Iris Corporation Berhad v. United States

• Court: Court of Appeals for the Federal Circuit
• Decided: February 12, 2021
• Docket: 20-1984
• Status: Unpublished

Opinion

Case: 20-1984 Document: 37 Page: 1 Filed: 02/12/2021

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

IRIS CORPORATION BERHAD, Plaintiff-Appellant

v.

UNITED STATES, Defendant-Appellee ______________________

2020-1984 ______________________

Appeal from the United States Court of Federal Claims in No. 1:15-cv-00175-EGB, Senior Judge Eric G. Bruggink. ______________________

Decided: February 12, 2021 ______________________

STEPHEN NORMAN WEISS, Law Office of Stephen N. Weis, New York, NY, for plaintiff-appellant. Also repre- sented by PAUL D. BIANCO, Fleit Intellectual Property Law, Miami, FL.

PHILIP CHARLES STERNHELL, Commercial Litigation Branch, Civil Division, United States Department of Jus- tice, Washington, DC, for defendant-appellee. Also repre- sented by JEFFREY B. CLARK, GARY LEE HAUSKEN. ______________________ Case: 20-1984 Document: 37 Page: 2 Filed: 02/12/2021

Before MOORE, REYNA, and STOLL, Circuit Judges. REYNA, Circuit Judge. In this appeal, Appellant IRIS Corporation Berhad challenges an order of summary judgment entered against it. The United States Court of Federal Claims granted the government’s motion for summary judgment of nonin- fringement of IRIS’s patent covering a method of manufac- turing electronic passports. The Court of Federal Claims construed the asserted claim to mean that certain inlays or inserts include an antenna. In its summary judgment rul- ing, the Court of Federal Claims concluded that IRIS did not allege that the inlays or inserts in the accused devices included an antenna. Because the Court of Federal Claims did not err in its claim construction or the grant of sum- mary judgment, we affirm. BACKGROUND On February 24, 2015, IRIS Corporation Berhad (“IRIS”) filed suit against the United States government for alleged infringement of IRIS’s patent, U.S. Patent No. 6,111,506 (“the ’506 patent”). J.A. 56–62. The ’506 patent, entitled “Method of Making an Improved Security Identifi- cation Document Including Contactless Communication Insert Unit,” is directed to a method for manufacturing electronic passports. J.A. 56. Claim 1, reproduced in its entirety below, is the only independent claim of the ’506 patent: 1. A method of making an identification docu- ment comprising the steps of: forming a contactless communication insert unit by electrically connecting an integrated circuit includ- ing a microprocessor, a controller, a memory unit, a radio frequency input/output device and an an- tenna, and disposing a metal ring to surround the integrated circuit; Case: 20-1984 Document: 37 Page: 3 Filed: 02/12/2021

IRIS CORPORATION BERHAD v. UNITED STATES 3

disposing the contactless communication insert unit on a substrate and laminating it to form a lam- inated 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 com- munication insert unit between the first and sec- ond sheets of base material; and joining a third sheet of base material to the first and second sheets of base material having the lam- inated 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. On January 22, 2020, the Court of Federal Claims is- sued its claim construction order. J.A. 18–32. The court construed, among other terms, the term “integrated cir- cuit,” found in the first step of claim 1. The government proposed construing the term to mean that an antenna is part of the integrated circuit, whereas IRIS argued that the plain language of the claim supported a reading that one must connect the integrated circuit and an antenna, i.e., connect an integrated circuit to an antenna. J.A. 25–26. But the court was not convinced by IRIS’s argument. The Court of Federal Claims stated that it “need look no further than the plain language” of the claim to see that it expressly defines the components of the integrated cir- cuit, including an antenna, and not what the integrated cir- cuit is connected to. J.A. 26. The court explained: [A] list of five components follows the word “includ- ing,” which unambiguously shows that the inte- grated circuit in this patent includes an Case: 20-1984 Document: 37 Page: 4 Filed: 02/12/2021

antenna. . . . [T]he last part on the list is “an an- tenna.” 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” inter- changeable 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 conjunc- tion concluding a list. Id. The Court of Federal Claims construed “integrated cir- cuit” to mean “a microprocessor, a controller, a memory unit, a radio frequency input/output device, an antenna, and the connections thereto.” Id. (“This construction does not leave ‘connecting’ floating freely without an object; ra- ther, the term ‘by electrically connecting’ is an instruction to connect the parts of an integrated circuit.”). On April 27, 2020, the Court of Federal Claims granted the government’s motion for summary judgment of nonin- fringement for all the accused products, basing its conclu- sion in part on its construction of the term “integrated circuit.” J.A. 2, 7–17. IRIS argues, among other things, that the Court of Fed- eral Claims erred in construing the term “integrated cir- cuit” to require an antenna to be a part of the integrated circuit. See Appellant’s Br. at 12–16. IRIS did not allege in its infringement contentions that the accused devices in- cluded an antenna, but rather that the inlays or contactless communication inserts “connect[] an antenna via the [in- put/output] area of the [integrated circuit.]” J.A. 8. We have jurisdiction under 28 U.S.C. § 1295(a)(3). Case: 20-1984 Document: 37 Page: 5 Filed: 02/12/2021

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DISCUSSION We review a decision granting summary judgment of noninfringement de novo. Lacks Indus., Inc. v. McKechnie Vehicle Components U.S.A., Inc., 322 F.3d 1335, 1341 (Fed. Cir. 2003). Here, the summary judgment grant was based on the court’s claim construction decision. The ultimate in- terpretation of a claim term, as well as interpretations of the intrinsic evidence, are legal conclusions that this court reviews de novo. Liberty Ammunition, Inc. v. United States, 835 F.3d 1388, 1395 (Fed. Cir. 2016) (citing Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015)). Subsidiary factual determinations based on ex- trinsic evidence are reviewed for clear error. Info–Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265 (Fed. Cir. 2015) (citing Teva, 574 U.S. at 332). We construe claim terms according to their ordinary and customary meaning as understood by a person of ordi- nary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). It is the function of the claims to set forth what lim- its exist on a patentee’s invention. See SRI Int’l v. Matsu- shita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). Further, the meaning of a claim term “must be con- sidered in the context of all of the intrinsic evidence, in- cluding the claims, the specification, and the prosecution history.” Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1350 (Fed. Cir. 2019). The court may also consider extrinsic evidence. Phillips, 415 F.3d at 1319. First, we look to the claim language. We agree with the Court of Federal Claims that there is no need to look fur- ther than the plain language of the claim here to read the antenna as being a component of the integrated circuit, not a separate element to which the integrated circuit at- taches. The use of “including,” followed by a list of compo- nents, followed by “and,” followed by “an antenna” indicates that the antenna is the last item in the list of Case: 20-1984 Document: 37 Page: 6 Filed: 02/12/2021

items. We agree with the Court of Federal Claims that “and” would appear before the “input/output device” if the input/output device was the last in the list of components. Second, we look to the specification. IRIS relies on Fig- ure 1 of the ’506 patent in which, it argues, antenna 18 is “separate and apart” from the integrated circuit compo- nents, such as the microprocessor 14, and the input/output device 16:

’506 patent, Fig. 1. But, as the government notes in its Re- sponse Brief, the claimed metal ring 15 is shown as sur- rounding all of the claimed elements of the “integrated circuit,” including antenna 18. See ’506 patent, col. 20 ll. 17–18 (“disposing a metal ring to surrounding the inte- grated circuit”); id. at col. 12 ll. 48–51 (“A specially de- signed metal ring 15 . . . is located on the substrate 12 to provide mechanical strength to the document 10 for pro- tecting the integrated circuit.”). Further, nothing in this figure or portions of the disclosure citing this figure require that the antenna be separate from the integrated circuit; there is no delineated integrated circuit that excludes an- tenna 18. Case: 20-1984 Document: 37 Page: 7 Filed: 02/12/2021

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The specification contains further support for the Court of Federal Claims’s construction of integrated circuit. Ref- erencing Figure 6, the specification lists the antenna as a component of the integrated circuit without reference to any electrical connection: “Thus, the document 10 contains the conventional security features such as visible but tam- per-proof identification data, as well as, novel and in- creased security features provided by the tamper-proof, embedded integrated circuit including the microprocessor 14, [input/output] device and antenna 18.” ’506 patent, col. 14 ll. 47–52. The antenna is listed again as a component of the integrated circuit: “The boarding pass generator 114 generates a boarding pass in the form of an improved secu- rity identification document 10 including an integrated cir- cuit IC containing the components 14, 16, and 18.” Id. at col. 17 ll. 8–13. Third, we look to the prosecution history. The govern- ment argues that the prosecution history confirms its pro- posed construction, citing to handwritten notations on a copy of Figure 1 that is included in the prosecution history. In the image reproduced below, the government annotated, with a red box, notes from the prosecution history stating “IC embedded within substrate 12” and including braces that include “18 antenna (etched coil, air wound coil, etc[.])” as part of the “IC” (i.e., integrated circuit): Case: 20-1984 Document: 37 Page: 8 Filed: 02/12/2021

See Appellee’s Br. at 35 (citing J.A. 211). We agree that this further supports the Court of Federal Claims’s con- struction of “integrated circuit.” Lastly, we look at extrinsic evidence. IRIS cites: (1) ISO/IEC 7816, the international standard related to elec- tronic identification cards; and (2) the government’s expert witness’s opinion offered in an inter partes review (“IPR”) before the Patent Trial and Appeal Board. But neither is availing. The extrinsic evidence presented contradicts the plain language of the claim and the language of the speci- fication. See Phillips, 415 F.3d at 1317 (“[W]hile extrinsic evidence can shed useful light on the relevant art, we have explained that it is less significant than the intrinsic record in determining the legally operative meaning of claim lan- guage.” (internal citations and quotations omitted)); see also id. at 1324 (“Nor is the court barred from considering any particular sources or required to analyze sources in any specific sequence, as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.”). Further, the Court of Federal Claims rejected this same evidence as “unpersuasive on the meaning of ‘integrated circuit.’” J.A. 25. We agree. After a review of the intrinsic and extrinsic evidence of record, we conclude that the Court of Federal Claims’s Case: 20-1984 Document: 37 Page: 9 Filed: 02/12/2021

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construction of “integrated circuit” as including an antenna was not erroneous. Because the Court of Federal Claims relied on this construction in finding no literal infringe- ment, we affirm the Court of Federal Claims’s grant of summary judgment of noninfringement. CONCLUSION Because the construction of “integrated circuit” is dis- positive, we affirm. AFFIRMED COSTS Costs to the appellee.