Homework 6 - ewolz

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Opinion on Honeywell International, Inc. v. Hamilton Sundstrand Corporation

Honeywell's opening argument was based on the argument of how prosecution estoppel was misapplied, and that the presumption that they surrendered all subject matter under the original claim when they rewrote their dependent claims into independent claims was unfair. During the act of rewriting their claims, Honeywell argues that they didn't revise anything with regard to Inlet Guide Vanes (IGVs) and still ended up losing material according to the lower courts. Honeywell argues that Sundstrand should be found infringing for their APS 3200, an APU device that uses IGVs to help measure high-flow or low-flow situations.

In response, Sundstrand tried to argue that estoppel was due to Honeywell's failure to include markings on patents and thus didn't disclose all information to the public. However, let it be known that markings are not required for patent protection, but are merely used secure damages for the patent holder. Sundstrand then argues non-infrigement due to prosecution estoppel, arguing that Honeywell gave up claims when they made amendments to their original claims. Sundstrand argues that because their is no literal infringement and Honeywell is barred from using the Doctrine of Equivalents due to prosecution estoppel, they can't be found guilty of infringement. When asked by the Justices whether they could provide evidence showing that their product is non-equivalent to Honeywell's claims, they responded that it doesn't matter whether or not they are equivalent so long as Honeywell is barred from using the Doctrine of Equivalents.

Honeywell contends that Sundstrand used all parts of their claims and added the single step of using IGVs to detect high-flow and low-flow. Sundstrand further argues its position that Honeywell is barred from using the Doctrine of Equivalents due to the use of IGVs being forseeable at the time of the narrowing amendment due to an APU developed in the 1970s which also measured static pressure differential to solve the double solution problem. In response to Honeywell's argument that it took Sundstrand four years to develop their APU ten years after Honeywell's and thus couldn't be forseeable, Sundstrand counters saying that it only took two months to solve the double solution problem using IGVs and that the other time is not relevant to the case at hand.

While I agree with Sundstrands assertion that the four years taken to develop an APU is irrelevant to the case at hand, I disagree with their arguments for prosecution estoppel. In Warner-Jenkinson Company v. Hilton Davis Chemicals Co., it was found that the upper limit of 9.0 pH was added to the patent to distinguish it from prior art, while no record could be ascertained to determine why the lower limit of 6.0 pH was added. In order to determine if prosecution estoppel applied, the CAFC remanded to the district court to determine if Hilton could override the presumption that the pH limit of 6.0 was added with good reason and thus determine if prosecution estoppel applied at that lower pH limit.

However, the circumstances in Honeywell v. Sunstrand are significantly different from Warner-Jenkinson v. Hilton Davis. In Warner v. Hilton, the case hinged on whether prosecution estoppel for amending claims to include a pH limit of 6-9 prevented the Doctrine of Equivalents from being applied to determine whether a process performed at pH values of 6-9 were equivalent to similar processes performed at a pH below 6.0. In Warner v. Hilton, the amendments to the claims had a direct relationship with determining equivalence. In Honeywell v. Sunstrand however, the independent claim that was denied had nothing to do with the claims for IGVs which Honeywell uses to show infringement. In rewriting their dependent claims with IGVs to independent claims, Honeywell incorporated no further limitations. As a result, it is my opinion that prosecution estoppel does not apply. I remand to lower courts to determine whether infringement has occurred under the Doctrine of Equivalents.

--Justice Erich Wolz