View source for Due Monday, April 4, 2011

Honeywell Brief
The court ruled that Honeywell’s act of “rewriting the dependent claims into independent form coupled with the cancellation of the original independent claims,” created a presumption of prosecution history estoppel, meaning that, unless the presumption could be rebutted, Honeywell could not reclaim subject matter from the original claims after the amendment.  This presumption can be rebutted if the claims amendments were not done for statutory reasons.  It is admitted that the amendments made to the Honeywell patent claims were made to avoid infringement on the prior art at the time of the patent application, and thus for statutory reasons.  However, the scope of the subject matter that Sundstrand argues could not be reclaimed from the original dependent claims, should not include the information regarding the use of the IGVs, which is critical to Honeywell’s claim of infringement by Sundstrand.

When Honeywell’s original claims were rejected by the patent office, it changed its dependent claims to independent claims and cancelled the old independent claims per standard procedure of patent revision.  Nothing regarding the use of the IGVs in the patent claims was significantly changed when the amendments were made to the claims.  Therefore it is wrong for the court to throw out all of the dependent claims associated with the cancelled original independent claims, which include those in relation to the IGVs.  Nothing was revised about the IGVs and yet the procedure affirmed by the court in effect causes the Honeywell patent to lose the claimed material relating to it, just because it was associated with the cancelled independent claims.  The court should not be able to completely get rid of everything associated with these cancelled claims. 

In Warner-Jenkinson the court clearly established that such matters should be evaluated on an element-by-element basis, as opposed to the entire patent claim as a whole. The court has failed to follow this precedent by assuming that all claims associated with the cancelled independent claims should be grouped and thrown out together.  If the court were to take the approach dictated by the Supreme Court in Warner-Jenkinson, it would realize that the IGV claims remained unaltered by the amendments and therefore are not subject to the appliation of prosecution history estoppel.

As a result, the application of the prosecution history estoppel should be irrelevant in determining whether the Honeywell patent was infringed by Sundstrand.  The estoppel only bars the application of the doctrine of equivalents for subject matter that was narrowed by the amendments made to the claims of a patent.  Since the claims involving the IGVs were not narrowed by the amendments, they do not pertain to this matter of discussion.  Thus, the prosecution history estoppel may apply to some claims of the amended patent, but not to the ones that are in question in terms of the application of the doctrine of equivalents to show infringement on the part of Sundstrand.