Federal Claims Court Finds Prosecution History Estoppel in Allowable Dependent Claims

In the recent decision of IRIS Corporation Berhad v. United States of America, the United States Court of Federal Claims had the opportunity to evaluate the Doctrine of Equivalents (DOE) in view of applicant actions during prosecution. More specifically, this case centered around the applicant’s actions of incorporating dependent claim material into an independent claim and whether those actions led to prosecution history estoppel.

This case arose when IRIS sued the United States Department of State for patent infringement by its manufacture and importation of certain electronic passports. The patent at issue, U.S. Patent No. 6,111,506 (“the ‘506 Patent”), was directed to a method of making an identification document. Claim 1, the only independent claim in the ‘506 Patent, recited:

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.

In finding the electronic passports did not literally infringe the ‘506 Patent, the court found, in part, that the government demonstrated that there was a lack of evidence that the accused device disposes “a metal ring to surround the integrated circuit.”

The court then turned to a doctrine of equivalents (DOE) analysis. The pertinent part of this analysis centered around IRIS’s actions during prosecution of the patent application. During prosecution, the Patent Examiner rejected claims 1-3 and 5-8 as being obvious. However, the Patent Examiner noted that claim 4 was “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.”

IRIS amended claim 1 to recite the subject matter of claim 4, which included “disposing a metal ring to surround the integrated circuit…,” in order to overcome the rejection to independent claim 1.

One of the central questions was whether IRIS could rely on DOE to support is infringement claim based on its actions during prosecution. As set forth in the Federal Circuit decision of 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.

Based on the applicant’s actions during prosecution, the government argued that the metal ring step constituted surrendered subject matter such that IRIS could not recapture other methods of forming a contactless communication insert. IRIS responded that there was nothing surrendered so that there was nothing to recapture.

In agreeing with the government, the court looked to the rationale underlying the narrowing amendment. More specifically, as stated in the Federal Circuit decision of Felix v. American Honda Motor Co., the court asks whether there is an “objectively apparent reason for the narrowing amendment[, which must be] discernible from the prosecution history record.”

The court agreed with the government that the objectively apparent reason for the narrowing amendment was to make the claim allowable. The court noted there was no other evidence in the prosecution history to provide alternative reasoning for the narrowing amendment, and IRIS failed to overcome the presumption that prosecution history estoppel applies.