AME 40590: April 6,2011 HW Assignment: Supreme Court Justice Decision Honeywell v Hamilton
Supreme Court Justice Decision
Honeywell v Hamilton
The two arguments made by Hamilton dealt with the estoppels issue, and if present, whether that bans Honeywell from using the doctrine of equivalence to prove infringement of Hamilton’s IGV. Hamilton claimed that the prosecution history estoppel bars Honeywell from using the doctrine of equivalence. Since no literal equivalence is present and the doctrine of equivalence should not be allowed, due to the estoppels, Hamilton claims that no infringement is present on their patent.
The district court stated that for Honeywell to claim that the estoppels had not barred them from using the doctrine of equivalence they must demonstrate unforeseeability, or that no tangential relation was present. The court case held in class on Monday, had Hamilton focusing on the belief that Honeywell’s claim was foreseeable. Since the 1970s the L1011 was used to “measure a static pressure differential to avoid the double solution problem,” therefore since there are similarities between Honeywell’s patent and the L1011, the patent claim was thus foreseeable according to the district court. The reasoning used was due to the ability of "one skilled in the art to measure the position of IGVs to distinguish between high flow and low flow.” The purpose of the foreseeability requirement is to protect the use of the doctrine of equivalence. It allows the patent owner not to have to deal with the doctrine of equivalence if the subject matter could have been foreseen.
Honeywell counteracts with the claim that if their patent was foreseeable, then why did it take Hamilton approximately ten years to develop their IGV. The court of appeals claims that just because Hamilton did not create the invention until ten years later does not confirm that the invention was unforeseeable. There may be other circumstances on why it was not developed a couple months after Honeywell’s invention. Therefore, the ten-year difference could not be used to prove foreseeability. The expert witnesses brought to the courtroom in this case confirmed the foreseeability of the IGV position to determine a high or low flow.
With the IGV patent being foreseeable according the expert witnesses, Honeywell was barred from using the doctrine of equivalence in the district court, which was affirmed by the appeals court. However, the reasoning of the district court was not disclosed but rather it was stated that “the district court declined to give its reasoning, stating that the record was too extensive and complex for the court to identify the facts on which its conclusion rested, and that it would be unduly burdensome to explain which evidence it credited.” Although complex, not providing an explanation for a ruling does not help future courts or upper courts decide on this matter or similar matters. As a Supreme Court Justice, my first decision would be to reprimand the district court for failure to provide adequate reasoning on a decision.
Dealing with the foreseeable issue, using expert witnesses to decide on this issue seems to be the best solution. However, the problem faced with this is similar to the non-obviousness issue of what may seem obvious now may not have been obvious prior to the patent in question. Thus, other aspects to determine foreseeability should be looked at. I believe that the ten year difference in invention of the accused infringer indicates that the patent was most likely not foreseeable. I understand that that statement cannot be confirmed, but other evidence is necessary to decide foreseeability and ten years is a substantial amount of time to indicate that the invention by Honeywell was not foreseeable. Looking into the reasoning for the ten-year difference should be done before negating the ten years in determining foreseeability. Using foreseeability as a factor in determining whether the estoppels applies makes sense in protecting patentees and prevents other ‘inventors’ that provide insubstantial differences from getting a patent. I would reprimand the lower courts from failing to look into and possible use the ten-year time difference between inventions as an indication of foreseeable subject matter.
Another aspect of the estoppels issue deals with tangential relation. Honeywell is able to use the doctrine of equivalence if they are able to provide a rationale “underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question.” The court of appeals found that through amending their dependent claims to independent claims, Honeywell added a limitation to their overall claim. The IGV limitation provides a direct relation to the equivalent, thus tangential relation cannot be used.
When the patent examiner required Honeywell to rewrite their dependent claims into independent claims on the grounds of obviousness, a part of their claims were lost, which limited the overall patent claims. To see exactly what was lost in rewriting the claims requires looking over the dependent and independent claims initially filed. Since these are not at hand, I believe the limitation cannot be put on the new independent claims. Without this information, I believe foreseeability should be the deciding factor in this instance on whether the doctrine of equivalence can be used. I would reprimand the patent and trademark office for failing to keep a record of the initial independent and dependent claims filed.
In the end, I would send this case back down to the district court to provide reasoning and to follow the method described in my decision on making a future decision on whether an estoppel is present that prevents Honeywell from utilizing the doctrine of equivalence.
