                                No. 15-175C
                          (Filed: April 27, 2020)
                         (Re-filed: May 14, 2020)1

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

IRIS CORPORATION BERHAD,                               Patents; motion for
                                                       summary judgment;
                            Plaintiff,                 infringement; doctrine
                                                       of equivalents;
v.
                                                       tangential exception.
THE UNITED STATES,

                            Defendant.

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

       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.

                                 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 U.S. Patent No. 6,111,506 (“the
‘506 Patent”) by its manufacture and importation of certain electronic
passports. Before the court is the government’s motion for summary



1
 Due to the protective order in this case, this opinion was issued under seal.
The parties reported that they do not have any proposed redactions. The
opinion is therefore released publicly without redaction.
judgment on the issue of infringement. For the reasons discussed below, we
grant the government’s motion.

                              BACKGROUND

        The ‘506 Patent concerns a method of making an improved security
identification document containing 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.

       When presented in prosecution, Application Claim 1 did not include
the step of “disposing a metal ring to surround the integrated circuit.” Def.’s
                                      2
Ex. B at 45. Instead, Application Claim 4, a dependent claim, recited a
“method of making an identification document according to claim 1, wherein
the step of forming a contactless communication insert unit includes the step
of disposing a metal ring to surround the integrated circuit.” Id. at 46. The
Examiner’s Office rejected Application Claims 1-3 and 5-8 as obvious. Id. at
78-87. The claims were obvious in light of two preceding patents, which both
taught a method to construct and insert or otherwise use a communication
unit to control, process, and coordinate data in an identification device. Two
other preceding patents taught methods of adhesion and certain uses of a
memory unit that made the IRIS patent claims obvious. The IRIS method
would add a microprocessor and controller, a different way of placing the
insert unit between sheets of material, and cover page, but the Examiner’s
Office found that these steps would have been obvious to one of ordinary
skill in the art at the time of the claimed invention. Under “Allowable Subject
Matter,” the Examiner’s Office wrote, “Claim 4 is objected to as being
dependent on the rejected base claim but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims.” Id. at 85.

       In response, IRIS requested to

       amend claim 1 as follows: 1. (Amended) A method of making
       an identification document comprising the steps of: forming a
       contactless communication insert unit by electrically
       connecting an integrated circuit included 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 . . . .

Id. at 91 (emphasis in original). IRIS concluded, “Please cancel claim 4
without prejudice or disclaimer of the subject matter recited therein.” Id. at
92. In its remarks, IRIS stated, “Applicant amends claim 1 to include claim
4 and cancels claim 4.” Id. Its explanation for the amendment was concise:
IRIS thanked the Examiner for indicating that Claim 4, if rewritten as part of
the independent claim, was allowable over prior art and stated that it accepted
the Examiner’s recommendation. IRIS submitted that the prior art did not
teach the method of making an identification document with the added
limitation of “disposing a metal ring to surround the integrated circuit.” Id.
at 93. IRIS provided no further explanation. The Examiner’s Office later
issued IRIS a patent for the claims as amended, the ‘506 Patent.


                                        3
        IRIS brought its claim in this court on February 24, 2015, alleging that
“all electronic passport inlays that have been in use since the issuance of the
‘506 patent have been manufactured according to the method, or to an
equivalent of the method, disclosed and claimed by said ‘506 patent.” ECF
No. 1 at ¶ 10. It alleged infringement under 35 U.S.C. § 271(g), relating to
importation, use, or sale of a product made by a process patented in the
United States.

       During discovery, IRIS responded to a request for admission by
“qualifiedly admit[ing] that the structure [i.e., the accused electronic
passport] appears not to literally include a metal ring.” Def.’s Ex. D at 1-7.
IRIS later responded to interrogatories by stating that the samples the
government had produced showed “a cutout” or “equivalent structure for ‘a
metal ring to surround the integrated circuit’.” Id. at Ex. E.

        In April 2018, IRIS filed an Amended Complaint, which added a
theory of infringement under 35 U.S.C. § 271(a), direct infringement by use
of a process. The government moved to dismiss the Amended Complaint for
failure to state a claim on which relief can be granted, because the complaint
did not allege literal infringement regarding “disposing a metal ring to
surround an integrated circuit” and infringement under the doctrine of
equivalents was unavailable to IRIS as a matter of law due to patent
prosecution estoppel. At the hearing on the government’s motion, IRIS
represented that succeeding on its literal infringement claim would require
the court to construe “metal” as “made of metal and other material.” Id. at
Ex. F (Transcript 30:16-25). The court denied the government’s motion,
because the complaint alleged infringement generally and, therefore,
“survive[d] 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.” IRIS Corp.
Berhad v. United States, No. 1:15-cv-00175, 2018 WL 5305324 at *2 (Fed.
Cl. Oct. 26, 2018). Moving forward, the court ordered IRIS to disclose, in
addition to its infringement contentions and other disclosures, any invocation
of a recognized exception to the doctrine of equivalents as set out in Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002)
(Festo I), including all supporting evidence.

       IRIS served infringement contentions on the government in January
2019, followed by amended infringement contentions in May 2019 to comply
with the court’s order to particularly identify which products and where on
those products the infringing use could be seen. Additionally, regarding
exceptions to Festo I, IRIS limited itself to arguing the “tangentiality”
                                       4
exception. Id. at Ex. G at 12. In correspondence with the government to
clarify its contentions, IRIS further stated, “IRIS is identifying the same
Teslin or Durasoft for . . . ‘disposing a metal ring to surround the integrated
circuit;’ and, ‘disposing the contactless communication insert unit on a
substrate and laminating it to form a laminated substrate’.” Id. at Ex. I.

       Following claim construction briefing and the Markman hearing, the
court concluded that the following constructions of terms in the ‘506 Patent
were appropriate:

 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 The limitations in Claim 1 must be
 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


 disposing a metal ring to surround The metal ring must surround the
 the integrated circuit             integrated circuit. The metal ring
                                    and the substrate are separate
                                    components.
 laminating it to form a laminated bonding         the       contactless
 substrate                          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

IRIS Corp. Berhad v. United States, 147 Fed. Cl. 160, 171 (2020).

                                      5
            The government filed this motion for summary judgment on
     infringement on March 6, 2020. The motion is fully briefed. Oral argument
     is deemed unnecessary.
                                 DISCUSSION

            Summary judgment is proper when “there is no genuine dispute as to
     any material fact and the movant is entitled to judgment as a matter of law.”
     Rules of the United States Court of Federal Claims (“RCFC”) 56(a). Entry
     of summary judgment is proper when a party “fails to make a showing
     sufficient to establish the existence of an element essential to that party’s
     case, and on which that party will bear the burden of proof at trial.” Celotex
     Corp. v. Catrett, 477 U.S. 317, 322 (1986). The party moving for summary
     judgment bears the initial burden of showing that no genuine dispute of
     material fact exists, which it may do by showing an absence of proof
     regarding an essential element of the non-moving party’s case. Id. at 323-25.

             Once the moving party has supported its motion, the burden shifts to
     the non-moving party to identify specific facts on which a genuine dispute
     exists for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).
     The non-moving party “must do more than simply show that there is some
     metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v.
     Zenith Radio Corp., 475 U.S. 574, 586 (1986). “Where the record taken as a
     whole could not lead a rational trier of fact to find for the non-moving party,
     there is no ‘genuine issue for trial.’” Id. (quoting First Nat’l Bank of Arizona
     v. Cities Serv. Co., 391 U.S. 253, 289 (1968)).

I.      The United States Electronic Passports do not Literally Infringe the ‘506
        Patent.

             After claim construction, “[s]ummary judgment on the issue of
     infringement is proper when no reasonable jury could find that every
     limitation recited in a properly construed claim either is or is not found in the
     accused device either literally or under the doctrine of equivalents.” PC
     Connector Sols. LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir.
     2005). “To prove literal infringement, the patentee must show that the
     accused device contains every limitation in the asserted claims. If even one
     limitation is missing or not met as claimed, there is no literal infringement.”
     Mas–Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998)
     (internal citations omitted).




                                            6
       A. Creating an Integrated Circuit

       Claim 1 states the step 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.” ‘506 Patent, col. 20, ll. 13–18. In the claim
construction order, the court held that this step requires the antenna to be a
part of the integrated circuit, not a separate component that is simply
connected to the integrated circuit.

       The government argues that there is no evidence in the record that
accused electronic passports feature an integrated circuit that includes an
antenna as part of the integrated circuit, meaning that there is no “integrated
circuit” as stated in the ‘506 Patent. Moreover, the government points out
that plaintiff’s infringement contentions did not allege that the integrated
circuit in accused devices includes an antenna. Rather IRIS alleged that
Gemalto, Infineon, Toppan, ASK, or Smartrac inlays or contactless
communication inserts “connect[] an antenna via the [input/output] area of
the [integrated circuit] . . . .” Def.’s Ex. H at 2-3. IRIS further stated in its
contentions that “the antenna has been electrically connected to the
[integrated circuit], and the [integrated circuit] includes a controller, a
microprocessor and a memory unit along with the [input/output].” Id.

        In its response to the motion for summary judgment, however, IRIS
argues that a disputed fact exists regarding whether Gemalto and ASK inlays
“come with chips that have an antenna as part of the integrated circuit.” Pl.’s
Resp. 7-8, Ex. C. Plaintiff supports its argument with a March 31, 2020
declaration from an electrical engineer, David Ferguson, who examined
United States electronic passports for IRIS on June 12, 2018. Mr. Ferguson
concluded that the Gemalto and ASK inlays have an integrated circuit that
includes an antenna. His conclusion is based on an article from the website
EDN which states that a predecessor company to Gemalto supplied such
samples to the United States. He also cites x-rays of United States electronic
passports that he has labeled to show an antenna connecting to the frame of
the integrated circuit.

        We agree with the government that there is no genuine dispute of fact
regarding the step of forming an integrated circuit that includes an antenna.
First, IRIS only argues that a triable question exists as it relates to Gemalto
or ASK inlays. IRIS did not point to any facts that suggest that an antenna
can be found in the integrated circuit of the Infineon, Toppan, or Smartrac
inlays or contactless communication inserts. Thus, as it relates to those
                                       7
accused devices, there is an absence of evidence that a claim limitation of the
‘506 Patent is present.

       As to the Gemalto or ASK inlays, IRIS has pivoted from its
infringement contentions that it disclosed prior to claim construction. Despite
Mr. Ferguson analyzing the samples provided by the United States in June
2018, IRIS made no mention of its theory that certain inlays included an
antenna in the integrated circuit in its original January 2019 infringement
contentions or in its revised May 2019 infringement contentions. This
approach is at odds with the purpose of the disclosure requirement,
particularly when IRIS effectively seeks to amend its contentions without a
showing of good cause, as required by this court’s Patent Rule 24. The court
will not consider a novel, undisclosed infringement contention that should
have been disclosed to the government during the time set for serving
infringement contentions.

        In any event, as the government points out, the declaration does not
raise a genuine dispute of material fact. First, the article Mr. Ferguson cites
refers to a predecessor of Gemalto providing “manufactured initial
production samples for the US government to evaluate.” Pl.’s Ex. D. The
article does not support an inference that those samples were used to
manufacture United States electronic passports. The x-rays Mr. Ferguson
labeled show a piece of an antenna connected to a frame or some outer part
of an inlay. At best, these x-rays support plaintiff’s disclosed contention that
the antenna is connected to the integrated circuit. Finally, IRIS does not
argue, as we discuss below, that the Gemalto or ASK inlays include an
antenna that is surrounded by a metal enclosure. Thus, even if the antenna on
the Gemalto or ASK inlays were a part of the integrated circuit, there is a
lack of evidence that the integrated circuit is surrounded by a metal ring. For
each of the foregoing reasons, the court grants the government’s motion on
the issue of literal infringement of the integrated circuit step of Claim 1.

       B. Surrounding an Integrated Circuit with a Metal Ring

        Claim 1 also includes the step of “forming a contactless
communication insert unit by electrically connecting an integrated circuit . .
. and disposing a metal ring to surround the integrated circuit.” ‘506 Patent,
col. 20, ll. 13–19. In the claim construction order, the court held that a “ring”
is a structure that surrounds the integrated circuit; “metal” means metal, as
typically understood; and that the metal ring and the substrate that appears in
the next step of Claim 1 are separate components.

                                       8
        The government argues that there is an absence of proof that the
United States electronic passports use the method of surrounding an
integrated circuit with a metal ring. Defendant dissects the infringement
contentions from several angles. First, it argues, that metal appears, at most,
on two sides of the circuit in the accused devices, which shows there is no
ring. In other words, there is no evidence that metal surrounds the integrated
circuit. Second, the other two sides of the integrated circuit are set on top of
Teslin or Durasoft materials which are not metal, showing that there is no
evidence of a metal ring. And, third, the Teslin or Durasoft is in fact the
substrate upon which a contactless communication unit is disposed—the next
step of Claim 1—which means that the material cannot form the ring.

        IRIS qualifiedly admitted in 2016 that the United States electronic
passports do not use the method of surrounding, or enclosing, an integrated
circuit with a metal structure, suggesting instead that there was an equivalent
used in the passports. Def.’s Exs. D, E. As this case continued, IRIS conceded
in 2018 that if the court determined that a metal ring means that metal must
surround the integrated circuit, the United States electronic passport does not
literally infringe the ‘506 Patent. Def.’s Ex. F. In its revised infringement
contentions, IRIS stated that Gemalto, Infineon, Toppan, ASK, or Smartrac,
suppliers of inlays for electronic passports, surround the integrated circuit
“by a perimetric enclosure, at least a portion of which includes metal, said
enclosure comprising both metal and Teslin or Durasoft.” Def.’s Ex. H.

        In its response to the motion for summary judgment, however, IRIS
argues that the step of “disposing a metal ring to surround the integrated
circuit,” ‘506 Patent, col. 20, ll. 17–18, is literally infringed when Infineon
attaches “a metal carrier . . . to the chip.” Pl.’s Resp. 4. IRIS supports this
argument with a few lines from Infineon’s deposition representative in which
the deponent agreed that a “chip is glued onto a metal part that forms part of
the module.” Id. IRIS argues that this citation, and only this citation,
“creat[es] an issue of fact which cannot be resolved by summary judgment.”
Id. IRIS does not reference any other inlay manufacturers in this section of
its response.

        Plaintiff’s lone citation does not create a genuine dispute on the issue
of whether a metal ring surrounds the integrated circuit on the accused
devices. First, IRIS only argues that a triable question exists as it relates to
Infineon inlays regarding the step of “disposing a metal ring to surround the
integrated circuit.” ‘506 Patent, col. 20, ll. 17–18. IRIS did not point to any
facts that suggest that such a metal ring is disposed to surround the integrated
circuits supplied by Gemalto, Toppan, ASK, or Smartrac. Thus, as it relates
                                       9
to those accused devices, there is no evidence that a claim limitation is
present.

        Second, as to the Infineon inlays, IRIS argues that there is a dispute
as to whether “a metal carrier is attached to the chip” surrounds the integrated
circuit. Pl.’s Resp. 4. IRIS did not disclose in its infringement contentions
that it alleges that a carrier glued to a chip on the Infineon inlays constitutes
a metal ring. IRIS took the Rule 30(b)(6) deposition of Infineon’s
representative in 2016, giving IRIS ample time to disclose this theory in its
infringement contentions. Here again, IRIS attempts to change its
contentions. IRIS only disclosed its theory that a mix of metal and Teslin or
Durasoft constitutes the ring. In other words, IRIS contended that metal on
less than all sides of the integrated circuit combined with a sheet of Teslin or
Durasoft creates a “metal ring.” Plaintiff now argues, without prior
disclosure, that a carrier or frame or other metal piece associated with the
Infineon inlay surrounds the integrated circuit. The court will not consider
this undisclosed infringement contention.

       Even if plaintiff had timely disclosed this theory, the testimony that
IRIS cites of Infineon’s Rule 30(b)(6) witness, Joerg Borchert, when read in
context, does not support the existence of a triable question on whether this
“carrier” is a piece of metal that surrounds the integrated circuit. When asked
in several different ways, the deponent consistently describes Infineon’s
inlay as a package of a chip and a carrier and a mold, never suggesting that
the carrier surrounds the chip. Def.’s Ex. L. IRIS represents that the deponent
could not say whether the metal piece surrounds the chip, but the deponent
simply did agree with counsel and explained “[t]he chip is attached to this
metal with a glue” along with the rest of the inlay manufacture process. Id.
at 8 (Borchert Deposition 24:8-9). The identified section of the deposition
does not even suggest what functions the “carrier” or the “chip” serve in
relation to forming the inlay. Gluing a piece of metal to a chip, which is all
the deposition suggests, does not constitute surrounding an integrated circuit
with a metal ring. We agree with the government that IRIS cannot
manufacture a dispute of fact from a selection of ambiguous quotes from a
single deposition.

       Finally, IRIS argues that “[t]he court’s construction did not mandate
that the metal ring could not include other material in addition to metal,”
returning to its theory that Teslin or Durasoft coupled with the metal
constitutes a metal ring. Pl.’s Resp. 3. Plaintiff argues that, even if the
Infineon carrier does not surround the integrated circuit, a Teslin or Durasoft
sheet can complete the ring. IRIS draws a distinction without meaning,
                                       10
because what the court did hold was that metal must surround the integrated
circuit, as stated in Claim 1. That metal might be mixed with some other
substance, certainly, but metal must nevertheless enclose the circuit. Teslin
or Durasoft are not metal. IRIS has not identified any evidence in the record
that Infineon manufactures an integrated circuit and then surrounds it with a
metal enclosure prior to adhering it to a sheet of substrate material.

       In sum, the government demonstrated that there is an absence of
evidence that any accused device “dispos[es] a metal ring to surround the
integrated circuit.” Plaintiff conceded as much during discovery, and its
response to the motion for summary judgment does nothing to dispel that
concession. The court grants the government’s motion on the issue of literal
infringement of this step of Claim 1.

       C. Performing the Claim 1 Steps in the Order Recited

       Claim 1 further states the steps of “forming a contactless
communication insert unit by electrically connecting an integrated circuit . .
. 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 . . . .” ‘506 Patent, col. 20, ll. 13–20. In the claim
construction order, the court held that the limitations in Claim 1 must be
performed in the sequence claimed.

        The government argues that there is no evidence in the record that the
accused electronic passports are manufactured by (1) forming an integrated
circuit, (2) surrounding the integrated circuit with a metal ring, and (3)
disposing the newly-formed contactless communication insert on a
substrate—in that order. Defendant points out that a metal piece that attaches
the antenna to other components of the circuit cannot perform both the step
of connecting the integrated circuit and surrounding it with a metal ring.
Likewise, defendant contends that the Teslin or Durasoft piece that
constitutes the substrate cannot also be a part of the metal ring. We agree.

       In its response, IRIS again isolates only the Infineon inlay. IRIS
argues that, based on the same lines of Mr. Borchert’s deposition discussed
above, a disputed material fact exists. IRIS also cites a picture, which it
represents is an Infineon inlay, that shows what IRIS labels as an
“equivalent” of a metal ring on one side of the picture and the “substrate upon
which the contactless communication insert has been disposed” on the other
side of the picture. Pl.’s Ex. B.

                                      11
              We conclude that there is no genuine dispute on the issue of whether
      United States electronic passports use the steps of Claim 1 in the order recited
      in the ‘506 Patent. First, IRIS only argues that a triable question exists as it
      relates to Infineon method. Therefore, as it relates to the Gemalto, Toppan,
      ASK, or Smartrac method, there is an absence of evidence that the inlays are
      manufactured using the steps as set out in Claim 1. We grant the
      government’s motion as to those accused products.

              Despite years of discovery and stripping down samples, plaintiff’s
      only response is that there is a triable question as to how Infineon puts its
      inlays together. We find that IRIS has not identified any facts that would
      allow a reasonable factfinder to conclude that a metallic carrier attached to a
      chip fulfills the step of disposing a metal ring to surround the integrated
      circuit; so that step is missing from the sequence. Plaintiff’s alternative
      theory is that the Teslin or Durasoft material is used as both a part of the
      “ring” and the “substrate” on which the contactless communication insert is
      placed. Def.’s Exs. H, I. To the extent IRIS argues that the substrate performs
      both steps, there is no dispute of material fact that the accused devices do not
      follow the patented method because the Teslin or Durasoft cannot be both
      the ring and the substrate. The court thus grants the government’s motion for
      summary judgment as to the issue of literal infringement overall for each of
      the reasons discussed in Section I.

II.      The Doctrine of Equivalents is Unavailable to Plaintiff, and, even if it
         were Available, the United States Electronic Passports do not Infringe the
         ‘506 Patent under the Doctrine of Equivalents.

             When a patentee cannot show literal infringement, it may resort to the
      doctrine of equivalents “to claim those insubstantial alterations that were not
      captured in drafting the original patent claim but which could be created
      through trivial changes.” Festo I, 535 U.S. at 733. Here, IRIS is “relying
      upon an equivalent for the ‘metal’ element of ‘metal ring.’” Pl.’s Resp. 6.
      IRIS argues that the difference between a “metal” ring and a “metal along
      with some other substance” ring is insubstantial. The government argues that
      prosecution history estoppel bars plaintiff’s reliance on the doctrine of
      equivalents; that the doctrine of equivalents cannot save plaintiff’s claim; and
      that application of the doctrine would vitiate limitations of the ‘506 Patent.

             A. IRIS cannot rely on the doctrine of equivalents to support its
                infringement claim.


                                            12
       When an applicant during patent prosecution narrows a claim to avoid
prior art, “[e]stoppel then bars the applicant from later invoking the doctrine
of equivalents to recapture the surrendered ground.” EMD Millipore Corp. v.
AllPure Techs., Inc., 768 F.3d 1196, 1203 (Fed. Cir. 2014). The Federal
Circuit explained the effect of rewriting an independent claim to include
material from a dependent claim in Honeywell International, Inc. v. Hamilton
Sundstrand Corp.:

       When a claim is rewritten from dependent into independent
       form and the original independent claim is cancelled . . . the
       surrendered subject matter is defined by the cancellation of
       independent claims that do not include a particular limitation
       and the rewriting into independent form of dependent claims
       that do include that limitation. Equivalents are presumptively
       not available with respect to that added limitation.

370 F.3d 1131, 1144 (Fed. Cir. 2004). In Festo I, the Federal Circuit noted,
“Were it otherwise, the inventor might avoid the PTO’s gatekeeping role and
seek to recapture in an infringement action the very subject matter
surrendered as a condition of receiving the patent.” 535 U.S. at 734.

       In this case, the Examiner’s Office rejected the application as
originally written. IRIS then rewrote its Application Claim 1, the
independent claim, to include its dependent Application Claim 4, “disposing
a metal ring to surround the integrated circuit,” and cancelled the original
dependent claim. Def.’s Ex. B at 91-92. The government contends that the
metal ring step constitutes the surrendered subject matter. In other words,
IRIS cannot recapture other methods of forming a contactless
communication insert. IRIS responds that “nothing was surrendered so there
is nothing to recapture.” Pl.’s Resp. 5.

       We agree with the government. The surrendered subject matter is a
method of forming a contactless communication insert unit that does not
include the step of “disposing a metal ring to surround the integrated circuit.”
IRIS is therefore presumptively precluded from arguing that equivalents to
metal used to form a ring in the United States electronic passports constitute
infringement of the ‘506 Patent.

        A patentee may rebut the presumption of prosecution history estoppel,
however. To rebut the presumption, the patentee must demonstrate one of
three possibilities: (1) “the alleged equivalent would have been unforeseeable
at the time of the narrowing amendment”; (2) “the rationale underlying the
                                      13
narrowing amendment bore no more than a tangential relation to the
equivalent in question”; or (3) “there was ‘some other reason’ suggesting that
the patentee could not reasonably have been expected to have described the
alleged equivalent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
344 F.3d 1359, 1368 (Fed. Cir. 2003) (en banc) (Festo II) (quoting Festo I,
535 U.S. at 741). The Supreme Court has “made clear that the patentee bears
the burden of showing that a narrowing amendment did not surrender a
particular equivalent.” Id. In its disclosures, IRIS limited itself to arguing
only the second option: the tangentiality exception. Def.’s Ex. G at 12.

       To decide whether “the rationale underlying the narrowing
amendment bore no more than a tangential relation to the equivalent,” the
court asks whether there is an “objectively apparent reason for the narrowing
amendment[, which must be] discernible from the prosecution history
record.” Felix v. American Honda Motor Co., 562 F.3d 1167,
1184 (Fed. Cir. 2009) (quoting Festo II, 344 F.3d at 1369) (brackets in
original). “The tangential relation criterion for overcoming the Festo
presumption is very narrow.” Honeywell, 523 F.3d at 1315. “When the
patentee is unable to explain the reason for amendment, estoppel not only
applies but also ‘bar[s] the application of the doctrine of equivalents as to
that element.’” Festo I, 535 U.S. at 740 (quoting Warner-Jenkinson Co. v.
Hilton Davis Chem. Co., 520 U.S. 17, 33 (1997)). “Where no explanation is
established . . . the court should presume that the patent applicant had a
substantial reason related to patentability for including the limiting element
added by amendment.” Warner-Jenkinson Co., 520 U.S. at 33.

       The government correctly observes that the objectively apparent
reason for the narrowing amendment is the Examiner’s indication that Claim
1 with the added step of “disposing a metal ring to surround the integrated
circuit” would be allowable. Def.’s Ex. G. IRIS then amended its
independent claim, exactly as directed, to include the entire limitation:
“disposing a metal ring to surround the integrated circuit.” Id.

       IRIS responds, “The type of material used for the ring was never at
issue and was never a factor during prosecution of the application that
matured into the ‘506 Patent. The type of material used for the ring is
tangential to the accused equivalent.” Pl.’s Resp. 6. IRIS cites the Examiner’s
Office Action for the proposition that the prior art did not include a “ring,”
regardless of material, and thus the choice of “metal” is tangential to
amendment of adding a ring. In other words, metal is an irrelevant descriptor.


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       We disagree. The explanation IRIS provides is not in the prosecution
history. There is, however, an objectively apparent explanation in the
prosecution history: The Examiner’s Office stated that the entire dependent
claim 4 would be allowable if rewritten in independent form, and IRIS did
just that. IRIS did not attempt to exclude “metal” from its amendment or
provide any explanation in its amendment as to why “ring” was a sufficient
amendment without “metal.” Its argument now is, in essence, too late. Not
having drawn the distinction before the examiner, the court cannot come
behind and red line the claim in plaintiff’s favor.

       Because IRIS has not offered an explanation from the prosecution
history as to why “metal” was included in Claim 1 but should be considered
superfluous now, it has not met its burden of proof in rebutting the
presumption that prosecution history estoppel applies. It is therefore barred
from reliance on the doctrine of equivalents for the term “metal.”

       B. Even if IRIS relied on the doctrine of equivalents, IRIS cannot
          point to a triable question. Furthermore, applying the doctrine of
          equivalents would vitiate elements of Claim 1.

        Even if IRIS were not barred from relying on the doctrine of
equivalents, it only preserved the argument as it relates to the term “metal”
in independent Claim 1. As discussed in Section I, the United States
electronic passports do not include a “ring” that surrounds an integrated
circuit. Nor does the integrated circuit in the United States electronic passport
include an antenna. As the government argues, IRIS would need to rely on
the doctrine of equivalents for those steps in Claim 1 as well, which it does
not attempt to do. Therefore, even if the use of materials such as Teslin or
Durasoft can take the place of metal under the doctrine of equivalents, the
steps of forming an “integrated circuit,” surrounding it with a “ring,” and
“disposing” it on a separate substrate are not infringed by accused electronic
passports.

        Relatedly, “if a court determines that a finding of infringement under
the doctrine of equivalents ‘would entirely vitiate a particular claim[ed]
element,’ then the court should rule that there is no infringement under the
doctrine of equivalents.” Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
324 F.3d 1308, 1321 (Fed. Cir. 2003) (quoting Bell Atlantic Network Sers.,
Inc. v. Covad Commc’ns Grp., 262 F.3d 1258, 1279-80 (Fed. Cir. 2001)).
Part of the patented method is using a “metal” ring, preferably one made of
SUS 303 stainless steel, to surround an integrated circuit to form a contactless
communication insert. Claim 1 includes the term “metal,” and the patent
                                       15
       repeatedly shows in figures and describes a method by which a metal
       structure is used to enclose the integrated circuit. Finding infringement of the
       ‘506 Patent by a structure of any combination of metal and other materials,
       in any proportion, would effectively read the term “metal” out of Claim 1.
       Furthermore, reading Claim 1 to mean that the step of “disposing a metal ring
       to surround the integrated circuit” is interchangeable with or the same step
       as “disposing the contactless communication insert on a substrate” collapses
       separate steps into one, again vitiating the purpose of particular elements of
       Claim 1. Therefore, even if IRIS were not barred from relying on the doctrine
       of equivalents, the court would grant the government’s motion for summary
       judgment on the issue of infringement under the doctrine of equivalents.

III.      The United States does not Infringe the ‘506 Patent through Devices or
          Activities Not Identified in Plaintiff’s Infringement Contentions.

              When plaintiff fails to identify an accused product, there is no
       infringement as a matter of law. See Celotex, 477 U.S. at 323. Regarding
       broad infringement claims relating to electronic passports or other activities
       not identified in plaintiff’s infringement contentions, IRIS cannot
       demonstrate infringement as a matter of law. The court grants the
       government’s motion for summary judgment on any theories of infringement
       beyond those identified in plaintiffs’ infringement contentions.

                                      CONCLUSION

              For the foregoing reasons, the court grants defendant’s motion for
       summary judgment. The Clerk is directed to enter judgment accordingly. No
       costs.


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




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