Honeywell Brief notes

From Bill Goodwine's Wiki
Jump to navigationJump to search

Honeywell brief

Doctrine of equivalents should be asserted, resulting in an infringement of the patents in question by Hamilton Sunstrand.

Honeywell amended his claims for statutory reasons (112), therefore prosecution history estoppel applies. this says that he can't recapture subject matter from the original claims after having amended them and thus narrowed their scope. as a result of this doctrine, he cannot claim infringement based on doctrine of equivalents.

Honeywell can dodge this (prosecution history estoppel) by showing, only using prosecution history evidence, that the amendment was not done for a reason related to patentability. basically show that it was just done for the sake of doing, not to get around any statutory bars.

typically narrowing an amendment surrenders everything between original claim and amended claim. patentee can overcome this if they can show that at the time of amendment, one reasonably skilled in the art could not have come up with the alleged equivalent.