A recent Federal Circuit opinion highlights a defense that is available to defendants whose alleged infringement occurred through activities that were undertaken for the United States. In particular, where the United States Government requires private parties to perform quasigovernmental functions pursuant to a legal obligation, a patent owner’s exclusive remedy is to bring a claim against the United States in the U.S. Court of Federal Claims, rather than against the private party in a U.S. District Court.
In IRIS Corp. v. Japan Airlines Corp., _ F.3d _, No. 2010-1051 (Fed. Cir. 2014), the patent owner (“IRIS”) accused Japan Airlines Corporation (“JAL”) of infringing U.S. Patent No. 6,111,506, titled “Method of Making an Improved Security Identification Document Including Contactless Communication Insert Unit.” According to IRIS, certain passports that JAL examined during pre-flight procedures were made using the ’506 Patent’s method, and, therefore, JAL was liable for infringement pursuant to 35 U.S.C. § 271(g). Notably, however, JAL examined the passports pursuant to federal law, “including the Enhanced Border Security Act, 8 U.S.C. § 1221 et seq., the Visa Entry Reform Act of 2002, 19 C.F.R. § 122.75a(d), and certain international treaties.” Continue reading this entry