Honeywell Intern. v. Universal Avionics Systems

• Decision Date: 30 May 2003
• Docket Number: No. C.A.02-359-MPT.,C.A.02-359-MPT.
• Citation: 264 F.Supp.2d 135
• Parties: HONEYWELL INTERNATIONAL, INC., et al., Plaintiffs, v. UNIVERSAL AVIONICS SYSTEMS CORP., et al., Defendants.
• Court: U.S. District Court — District of Delaware

264 F.Supp.2d 135

HONEYWELL INTERNATIONAL, INC., et al., Plaintiffs, v. UNIVERSAL AVIONICS SYSTEMS CORP., et al., Defendants.

No. C.A.02-359-MPT.

United States District Court, D. Delaware.

May 30, 2003.

Thomas L. Halkowski, Esquire, Fish & Richardson, P.C., Wilmington, for Defendant, Sandel Avionics, Inc.

MEMORANDUM

THYNGE, United States Magistrate Judge.

I. INTRODUCTION

This is a patent infringement case involving technology in the aviation industry. Initially plaintiffs, Honeywell International Inc. and Honeywell Intellectual Properties Inc. ("Honeywell") filed suit against four defendants¹ in May 2002, alleging infringement of five patents: U.S. Patent Nos. 5,839,080 ("the '080 patent"), 6,219,592 ("the '592 patent"), 6,122,570 ("the '570 patent"), 6,138,060 ("the '060 patent"), and 6,092,009 ("the '009 patent"). Subsequently, Honeywell dismissed two of the original defendants and now pursues its infringement claims against the remaining defendants, Universal Avionics Systems Corp. ("Universal"), and Sandel Avionics ("Sandel"). Presently before the court are the parties' arguments on claim construction on the five patents-in-suit. The court conducted a claims construction hearing on April 9, 2003. This is the court's opinion construing the claims of the patents-insuit.

II. BACKGROUND²

Each of the five patents in this case concerns terrain warning systems which warn pilots when the danger of having a "controlled flight into terrain" ("CFIT") accident increases. See D.I. 81 at 1. The parties have divided the patents-in-suit into two main categories: "look ahead patents" ('080, '570, and '592) and the "display patents" ('060 and '009). See D.I. 86 at 2-3. The primary patent in this litigation is the '080 patent, which claims "the core forward-looking terrain alerting system." Id. at 2. The '570 patent, a continuation-in-part of the '080 patent, claims the core system in addition to the ability to visually display the alert to the pilot. Id. at 2-3. The '592 patent, also a continuation-in-part of the '080 patent, claims the core system in addition to algorithms which allow the system to detect horizontal, as well as, vertical terrain threats. Id. at 3.

The display patents teach two methods for displaying the alert information on a visual screen in the cockpit. The '060 patent claims a system which causes certain information, including the severity of an alert, to "pop-up" on the pilot's screen. Similarly, the '009 patent claims a system which displays terrain information, as well as, compares the terrain and aircraft altitude and colors certain parts of the display based on this comparison. Id.

A. '080 Patent

In July 1995, a group of inventors filed the application for the '080 patent.³ Approximately a year and a half later, the Patent and Trademark Office ("PTO") Examiner rejected all five of the patent claims as indefinite under 35 U.S.C. § 112, and found that claims 1 and 3 were also anticipated under 35 U.S.C. § 102 by U.S. Patent No. 5,488,563 ("Chazelle patent").⁴

In late 1997, Honeywell filed an Amendment and Remarks cancelling all five claims of the '080 patent, and adding claims 6 through 18, to clarify, inter alia, that the '080 invention included alert envelopes, which were not present in the Chazelle patent.⁵ Thereafter, the Examiner issued a Notice of Allowability.⁶

Honeywell has asserted independent claims 1⁷ and 9,⁸ and dependent claims 7 8, 10, and 13 against both defendants. Claims 7 and 8 depend on claim 1, while claims 10 and 13 depend on claim 9.

B. '592 Patent

The inventors of the '080 patent filed the application for the '592 patent on May 8, 1998,⁹ as a continuation of the '080 patent. On the same day, the inventors filed an Amendment striking the original five claims of the patent and adding claims 6 through 21. In August 2000, the Examiner issued a Notice of Allowability for those claims.

Honeywell has asserted independent claims 1, 8, and 15 and dependent claims 6, 7, 13, and 14. Claims 6 and 7 are dependent on claim 1, while claims 13 and 14 are dependant on claim 8.

C. '570 Patent

In June 1998, the same inventors filed the application for the '570 patent, also a continuation of the '080 patent.¹⁰ Again, the inventors filed an Amendment, cancelling all claims and adding claims 6 through 22, on the day that the patent application was filed. The Examiner rejected claims 9, 14, and 19 for indefiniteness, because the inventors did not clearly point out the subject of the invention. Due to double patenting of claims 1 and 9 of the '080 patent, the Examiner also rejected claims 6, 11, 19, and 20 of the '570 patent. Based on the Examiner's suggestion, Honeywell filed an Amendment clarifying the subject of the invention and included a terminal disclaimer which limited all aspects of the '570 patent to the term of the '080 patent. See D.I. 81 at 12. Thirteen months after the '570 application was filed, the Examiner issued a Notice of Allowability.

Honeywell asserts independent claims 1, 6, 14, and 15 and dependent claims 2-5, 7-11 and 16 against Universal. Additionally, Honeywell asserts claims 1, 5, 6, 10, 11, 14-16 against Sandel.

D. '060 Patent

The inventors of the '060 patent filed their application in September 1997, as a continuation-in-part of the '080 patent.¹¹ In June 1998, an Amendment adding the word "automatically" to claims 1 and 11 was filed. However, the Examiner rejected claims 1 through 16, because of double patenting of the '080 patent, but indicated that adding a terminal disclaimer would cure the defects in the '060 patent. Honeywell filed the disclaimer and received a Notice of Allowability in late March 2000.

Honeywell asserts independent claims 1, 11 and 12 and dependent claims 2-6 and 13-16 against Universal, and claims 1-4 against Sandel.

E. '009 Patent

The inventors of the '009 patent filed their application in July 1997.¹² In early 1998, Honeywell filed a Request for Corrected Non-Provisional Application Filing Receipt, which claimed priority over provisional application 08/509,642 and non-provisional application number 08/509,642.¹³ The Examiner rejected all of the claims of the '009 patent application because of double patenting over the '080 application, and again suggested a terminal disclaimer. In February 2000, after Honeywell filed a Response explaining that the '009 application displayed terrain data without indicating the severity of terrain threat, the Examiner issued a Notice of Allowability.

Honeywell asserts independent claims 1, 27, 34, 41, 43-45 and dependent claims 2, 3, 8, 9, 13, 24, 28-33, 35, and 36 against both defendants. Additionally, Honeywell asserts claim 23 and 39 against Universal.

III. CLAIM CONSTRUCTION

A. Legal Principles

In a patent infringement case, the court's analysis requires two steps. First, the court must determine as a matter of law the correct scope and meaning of the disputed claim terms.¹⁴ Second, "the analysis requires a comparison of the properly construed claims to the accused device, to see whether that device contains all the limitations, either literally or by equivalents, in the claimed invention." ¹⁵

In making its determination of the proper construction of a claim, the court may consider "both intrinsic evidence (e.g., the patent specification and file history) and extrinsic evidence (e.g., expert testimony)," but should first examine "the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history."¹⁶ Only when the court is "unable to determine the meaning of the asserted claims after assessing the intrinsic evidence" should the court consider extrinsic evidence.¹⁷ Starting with the intrinsic evidence, the analysis should be done in a particular order.¹⁸

The starting point for the court's examination of the intrinsic evidence is the language of the disputed claims themselves, as the words of the claim, chosen by the inventor, delimitate the breadth of protection provided by the patent grant.¹⁹ There is a "heavy presumption" that a claim term carries its ordinary and customary meaning, and, if the claim includes a term of art, that term is given its ordinary and accustomed meaning to one of ordinary skill in the relevant art at the time of the invention.²⁰ "`If an apparatus claim recites a general structure without limiting that structure to a specific subset of structures, we will generally construe the term to cover all known types of that structure' that the patent disclosure supports."²¹ The "heavy presumption" of the ordinary meaning of a claim term may be overcome and the term narrowed, but an accused infringer cannot simply point to "the preferred embodiment or other structures or steps disclosed in the specification or prosecution history."²² A patentee need not "describe in the specification every conceivable and possible future embodiment of his invention."²³

Rather, a court may constrict the ordinary meaning of a claim term in at least four ways, as recently outlined by the Federal Circuit in CCS Fitness, Inc. v. Brunswick Corp.²⁴

First, a patentee is permitted to be his own lexicographer. However, for the court to accept a suggested meaning that is contrary to the ordinary and accustomed meaning of a word, the novel meaning must be clearly set forth in either the specification or the prosecution history "so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term."²⁵ To determine whether the patentee has used a term in a manner contrary to its accepted meaning, the court's next step is to review the patent's specification.²⁶ Because the specification must include a written description which is sufficient to enable one of ordinary skill in the art to make and use the invention, "the specification is always relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed...