Dsakamot 4/6/11 homework
I write this brief to the Supreme Court with the intent to dissuade you from granting the plaintiff’s request to reverse the District Court and the Court of Appeals decision to bar Honeywell from invoking the doctrine of equivalents in proving that their patent was infringed. In doing so, this brief will use the facts of this case, engineering insight, and precedence of other cases that deal with the doctrine of equivalents.
Without a doubt, Honeywell will try to invoke the doctrine of the equivalents which states that a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is “equivalence” between the elements of the accused product or process and the claimed elements of the patented invention. Honeywell charges that our APS 3200 somehow infringes upon the claims of their ‘893 and ‘194 patents, stating that each element of their claims can be found in our invention.
While we agree that the Court has established that the doctrine of equivalents, we dispute plaintiff’s use of the doctrine of equivalents based on prosecution history estoppel. The doctrine of prosecution history estoppel prevents a patent owner from recapturing with the doctrine of equivalents subject matter that was surrendered to acquire the patent. In the original application of the ‘893 patent, the United States Patent and Trademark Office rejected the original claims in light of the prior art and only allowed them after the dependent claims of the application were rewritten into the independent claims and its original independent claims were cancelled. This reclassification of claims shows a clear reduction of scope and thus the prosecution history estoppel applies. This goes in accordance with the spirit of patents in that once an owner stakes the claim of their limited monopoly; they shouldn’t be able to extend it over everything that they think should cover.
Of course, Honeywell seek to overturn this prosecution history estoppel by proving that the equivalent was unforeseeable at the time of the narrowing amendment or that the rational that was underlying the narrow amendment bore no more than a tangential relationship. We assert that the plaintiffs will prove neither sufficiently enough to over the issue of estoppel. The forseeability criterion established by this Supreme Court states that something is unforeseeable if a person of ordinary skill in the art would not been able to foresee it. This is fair for both parties as it ensures claims continue to define the patent scope in all foreseeable circumstances while protecting patent owner from trivial changes in unforeseeable circumstances. To determine whether an alleged equivalent is unforeseeable, expert testimony and other factual evidence was considered in trial court. Honeywell claims that the narrow equivalent is the technology to control airflow surge in auxiliary power units (APUs), using inlet guide vanes (IGV) to control airflow and solve so-called “double solution” problem.
There are a couple of reasons why this technology was foreseeable. One was that it was known that the control of surge was important and that systems had been developed for that purpose. It was known that inlet guide vanes were routinely used in these surge control systems and that they affected the air flow rate.
We cite US Patent No. 4,164,035 (“the Glennon patent”) issued in 1979 which claims a surge control system and teaches that IGV position affects flow rate. Also, Honeywell’s expert’s Mr. Muller testified that going back in the 1970’s Honeywell understood that to efficiently control surge, IGV angle needed to be taken into account and be inputted into a surge control system.
The second reason is that there was no technological barrier to use IGV position to determine air flow. This assertion is corroborated both by Honeywell’s corporate representative James Clark and our own expert D. Japiksi. Based on the definition of forseeability, it is clear that one of ordinary skill in the art would have been able to reasonably foresee it.
It should be noted that plaintiffs might try to dissuade the Court from taken into account this forseeability by claiming judicial estoppel in which a it prevents a party from taking a later position that is inconsistent with a former position in the same dispute, on which the party has been successful and has been successful and prevailed based on the former position. While we do agree that we have taken a previous position of calling our use of IGV to control airflow and solving a double solution of the problem unique, we feel that it had no bearing in the jury’s decision of awarding damages and should not be considered.
Moving on to tangentiality, a patentee must demonstrate that narrowing the amendment bore no more than a tangential relation to the equivalent in question (i.e. not directly related). Interestingly enough, Honeywell did not dispute on the record the reason for narrowing their claims in the first place meaning that the presumption of prosecution history estoppels is not rebutted.
In addition, the alleged equivalent bore a direct relation to their amendment. When the original application was rejected, the original dependent claims that were rewritten to be independent claims included IGV limitation which Honeywell based as their alleged equivalent. By doing so, Honeywell effectively added IGV limitation to their invention causing a direct relation to the equivalent. This shows that Honeywell should not be able to use tangentiality to disprove prosecution history estoppel.
Based on the events of the case below this Court and this brief, we humbly ask that you affirm the judgments of the lower courts.
