Litton Systems, Inc. v. Honeywell, Inc.

• Decision Date: 07 April 1998
• Docket Number: No. 95-1311.,No. 95-1242.,95-1242.,95-1311.
• Citation: 140 F.3d 1449
• Parties: LITTON SYSTEMS, INC., Plaintiff-Appellant, v. HONEYWELL, INC., Defendant-Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

140 F.3d 1449

LITTON SYSTEMS, INC., Plaintiff-Appellant, v. HONEYWELL, INC., Defendant-Cross Appellant.

No. 95-1242.

No. 95-1311.

United States Court of Appeals, Federal Circuit.

April 7, 1998.

S. Leslie Misrock, Pennie & Edmonds, LLP, New York City, argued for plaintiff-appellant. With him on brief were Rory J. Radding, Stanton T. Lawrence, III, and Paul J. Zegger, Washington, DC. Of counsel on brief was Frederick A. Lorig, Bright & Lorig, Los Angeles, CA.

Richard G. Taranto, Farr & Taranto, Washington, DC, argued for defendant-cross appellant. With him on brief were Gregory A. Long, Joseph F. Coyne, Jr., and Kent R. Raygor, of Sheppard, Mullin, Richter, & Hampton, Los Angeles, CA. Also on brief were William K. West, Jr., Pillsbury, Madison & Sutro, Washington, DC; and George E. Quillin, Foley & Lardner, Washington, DC.

Before NEWMAN, RADER, and BRYSON, Circuit Judges.

Opinion for the court filed by Circuit Judge RADER. Opinion concurring in part and dissenting in part filed by Circuit Judge PAULINE NEWMAN.

RADER, Circuit Judge.

The United States Supreme Court vacated the judgment in Litton Systems, Inc. v. Honeywell, Inc., 87 F.3d 1559, 39 USPQ2d 1321 (Fed.Cir.1996) (Litton I), and remanded to this court for further consideration in light of Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). See Honeywell, Inc. v. Litton Sys., Inc., ___ U.S. ___, 117 S.Ct. 1240, 137 L.Ed.2d 323 (1997). After applying the principles of Warner-Jenkinson, this court affirms-in-part, reverses-in-part, vacates-in-part, and remands.

Effect of Vacatur

This court first considered an appeal by Litton, Inc. (Litton), from a decision of the United States District Court for the Central District of California. After a jury verdict in favor of Litton, the trial court granted-in-part Honeywell, Inc.'s (Honeywell's) motion for judgment as a matter of law (JMOL). The district court determined that: (1) Honeywell's hollow cathode process did not literally infringe Litton's U.S. Patent No. Re. 32,849 (the '849 reissue), but upheld the jury's verdict of infringement under the doctrine of equivalents; (2) Honeywell's radio frequency (RF) ion beam process did not infringe, either literally or under the doctrine of equivalents, the '849 reissue; (3) the '849 reissue was invalid for obviousness; (4) Litton did not prove its claims of intentional interference with contractual relations and intentional interference with prospective economic advantage under state law; (5) inequitable conduct precluded enforcement of the '849 reissue; and (6) the doctrine of intervening rights applied. See Litton Sys., Inc. v. Honeywell, Inc., 1995 WL 366468 (C.D.Cal.1995). In the alternative, the trial court granted Honeywell's motion for a new trial on damages, but not liability. See id.

In Litton I, this court reversed the trial court's grant of JMOL. This court determined that: (1) substantial evidence supported the jury's findings that Honeywell's hollow cathode and RF processes infringed the '849 reissue; (2) the '849 reissue was neither invalid for obviousness nor unenforceable for inequitable conduct; and (3) substantial evidence supported the jury's finding of Honeywell's liability under both state law claims. See Litton I, 87 F.3d at 1559. Litton I also affirmed the trial court's grant of a new trial on damages and its order on intervening rights. See id.

Litton's patents claim a method for coating a substrate with multiple layers of optical materials. The method uses an ion beam from a Kaufman-type ion beam source to sputter deposit the optical materials on the substrate. The result is an almost perfectly reflective mirror, an essential component for ring-laser gyroscopes (RLGs). RLGs control navigation in aircraft. Honeywell's alleged infringing methods for making these mirrors use ion beams from hollow cathode and RF ion beam sources. Litton I, 87 F.3d at 1563-66, gives a more detailed discussion of the factual background of the case.

Because Warner-Jenkinson addressed the doctrine of equivalents, particularly the application of prosecution history estoppel, this court reinstates, without further analysis, the parts of Litton I: (1) reversing the trial court's grant of JMOL with respect to the invalidity of the '849 reissue on grounds of obviousness; (2) reversing the determination of unenforceability for inequitable conduct; (3) affirming the intervening rights order; and (4) affirming the grant of a new trial on damages (if liability is found on remand for any or all of the federal and state law claims). The Supreme Court's opinion in Warner-Jenkinson does not affect these aspects of Litton I. See Syntex Ophthalmics, Inc. v. Novicky, 767 F.2d 901, 902, 226 USPQ 952, 952 (Fed.Cir.1985).

This court applies the doctrines of Warner-Jenkinson to the remaining issues. The standard of review with respect to the remaining issues remains unchanged. See, e.g., Martin v. Telectronics Pacing Sys., Inc., 105 F.3d 1090, 1092 (6th Cir.1997), cert. denied, ___ U.S. ___, 118 S.Ct. 850, 139 L.Ed.2d 751 (1998).

Claim Construction

In this case, the question of infringement turns primarily on the interpretation of the phrase "Kaufman-type ion beam source" in claim 1 of the '849 reissue. Litton contends that the appropriate interpretation of "Kaufman-type ion beam source" encompasses any broad-beam, multi-apertured, gridded ion beam source. Litton's proposed construction, however, is inconsistent with the prosecution history of the '849 reissue. See York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1575, 40 USPQ2d 1619, 1624 (Fed.Cir.1996) ("In a literal infringement analysis, prosecution history is relevant to claim coverage."); see also Howes v. Medical Components, Inc., 814 F.2d 638, 645-46, 2 USPQ2d 1271, 1275-76 (Fed.Cir. 1987).

In the course of prosecuting the '849 reissue, Litton argued that the term "ion beam source" in its original claims could not "properly be construed to refer to any other ion beam gun but the Kaufman gun." Paper No. 15 at 8. Moreover, a declaration accompanying Litton's remarks plainly stated: "Those skilled in the coating arts ... would reasonably construe these claims to refer ... only to the Kaufman-type ion-beam guns referred to in the specification of this application." Paper No. 16 at 7. Thus, Litton defined "ion beam source" to mean only the Kaufman-type gun. This definition acquires even more credibility when Litton later amended its claims to cover a "Kaufman-type ion beam source." If, as Litton insisted, one of skill could only construe the broad term to mean a Kaufman-type gun, certainly the specific term encompasses nothing more.

At column 4, lines 44-57, the reissue's specification describes a Kaufman-type ion beam source:

The ion beam gu[n] 4 is a commercially available ion [e]mitting ap[p]aratus generally known in the art as a Kauffman [sic] type ion beam gun. The gun's cathode 6 is a therm[i]onic emitter, i.e., it emits electrons by passing an electric current through it which heats the wire. The cathode 6 emits electrons which are accelerated towards the anode 8. The electrons being accelerated from the cathode to the anode strike argon atoms and in so doing dislodge electrons from the argon. The results are positively charged argon ions which are accelerated away from the anode and towards the grids 12 and 14. Permanent bar magnets 10 attached to the anode introduce a magnetic field into the area between the cathode and the anode....

(Emphasis added.) Thus, this court interprets the phrase "Kaufman-type ion beam source" to include a thermionic (hot-wire) cathode, an anode, grids, and magnets.

This court detects no legally significant distinction between the phrases, "Kaufman-type ion beam source" and "Kaufman-type ion beam gun." During the prosecution of the reissue, Litton used the terms "gun" and "source" interchangeably. For example, in response to one of the examiner's rejections, Litton stated: "Applicants need not add the words `Kaufman gun' or `Kaufman source' to claim 1 because claim 1 cannot properly be construed to refer to any other ion beam gun but the Kaufman gun." Paper No. 15 at 8.

In sum, after consideration of the primary sources for construing patent claim meaning, this court interprets the phrase "Kaufman-type ion beam source" to encompass any ion beam gun with the four stated components: a hot-wire cathode, an anode, grids, and magnets.

Literal Infringement

Literal infringement requires that the accused device contain each limitation of the claim exactly; any deviation from the claim precludes a finding of literal infringement. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 532, 41 USPQ2d 1001, 1007 (Fed.Cir.1996), cert. denied, ___ U.S. ___, 118 S.Ct. 56, 139 L.Ed.2d 20 (1997). Because Honeywell's hollow cathode process does not employ a hot-wire cathode and its RF ion beam process does not use a cathode at all, this court affirms the trial court's grant of JMOL that the accused hollow cathode and RF ion beam processes do not literally infringe the asserted claims of the '849 reissue.

Infringement Under the Doctrine of Equivalents

Because Honeywell's processes do not literally infringe Litton's claimed method, this court now considers the issue of infringement under the doctrine of equivalents. Litton asserts that Honeywell's hollow cathode and RF ion beam sources are equivalents of the "Kaufman-type ion beam source" in claim 1. Honeywell contends that they are not equivalents, and, more importantly, that Litton's admissions and amendments during patent prosecution estop it from asserting any equivalents to the "Kaufman-type ion beam source."

In reconciling the uncertainty surrounding application of the doctrine of equivalents with the definitional and public-notice functions of the statutory claiming requirement, the Supreme Court endorsed an element-by-element analytical framework for infringement. See ...