Honeywell Intern. v. Universal Avionics Systems, 02-359-MPT.
| Citation | 343 F.Supp.2d 272 |
| Decision Date | 12 November 2004 |
| Docket Number | No. 02-359-MPT.,02-359-MPT. |
| Parties | HONEYWELL INTERNATIONAL, INC., et al., Plaintiffs, v. UNIVERSAL AVIONICS SYSTEMS CORP., et al., Defendants. |
| Court | U.S. District Court — District of Delaware |
Thomas C. Grimm, Esquire and Jack C. Schecter, Esquire, Morris, Nichols, Arsht & Tunnell, Wilmington, DE, Steven D. McCormick, Esquire, Kirkland & Ellis LLP, Chicago, Illinois and Sarah Slover Esquire, Mayer, Brown, Rowe & Maw LLP, New York, NY, for Honeywell International Inc. and Honeywell Intellectual Properties Inc.
Frederick L. Cottrell, III, Esquire, Richards, Layton & Finger, Wilmington, DE, William G. Todd, Esquire, Scott J. Bornstein, Esquire, Greenberg Traurig, LLP, New York, New York and Brian A. Weinberger, Esquire, Greenberg Traurig, LLP, Phoenix, AZ, for Universal Avionics Systems Corp.
Thomas L. Halkowski, Esquire, Fish & Richardson, P.C., Wilmington, DE, Frank E. Scherkenbach, Esquire and Howard G. Pollack, Esquire, Fish & Richardson, P.C., Redwood City, CA, for Sandel Avionics, Inc.
This action, which originated as a patent infringement case, involves technology in the aviation industry. The parties are competitors in the market for terrain warning systems and displays. Honeywell International Inc.1 and Honeywell Intellectual Properties Inc.2 (collectively, "Honeywell")3 manufacture and sell a terrain awareness and warning system, the "Enhanced Ground Proximity Warning System" or "EGPWS." Since February 29, 2000, Universal Avionics Systems Corp. ("Universal")4 manufactures and sells its terrain awareness and warning system, otherwise known as "TAWS." Sandel Avionics, Inc. ("Sandel")5 manufactures and sells a terrain awareness and warning system, the "ST3400 TAWS/RMI."
Honeywell commenced this action on May 10, 2002 seeking monetary recovery and injunctive relief for alleged willful infringement of five patents-in-suit: U.S. Patent Nos. 5,839,080 ("'080 patent"),6 6,122,570 ("'570 patent"),7 6,219,592 ("'592 patent"),8 6,092,009 ("'009 patent")9 and 6,138,060 ("'060 patent")10 against Sandel and Universal.11 On July 17, 2002, Sandel answered the complaint by denying the allegations of willful infringement, and asserted various affirmative defenses and counterclaims for declaratory relief that the patents-in-suit are invalid and not infringed. On July 19, 2002, Universal responded to the complaint by denying the allegations of infringement and willful infringement and raised various affirmative defenses and counterclaims for declaratory relief that the patents-in-suit are invalid and not infringed.
On August 8, 2002, Honeywell replied to the counterclaims of Universal and Sandel. On September 9, 2002, Universal amended its answer by adding counterclaims for attempt to monopolize, tortious interference with business expectations, and unfair competition. Honeywell responded to Universal's amended counterclaims on October 15, 2002.
On February 7, 2003, the parties participated in a tutorial before the court, during which the technology and the matters at issue were addressed. On February 10, 2003, Universal filed a second motion to amend its answer, in which the affirmative defense of inequitable conduct was added. On February 11, 2003, Sandel moved to amend its answer, and also added the affirmative defense of inequitable conduct. On March 18, 2003, the court granted Sandel and Universal's motions to amend.
On February 19, 2003, the parties filed a joint submission on claim construction, which set forth the disputed claims of each patent-in-suit and the position of each party with respect to each term. On March 7, 2003, the parties filed their initial briefs on claim construction detailing their respective claim interpretation positions. The parties' responsive briefs were filed on April 4, 2003. Pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) and local practice, a claim construction hearing was held on April 9, 2003. This court construed the disputed claims in a memorandum dated May 30, 2003.
The parties then submitted case dispositive motions. On July 30, 2003, Sandel filed motions for summary judgment of non-infringement and invalidity of certain claims of the '060 and '009 patents based on the prior art. On August 2, 2003, Universal filed a motion for partial summary judgment of non-infringement with respect to the '080, '009, '570 and '592 patents. On August 27, 2003, Sandel and Universal filed a joint motion for summary judgment of invalidity based on the on-sale and public use bars. Universal also filed a supplemental memorandum in support of Sandel's motion of invalidity, converting it into a joint motion for summary judgment.
On September 22, 2003, Honeywell responded to these motions. On September 29, 30 and October 1, 2003, Universal and Sandel filed their reply briefs.
In a memorandum issued on October 16, 2003, this court addressed the motions of invalidity based on the prior art. Relying on its position that the court no longer had jurisdiction based on the lack of a case or controversy, Honeywell did not address the challenge of anticipation of certain claims of the '009 and '060 patents.12 Universal and Sandel's joint motion was granted and denied in part. Left for trial were the invalidity allegations based on the prior art regarding claims 27-33 of the '009 patent and claims 4-5 of the '060 patent.13
In a memorandum dated October 28, 2003, this court found that the accused devices did not infringe the asserted claims of the '080, '570 and '592 system patents and the '009 display patent. Additionally, that opinion determined that Sandel's ST 3400 TAWS did not infringe claim 4 of the '060 display patent,14 and held that neither Sandel's nor Universal's TAWS contained the "look ahead distance" and "terrain floor boundary" limitations identical to those disclosed and claimed in the '080 patent, as well as, in the remaining patents-in-suit.
Based on this finding, Universal prepared a supplemental memorandum in further support of its motion for summary judgment of non-infringement. This memorandum, filed October 29, 2003, asserted that Universal's TAWS did not infringe upon the '060 display patent because it lacked the required warning logic expressed as look ahead distance and terrain floor boundary. Consistent with its previous rulings, this court entered partial summary judgment of non-infringement with respect to claims 4 and 5 of the '060 patent. As a result, all claims of infringement were dismissed.
In a companion filing, Universal moved to change the order of proof at trial. This motion was granted on October 29, 2003. Subsequently, the parties agreed to a bench trial for the remaining issues. Thus, Universal and Sandel assumed the role of plaintiffs for all purposes and are referred to as such in this opinion.
The remaining joint motion of invalidity based on the on-sale and public use bars was not decided, and remained an issue for trial. A seven day bench trial was conducted on November 3-7, 10 and 12, 2003. This opinion represents the court's findings of fact and conclusions of law with respect to all trial issues. This court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338. Personal jurisdiction and venue are not contested. Incorporated by reference is the construction of the claim terms recited in the May 30, 2003 memorandum and order.
The patents-in-suit are designed to solve a problem in the aviation industry known as Controlled Flight Into Terrain ("CFIT"). CFIT refers to a category of accidents that occur when an aircraft is flown into the ground during controlled flight. CFIT crashes generally occur as a result of pilot error and are distinguished from other accidents involving loss of control or mechanical failure because a ground collision is not due to system malfunction or failure.
A precursor to the technology described and claimed in the patents-in-suit is the Ground Proximity Warning System ("GPWS"). GPWS uses radar altimeter (also referred to as radio altitude) input to determine if flight conditions are such that inadvertent contact with the terrain is imminent. Because the GPWS is limited to the downward looking radar altimeter, it has certain disadvantages and cannot prevent all CFIT accidents.
The patents-in-suit relate to Honeywell's research and development to improve or "enhance" GPWS. The basic concept of Honeywell's Enhanced GPWS ("EGPWS") is that it provides "virtual look ahead ... to be able to actually predict where the airplane was going based on the terrain database and an accurate knowledge of where the aircraft was...." D.I. 236 at 898:11-899:1. This forward looking capability is intended to provide increased alerting time to warn pilots of potentially hazardous terrain ahead. Honeywell's EGPWS also gives "the pilot a picture," that is, a threatening terrain display in addition to a verbal alert.
The '080 patent entitled "Terrain Awareness System," issued to AlliedSignal Inc. on November 17, 1998, was derived from application Serial No. 509,642 ("'642 application"). The challenged independent claims of the '080 patent claim "an apparatus for alerting a pilot of an aircraft of proximity to terrain" and "a method for alerting a pilot of hazardous proximity to terrain." JTX 1 at 49:1-3, 50:10-11.15 Claim 1 of the '080 patent is a representative claim and contains the basic requirements for the claimed terrain alerting system.16 Claim 1 requires a database of stored terrain information, an input and an output, a signal processing device, a terrain floor boundary, first and second envelopes, which are determined as a...
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