United States: Federal Circuit: Private Entities Do Not Infringe Patent When Performing "Quasi-Governmental Actions"

Private entities cannot be liable for patent infringement when performing "quasi-governmental actions" with the express or implied consent of the U.S. government, according to a recent decision of the U.S. Court of Appeals in Iris Corporation v. Japan Airlines Corporation  (Fed. Cir. 2014).

Iris Corporation's patent number 6,111,506 covered a method of making an identification document (such as a passport) with a contactless communication unit.  The case arose after Iris accused Japan Airlines Corporation (JAL)  of infringing Iris' patent by scanning the electronic passports of its U.S. passengers.  Iris argued that by using and scanning passports that contain RFID chips, JAL infringed the patent.

At least two U.S. statutes required JAL to perform the scanning. Because of this, in its defense JAL argued that it could not be liable for infringement because its actions were required by federal law.  JAL also noted that 28 U.S.C. §1498(a)) states (with emphasis added):

Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States.

The court agreed with JAL's argument.  The court noted that an activity is "for the United States" if two requirements are met: (1) it is conducted "for the Government," and (2) it is conducted "with the authorization or consent of the Government."

The court found the first requirement to be satisfied because the scanning of passports was a "quasi-governmental activity" done for the benefit of the U.S. government.  The second requirement was satisfied because "JAL cannot comply with its legal obligations without engaging in the allegedly infringing activities."

Because of this, the court dismissed the case and held that IRIS's exclusive remedy is to file suit against the U.S. government, not any private entity.

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