Homework 4/4 (John Gallagher)

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Brief on Behalf of Honeywell

In the CAFC, Honeywell lost because it was ruled that the additional element which Hamilton Sunstrand added to their patented invention was foreseeable at the time that the patent was issued. Hamilton Sunstrand used an inlet guide valve (IGV) in a system to control the air which is bled off in a turbine engine, in order to solve the ‘double solution’ problem which was common in such a system. Honeywell’s case that Sunstrand infringed upon their patent relies upon the Doctrine of Equivalence, which can be used to rule infringement when a patent has not been literally infringed. Sunstrand argued that this additional use of the IGV prevents their system from being equivalent to what is claimed in the Honeywell patent. They claimed that the addition they made to the Honeywell system was ‘foreseeable,’ which under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Corp. prevents it from being protected under the claims of the Honeywell patent. This case says that equivalents are protected under the claims of a patent unless the equivalent was foreseeable at the time of the invention.

Sunstrand claims that its invention was foreseeable, therefore not protected. The addition Sunstrand made was made roughly ten years after the Honeywell patent was filed, which itself suggests that there addition was not foreseeable. Testimony showed that the double solution problem was a known issue well before the time Sunstrand added the IGV to their system, and thus it is reasonable to believe that if such a solution to the problem were foreseeable ten years earlier, it would have been used at that time. Further, Sunstrand claims that their invention was both ‘unique’ and ‘foreseeable.’ This also seems to be a contradiction. If it were foreseeable, presumable it would be common in the field. Therefore, the additional element which Sunstrand added was not foreseeable at the time of the Honeywell patent, and thus their system infringes upon Honeywell’s patent.