Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)

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Read for 4/4/11

Reading Notes

  • Decided by the CAFC in 2008
  • Honeywell sued Hamilton for infringement
    • District ruled infringement, CAFC overruled and remanded, District Court barred Honeywell from asserting doctrine of equivalents and Honeywell appealed
  • Holdings
    • Equivalent proposed by owners was foreseeable and thus precluded by prosecution history estoppel principles
    • Judicial estoppel did not apply to bar competitor from reversing its prior position that its surge control system was unique
    • Alleged equivalen bore a direct, not merely tangential, relation to amendment, and therefore tangentiality criterion did not exempt owner from presumtion of patent prosecution history estoppel
  • CAFC affirmed
  • Patent is for technology to control airflow surge in APUs
  • Honeywell could not show that the alleged equivalent was unforseeable at the time of the narrowing amendment
    • Had to rebut the presumption of surrender
  • Honeywell's surge control was more efficient than prior art
    • Prevents build-up of pressure and maintains sufficient airflow
  • 194 patent came about because the 893 patent had to separate the system and method claims to be patentable under 121
    • Systems in 893 and methods in 194
  • All claims in question require the APU to used IGVs
    • Original independent claims did not contain reference to IGVs
    • PTO rejected as obvious
    • Allowed the dependent claims when rewritten into independent form
  • Hamilton had an APU device with a surge control system that compares a flow-related parameter to a set point based on air inlet temperature and adjusts the surge bleed valve in response
    • At high flow values this may mess up and open the surge bleed valve unnecessarily - APS 3200 blocks this problem
      • Uses IGV position to determine if the APU is experiencing high or low flow
  • Originally found infringement under doctrine
    • CAFC first said Honeywell's "act of “rewriting [the] dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel"
      • Vacated and remanded to see if Honeywell could rebut the presumption
  • Rebut by
    • Alleged equivalent unforeseeable at time of narrowing
    • Rationale underlying the narrowing was only a tangential relation to the equivalent
    • Some other reason suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent
      • Honeywell conceded the third
  • Tangentiality should be decided solely on the prosecution history
  • Honeywell argued it was unforeseeable in 1982-83
    • Sundstrand pointed to similar technology in the late 70s
  • District court ruled it was foreseeable to one skilled in the art
  • Honeywell did no successfully rebut the presumption with the tangential relation prong

CAFCs analysis of foreseeability

  • Ties patent enforcement to patent acquisition
  • Aims to prevent the doctrine from capturing subject matter that patentee could have foreseen during prosecution and included in the claims
  • Agree with the DC that even the narrow equivalent proposed by Honeywell was foreseeable
  • Sundstrand invented in 1991-1995, years after 82-83 for Honeywell
    • Time alone does not determine foreseeability
  • In the 82-83 time frame surge control systems did not use inlet guide vane position to ascertain high or low flow
    • Was known that IGVs were routinely used and affected air flow rate
  • No technical barrier to using IGV position to determine air flow
  • Honeywell did not rebut the presumtion of surrendered with evidence of unforeseeability
  • In previous trial, Sundstrand held a position that the APS 3200 surge control system and its particular use of IGV position was unique

CAFCs analysis of tangential relation

  • Focuses on the patentee's objectively apparent reason for the narrowing amendment
  • To rebut the estoppel presumption with tangentiality, a patentee must "demonstrate that the rationale underlying the amendment bore no more than a tangential relation to the equivalent in question, or, in other words, that the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent, and the reason for the narrowing amendment should be discernible from the prosecution history record."
  • Examiner instructed that the dependent claims would be allowed if rewritten into independent form
  • Honeywell effectively added the IGV limitation to the claimed invention when it rewrote the application

Dissenting Opinion

  • Court held previously that "the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation."
  • Court held that since there was no narrowing amendment or limiting argument during prosecution, surrender of the entire universe of potential equivalents is presumed when the original independent claim is canceled
  • No prosecution history narrowed the claim element at issue
  • Court is almost doing away with the doctrine by assuming surrender of all equivalents during prosecution
  • Never examined the surrendered subject matter
    • Indeed no narrowing amendments define surrendered subject matter