim is found within each apparatus, product,
device, process, method, act or other instrumentality.” ECF No. 21. The
court’s order denying defendant’s motion to dismiss anticipated that plaintiff
would disclose “specific infringement contentions.” ECF No. 51 at 3. A party
may amend its disclosure of infringement contentions “only by court order
upon a showing of good cause.” Patent Rule 24.

        IRIS argues that its disclosure is sufficient because it has recited how
it believes the method is practiced in U.S. electronic passports. Plaintiff notes
that it is not required to prove infringement at this stage. Defendant agrees
but emphasizes that the disclosure requirement exists to provide notice to the
government of how plaintiff plans to demonstrate infringement. The
government argues that plaintiff should be able to identify specific versions
of the passports from particular suppliers and where on those passports the
alleged infringement can be seen, drawing from the materials defendant has
produced.

        We agree with the government. One function of required disclosures
in discovery is “to allow the defendant to pin down the plaintiff’s theories of
liability and to allow the plaintiff to pin down the defendant’s theories of
defense, thus confining discovery and trial preparation to information that is
pertinent to the theories of the case.” O2 Micro Intern. Ltd. v. Monolithic
Power Sys., Inc., 467 F.3d 1355, 1365 (Fed. Cir. 2006). IRIS’ disclosure
provides no more depth than plaintiff’s amended complaint: the infringing
products are merely U.S. electronic passports made according to the ‘506
patent method. For instance, one limitation of claim one is “disposing a metal
ring to surround the integrated circuit.” Def.’s Ex. N. at 2. IRIS’
identification of which passports and where on those passports the
infringement can be seen is:

       Infineon, Gemalto and/or Smartrac as the case may be, being
       suppliers to the Government of inlays for electronic passports,
       surrounds the IC by a perimetric enclosure, at least a portion of
       which includes metal, said enclosure comprising both metal
       and Teslin or Teslin like material. Surrounding the IC with the
       metal and Teslin or Teslin like material enclosure, or ring,

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       constitutes the step of disposing a metal ring to surround the
       IC. This is literal infringement.

Id.

       The only specificity given defendant is that the class of products that
infringe is “electronic passports,” provided by some unspecified combination
of prime contractors and subcontractors. IRIS simply replaces “metal ring”
with its preferred construction of those words rather than pointing out what
part of the offending electronic passports constitutes a metal ring or its
equivalent. It does not provide any citations or examples that would notify
the government of which specimens contain the infringement that plaintiff
spots, despite having received access to the inner-workings of the United
States passport some time ago. As we learned at oral argument, that access
included the opportunity to completely disassemble these passports and take
enlarged photographs.

        IRIS’ theory of infringement under the doctrine of equivalents is
similarly generic. Although the limitation of “disposing a metal ring to
surround the integrated circuit” is particularly significant, the government
argues that plaintiff has not sufficiently identified where any of the
limitations of the method are practiced by suppliers for U.S. electronic
passports. The government notes that this hampers its ability to pinpoint
which supplier’s product is at issue.

        The Patent Rules and our orders require more than plaintiff’s broad
recitation. The government is entitled to know where on its passports IRIS’
patented method can be seen and whether it is present on passports from all
suppliers or a limited number. When arguing that the court should deny the
government’s motion to dismiss, plaintiff was correct that it could plead
infringement broadly and nail down its theories in its disclosures. Now is the
time to be specific so that the parties and the court can focus their attention
on the pertinent accusations during claim construction. Plaintiff has a variety
of schematics and pictures in its possession that allow IRIS to identify which
versions of the passport infringe on its patented method and how. The court
therefore strikes plaintiff’s current infringement contentions and orders it to
serve amended infringement contentions on defendant on or before May 31,
2019.

        Defendant also argues that the court should strike section one of
plaintiff’s Position with Respect to Prosecution History Estoppel as it Relates
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to the ‘506 Patent. In section one, IRIS discloses its position that the doctrine
of prosecution history estoppel does not apply to the ‘506 patent. The
government contends, without citing authority, that IRIS waived that
argument by failing to raise it in its response to the government’s motion to
dismiss. Defendant submits that the court viewed plaintiff’s failure to argue
the applicability of prosecution history estoppel during briefing on the
motion to dismiss as a waiver when we stated in our earlier opinion,

       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.

ECF No. 51 at 3 n.2.

       Although we understand defendant’s frustration with plaintiff’s
evolving position on prosecution history estoppel, our prior order does not
preclude plaintiff from arguing both the applicability of the doctrine as well
as exceptions to its application. Our holding in the order denying the motion
to dismiss was simply 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.” Id. at 3.

        The issue of prosecution history estoppel thus remains premature.
Plaintiff did not waive its section one argument and it appropriately disclosed
its position regarding the applicability of the doctrine. We deny defendant’s
motion in this respect.

       The government next asks the court to strike from plaintiff’s claim
construction position its reliance on statements made by defendant’s expert
during the inter partes review (“IPR”) at the Patent and Trademark Office.
Defendant argues that its expert’s statements during the IPR are not part of
the intrinsic record that the court may consider during claim construction;
that plaintiff failed to follow the procedure for relying on expert testimony;
and that the statements may not be construed as admissions. IRIS responds
that it does not plan to use expert testimony, as reflected by its claim
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construction position, and that the statements are part of the prosecution
history and thus appropriate to consider when construing its patent’s claims.

        The government brought its motion under Rule 37(b), which pertains
to failure to comply with a court order or to provide discovery. This portion
of plaintiff’s claim construction position offends neither requirement. In fact,
this court’s December 6, 2018 scheduling order directed plaintiff to disclose
“all intrinsic and extrinsic evidence” that it would rely on for its claim
construction position. ECF No. 57.

        The parties disagree on whether the court may consider the evidence
that plaintiff’s plans to rely on during claim construction. We ultimately may
agree with the government that this expert analysis should not be viewed as
part of the intrinsic record. Regardless, this disagreement is properly resolved
through the court’s decision on claim construction, not through a motion to
strike. We thus deny defendant’s motion as it relates to plaintiff’s claim
construction position.

       The government’s final argument is that plaintiff’s commercial
success contentions are deficient. Plaintiff has stipulated that it “waives
reliance upon” commercial success, mooting the government’s argument on
this point. ECF No. 70.

       In sum, we grant defendant’s motion to strike plaintiff’s infringement
contentions. Plaintiff is directed to amend its infringement contentions to
particularly state which U.S. passports and what components in those
passports allegedly infringe the elements of each infringed claim. We lift the
stay on our January 29, 2019 scheduling order and amend it to provide the
following deadlines:

       1. Plaintiff must serve its amended infringement contentions on
          defendant on or before May 31, 2019.
       2. Defendant shall file any motion challenging the sufficiency of
          plaintiff’s amended contentions on or before June 7, 2019.
       3. If defendant does not file a motion relating to the amended
          disclosure, the parties shall file a joint status report proposing a
          schedule for further proceedings on or before June 7, 2019.

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