Honeywell Intern. v. Universal Avionics Systems

• Decision Date: 28 October 2003
• Docket Number: No. C.A.02-359-MPT.,C.A.02-359-MPT.
• Citation: 289 F.Supp.2d 493
• Parties: HONEYWELL INTERNATIONAL, INC., et al., Plaintiffs, v. UNIVERSAL AVIONICS SYSTEMS CORP., et al., Defendants.
• Court: U.S. District Court — District of Delaware

289 F.Supp.2d 493

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.

October 28, 2003.

COPYRIGHT MATERIAL OMITTED

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. Plaintiffs, Honeywell International Inc. and Honeywell Intellectual Properties Inc. ("Honeywell"),¹ filed suit alleging infringement² 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")) against defendants, Universal Avionics Systems Corp. ("Universal")³ and Sandel Avionics ("Sandel").⁴

On July 30, 2003, Sandel moved for summary judgment on non-infringement. D.I. 161. On August 28, 2003, Universal moved for partial summary judgment of non-infringement. D.I. 173. This is the court's opinion on the motions.⁵

II. Background⁶

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. The patents-in-suit can be divided into two main categories: "look ahead patents" ('080, '570 and '592) and the "display patents" ('060 and '009). The primary patent in this litigation is the '080 patent, which claims "the core forward-looking terrain alerting system." All of the patents-in-suit contain the same specification related to this system. The '570 patent, a continuation-in-part of the '080 patent, claims the ability to visually display the alert to the pilot, in addition to the core system. The '592 patent, also a continuation-in-part of the '080 patent, claims algorithms, which allow the system to detect horizontal, as well as, vertical terrain threats, in addition to the core system.

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.

Honeywell, the assignee of these patents, uses the technology of the patents in its Enhanced Ground Proximity Warning System ("EGPWS"). Honeywell asserts that each defendants' Terrain Awareness and Warning System ("TAWS") infringes.

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."⁷ This standard is applicable to all types of cases, including patent cases.⁸ A Rule 56(c) movant bears the burden of establishing the lack of a genuinely disputed material fact by demonstrating "that there is an absence of evidence to support the nonmoving party's case."⁹ Therefore, summary judgment is appropriate when there is no genuine issue of material fact or, when drawing all factual inferences in favor of the nonmoving party, no "reasonable jury could return a verdict for the nonmoving party."¹⁰

The non-movant must be given the benefit of all justifiable inferences and the court must resolve any disputed issue of fact in favor of the non-movant.¹¹ In cases when the nonmoving party will bear the burden of proof on a dispositive issue, the non-movant must designate "specific facts showing that there is a genuine issue for trial."¹² Material facts are those which "might affect the outcome of the suit under the governing law."¹³ Any doubt as to the existence of any issue of material fact requires a denial of the motion.¹⁴

IV. Positions of the Parties

The parties had the benefit of the court's claim construction opinion when briefing these motions for summary judgment.¹⁵ Despite this benefit, the parties reach a contradictory conclusion whether the asserted claims of the patents read on the accused products.

Defendants assert that their devices cannot infringe, because their TAWS systems do not contain one or more of the claim limitations as construed by the court. Sandel argues that its TAWS is missing one or more limitation of each of the claims at issue of the '080, '570 and '592 patents, as its system does not receive a signal representative of¹⁶ flight path angle,¹⁷ and does not define or use look ahead distance¹⁸ as claimed. Sandel also argues its alerting methodology does not contain alert envelopes¹⁹ as construed. Sandel asserts that its terrain alerts are not determined based on first and second functions of²⁰ look ahead distance,²¹ flight path angle and terrain floor boundary²² as construed.

Sandel argues that its TAWS does not infringe asserted claim 4 of '060 patent or that asserted claims 1-3, 8, 9, 13, 24, 27-36 and 41 of the '009 patent are infringed because the system does not show a numerical display of terrain elevations.²³ Therefore, according to Sandel, its TAWS does not include the `h_max' requirement, or its structural equivalent, as recited in independent claims 1, 34, and 41 (and claims dependent thereof) of the '009 patent; its system does not include the "warning means" or its structural equivalent of claim 27 (and its dependents) of the '009 patent; and its TAWS does not have the claimed "means for determining a severity of a terrain threat" or its equivalents, as required by claim 4 of the '060 patent.²⁴

Universal contends that its TAWS does not infringe the asserted claims of the '080, '009 and '592 patents. Since its system does not include the limitations: "look ahead distance," "terrain floor boundary," "highest h_max and lowest h_min terrain levels" expressed as numeric values, and/or "flight path angle" as constructed.

Honeywell asserts that the claim construction precludes a grant of summary judgment because the accused Sandel and Universal products literally and/or equivalently infringe the patents-in-suit. To the extent that defendants disagree, Honeywell contends that the non-infringement motions should be denied as genuine issues of material fact exist.

V. Analysis

Patent infringement requires a two-step analysis. The first step is for the court to make the legal determination of how the claims at issue are to be construed.²⁵ The second step is a factual determination of comparing the properly construed claims to the accused product to determine whether the accused product contains all the limitations, either literally or by equivalents, in the claimed invention.²⁶ If the accused devices do not contain at least one limitation required by the asserted claims, the court must conclude that the devices do not infringe as a matter of law and grant defendants' summary judgment motions.²⁷

Absent literal infringement upon the express terms of the claim, infringement may be found under the doctrine of equivalents. Essential to the inquiry under the doctrine of equivalents is whether the accused product or process is identical or equivalent to each claimed element of the patented invention.²⁸ Nevertheless, prosecution history estoppel provides a legal limitation on the application of the doctrine of equivalents by excluding from the range of equivalents subject matter surrendered during prosecution of the application for the patent.²⁹

A. Doctrine of Equivalents

Before analyzing the parties' arguments regarding literal infringement, the court must address the dispute regarding whether the doctrine of equivalents is applicable to this case. Sandel and Universal argue that Honeywell should be precluded from relying on equivalents because its expert report, authored by Dr. Hansman, contains no mention of this doctrine. In addition, Sandel contends that Dr. Hansman's "belated doctrine of equivalents testimony" should be stricken since it resulted from improper coaching in violation of court rules.³⁰

A review of the portions of Dr. Hansman's deposition provided by the parties clearly shows that prior to his deposition, he did not evaluate Sandel's or Universal's system under the analysis of the doctrine of equivalents. There was no discussion in his report as to whether or not any differences between the accused systems and the claims of the patents were insubstantial. He was neither requested, nor did he analyze whether the accused systems, in relation to the claims of the patents, perform a similar function in substantially the same way to achieve substantially the same result. He agreed that such an analysis could have been done by him prior to the serving of his opening report, and before the rebuttal report of Sandel's expert, Mr. Gibson, "if [he] had been requested to."³¹

According to the scheduling order entered in this matter, the exchange of initial expert reports operated on who had the burden of proof. Therefore, when the initial exchange of those reports occurred, Honeywell had the obligation to provide a "complete statement of all opinions to be expressed" by the expert "and the bases and reasons therefor," as well as, the data or other information considered by the expert in forming his opinions.³² Since Honeywell's position on the doctrine of equivalents is only supported by...