HW 7 Fernando Rodriguez

BRIEF

This brief is in support of Hamilton Sundstrand Corp. in case 523 F.3d 1304 against Honeywell Inc. This requires to first discussing the main issues in the case at hand. The patent in discussion is related to a technology for controlling airflow surge in auxiliary power units. In a previous trial Honeywell had moved for summary judgment using the doctrine of equivalents. However it was ruled that in had committed patent prosecution history estoppel in the amendments it had made of its claims it had in fact surrendered the doctrine of equivalents. This meant that Honeywell could not use the doctrine of equivalents to state its case. Due to the fact that there was no literal infringement by Sundstrand it was determined that Sundstrand did not infringe upon Honeywell’s patents.

The important part of the case, and that on which the court should concentrate is not on whether there was literal infringement, this has already been examined both by the district court and the federal court and has been found to be non-existent.

The important part of the case which needs to be discussed then is wether or not Honeywell committed prosecution historical estoppel. If this is found to be true then the issue of equivalence under the doctrine of equivalents becomes irrelevant as Honeywell is barred from using the doctrine of equivalents.

It is the Courts responsibility to make sure that individuals or companies do not try to abuse the system or “loopholes” to expand the scope of their own patents. In this case the que4stion is whether or not the intention to “cheat “ was present in the way in which Honeywell went about obtaining its patent.

When Honeywell first tried to obtain a patent for this system, it was denied due to it being similar to other existing patents. In order to avoid these rejections the patent was rewritten and its original independent claims were canceled, the claims which are now in question were made into independent claims. This would normally prevent Honeywell from using the doctrine of equivalents to assert infringement. This is the right move, especially when looking at it from a more removed point of view, by observing that the patent was originally denied we can tell that no matter what the wording is the patent will at its very core be somewhat similar to another patent, the system itself has not changed only the wording of it. Furthermore in order to use the doctrine of equivalents, as it has been stated before, the claims must be examined by themselves, hence they have to be equivalent on that level.

Furthermore by narrowing its claims, Honeywell has conceded that it abandoned its original claims, and that its product was similar enough to others to warrant said reduction. Hence it cannot prosecute Sundstrand using the doctrine of equivalents. By limiting its claims it cannot prosecute under that subject matter which it gave up in order to obtain the patent.

Honeywell could show that the change in the claims was not surrendering; however it would have to prove that there was no forseeability and that there existed only tangibility. However as it was shown before the patent was already similar enough to have to change its wording hence the equivalents are not unforeseeable. Furthermore the equivalent proposed by Honeywell to change the patent was directly related to the amendment so they cannot claim that there was no prosecution history estoppel.