Honeywell Intern. v. Universal Avionics Systems

• Decision Date: 16 October 2003
• Docket Number: No. CIV.A. 02-359-MPT.,CIV.A. 02-359-MPT.
• Citation: 288 F.Supp.2d 638
• Parties: HONEYWELL INTERNATIONAL, INC., et al., Plaintiffs, v. UNIVERSAL AVIONICS SYSTEMS CORP., et al., Defendants.
• Court: U.S. District Court — District of Delaware

288 F.Supp.2d 638

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

No. CIV.A. 02-359-MPT.

United States District Court, D. Delaware.

October 16, 2003.

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Thomas C. Grimm, Esquire, and Jack C. Schecter, Esquire, Morris, Nichols, Arsht & Tunnell, Wilmington, DE, for Plaintiffs, Honeywell International Inc., and Honeywell Intellectual Properties Inc.

Frederick L. Cottrell, II, Esquire, and David A. Felice, Esquire, Richards, Layton & Finger, Wilmington, DE, for Defendant, Universal Avionics Systems Corp.

Thomas L. Halkowski, Esquire, Fish & Richardson, P.C., Wilmington, DE, 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. On May 10, 2002, plaintiffs, Honeywell International Inc. and Honeywell Intellectual Properties, Inc. ("Honeywell")¹ filed a complaint alleging infringement of five U.S. patents: 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"). D.I. 1.² Honeywell pursues its infringement claims against defendants, Universal Avionics Systems Corp. ("Universal")³ and Sandel Avionics, Inc. ("Sandel").⁴ Universal and Sandel filed their respective answers denying Honeywell's allegations and counterclaims alleging that the patents are invalid, unenforceable and not infringed. See D.I. 19, 20.⁵

Pursuant to Markman v. Westview Instruments, Inc.⁶ and local practice, oral argument was held on April 9, 2003, regarding the parties' claim interpretations. The court set forth its construction memorandum of the disputed claims of the patents-in-suit on May 30, 2003. Pretrial case dispositive summary judgment motions were to be filed by September 3, 2003 and briefing was completed on October 1, 2003. Trial is scheduled to commence on October 31, 2003. This memorandum addresses defendants' joint motion for summary judgment alleging invalidity of the asserted claims of the '009 and '060 patents.⁷

II. Background⁸

Each of the five patents-in-suit reference terrain warning systems which warn pilots when the danger of having a "controlled flight into terrain" ("CFIT") accident increases. The parties have divided the patents-in-suit into two main categories: the "look ahead patents" ('080, '570, and '592)⁹ and the "display patents" ('060 and '009). Honeywell, the assignee of these patents, uses the technology in its Enhanced Ground Proximity Warning System ("EGPWS"). Honeywell asserts that each defendants' Terrain Awareness and Warning System ("TAWS") infringes on its EGPWS.

The display patents are the subject of this jointly filed summary judgment motion. The display patents teach two methods for displaying the alert information on a visual screen in an aircraft cockpit. Briefly summarized, the '060 patent claims a system, which causes certain information, including the severity of an alert, to "pop-up" on the pilot's screen. The '009 patent claims a system, which displays terrain information, as well as, compares the terrain and aircraft altitude. Based on this comparison, certain parts of the display are colored.

III. Standard of Review

A grant of summary judgment pursuant to Fed.R.Civ.P. 56(c) is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law."¹⁰ This standard is applicable to patent cases.¹¹ A Rule 56(c) movant bears the burden of establishing "that there is an absence of evidence to support the nonmoving party's case."¹² The nonmovant must be given the benefit of all justifiable inferences and the court must resolve any disputed issue of fact in favor of the nonmovant.¹³

IV. Positions of the Parties

Honeywell asserts claims 1-3, 8, 9, 13, 24, 27-36, 41 and 43-45 of the '009 patent and claims 1-4 of the '060 patent against Sandel. Honeywell asserts claims 1-3, 8-9, 13, 23, 24, 27-36, 39, 41 and 43-45 of the '009 patent, as well as, claims 1-5¹⁴ and 11-16 of the '060 patent against Universal.

Defendants divide the asserted claims of the '009 patent into three categories: "`h<sub>max</sub>' claims", "warning display claims" and "relative altitude claims". Claims 1-3, 8-9, 13, 23, 24, 34-36, 39 and 41 are referred to as the "`h_max' claims" because the claims require a map display with a plurality of terrain contours "including the highest h_max and lowest h_min terrain levels of said proportion of the terrain". Claims 27-33 are the "warning display claims" since they teach a visual display in combination with the "warning display" of the type disclosed in the look ahead patents. The final grouping, the "relative altitude claims" (claims 43-45), recite the additional limitation of color-coded contours based on elevation of the terrain relative to the proximity of the aircraft.

Defendants contend that the asserted `h_max' claims and relative altitude claims are invalid as anticipated by prior art in the field of avionics terrain altering systems. They further assert that the warning display claims of the '009 patent are invalid based on the combined teaching of prior art references in the field, i.e., the asserted claims are invalid as obvious.

Arguing that the '060 patent claims are anticipated by the prior art, defendants contend that claims 1-3 and 11-16 are invalid. Further, they also argue that claims 4-6 of the '060 patent are obvious in light of the prior art references in the field.

Honeywell is only pursuing infringement as to claims 27-33 of the '009 patent and claims 4 and 5 of the '060 patent. When responding to defendants summary judgement motions, Honeywell represented that it does not intend to pursue certain claims of the '009 and '060 patent, that is, the claims defendants assert invalidity based on anticipation. According to Honeywell, these claims have been withdrawn. Honeywell argues that defendants, in an attempt to avoid liability for willful infringement by arguing that certain claims are obvious in light of various combinations of prior art, have not met their burden of proving obviousness by clear and convincing evidence and have not met the requisite standard for summary judgment.

V. Jurisdiction

Honeywell had accused defendants of infringing the display patents generally by the manufacture, use and sale of their terrain awareness warning systems which allegedly embody the claimed invention. Both Sandel and Universal counterclaimed seeking declaratory judgment, pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 and § 2202, of non-infringement and invalidity of the '009 and '060 patent.

Because Honeywell represented to defendants in writing of its present and future intent not to pursue infringement of certain previously asserted claims of the '009 and '060 patents, it now argues that defendants have no standing to seek declaratory judgment as to the withdrawn claims.¹⁵ As a result, Honeywell contends that the court no longer has subject matter jurisdiction with respect to those claims based on the absence of a case or controversy.

Defendants argue that Honeywell cannot unilaterally and without leave of court, withdraw part of its action. Defendants contend that Honeywell's attempted withdrawal of part of its infringement case, at this late date, provides no guarantee these claims will not be asserted in another action or against other products. Notably, Honeywell continues to pursue alleged infringement of other claims of the display patents. Moreover, defendants argue that a case or controversy exists as to the withdrawn claims, since the parties are currently engaged in a separate infringement action before this court on a related patent, and thus, no guarantee exists that similar claims will not arise in that litigation. Defendants, therefore, assert that the withdrawn claims remain ripe for decision.

A case or controversy is a jurisdictional predicate for declaratory judgment under 28 U.S.C. § 2201. Grain Processing Corp. v. American Maize-Prods., 840 F.2d 902, 905 (Fed.Cir.1988). This requirement precludes a party from asserting a claim for declaratory judgment of non-infringement or invalidity unless the defendant objectively has a "reasonable apprehension that it will face an infringement suit." See Mobil Oil Corp. v. Advanced Environmental Recycling Techs., Inc., 826 F.Supp. 112, 114 (D.Del.1993). Once established, jurisdiction vanishes only when subsequent events render the threat of an infringement action nonexistent. Id.

Typically, when the patentee institutes an action for infringement and the alleged infringer counterclaims that the patent is invalid, unenforceable, and/or not infringed, the action may proceed on the counterclaim, even if the patentee voluntarily dismisses the charge of infringement and stipulates to non-infringement. See Biacore v. Thermo Bioanalysis Corp., 79 F.Supp.2d 422, 454 (D.Del.1999). However, for a court to retain jurisdiction over counterclaims seeking declaratory judgment of non-infringement and invalidity, once the infringement claims have been withdrawn, the defendant must show, by a preponderance of the evidence, that it has a reasonable apprehension that it will be sued on the non-asserted claims. Id. The defendants have met this standard.

Determining whether a party is in reasonable apprehension of being sued by the patentee on a particular claim requires a two-step analysis:

There must be both (1) an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit, and (2) present activity which could constitute infringement or concrete steps taken with the intent...