Honeywell Brief

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Honeywell vs. Hamilton Sundstrand, Honeywell Brief

When obtaining a patent for an invention to control airflow surge in auxiliary power units (APUs), Honeywell removed some of their independent claims and changed the dependent claims into independent claims during patent prosecution. Honeywell concedes that any subject matter surrendered during patent prosecution cannot be used under the doctrine of equivalents to claim infringement. Rewriting the claims from dependent to independent form and deleting the independent claims creates an assumption of prosecution history estoppel. In order to remove this assumption, Honeywell must prove that the alleged equivalent was unforeseeable during patent prosecution or the reason for the changes in the claims only had a tangential relation to the equivalent.

The definition of unforeseeable should be an invention or modification that someone of ordinary skill in the subject matter could not have created at the time of the patent prosecution. Hamilton did not create their APU system with the guide vanes until the time period between 1991 and 1995. The patent prosecution occurred during 1982 and 1983. This means it took about four years for Hamilton to come up with their equivalent almost ten years after Honeywell obtained their patent. This means the equivalent was unforeseeable if it took that long to create the equivalent. The inventors at Hamilton were obviously possessed of at least ordinary skill in the subject matter, and they were unable to create the equivalent until nearly ten years after the patent prosecution occurred.

The guide vanes (IGVs) were not part of the amended claims during patent prosecution. In fact, nothing in the record shows that the IGVs were narrowed in any way. Because of this, there should be no estoppel on the IGV claims, since there was no amendment to the claims. Estoppel only applies to subject matter excluded from amended claims. As stated in the dissenting opinion from the CAFC, “Cancelling an independent claim is not an estoppel-generating act as to elements whose scope was not amended or otherwise restricted during prosecution.” Clearly estoppel has been incorrectly applied to the Honeywell claims, so the doctrine of equivalents should be applicable in this situation.

In order to state that the changes in claims had only a tangential relationship to the equivalent, the narrowing of the claims had to not have been directly related to the equivalent. In Festo IX, “whether an amendment was merely tangential to an alleged equivalent necessarily requires focus on the context in which the amendment was made…” In this case, all the record shows is that the patent examiner simply stated that the dependent claims were allowed if they were rewritten into independent form. This is not enough information about the context in which the amendment was made to properly determine the nature of the relationship of the claim changes to the equivalent. Therefore, there is still a chance that the assumption of prosecution history estoppel could be removed based on the tangential relationship between the claim changes and the equivalent.

Overall, the assumption of prosecution history estoppel should be removed. This can be done in two ways: proving the equivalent was unforeseeable during patent prosecution, and proving a tangential relationship between the claim amendments and the equivalent. The equivalent was clearly unforeseeable at the time of patent prosecution because Hamilton did not create their equivalent until nearly ten years after the Honeywell patent was prosecuted. Not enough information about the context of the claim amendments has been gathered, so there could still be a tangential relationship between the claim amendments and the equivalent. Also, the guide vanes should not be included in the estoppel because they were not part of the amended claims.