Case: 10-1051 CASE PARTICIPANTS ONLY Document: 46 Page: 1 Filed: 02/18/2014
`No. 2010-1051
`
`
`
`
`IN THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`IRIS CORPORATION,
`
`
`Plaintiff-Appellant,
`
`
`v.
`JAPAN AIRLINES INTERNATIONAL CO. LTD,
`
`
`Defendant-Appellee.
`
`
`AND
`
`JAPAN AIRLINES CORPORATION,
`
`
`Defendant.
`
`
`
`ON APPEAL FROM THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF NEW YORK
`No. 06-cv-06336 (HON. CAROL BAGLEY AMON)
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`
`STUART F. DELERY
`Assistant Attorney General
`
`
`SCOTT R. McINTOSH
` (202) 514-4052
`ANISHA S. DASGUPTA
`(202) 514-5428
`Attorneys, Appellate Staff
`Civil Division, Room 7533
`U.S. Department of Justice
`950 Pennsylvania Ave., N.W.
`Washington, D.C. 20530
`
`
`
`
`
`
`
`
`
`
`PROTECTIVE ORDER MATERIAL
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`IRIS
`EXHIBIT 2040 PAGE 1
`DOJ v. IRIS
`IPR 2016-00497
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`Case: 10-1051 CASE PARTICIPANTS ONLY Document: 46 Page: 2 Filed: 02/18/2014
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`TABLE OF CONTENTS
`
`
`28 U.S.C. § 1498(a) IMMUNIZES JAPAN AIRLINES FROM
`INFRINGEMENT LIABILITY FOR COMPLYING WITH
`FEDERAL REQUIREMENTS TO INSPECT PASSENGER
`PASSPORTS .................................................................................................................. 6
`
`A.
`
`
`
`Section 1498(a) Provides the Exclusive Remedy
`When a Patented Invention Is Used for the Government
`and with the Government’s Authorization or Consent ............................... 7
`
`Page
`
`STATEMENT OF INTEREST ............................................................................................. 1
`
`QUESTIONS PRESENTED ................................................................................................. 1
`
`STATEMENT OF THE CASE ............................................................................................. 2
`
`SUMMARY OF ARGUMENT .............................................................................................. 4
`
`ARGUMENT ............................................................................................................................ 6
`
`I.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`II.
`
`
`CONCLUSION ...................................................................................................................... 18
`
`CERTIFICATE OF COMPLIANCE
`
`CERTIFICATE OF SERVICE
`
`
`
`B.
`
`
`C.
`
`
`
`Section 1498(a) Encompasses Claims of Patent
`Infringement under Section 271(g) ................................................................. 9
`
`JAL’s Passport Inspections Are “For” the United States
`and with Its “Authorization and Consent” Within the Meaning
`of Section 1498(a) ............................................................................................ 11
`
`SECTION 271(g) DOES NOT CONFLICT WITH THE
`ENHANCED BORDER SECURITY ACT .......................................................... 14
`
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`Case: 10-1051 CASE PARTICIPANTS ONLY Document: 46 Page: 3 Filed: 02/18/2014
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`TABLE OF AUTHORITIES
`
`
`Cases:
`
`Advanced Software Design Corp. v. Federal Reserve Bank of St. Louis,
`583 F.3d 1371 (Fed. Cir. 2009) .......................................................................................... 12
`
`Page
`
`
`Richmond Screw Anchor Co. v. United States,
`275 U.S. 331 (1928) ............................................................................................................... 8
`
`
`SmithKline Beecham Consumer Healthcare v. Watson Pharmaceuticals,
`211 F.3d 21 (2d Cir. 2000) ...................................................................6, 14, 15, 16, 17, 18
`
`
`TVI Energy Corp v. Blane,
`806 F.2d 1057 (Fed. Cir. 1986) ................................................................................... 12, 13
`
`
`Zoltek Corp. v. United States,
`442 F.3d 1345 (Fed. Cir. 2006) ................................................................................. 5, 9, 10
`
`
`Zoltek Corp. v. United States,
`672 F.3d 1309 (Fed. Cir. 2012) (en banc) ..................................................................... 5, 7
`
`
`Statutes:
`
` 8
`
` 8
`
` 8
`
` 8
`
` U.S.C. § 1221(d) ...................................................................................................................... 3
`
`
`21 U.S.C. § 355(j)(2)(A)(v) ..................................................................................................... 16
`
`28 U.S.C. § 517 ........................................................................................................................... 1
`
`
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` U.S.C. § 1221, et seq. ............................................................................................................. 3
`
` U.S.C. § 1221(a) ......................................................................................................... 3, 11, 15
`
` U.S.C. § 1221(b) ......................................................................................................... 3, 11, 15
`
` U.S.C. § 1221(c) ......................................................................................................... 3, 11, 15
`
` U.S.C. § 1221(c)(10) ............................................................................................................. 11
`
` 8
`
` 8
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`

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`28 U.S.C. § 1498(a) ........................................... 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 19
`
`35 U.S.C. § 271(a) ............................................................................................................... 5, 10
`
`35 U.S.C. § 271(g) .................................................................... 1, 2, 3, 4, 5, 6, 7, 9, 10, 14, 17
`
`Act of June 25, 1910
` Pub. L. No. 61-305, 36 Stat. 851 ........................................................................................ 7
`
`Act of July 1, 1918,
` Pub. L. No. 65-182, 40 Stat. 704 ........................................................................................ 8
`
`Act of October 31, 1942,
`Pub. L. No. 77-768, 56 Stat. 1013 ...................................................................................... 8
`
`
`Enhanced Border Security Act,
` Pub. L. No. 107-173, 116 Stat. 54 (2002) ..................................................................... 1, 3
`
`Regulations:
`
`19 C.F.R. § 122.75a(d) ...................................................................................... 3, 5, 12, 13, 15
`
`Rules:
`
`Fed. R. App. P. 29 ..................................................................................................................... 1
`
`
`
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`STATEMENT OF INTEREST
`
`The United States submits this brief as amicus curiae, pursuant to 28 U.S.C. § 517
`
`and Rule 29 of the Federal Rules of Appellate Procedure. To promote the border
`
`security of the United States, the federal government requires airlines to examine the
`
`passports of persons arriving into and departing from the United States. The United
`
`States has an interest in ensuring that airlines can carry out this important function
`
`without the disruptions that would occur if inspecting passports exposed airlines to
`
`the liability and remedies available under Title 35 of the United States Code. The
`
`United States also has an
`
`interest
`
`in ensuring the proper application of
`
`28 U.S.C. § 1498(a), which protects important federal interests by providing the
`
`exclusive remedy for patent infringement when a patented invention is used for the
`
`United States and with the United States’ authorization or consent.
`
`QUESTIONS PRESENTED
`
`1. Whether 28 U.S.C. § 1498(a) immunizes an airline sued for patent
`
`infringement under 35 U.S.C. § 271(g) for complying with federal requirements to
`
`inspect passports of passengers arriving in and departing from the United States.
`
`2. Whether 35 U.S.C. § 271(g) is implicitly superseded by Section 402(a) of the
`
`Enhanced Border Security Act, Pub. L. No. 107-173, to the extent that § 271(g) would
`
`otherwise apply to the inspection of passenger passports.
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`STATEMENT OF THE CASE
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`IRIS Corporation is the assignee of a United States patent covering a method
`
`for manufacturing electronic passports. See A3.1 IRIS brought this suit against Japan
`
`Airlines (“JAL”) under 35 U.S.C. § 271(g), alleging that JAL’s examination of
`
`electronic passports when processing and/or boarding passengers at United States
`
`airports constitutes infringement. A3-A4. Section 271(g) provides in relevant part
`
`that “[w]hoever without authority * * * uses within the United States a product which
`
`is made by a process patented in the United States shall be liable as an infringer * * *.”
`
`JAL moved to dismiss the suit on multiple grounds, including that IRIS’s claim
`
`was barred by 28 U.S.C. § 1498(a). That provision states in relevant part that
`
`whenever a patented invention is “used * * * for the United States without * * * lawful
`
`right to use[,] * * * the owner’s remedy shall be by action against the United States in
`
`the United States Court of Federal Claims for the recovery of his reasonable and entire
`
`compensation for such use * * *.” Ibid. (emphasis added). It further provides that
`
`“the use * * * of an invention described in and covered by a patent of the United
`
`States by* * *any person, firm, or corporation for the Government and with the authorization
`
`or consent of the Government, shall be construed as use * * * for the United States. Ibid.
`
`(emphasis added).
`
`
`1 The prefix “A” denotes a citation to the addendum to appellant’s opening
`
`brief.
`
`2
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`As relevant here, JAL also asserted that any cause of action IRIS had under
`
`Section 271(g) for JAL’s examination of passports conflicted with the Enhanced
`
`Border Security Act, Pub. L. No. 107-173, sec. 402(a) (codified at 8 U.S.C. § 1221, et
`
`seq.). The Enhanced Border Security Act requires airlines to provide United States
`
`border officials with information about persons arriving into and departing from the
`
`United States, including information about the travel documents of such persons.
`
`8 U.S.C. § 1221(a)-(d). The Act’s implementing regulations make each airline
`
`“responsible for comparing the travel document presented by the passenger with the
`
`travel document information [the airline] is transmitting* * *to ensure that the
`
`information is correct, the document appears to be valid for travel purposes, and the
`
`passenger
`
`is
`
`the person
`
`to whom
`
`the
`
`travel document was
`
`issued.”
`
`19 C.F.R. § 122.75a(d).
`
`The United States filed a statement of interest at the district court’s invitation.
`
`The United States argued that Section 1498(a) immunized JAL against IRIS’s
`
`Section 271(g)
`
`infringement claim, and
`
`thus no conflict existed between
`
`Section 271(g) and federal requirements that JAL inspect passenger passports. The
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`United States also argued that, even if Section 1498(a) did not immunize JAL,
`
`Section 271(g) could not be said to conflict with JAL’s federal obligations to inspect
`
`passports until and unless IRIS’s patent was found valid and enforceable, and JAL
`
`was found to have infringed the patent.
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`3
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`The district court granted JAL’s motion to dismiss. See A1-A49. Although the
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`district court recognized that JAL’s passport inspections were conducted “for” the
`
`United States and “with the authorization or consent” of the United States, the court
`
`concluded that Section 1498(a) did not cover acts constituting infringement under
`
`Section 271(g), and hence that JAL could not assert immunity under Section 1498(a)
`
`as a defense to IRIS’s infringement claim. A12. However, the court held that JAL’s
`
`federal obligation to inspect passenger passports conflicted with, and trumped, any
`
`patent protections conferred on IRIS by Section 271(g). A7-A10.
`
`IRIS appealed. Shortly thereafter, JAL filed for reorganization under Chapter
`
`11 of the Bankruptcy Code, and this appeal was automatically stayed from December
`
`2009 through December 2013, when JAL was released from bankruptcy.
`
`SUMMARY OF ARGUMENT
`
`1. IRIS may not sue Japan Airlines under 35 U.S.C. § 271(g) for complying
`
`with federal requirements to inspect passenger passports. Congress has provided that
`
`28 U.S.C. § 1498(a) is the exclusive remedy for patent infringement whenever a
`
`patented invention is used for the government within the meaning of that statute, and
`
`IRIS’s allegations meet the conditions for Section 1498(a)’s applicability.
`
`The district court’s ruling that JAL could not assert immunity under Section
`
`1498(a) rested on then-extant Federal Circuit precedent stating that Section 1498(a)
`
`authorizes suits against the United States only for acts constituting infringement under
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`35 U.S.C. § 271(a). See Zoltek Corp. v. United States, 442 F.3d 1345 (Fed. Cir. 2006)
`
`(per curiam). While this appeal was pending, the Federal Circuit issued an en banc
`
`decision in Zoltek holding that Section 1498(a) encompasses acts constituting
`
`infringement under Section 271(g). See 672 F.3d 1309 (Fed. Cir. 2012) (en banc).
`
`There is thus no question that Section 1498(a), as construed by this Court, covers the
`
`infringement alleged here.
`
`There is also no serious question that JAL’s allegedly infringing conduct
`
`qualifies as action for the United States within the meaning of Section 1498(a).
`
`Federal regulations promoting the government’s border security interests require
`
`airlines to examine the passports of persons departing from and arriving into the
`
`United States. See 19 C.F.R. § 122.75a(d). As the district court recognized, JAL’s
`
`passport inspections benefit the United States, and are conducted with the federal
`
`government’s authorization and consent.
`
`2. Because 28 U.S.C. § 1498(a) immunizes JAL against infringement liability
`
`while permitting IRIS to seek relief against the United States for JAL’s conduct, this
`
`suit does not present any clash between JAL’s federal obligations and IRIS’s patent
`
`rights. The district court therefore erred in perceiving a conflict between
`
`Section 271(g) and the Enhanced Border Security Act, and in concluding that a
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`judicial exception to Section 271(g) was warranted to resolve that conflict.
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`5
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`The district court’s conflict-of-laws analysis was also misconceived for at least
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`several additional reasons. First, the court’s reasoning is incompatible with Congress’s
`
`provision that 28 U.S.C. § 1498(a) is the exclusive remedy for reconciling conflicts
`
`between the United States’ need to use a patented invention and the private patent
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`rights of individuals. Second, the court’s analysis rests on the erroneous assumption
`
`that the Enhanced Border Security Act’s text sets forth specifications that clash with
`
`the patent rights extended by Section 271(g). Finally, the district court was misplaced
`
`in its reliance on SmithKline Beecham Consumer Healthcare v. Watson Pharmaceuticals,
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`211 F.3d 21 (2d Cir. 2000). The district court overlooked a number of factors
`
`distinguishing this case from the circumstances in SmithKline, chief among which is
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`that construing the Enhanced Border Security Act to supersede Section 271(g) does
`
`not “preserve[] the principal purposes of each [statute],” 211 F.3d at 28, but instead
`
`burdens the policies of federal patent law in ways that were not present in SmithKline.
`
`ARGUMENT
`
`I.
`
`28 U.S.C. § 1498(a) IMMUNIZES JAPAN AIRLINES FROM
`INFRINGEMENT LIABILITY FOR COMPLYING WITH
`FEDERAL REQUIREMENTS TO
`INSPECT PASSENGER
`PASSPORTS.
`
`IRIS has sued JAL for patent infringement under 35 U.S.C. § 271(g) for
`
`carrying out passport inspections required by the federal government. The district
`
`court correctly held that IRIS’s suit cannot proceed. However, the court rested that
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`6
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`holding on the wrong ground. The reason why IRIS may not sue JAL is that IRIS’s
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`infringement claim comes within the scope of 28 U.S.C. § 1498(a), which provides the
`
`exclusive remedy for patent infringement when a patented invention is used for the
`
`government within the meaning of Section 1498(a). The district court assumed that
`
`Section 1498(a) does not extend to claims of infringement under 35 U.S.C. § 271(g),
`
`but this Court’s en banc decision in Zoltek Corp. v. United States, 672 F.3d 1309
`
`(Fed. Cir. 2012), which was issued during the pendency of this appeal, repudiates that
`
`view.
`
`A. Section 1498(a) Provides the Exclusive Remedy When a Patented
`Invention Is Used for the Government and with the Government’s
`Authorization or Consent.
`
`Congress enacted the statutory provision now codified, as amended, at
`
`28 U.S.C. § 1498(a), to resolve conflicts between the public needs and requirements of
`
`the United States and the private rights of patent holders. In 1910, Congress enacted
`
`legislation permitting patent owners to recover compensation from the United States
`
`for unauthorized use of a patented invention by the federal government. Act of
`
`June 25, 1910, Pub. L. No. 61-305, 36 Stat. 851. In its original form, the 1910 Act
`
`provided that “whenever a[] [patented] invention * * * shall hereafter be used by the
`
`United States without license * * * or lawful right to use the same, [the] owner may
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`recover reasonable compensation for such use by suit in the Court of Claims.” Ibid.
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`In 1918, Congress amended the 1910 Act to address a Supreme Court holding
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`that the Act did not cover acts of alleged infringement by a private party performing a
`
`government contract. The Court’s decision threatened to disrupt the federal
`
`government’s operations by exposing contractors acting for the United States to
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`“injunction and other interference through litigation by the patentee.” Richmond Screw
`
`Anchor Co. v. United States, 275 U.S. 331, 342 (1928) (quotation marks from original
`
`omitted). To avoid that result, Congress amended the 1910 Act to provide an
`
`exclusive remedy against the United States whenever a patented invention is “used or
`
`manufactured by or for the United States” without license or lawful right to use.
`
`Act of July 1, 1918, Pub. L. No. 65-182, 40 Stat. 704, 705 (emphasis added). Congress
`
`subsequently added a further amendment in 1942, to clarify that the 1910 Act covered
`
`acts of alleged infringement “by a contractor, a subcontractor, or any person, firm, or
`
`corporation for the Government and with the authorization or consent of the
`
`Government.” Act of October 31, 1942, Pub. L. No. 77-768, 56 Stat. 1013, 1014.
`
`The 1910 Act is now codified, as amended, at 28 U.S.C. § 1498(a). As relevant
`
`here, Section 1498(a) provides that whenever a patented invention is “used * * * for
`
`the United States without * * * lawful right to use[,] * * * the owner’s remedy shall be
`
`by action against the United States in the United States Court of Federal Claims for
`
`the recovery of his reasonable and entire compensation for such use * * *.” Ibid.
`
`(emphasis added). It further provides that “the use * * * of an invention described in
`8
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`and covered by a patent of the United States by* * *any person, firm, or corporation
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`for the Government and with the authorization or consent of the Government, shall be construed
`
`as use * * * for the United States. Ibid. (emphasis added).
`
`B. Section 1498(a) Encompasses Claims of Patent Infringement under
`Section 271(g).
`
`IRIS has sued JAL under 35 U.S.C. § 271(g) for unauthorized use of the
`
`product of a patented process, alleging that JAL’s passport inspections are an
`
`infringing use of electronic passports allegedly made through IRIS’s patented method.
`
`Although the district court recognized that JAL’s accused actions were “for” the
`
`United States and with the federal government’s authorization and consent, the court
`
`concluded that Section 1498(a) does not cover infringement under Section 271(g). See
`
`A12.2
`
`The district court’s view regarding the relationship between Section 1498(a) and
`
`Section 271(g) has been overtaken by developments in this Court. Acting in 2010, the
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`district court relied on this Court’s then-prevailing decision in Zoltek Corp. v. United
`
`
`2 The district court also incorrectly concluded Section 1498(a) cannot apply
`with respect to JAL’s inspection of foreign passports because “there is no claim that
`as to foreign passports the United States engaged in any infringing activity.”
`See A12 n.2. Because federal regulations require JAL to inspect all passenger
`passports regardless of passenger nationality, and because JAL must use the same
`inspection procedure when examining United States and foreign passports, Section
`1498(a)’s applicability does not turn on whether the passports being inspected were
`issued by the United States.
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`States, 442 F.3d 1345 (Fed. Cir. 2006) (Zoltek III) (per curiam), which stated that
`
`Section 1498(a) authorizes suits against the United States only for acts constituting
`
`infringement under 35 U.S.C. § 271(a). See A13. But while this appeal was pending,
`
`this Court issued an en banc decision in Zoltek that significantly revised the Court’s
`
`earlier construction of Section 1498(a). See Zoltek Corp. v. United States, 672 F.3d 1309
`
`(Fed. Cir. 2012) (en banc) (Zoltek V).
`
`In Zoltek V, the en banc Court held squarely that Section 1498(a) covers claims
`
`of infringement based on the use of the product of a patented process by and for the
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`United States. 672 F.3d at 1326-27. Section 1498(a), as noted, provides the exclusive
`
`remedy for patent infringement whenever a patented invention “is used * * * for the
`
`United States without * * * lawful right to use.” The en banc court held that, “for the
`
`purposes of section 1498, the use or importation ‘within the United States [of] a
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`product which is made by a process patented in the United States’ constitutes use of
`
`the invention without lawful right because the products embody the invention itself.”
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`672 F.3d at 1326 (quoting 35 U.S.C. § 271(g)).
`
`Thus, as construed by this Court in Zoltek V, Section 1498(a) covers alleged
`
`infringement under Section 271(g). 672 F.3d at 1327. This Court has held that
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`Section 1498(a) subjects the government to suit for such use and correspondingly
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`provides immunity “from individual liability for the alleged infringement” to the
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`private entity acting for and with the authorization of the United States. Ibid.
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`Section 1498(a) therefore requires dismissal of IRIS’s infringement claim against JAL.3
`
`C. JAL’s Passport Inspections Are “For” the United States and with Its
`“Authorization and Consent” Within the Meaning of Section 1498(a).
`
`Federal law requires airlines to provide the government with information about
`
`persons arriving into and departing from the United States. 8 U.S.C. § 1221(a)-(c).
`
`That information includes details about the passports and visas of such persons and
`
`“such other information the Attorney General, in consultation with the Secretary of
`
`State, and the Secretary of Treasury determines as being necessary for the
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`identification of the persons transported and for the enforcement of the immigration
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`laws and to protect safety and national security.” Id. § 1221(c)(10).
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`In conjunction with this statutory provision, the federal government has issued
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`regulations that require airlines to physically inspect the travel documents of their
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`passengers. The regulations make each carrier “responsible for comparing the travel
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`document presented by the passenger with the travel document information [the
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`carrier] is transmitting * * * to ensure that the information is correct, the document
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`3 The United States participated in Zoltek V as an amicus curiae but was not a
`party to the appeal. The government’s submission in this case should not be
`understood to reflect agreement with the position adopted by the Court in Zoltek V
`regarding the scope of the government’s liability under Section 1498(a). However,
`Zoltek V is the law of this Circuit, and as such, it governs this case and other cases
`until and unless it is reconsidered by this Court or by the Supreme Court in the future.
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`appears to be valid for travel purposes, and the passenger is the person to whom the
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`travel document was issued.” 19 C.F.R. § 122.75a(d).
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`As the district court correctly recognized (A13), JAL’s examination of
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`passenger passports in these circumstances qualifies as action “for the Government
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`and with the authorization or consent of the Government” for purposes of Section
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`1498(a). This Court has interpreted the term “for the Government” in Section
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`1498(a) to mean “for the benefit of the government.” Advanced Software Design Corp. v.
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`Federal Reserve Bank of St. Louis, 583 F.3d 1371, 1378 (Fed. Cir. 2009). This Court has
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`also concluded that the government need not be “the sole beneficiary * * * in order to
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`be a beneficiary for the purposes of § 1498(a)” as long as the benefits gained by the
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`government are more than “incidental.” Ibid. In considering whether the allegedly
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`infringing conduct of a non-governmental entity was “for the government,” the
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`Federal Circuit has found sufficient governmental benefit where the conduct served
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`“the national interest in averting fraud in Treasury checks,” ibid., and where the “only
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`purpose” of the conduct “was to comply with the Government’s bidding
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`requirements,” TVI Energy Corp v. Blane, 806 F.2d 1057, 1060 (Fed. Cir. 1986).
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`“Authorization or consent by the Government can be expressed” in a variety
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`of forms, and in certain circumstances, “[g]overnment authorization can be implied.”
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`TVI Energy Corp, 806 F.2d at 1060. In TVI, this Court found that “Government
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`authorization was expressed by the specific requirement that [a supplier] demonstrate,
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`under the guidelines of the [Government’s] bidding procedure, the allegedly infringing
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`[items].” Ibid. This Court further observed that “[t]he mere fact that the Government
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`specifications * * * did not absolutely require [the supplier] to infringe TVI’s patent
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`* * * does not extinguish the Government’s consent.” Ibid. As this Court explained:
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`“To limit the scope of § 1498 only to instances where the Government requires by
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`specification that a supplier infringe another’s patent would defeat the Congressional
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`intent to allow the Government to procure whatever it wished regardless of possible
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`patent infringement.” Ibid.
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`Here, as noted above, JAL must examine passenger passports to comply with
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`federal requirements, which in turn serve, at a minimum, the border security interests
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`of the United States. Federal regulations specifically require an airline to “compare[]
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`the travel document presented by the passenger with the travel document information
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`it is transmitting * * *.” 19 C.F.R. § 122.75a(d). While there may be some ability for
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`the airline to determine the best way to make the needed comparison, it may not
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`decline to examine the passport. This is, therefore, a fundamentally different case
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`from situations where the United States imposes a general regulatory requirement but
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`leaves the choice of design for a required item to the discretion of the regulated party.
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`Cf. Appellant Br. 10-11 (noting that “[f]ederal law frequently requires industries to
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`make use of patented features, without granting compulsory licenses or invalidating
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`the patents, thus requiring payment for the use of the intellectual property” and listing
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`several examples). Accordingly, JAL’s conduct qualifies as action taken “for the
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`Government and with the authorization or consent of the Government” for purposes
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`of 28 U.S.C. § 1498(a).
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`II.
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`SECTION 271(g) DOES NOT CONFLICT WITH THE
`ENHANCED BORDER SECURITY ACT.
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`The district court based its dismissal of IRIS’s Section 271(g) claim on a
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`different theory. The district court concluded that Section 271(g) conflicts with the
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`Enhanced Border Security Act and that, under the Second Circuit’s reasoning in
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`SmithKline Beecham Consumer Healthcare v. Watson Pharmaceuticals, 211 F.3d 21
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`(2d Cir. 2000), the latter act implicitly supersedes the former provision to the extent of
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`the conflict. That conclusion is incorrect.
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`As noted above, Congress enacted Section 1498(a) to resolve potential conflicts
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`between the public needs and requirements of the United States, and the private
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`patent rights of individuals. Section 1498(a) makes it possible for JAL to carry out its
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`obligations under federal law regarding the inspection of passports without subjecting
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`itself to liability under Section 271(g), while permitting IRIS to seek relief against the
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`United States for JAL’s conduct.4 Given the role of Section 1498(a) in reconciling
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`4 The district court concluded (A7-A8) that JAL’s inspection of passports
`constitutes “use” within the meaning of Section 271(g). Because Section 1498(a)
`immunizes JAL from suit, this brief does not address that issue. However, the
`government does not concede that JAL’s inspection of passports is such a “use.”
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`JAL’s inspection obligations and IRIS’s patent rights, it is unnecessary –– and
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`inappropriate –– for an exception to federal patent law to be judicially created.
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`In any event, the district court’s conflict analysis was misconceived. The
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`district court determined that JAL was “required to inspect passenger passports under
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`the Enhanced Border Security Act” and further determined that “compliance with
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`this law requires using a product that was made by a patented process.” A8. On that
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`basis, the court concluded that “a conflict exists between the Enhanced Border
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`Security Act and the