# Petition for Writ of Certiorari — Safe Flight Instrument Corp. v. Sundstrand Data Control, Inc.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 1990
- **Citation:** 498 U.S. 919

## Text

No. 90-

. IN THE >
Supreme Court of the Gnited States
OCTOBER TERM, 1990

SAFE FLIGHT INSTRUMENT CORPORATION,

Petitioner,
Vv.

SUNDSTRAND DATA CONTROL, INC.,
Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

PETITION FOR WRIT OF CERTIORARI

LAURENCE H. TRIBE
Counsel of Record

PETER J. RUBIN
1525 Massachusetts Avenue
Cambridge, Massachusetts 02138
(617) 495-1767

July 19, 1990

BATEMAN & SLADE. INC BOSTON. MASSACHUSETTS

QUESTIONS PRESENTED

The FAA requires planes to carry a device to warn of “micro-
burst windshear,” the largest weather-related cause of airline
deaths. Petitioner holds the first patent on any such device.
Its novelty is that it measures the effect of downward wind on
a plane’s performance, combining this figure with a measure
of a less harmful and previously known phenomenon, horizon-
tal windshear, to warn of microburst windshear.

Respondent began making a microburst windshear warning
device identical to petitioner’s except that, in deriving the
horizontal windshear component, it combines two electronic
signals before subtracting their sum, rather than subtracting
them one by one. The Federal Circuit, deeming a finding of
infringement under the doctrine of equivalents to require
equivalence not of the two devices each taken as a whole, but
of each element of each of the two devices, held for respondent.
These questions arise:

. 1. Where anyone, by exploiting a simple algebraic identity,
can easily make such a functionally irrelevant change to a
signal within any device that incorporates electronic signal
processing — devices such as computers, compact disc players,
and those used in satellite technology, cable television, and a
vast array of other industries — does the Federal Circuit’s
blueprint for circumventing patent protection comport with
this Court’s holding in Graver Tank that a patent is infringed
by any device that “performs substantially the same function
in substantially the same way to obtain the same result?”

2. Where a patented innovation includes a patented subcom-
ponent (here. the device for separately measuring the horizontal
windshear), and where the subcomponent forms no part of the
“innovative concept” which the overall patent describes, may
restrictions conceded in order to support the patentability of
the subcomponent be used to limit the protection given to the
entirely independent innovation of the overall patent?

es |

ill
PARTIES TO THE PROCEEDING

Safe Flight Instrument Corporation has no parent company,
nor any nonwholly owned subsidiaries.

Vv

TABLE OF CONTENTS

QUESTIONS PRESENTED ...........
PARTIES TO THE PROCEEDING. .......
TABLE OF AUTHORITIES ...........
ee ee ee eee
GEE 66 6 ks a sk a eee

CONSTITUTIONAL PROVISION AND STATUTE
OWE 6 6 ns a > oe oo OO

STATEMENT OF THECASE ..........
REASONS FOR GRANTING THE WRIT

I. A. The Requirement of Element-By-Element
Equivalence Perverts the Doctrine of Equiv-
OS lS ose ae ee nee eee

B. 1. Even if Element-By-Element Equivalence
Were Necessary, Requiring Equivalence of
- an /solated Signal as an “Element” of a Patent
Effectively Removes All Devices That Incor-
porate Electronic Signal Processing from
Within the Protective Reach of the Doctrine

of ER ck Sa SS eee

2. The Court of Appeals’ Attempi to Evade This
Conclusion by Invoking the Homily That
One Cannot Patent a Law of Nature Distorts
That Doctrine and Conflicts With This
Court’s Recent Decision in Diamond v.
PO ck sh £8 ee eee

14

14

17

22

vi

TABLE OF CONTENTS (cont.)

II. The Use of the Prosecution History of One Patent to
Narrow the Scope of a Patent for a Second, “Cumu-
lative” Invention — One Which Incorporates the
Earlier Device — Eviscerates the Protection to
Which Such Inventions are Entitled Under the Doc-
CUS CE EIS ccc tee eek e 24

CERCLA a 0 ee 0s eee eee 30

TABLE OF AUTHORITIES
Cases:

Continental Paper Bag Co. v. Eastern Paper Bag

Co., 200 UB. SES CGP wee wc ct ee 25
Diamond v. Diehr, 450 U.S. 175 (1981)... . . 22,23
Graver Tank & Mfg. Co. v. Linde Air Products Co.,

o0e Ua. Gee Ge: 88 ke Oe eee passim
Hughes Aircraft v. United States, 717 F.2d 1351

Gwe. Cab. Fee a: 6 ae Ole 28
Loctite Corp. v. Ultraseal Lid., 781 F.2d 861 (Fed.

Co. FED 6 6ié-eie 6 ee eee 13
In Re Longi, 759 F.2d 887 (Fed. Cir. 1985) .. . 28
Nelson v. Batson, 322 F.2d 132 (9th Cir. 1963). 25
Parker v. Flook, 437 U.S. 584 (1978) .... .. 23

Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d
931 (Fed. Cir. 1987) (en banc), cert. denied, 108
SAX. SS GQ oe ean Cee 9,10,15

vil
TABLE OF AUTHORITIES (cont.)

Royal Typewriter Co. v. Remington Rand, 168 F.2d

ee es CPD S's os ae ee Alo koe es 16
Sanitary Refrigerator Co. v. Winters, 280 U.S. 30

6c oa ek 6 oR ee eee oe 9
Westinghouse v. Boyden Power Brake Co., 170 U.S.

— fee a ee ee ee ee 25,29
Winans v. Denmead, 56 U.S. (15 How.) 330(1853) . 9

Constitutional Provisions, Statutes and Regulations:

United States Constitution

Asticle 1,98, ClawseS .........2..2.. 2,24,29

5 Ue es ss cc ew ctcaweceuus 2

2 ARPS ee ere ee 6

ee soa ee 23,27

OL RRR aa eat a es Se A bot a 27

ote ihe ae eae eo 27

Cra ole ls he Eh ee es 28

ON ae ee te nce ee eee 2

14 C.F.R. § 121.358 (1990) ........... x

oe FUG. Hg. Sesew CISSF) 2 wt tt te we 8
Miscellaneous:

6 Walker on Patents (Lipscomb ed. 1987) . . . . 22,25,28

A. Miller & M. Davis, Intellectual Property (1983) . 1S

No. 90-

IN THE
Supreme Court of the Gnited States
OcTOBER TERM, 1990

SAFE FLIGHT INSTRUMENT CORPORATION,

Petitioner,
v.
SUNDSTRAND DATA CONTROL, INC.,
Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

PETITION FOR WRIT OF CERTIORARI

OPINIONS BELOW

The decision and opinion of the Court of Appeals for the
Federal Circuit are unreported and reprinted as Appendix A
at page Al. The opinion and order of the United States District
Court for the District of Delaware on Safe Flight’s motion for
reconsideration are unreported and reprinted as Appendix B
at page A3. The opinion of the district court granting summary
judgment for respondent is reported at 706 F. Supp. 1146. It
is reprinted along with the order of the district court as Appen-
dix C at page Al6.

2
JURISDICTION

The judgment of the United States Court of Appeals for the
Federal Circuit was entered on March 22, 1990. A timely
petition for rehearing was denied on April 20, 1990. See Ap-
pendix D at page A37. The jurisdiction of this Court is invoked
pursuant to 28 U.S.C. § 1254(1).

CONSTITUTIONAL PROVISION AND
STATUTE INVOLVED

Article 1, § 8, Clause 8 of the United States Constitution
reads:

The Congress shall have Power . . . to promote the
Progress of Science and useful Arts, by securing for
limited times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries

Title 35, United States Code, § 271(a) reads:
§ 271. Infringement of patent

(a) Except as otherwise provided in this title, who-
ever without authority makes, uses or sells any
patented invention, within the United States during
the term of the patent therefor, infringes the patent.

STATEMENT OF THE CASE

1. Introduction

Microburst windshear has been the largest single mete-
orological cause of commercial airplane deaths in the United

3

States. In 1988, the Federal Aviation Administration adopted
a regulation requiring all commercial aircraft to be equipped
with a microburst windshear warning device.

Petitioner holds the first patert on any such device. It also
holds a patent on a more modest device for measuring less
harmful horizontal windshear. The novelty of the new micro-
burst warning patent is that it measures the effect of downburst,
an isolated patch of downward wind, on an airplane’s perfor-
mance. The microburst windshear warning device incorporates
as a subcomponent the old horizontal windshear mechanism:
In the microburst windshear warning device, the horizontal
windshear measurement is added to the downburst measure-
ment to give a warning for total microburst windshear.

Another company, respondent here, began making a
microburst windshear warning device that is identical, except
that before subtracting the two electronic signals that must
be deducted in calculating the horizontal windshear compo-
nent, it first adds the two together and then subtracts their
sum, rather than subtracting them one at a time. This rearrange-
ment in the process for calculating the horizontal windshear,
or “H”, amounts to nothing more or less than computing
H = A —(B+C) instead of H = (A-—B) — C.

By avoiding the generation of any separate electronic signal
for (A—B), this rearrangement creates a situation in which
the signal moving through one wire of respondent’s device
differs from the corresponding signal in petitioner’s device.
The Federal Circuit Court of Appeals, holding that there is no
infringement under the doctrine of equivalents unless each
“element” of the patented device is included in a copy, found
for the respondent. The court also held that the scope of the
overall patent was limited by the prosecution history of the
subcomponent horizontal windshear patent, because the former
incorporates the language used in the earlier patent to describe
the horizontal windshear device.

2. Summary

In this case the Court of Appeals for the Federal Circuit has
imposed a regime for evaluating patent infringement claims
that effectively removes, from all devices that use or generate
electronic signals, the most important part of the protection
afforded inventions under the patent law. The Court of Appeals
did further violence to the patent system of economic incentives
for both innovation and its disclosure by applying its new
regime in such a way as to narrow drastically the patent pro-
tection available to all new inventions that incorporate older
inventions of more limited scope.

While devices that process electronic signals are not new,
they are of increasing importance to the world economy: com-
puter hardware, artificial intelligence, digital devices such as
compact disc players and compact disc random access memory
devices, hardware for scrambling and transmitting satellite and
cable television broadcasts — all will be affected by the deci-
sion of the Federal Circuit Court of Appeals in this case. At
precisely the time when economic competition has taken on
greater global significance, the Federal Circuit has chosen to
restrict the protection given this broad class of devices; it has
done so in the face of the teachings of this Court and the basic
principles and values underlying both the constitutional grant
to Congress of the patent power and the federal patent law
enacted thereunder.

Furthermore, in a world of increasing technological innova-
tion, the importance of devices that incorporate previous inven-
tions has increased exponentially. Rarely is it the case that an
invention of economic and social significance will be produced
of whole cloth by a single person. The genius of invention
often lies in a person’s ability to take existing inventions of
little significance, to bring them together in a different way,
or to add an inventive concept in order to make them useful.

5

This the law of patents has long acknowledged. Yet the Court
of Appeals for the Federal Circuit in this case has adopted
reasoning that suddenly constricts the protection given such
cumulative inventions, leaving it lifeless and sterile. The Court
of Appeals, in a brief opinion, adopted the reasoning of the
district court.' Yet the fact that the Court of Appeals proceeded
summarily, as though a routine matter were at hand, does not
diminish the far-reaching implications of its decision. Indeed,
the threat of a radical transformation of the patent law is perhaps
greatest when the Court of Appeals for the Federal Circuit acts
in just such an off-hand manner.

The Court of Appeals decision has constricted patent protec-
tion in two ways. First, it has transformed the traditional test
for determining whether there is “equivalence” between a
patented device and a challenged one. The Court of Appeals
has replaced the broad and flexible test prescribed by this Court
in the leading case of Graver Tank & Mfg. Co. v. Linde Air
Products Co., 339 U.S. 605 (1950) — a test in which a patent
protects its inventor from a copy of his invention which is its
substantial equivalent — with a more mechanistic test in which
each element of the accused device must have an equivalent
element in the patented invention before infringement will be
found. This element-by-element test for equivalence imposes
a requirement of nearly-literal infringement that is at odds with
the equitable “doctrine of equivalents” carefully crafted by this
Court over the past century and a half. In this case that error
is compounded by the Court of Appeals’ willingness to treat
the presence of a particular isolated electronic signal within a
device as an “element” of a patent. This will make circumven-

‘In her opinion for the Court of Appeals, Judge Nies wrote that “(t]he district
court gave thoughtful and careful analysis io all of the issues raised by Safe
Flight in both its opinion granting summary judgment and that denying Safe
Flight’s motion for reconsideration. Accordingly, we affirm on the basis of
the opinions below.” Appendix at A2 (“A2”).

6

tion of the Court of Appeals’ element-by-element test child’s
play for would-be copyists of any device that processes elec-
tronic signals.

Second, the Court of Appeals has departed from the princi-
ples that underlie the protection of invention granted by Con-
gress under its patent power by using conclusions about the
scope and history of a first patent to restrict the protection
given a device claimed in a second patent that happens to
incorporate the first invention as a subcomponent. By focussing
on restrictions contained in an earlier patent, rather than on
the inventive concept actually protected, the Court of Appeals
has dangerously narrowed the protection of all devices that
incorporate earlier inventions. This is an enormous class of
patents including many inventions of commercial and social
significance.

Of course, since 1982, only one Court of Appeals has had
jurisdiction over questions of patent law. There can, therefore,
be no possibility of a “circuit conflict” on questions of federal
patent law. But neither is there an opportunity for any judicial
tribunal other than this Court to reconsider and examine the
reasoning and analysis that underlies the decisions announced
by the Federal Circuit. This Court therefore has a special
responsibility in the area of federal patent law. No decision
with implications so grave for our economic development as
that in this case should be allowed to stand without review.

3. Background

Petitioner Safe Flight Instrument Corporation (“Safe Flight’)
seeks review of a judgment of noninfringement by the United
States Court of Appeals for the Federal Circuit. The district
court had original jurisdiction of this action under 28 U.S.C.
§ 1338(a).

Two Safe Flight patents are involved in this case. The first,
U.S. Patent No. 4,012,713 (“the horizontal windshear patent” or

7

“the first patent”),’ is for an airborne warning device for “hori-
zontal windshear” — sudden, localized gusts of wind. The
horizontal windshear patent describes a device that would be
carried on an airplane and that would trigger an alarm when
horizontal windshear around the plane reaches a critical level.
Since very few accidents are caused by horizontal windshear,
this first patent is of limited commercial utility.

The second patent, U.S. Patent No. 4,079,905 (“the microburst
warning patent” or “the second patent’’),* describes an airborne
warning device that measures “microburst windshear’”’ around
the airplane and triggers an alarm when it reaches a critical
value. Microburst windshear is an unusual meteorological
phenomenon in which there is a downdraft — a forceful,
isolated patch of downward wind. It can be extremely hazard-
ous to aircraft, particularly those attempting to land. The novel
feature of the second patent is that it contains a means for
measuring downdraft, and for using that measurement to deter-
mine the change of the angle of descent of an aircraft caused
by the downdraft. To give the pilot a total microburst windshear
signal, the horizontal windshear measurement is added to this
“downdraft drift angle”: the patent for the microburst warning
device incorporates the description of the horizontal windshear
measurement device used in the horizontal windshear patent.
The microburst warning patent covers the first airborne device
of any kind for the measurement of microburst windshear.

The importance of this Safe Flight patent cannot be overem-
phasized. The very existence of the microburst windshear
phenomenon was not known until 1975, yet it is now believed
that microburst windshear was responsible for hundreds of
fatalities in many commercial air disasters prior to that time

*The courts below referred to this as “the '713 patent.”
‘The courts below referred to this as “the "905 patent.”

8

that had previously been attributed to pilot error. Indeed, be-
tween 1964 and 1983, microburst windshear caused 28 com-
mercial airline accidents in the U.S. during takeoff or landing.
See 52 Fed. Reg. 20,560 (1987) (Notice of Proposed Rulemak-
ing). Following a fatal airline disaster at Kennedy Airport on
June 24, 1975, investigation of microburst windshear was in-
tensified, and in 1976 Dr. T.T. Fujita of the University of
Chicago first published a detailed description of the microburst
phenomenon. This was perhaps the most important scientific
discovery in airline safety in the postwar period. And indeed,
in 1988, the Federal Aviation Administration adopted a regu-
lation requiring all large commercial airliners to carry a micro-
burst windshear warning device. 14C.F.R. § 121.358 (1990).

The Boeing Company (“Boeing”), recognizing the need to
incorporate an effective airborne windshear warning device on
its new models of aircraft, entered into an agreement with Safe
Flight. Rather than manufacture the microburst warning device
itself, Safe Flight licensed the Boeing Company to manufac-
ture, or to engage a third party to manufacture, devices in
accord with its two patents. Boeing then engaged Respondent
Sundstrand Data Control, Inc. (“Sundstrand”) to manufacture
the windshear device. Sundstrand did so — indeed, it printed
the Safe Flight patent numbers on its device — but then claimed
that its device was not covered by the Safe Flight patents.
Sundstrand proceeded to make its device commercially avail-
able.*

4. The Decision Below

The only difference claimed by Sundstrand between the
Sundstrand device and Safe Flight’s is in the portion of the

~ *Sundstrand made three versions of its device, all of which Sundstrand
concedes are identical in all respects relevant to this litigation. See Brief for
Appellee in the Court of Appeals at 11 and n.7; (A19 n.2).

9

device that measures horizontal windshear. The district court
held that if the subcomponent horizontal windshear patent was
not infringed, then the overall microburst warning patent,
which includes a description of the means for producing the
horizontal windshear signal identical to that contained in the
horizontal windshear patent, was not infringed. Appendix at
Al7 (“A17”).

a. The Doctrine of Equivalents

The district court found first that the Sundstrand device does
not literally infringe the horizontal windshear patent. It then
examined the Sundstrand device for infringement under the
“doctrine of equivalents.” That cornerstone doctrine of patent
protection was first enunciated by this Court in the venerable
case of Winans v. Denmead, 56 U.S. (15 How.) 330 (1853).
It was most recently explicated in the landmark case of Graver
Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605
(1950). There, this Court explained that a patent is infringed
by any device that “performs substantially the same function
in substantially the same way to obtain the same result.” /d.
at 608 (quoting Sanitary Refrigerator Co. v. Winters, 280
U.S. 30, 42 (1929)).

b. Element-by-Element Equivalence

In applying the doctrine of equivalents in this case, the
district court required the comparison not of the two devices
each taken as a whole, but of each element of each of the two
devices. This approach was first taken by the Federal Circuit
Court of Appeals in Pennwalt Corp. v. Durand-Wayland, Inc.,
833 F.2d 931 (Fed. Cir. 1987) (en banc), cert. denied, 108
S.Ct. 1226 (1988), a case the district court followed here.
Under Pennwalt, to support a finding of infringement the re-
viewing court must find each element of the patented device

10

or its equivalent in the alleged infringing product. That
Pennwalt departed from this Court’s teachings became clear
in this case from the district court’s treatment of an isolated
electronic signal as an “element” for which the patentee must
show equivalence. Some background is in order.

c. The Operation of the Devices

Horizontal windshear can be measured by comparing the
rate of change of the speed of the aircraft with respect to the
surrounding air (“instantaneous airspeed”) with the rate of
change of the speed of the aircraft with respect to the earth
(“groundspeed”). A sudden increase in a plane’s airspeed, its
rate of change of speed with respect to the air around it,
unaccompanied by a similar change in the plane’s rate of
change of speed with respect to the ground, will signal a sudden
change in the wind surrounding the plane. This is horizontal
windshear.

Both the Safe Flight horizontal windshear device and the
circuit for measuring horizontal windshear within the
Sundstrand device begin by measuring the actual airspeed and
the horizontal acceleration (i.e., the change in groundspeed).
But to detect windshear, one needs the difference between
change in airspeed and change in groundspeed. In the Safe
Flight horizontal windshear device, the airspeed and horizontal
acceleration signals are kept separate. The airspeed signal is
split in two, and one half is sent through a “filter” that delays
the signal slightly. This delayed airspeed signal is then sub-
tracted from the current airspeed signal to determine the rate
of change of airspeed. From this signal the horizontal acceler-
ation is then subtracted, thereby producing the horizontal
windshear signal. A diagram may be helpful:

1]

Lol een pee

Fig. 1.

The Sundstrand device also splits the airspeed signal in two.
However, in this device, half the airspeed signal is initially
superimposed on the horizontal acceleration signal. This com-
bined signal is then delayed by being sent through a “filter.”
This signal is then subtracted from the current airspeed signal,
simultaneously reducing the airspeed signal to that of its instan-
taneous rate of change and subtracting the horizontal acceler-
ation from that. (In cases of high windshear, the horizontal
acceleration is virtually constant, and so the fact that the hori-
zontal acceleration that is subtracted from the current airspeed
is slightly delayed, or “filtered,” has no practical effect on the
final signal that comes out of the device.) The result, precisely
as in the Safe Flight device, is a signal representing the hori-
zontal windshear:

12

As anyone can see, the Sundstrand Device and the Safe
Flight device for measuring horizontal windshear contain
exactly the same components. In the Sundstrand device they
have simply been rearranged slightly. Although both devices
measure and produce a signal for horizontal windshear through
precisely the same process, the district court remarkably held
that, as a matter of law, the presence of the isolated signal for
the rate of change of the airspeed was one of the “elements”
that had to be identical in order for the horizontal windshear
patent, and hence the overall microburst warning patent, to be
protected by the doctrine of equivalents. (See A27).

d. The Patent for the Microburst Warning Device and Its
Range of Equivalents

As to the measurement and incorporation of the crucial
downdraft drift angle into the final signal for total microburst
windshear, it is undisputed that in all respects relevant to this
appeal the Sundstrand device and the product described in the
microburst warning patent are identical.

The range of equivalents that will be permitted a patent
varies with the scope of the invention. An invention that is a
significant development over the prior art will be accorded
more deference than one that is but a minor advance. Yet here
the district court held, without reference to the scope of the
invention claimed in each patent, that because the microburst
warning patent incorporated claim language from the horizontal
windshear patent, the range of equivalents to be afforded the
second patent could be no broader than that afforded the first.
The district court held that the Sundstrand device does not
infringe the horizontal windshear patent and that, therefore, it
does not infringe Safe Flight’s patent for the microburst warn-
ing device either. (See Al7, A27).

——

13
e. File-Wrapper Estoppel

The district court then found that, even if the Sundstrand
device were the equivalent of that protected by the microburst
warning patent or the horizontal windshear patent, Safe Flight
was estopped from taking advantage of the doctrine of equiva-
lents here because of the prosecution history of the horizontal
windshear patent.

It is a corollary of the equitable doctrine of equivalents that
the patentee may not “recapture through equivalence certain
coverage given up during prosecution.” See Loctite Corp. v.
Ultraseal Lid., 781 F.2d 861, 870 (Fed. Cir. 1985). This is
the concept of “file-wrapper” estoppel — estopping the paten-
tee from pleading that his invention covers that which he had
to deny it covered in order to receive the patent in the first place.

After examining the prosecution history of the horizontal
windshear patent, the district court held that, in order to distin-
guish its patent from the prior art, Safe Flight had been required
to draft its horizontal windshear patent claim narrowly. (A28).
The horizontal windshear patent contains as an element the
“means for generating a signal representing the rate of change
of the instantaneous air speed” of the aircraft. The word “rep-
resenting” was required in the prosecution of that patent to
distinguish the horizontal windshear device from prior art in
which a signal was produced “in accordance with” (i.e., as a
function of) the rate of change of instantaneous airspeed. The
district court construed the word “representing” to require that
the signal for rate of change of instantaneous airspeed exist at
an intermediate point within the horizontal windshear measure-
ment device independent of any other signal. (A28-29). Thus,
under the district court's construction, no device that does not
have that isolated signal can infringe the horizontal windshear
patent under the doctrine of equivalents, regardless of the
equivalence of the steps taken within it to calculate horizontal
windshear.

14

Because the phrasing from the horizontal windshear patent
was incorporated in describing the means for generating the
horizontal windshear signal in the subsequent microburst warn-
ing patent, the district court held that the narrowing that took
place in the prosecution history of the horizontal windshear
patent was incorporated in the patent for the microburst warning
device. (A28-A29 n.6). Consequently, in the opinion adopted
by the Court of Appeals, the ruling of non-infringement of the
first patent on grounds of file-wrapper estoppel was also held
to require a finding of non-infringement of the second patent.

REASONS FOR GRANTING THE WRIT

I. A. The Requirement of Element-By-Element Equival-
ence Perverts the Doctrine of Equivalents.

In requiring an equivalent for each element of a claimed
invention, the Court of Appeals has sapped the doctrine of
equivalents of all vitality.

That doctrine, most recently explained by this Court in
Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S.
605 (1950), is equitable in nature. It is intended to protect the
inventor, and his or her investment, from minor changes in
an accused device. Under the doctrine of equivalents there is
no requirement of literal infringement. As the Court stated in
Graver Tank, “|t}he theory on which [the doctrine of equiva-
lents] is founded is that ‘if two devices do the same work in
substantially the same way, and accomplish substantially the
same result, they are the same, even though they differ in_
name, form or shape.’ Graver Tank, 339 U.S. at 608 (citation
omitted).

The whole point of the doctrine is that each element of an
invention need not be identically present in an accused device
to support a finding of infringement. “Something is substan-

15

tially equivalent if the skilled practitioner would know of the
practical interchangeability of the accused infringement’s ele-
ments with those specifically identified in the patent specifica-
tion.” A. Miller & M. Davis, Intellectual Property 125 (1983).
The doctrine “prevents the elevation of form over substance
that otherwise might allow a canny infringer to avoid the exact
duplication of an invention while still capitalizing upon the
work of the inventor.” /d. at 125-26.

By requiring instead that each element of the claimed inven-
tion or its substantial equivalent be present in the accused
device, the Federal Circuit Court of Appeals has artificially
narrowed the economic incentives for innovation that the Su-
preme Court sought to provide in Graver Tank. The implica-
tions of requiring element-by-element equivalence may not
have been obvious on the facts of Pennwalt Corp. v. Durand-
Wayland, Inc., 833 F.2d 931 (Fed. Cir. 1987) (en banc), cert.
denied, 108 S. Ct. 1226 (1988), the first case in which a
sharply divided Court of Appeals for the Federal Circuit applied
the doctrine of equivalents in this form. In that case the Court
of Appeals compared machines which, although they both
sorted fruit, appeared to work in completely different ways:
the patented machine kept track of the physical location of the
fruit as it moved through the sorter while the challenged device
did not. /d. at 935-36. Even under a proper application of
Graver Tank in that case, a court might not have been able to
find that the function of the two machines was carried out “in
substantially the same way.” In this case, by contrast, the
ramifications of requiring “element-by-element” equivalence
are all too apparent.

Sundstrand, by trivially rearranging the elements of the cir-
cuit for measuring horizontal windshear, has done precisely
what the Graver Tank Court sought to prevent. In that case
this Court explained that the doctrine of equivalents would
discourage “the unscrupulous copyist [from] mak{ing] unim-

16

portant and insubstantial changes and substitutions in the patent
which, though adding nothing, would be enough to take the
copied matter outside the claim, and hence outside the reach
of the law.” Graver Tank, 339 U.S. at 607.

This is exactly what element-by-element equivalence per-
mits. Under this formulation, as the district court in this case
held, ‘‘a court cannot merely view an invention as a whoie,
rather it must perform an element-by-element analysis of the
patent in suit and must find that each element in the claimed
invention, or its equivalent, is found in the alleged infringing
product.” (A23).

It may well be easier to apply this mechanical method than
to adhere faithfully to the doctrine of equivalents as it has been
announced by this Court. But the admonition endorsed by the
Court of Appeals not to “merely view an invention as a whole”
is irreconcilably at odds with the teachings of this Court. For
the law of patents is intended precisely to protect the “benefit
of the invention,” Graver Tank, 339 U.S. at 608 (quoting
Royal Typewriter Co. v. Remington Rand, 168 F.2d 691, 692
(2d Cir. 1948) (L. Hand, J.)). “[A] patentee may invoke this
doctrine [the doctrine of equivalents] to proceed against the
producer of a device ‘if it performs substantially the same
function in substantially the same way to obtain the same
result.’ Jd. (emphasis added).

This the Sundstrand microburst warning device clearly does,
whatever the district court’s finding regarding the non-equiva-
lence of one of its elements with one within Safe Flight’s
horizontal windshear patent. The microburst warning patent
covers an invention that warns of microburst windshear by
combining a measurement of horizontal windshear and down-
draft drift angle. That a change in the placement of a single
filter within the circuit for measuring horizontal windshear
was enough to permit the Court of Appeals to find that there
was no element-by-element equivalence demonstrates the way

17

in which such a requirement completely swallows the rule this
Court has been so careful to preserve.

The literalism in examining claims for patent infringement that
this Court long ago banished by the front door has now been
snuck in through the back door. In case after case. a requirement
that a patentee must show element-by-element equivalence before
an accused device will be held to infringe will “convert the
protection of the patent grant” into the “hollow and useless thing”
about which this Court warned in Graver Tank. Graver Tank,
339 U.S. at 607. The economic cost of the limitation to the
protection of new inventions that element-by-element equivalence
will work is both unprecedented and immeasurable.

B. 1. Even if Element-By-Element Equivalence Were Ne-
cessary, Requiring Equivalence of an /solated Signal
as an “Element” of a Patent Effectively Removes
All Devices that Incorporate Electronic Signal Proc-
essing from Within the Protective Reach of the Doc-
trine of Equivaients.

In this case the Court of Appeals held that there is no element-
by-element equivalence between the Sundstrand device and
Safe Flight’s horizontal windshear patent because in the
Sundstrand device there is no isolated signal representing the
instantaneous rate of change of airspeed. (A27). The Court
held that, as a matter of law, the isolated Signal was an “ele-
ment” of the Safe Flight claim. (See A27). Although both the
Safe Flight horizontal windshear device and the circuit within
the Sundstrand instrument measure horizontal windshear
through exactly the same process, the court held that the ab-
sence of the isolated signa! in the Sundstrand device meant
that there was no equivalent for the isolated signal “element”
of the patented device.

18

The appearance of an isolated signal at an intermediate stage
in a device that incorporates signal processing is so insignifi-
cant, and the ease with which a practitioner of the art can alter
a device to prevent a signal from appearing in an isolated way
is so simple, that if patent law can regard an isolated signal
as an “element” of a patent there will be virtually no doctrine
of equivalents protection for any device that incorporates sig-
nal processing. This will affect all manner of electronic de-
vices: computer hardware, compact disc players, video
cameras and video cassette recorders, to name just a few. A
simple illustration will demonstrate the magnitude of the dam-
age that will be wrought by the rule adopted by the Court of
Appeals.

Imagine that the following is a portion of a patented device
that processes signals. The device produces the intermediate
signal “C” as an isolated signal:

Ce oe
A

Fig. 3.

E

By simply adding an electronic masking signal (“M”) of a
given frequency at the beginning of the process and filtering
it out at the end, a copyist using identical hardware will achieve
the same result as the patented device, but without the presence
of the isolated intermediate signal “C”:

19

As this example demonstrates, the district court’s failure to
find equivalence because of the absence in the Sundstrand
device of any one isolated signal to represent instantaneous
rate of change of airspeed represents the end of doctrine of
equivalents protection for a wide range of devices that incor-
porate signal processing. If the doctrine of equivalents is to
fulfill its function of preventing the “subordinat[ion] [of] sub-
stance [to] form,” Graver Tank, 339 U.S. at 607, then — at
least as to the broad and increasingly important area of inven-
tions that incorporate signal processing — the presence of an
isolated signal cannot be treated as an independent “element”
of a claim.

In the case at bar, the accused device brazenly exploits a
universally known algebraic identity, the associative property
of addition ( ((A—B)—C) = (A — (B+C)) ), to evade a
finding of infringement. Because of this property, the rear-
rangement of the order in which signals are combined and
subtracted within a wide range of devices that incorporate
signal processing — be it computer, compact disc player,
video camera, or whatever — will be of utterly no consequence.
For example:

(Current Airspeed — Previous Airspeed) — Horizontal Acceleration
will always equal
Current Airspeed — (Previous Airspeed + Horizontal Acceleration)

In ordinary life, the sequence in which steps are taken often
can make a crucial difference. A great deal will depend, for
example, on whether one puts on a parachute first — or jumps
first from the plane. Similarly, in some areas of invention a
rearrangement of steps could represent a crucial inventive de-
velopment. But in devices that add and subtract electronic
signals from one another, it could not be clearer that this is
not the case.

20

Another analogy may be useful: Imagine an invention for
making a vodka-and-orange juice cocktail with no orange pits.
It could start with fresh orange juice, and could filter the juice
to remove the pits. This would create an “isolated” item: “pit-
less orange juice.” The pitless orange juice could then be mixed
with vodka to produce our vodka and fresh orange juice.

One can easily imagine another device in which only the
order of these operations was changed. This second device
would first mix the vodka with the fresh orange juice. It would
then filter the mixture to remove the pits. In both cases, the
Same steps were taken in the production of our cocktail, but
in the second case no “pitless orange juice” was generated as
an isolated “element” in the intermediate step. This is similar
to the way in which the horizontal windshear circuit in the
Sundstrand device differs from that described by the horizontal
windshear patent.

In either event, the inputs, the method and the outcome
would be identical. And, under any traditional notion of the
meaning of the doctrine of equivalents, the second vodka-and-
orange-juice machine would infringe upon the patent for the
first. Yet under the reasoning endorsed by the Court of Appeals,
the second device would not infringe the first patent, because
at an intermediate stage there was no “pitless orange juice”
within the second device whereas there was in the first.

By determining that mere rearrangement of a signal within
a device is sufficient to avoid the limitations imposed by the
doctrine of equivalents, the Court of Appeals has ripped the
cloak of patent protection from all devices that process elec-
tronic signals. From computer hardware to microcircuitry to
electronic devices of all kinds, the Court of Appeals decision
exposes to economic peril those who would labor to create
new inventions.

That the Court of Appeals did so offhandedly and without
discussion cannot be allowed to obscure the importance of its

21

action. To deprive a field with growing economic significance
of the same patent protection enjoyed by other industries —
indeed, to do so without discussion in either this Court or the
court below — would be unprecedented. Without the protection
from competition that the patent law is intended to provide —
protection that, prior to the decision below, was uniformly
assumed to exist — the economic incentive to innovate will
vanish from this vital and increasingly important field. Without
congressional action, and in a single stroke, the Court of Ap-
peals will have eviscerated of all meaning doctrines that this
Court has long labored to preserve. At a time in which devices
that incorporate signal processing are taking on increasing
economic importance, the United States can ill afford to be
so hobbled. by the lower court’s ruling. Perhaps more funda-
mentally, under our system of government the adoption of any
such policy must be the work of Congress — not the courts.

Of course, the Court of Appeals in this case also held that,
even if there were “element-by-element” equivalence, the
Sundstrand device was one for which protection had been given
up in the prosecution history, because the court interpreted the
words of limitation in the Safe Flight horizontal windshear
patent claim — “means for generating a signal representing
the rate of change of the instantaneous air speed” of the aircraft
— to mean that that signal had to exist in isolated fashion
within the device.

But this “answer” to Safe Flight’s objection — essentially
that it was Safe Flight itself that caused its predicament by
seeking a patent on the basis of the existence of an isolated
signal within its horizontal windshear device — is no answer
at all. The Court of Appeals’ conclusion founders on the same
shoals that lead Safe Flight to seek certiorari: an “isolated
signal” — as opposed to the means of generating a signal —
cannot as a matter of law be an “element” of a patent. Yet the
Court of Appeals’ very interpretation of the Safe Flight patent

22

is premised on just that possibility. (See A28-A29) (finding
that the presence of the isolated signal in the horizontal
windshear patent was crucial to its patentability).

The construction of a patent is a question of law, and it is
a fundamental canon of construction of patent claims that “pat-
ents should, if practicable, be so interpreted as to uphold and
not to destroy the right of the inventor.” 6 Walker on Patents
§ 21:2, 267 (Lipscomb ed. 1987). “The canon ut res magis
valeat quam pereat [‘that the thing may rather have effect than
be destroyed’], applies with particular force to patent claims.”
Id. In the district court, Sundstrand did bring a counterclaim
that the horizontal windshear patent is invalid — a claim that
was reached neither by the district court nor by the Court of
Appeals. Should this Court agree with our contention that as
a matter of law an isolated signal cannot be an element of a
patent, at most Sundstrand would be entitled to a remand to
permit the Court of Appeals to interpret again the horizontal
windshear patent in light of this canon of construction that
favors a finding of validity.

2. The Court of Appeals’ Attempt to Evade This Conclu-
sion by Invoking the Homily That One Cannot Patent
a Law of Nature Distorts That Doctrine and Conflicts
With This Court’s Recent Decision in Diamond v. Diehr.

The Court of Appeals suggested that, if it did not limit the
Safe Flight horizontal windshear patent to cover only a device
in which the isolated rate of change of instantaneous airspeed
signal appeared, it would in effect be permitting Safe Flight
to patent the windshear equation. (See A31-34). It is, of course,
beyond peradventure that one cannot patent an equation or a
law of nature. See, e.g., Diamond v. Diehr, 450 U.S. 175,
185 (1981). But Safe Flight has never tried to patent the
windshear equation, nor need the Court permit an isolated

23

signal to be an element of a patent in order to protect the
principle that a law of nature is unpatentable subject matter.
This Court has stated that, while a mathematical formula is
not patentable, “when a claim containing a mathematical form-
ula implements or applies that formula in a structure or process
which, when considered as a whole, is performing a function
which the patent laws were designed to protect . . . , then the
claim satisfies the requirements of [35 U.S.C.] § 101.” Jd. at
192.° The Safe Flight device described by the horizontal
windshear patent is an airborne device for measuring horizontal
windshear from certain inputs and sounding an alarm when it
reaches a certain value. (In the patent for the microburst warn-
ing device, this is incorporated in a device that measures down-
draft drift angle and sounds an alarm when microburst
windshear reaches a critical value.) Safe Flight seeks protection
against copies of its devices that take the same inputs and
avoid infringement only by irrelevantly eliminating the isolated
presence of a certain signal.

In attempting to avoid the conclusion that an isolated signal
could not be an “element” of a patent in application of its
“element-by-element” approach to the doctrine of equivalents,
the Court of Appeals ignored this Court’s fundamental teaching
that “a process is not unpatentable simply because it contains
a law of nature or a mathematical algorithm.” Parker v. Flook,
437 U.S. 584, 590 (1978). Here, as in Diamond v. Diehr, the
“process admittedly employs a well-known mathematical equa-
tion, but [the patentee] do[es] not seek to pre-empt the use of
that equation. Rather, [it] seek[s] only to foreclose from others
the use of that equation in conjunction with all of the other steps
in [its] claimed process.”” Diamond v. Diehr, 450 U.S. at 187.

535 U.S.C. § 101 reads:

Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.

24

Safe Flight seeks only protection from infringement by sub-
stantial equivalents of its patented devices. Other inventors
remain free to determine the presence of windshear by the use
of other inputs — even in making a horizontal windshear warn-
ing device. They also remain free to measure horizontal
windshear and use it in devices that are substantially different:
as a ground-based warning system for aircraft, as a meteorolog-
ical tool, or whatever. Safe Flight does not, nor could it, seek
to “enjoy complete insulation from any company that marketed
a product that produces a windshear signal,” (A33), nor from
the manufacture of any device from which one could deduce
the presence of windshear.

Safe Flight’s horizontal windshear patent describes only an
airborne, horizontal windshear warning device. That this
necessarily utilizes the windshear equation no more prevents
its patentability than the utilization of a law of nature prevents
the patentability of a thermostat.

II. The Use of the Prosecution History of One Patent to
Narrow the Scope of a Patent for a Second, “Cumula-
tive” Invention — One Which Incorporates the Earlier
Device — Eviscerates the Protection to Which Such
Inventions are Entitled Under the Doctrine of Equiva-
lents.

Inventors, like scientists, stand on the shoulders of those
who came before them. Because of the increasing technological
complexity of our world, more and more inventions inevitably
incorporate ideas and inventions made by their predecessors.
The purpose of “promot[ing] the Progress of Science and useful
Arts” enshrined in the constitutional grant of the patent power
to Congress, U.S. Const. Art. I, § 8, cl.8, would be defeated
if this inevitable fact of “cumulative” invention became the
engine for the destruction of the patent laws. Yet nothing less

25

is at stake in the misleadingly brief opinion of the Court of
Appeals below.

It is hornbook patent law that “the inventor is entitled to a
range of equivalents commensurate with the scope of his inven-
tion: broad if his invention is broad; narrow if his advance is
a small one in a crowded field.” 6 Walker on Patents § 22:34,
546 (Lipscomb ed. 1987); Nelson v. Batson, 322 F.2d 132,
135 (9th Cir. 1963). The scope of an invention is a question
of law. “Primary” or “pioneering” patents are provided the
broadest range of protection under the doctrine of equivalents.
As this Court explained long ago, a pioneer patent is one “of
such novelty and importance as to mark a distinct step in the
progress of the art, as distinguished from a mere improvement
or perfection of what had gone before.” Westinghouse v.
Boyden Power Brake Co., 170 U.S. 537, 562 (1898). A pioneer
patent is provided the widest range of equivalents. Similarly,
“patents of substantial scope are entitled to a correspondingly
substantial range of equivalents.” 6 Walker on Patents, §22:43,
565 (Lipscomb ed. 1987). Finally, “[a]n invention of a limited
nature is entitled to a narrow range of equivalents.” Jd. (em-
phasis omitted). As this Court has said, “the range of equiva-
lents depends upon and varies with the degree of invention.”
Continental Paper Bag Co. v. Eastern Paper Bag Co., 210
U.S. 405, 415 (1908).

The Court of Appeals manifestly erred in permitting the
history and scope of the horizontal windshear patent to limit
the range of equivalents permitted the patent for the microburst
warning device. After observing that the horizontal windshear
patent included the I:mitation that it generate signals “represent-
ing” certain values, the district court concluded that “[t]he
"905 patent [the patent for the microburst warning device] was
similarly worded to avoid the same problems. Thus our analysis
of the effect of the term ‘representing’ in the horizontal wind-

26

shear patent applies to the "905 patent, as well.” (A28-A29
n.6). And, in its opinion on reconsideration — also adopted
by the Court of Appeals — the district court even referred to
“arguments (Safe Flight] made to the [Patent & Trademark
Office] identical to the arguments made . . . to distinguish the
{horizontal windshear patent] over the prior art,” to “limit the
scope of the . . . patent [for the microburst warning device] ,”
(A7), as though the relationship between the earlier, subcom-
ponent patent and the prior art could somehow confine the
advance made by the second, overall patent simply because
the second included the first!

But in examining how large an advance over the prior art
was made by a cumulative invention — one that incorporates
some technology protected by an earlier patent — it is obvi-
ously irrelevant to inquire how large or small an advance that
earlier patent had itself made over the prior art. The microburst
warning patent describes the first device to measure downdraft
drift angle and warn of microburst windshear — a device of
great commercial usefulness that is now required by the FAA
on all major commercial aircraft. The horizontal windshear
patent covered a far more modest development in the field of
horizontal windshear. It is as though the scope of equivalents
to be provided the patent for the telephone were to be based
on the novelty of the particular type of be/l the inventor chose
to use in it. This is a flagrant abandonment of the rule that
the scope of equivalents to be permitted an invention depends
on the novelty of that invention.

By adopting a method in which the narrowness of an inven-
tion in an earlier patent limits the range of equivalents provided
a later patent, the Court of Appeals for the Federal Circuit has
unilaterally stripped all cumulative inventions of any independ-
ent protection under the doctrine of equivalents. In this case,
whatever the scope of the invention in the horizontal windshear

27

device covered by the horizontal windshear patent, the micro-
burst patent was indisputably the first patent for a device that
measured downdraft drift angle and that could therefore be
used to warn of the effects of the hazardous phenomenon of
microburst windshear. Indeed, the microburst warning patent
had to be distinguished over and above the horizontal! windshear
patent which was by then itself part of the prior art.

Similarly, the court below expanded the concept of file-
wrapper estoppel without warrant in permitting the prosecution
history of the earlier horizontal windshear patent to estop a
claim of infringement of the invention claimed in the later
patent for the microburst warning device. File wrapper estop-
pel, of course, is a fitting and necessary corollary to the doctrine
of equivalents. It is only just that an inventor not be permitted
to gain back by the doctrine of equivalents that which he had
to give up in order to receive the patent in the first place. But
in finding that the Sundstrand device did not infringe the later
patent, the Court of Appeals has pushed this estoppel concept
into new territory. That court has held that a patentee can be
estopped based on the prosecution history not of the patent in
question, but of a previous patent that describes one version
of one component of the patentee’s new invention, a component
that does not form a part of the novelty, utility or nonobvious-
ness (the requisite elements of patentability, see 35 U.S.C.
$§ 101, 102, 103) of the newly patented device.

By using a new patent's incorporation of phraseology from
an old patent to impose a requirement that infringement of the
new patent will be found only where the old patent is infringed,
the Court of Appeals has alarmingly short-circuited the patent
law's protection of cumulative inventions — those inventions
that, as “new and useful improvement(s]” of existing processes,
machines, manufactures, or compositions, are given express
protection under the federal patent law. 35 U.S.C. § 101.

It is true, and hardly surprising, that, as the district court
observed, the specification in the overall microburst warning

28

patent describes the means for producing the horizontal
windshear signal in the same way as does Safe Flight’s prior
horizontal windshear patent. But “construction of a patent is
to be made in the context of the patent subject matter as a whole,
particularly with respect to the inventive concept.” 6 Walker
on Patents § 21.40, 393 (Lipscomb ed. 1987) (emphasis
added). An artificially narrow reading of wording not relevant
to the inventive concept itself would automatically bind an
inventor to the technology of which he was aware when he
made his claim. Yet “[a]n applicant for patent is required to
disclose the best mode then known to him for practicing his
invention. 35 U.S.C. § 112. He is not required to predict all
future developments which enable the practice of his invention
in substantially the same way.” Hughes Aircraft v. United
States, 717 F.2d 1351, 1362 (Fed. Cir. 1983).

The use of the prosecution history of a first patent to bar
an infringement claim concerning a second patent flies in the
face of the basic tenet of patent law that each patent must
cover a separate invention. Indeed, were it otherwise, the 17-
year statutory limitation might be circumvented by an inventor
claiming additional patents incorporating his original inven-
tion. But of course, a bedrock principle of patent law is that
double patenting of one invention is prohibited. A patentee is
not entitled to more than one patent for a single invention.
See, e.g., In Re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985).
Just as an inventor cannot benefit by incorporating an impor-
tant earlier invention in a modest new patent, he should not
be hobbled by the incorporation of a modest earlier invention
in a new, important patent.

The invention in the patent for the microburst warning device
is, most assuredly, not the horizontal windshear detector al-
ready patented in the horizontal windshear patent. The inven-
tion — the inventive concept — patented is the device for
measuring downdraft drift angle which when incorporated with

29

a Signal representing horizontal windshear gives a total signal
for microburst windshear. Any limitation in the patent for the
incorporated horizontal windshear device, an earlier invention
patented in the horizontal windshear patent, is simply of no
relevance to the scope of the “invention” protected by the
patent for the microburst warning device. This has been the
premise of a long line of patent decisions in this Court. Nearly
a century ago, for example, this Court held that, because it
was inconsequential to the invention, an element that was
expressly described in the claim — in that case an encasement
for a valve — was “immaterial” to the question of iufringement.
Westinghouse v. Boyden Power Brake Co., 170 U.S. 537,
561 (1898).

In holding that a patent is narrowed by a limitation that
happens to be included in an earlier patent but that is not
relevant to the innovation in the second patent, the Federal
Circuit Court of Appeals has drastically narrowed the doctrine
of equivalents with regard to the entire class of “new and
useful improvements” on existing inventions. Under the rule
approved by the Court of Appeals, the very evils against which
the doctrine of equivalents was intended to protect inventors
— the use of “minor variations to conceal and shelter . . .
piracy,” “the subordination of] substance to form,” Graver
Tank, 339 U.S. at 607 — will sprout through every crack
provided by the happenstance that one invention incorporates
another. One slight alteration in the component invention, and
the novel idea of the second inventor will be out of his control.
Piracy and bootlegging will become for the clever a simple
matter.

The economic incentives to innovation which the patent
laws, and the enshrinement of congressional patent power in
Article I, § 8 of the Constitution, are intended to foster will
wither. Inventors and investors in whose inventions previous
inventive concepts are incorporated — a class of inventions that

30

by definition grows with each technological development, and
that appears to make up by far the major pari of new inventions
patented — “would be deprive[d] . . of the benefit of [their]
invention.” Graver Tank, 339 U.S. at 607.

The rule of law adopted by the Court of Appeals will thus
act as a disincentive to investment in a broad area of research
and development, and will “foster concealment rather than
disclosure of inventions, which is one of the primary purposes
of the patent system.” /d.

This Court should not be misled by the bland and uninfor-
mative surface of the opinion issued by the Court of Appeals.
As industry and technology have become more complex, the
possibility of entirely new inventions that do not incorporate
some previous technological development grows more and
more remote. The stakes are therefore great. They cannot be
measured by the sales of the respondent’s microburst warning
device alone — over $60 million annually — nor even by the
number of lives saved by this one invention, but extend to the
billions of dollars and to an immeasurable number of improve-
ments in the quality of the lives of all.

CONCLUSION

For the foregoing reasons, certiorari should be granted.

Respectfully submitted,

LAURENCE H. TRIBE
Counsel of Record

PETER J. RUBIN
1525 Massachusetts Avenue
Cambridge, Massachusetts 02138
(617) 495-1767

Counsel for Petitioner

July 19, 1990

TABLE OF CONTENTS

APPENDIX A

Decision and Opinion of the Court of Appeals, dated
CCTTSUG Es ,.....2...

APPENDIX B

Opinion and Order of the District Court Denying Safe
Flight’s Motion for Reconsideration, dated June 26,
1989, as amended June 27, 1989. ........

APPENDIX C

Opinion and Order of the District Court Granting

Sundstrand’s Motion for Summary Judgment, dated
Pio. 254 ........

APPENDIX D
Order Denying Rehearing, dated April 20, 1990

Al

A3

A37

Al
APPENDIX A.

United States Court of Appeals for the Federal Circuit

89-1579

SAFE FLIGHT INSTRUMENT CORPORATION,
Plaintiff-Appellant,

Vv.

SUNDSTRAND DATA CONTROL, INC.,
Defendant-Appellee.

DECIDED: March 22, 1990

Before NIES, NEWMAN and MICHEL, Circuit Judges.
NIES, Circuit Judge.

DECISION

Safe Flight Instrument Corporation appeals from the final
judgment of the United States District Court for the District
of Delaware, 706 F. Supp. 1146, 10 USPQ2d 1733 (D. Del.
1989), granting the motion of Sundstrand Data Control, Inc..,
for summary judgment of noninfringement of Safe Flight In-
strument Corp.’s U.S. Patents Nos. 4,012,713 (713 patent)
and 4,079,905 (°905 patent). We affirm.

OPINION

Contrary to Safe Flight’s argument, the district court’s opin-
ion is not devoid of a separate analysis of the ’905 patent. In the

A2

court’s original opinion, and more fully in its reconsideration
opinion, the court explained its reasons for dealing with the
*905 patent in less detail. Safe Flight’s brief makes no substan-
tive argument regarding infringement of the *905 patent that
is not made in connection with the *713 patent.

Upon considering all of Safe Flight’s arguments we have
not been persuaded of legal error in the court’s claim construc-
tion. Thus, its finding of no literal infringement is not clearly
erroneous. We also find no error in the court’s standard for
determining infringement under the doctrine of equivalents
under the precedent of this court or its application of the stand-
ard to the facts of this case. Furthermore, we are not persuaded
that there were genuine issues of material fact which precluded
granting summary judgment. The district court gave thoughtful
and careful analysis to all of the issues raised by Safe Flight
in both its opinion granting summary judgment and that deny-
ing Safe Flight’s motion for reconsideration. Accordingly, we
affirm on the basis of the opinions below.

A3
APPENDIX B.

In the United States District Court
for the District of Delaware.

SAFE FLIGHT INSTRUMENT

CORPORATION,
Plaintiff,
Civil Action No.
fi 87-545 JRR
SUNDSTRAND DATA CONTROL,
INC..,

Defendant.

Daniel F. Wolcott, Jr., Esquire of Potter, Anderson & Corroon,
Wilmington, Delaware.

OF COUNSEL: Edward V. Filardi, Esquire, Robert Neuner,
Esquire, and James J. Maune, Esquire of Brumbaugh,
Graves, Donohue & Raymond, New York, New York; and
David E. Dougherty, Esquire of Bacon & Thomas, Alexan-
dria, Virginia.

Attorneys for Plaintiff.

C. Waggaman Berl, Jr., Esquire, Wilmington, Delaware.

OF COUNSEL: Theodore W. Anderson, Esquire, William M.
Wesley, esquire, Richard A. Cederoth, Esquire, and Steven
P. Peterson, Esquire of Neuman, Williams, Anderson &
Olson, Chicago, Illinois; and Trevor B. Joike, Esquire, and
Michael S. Yatsko, Esquire of Sundstrand Corporation,
Rockford, Illinois.

____ Attorneys for Defendant.

MEMORANDUM OPINION
As amended June 27, 1989.

A4
ROTH, District Judge

The plaintiff in this action, Safe Flight Instrument Corpora-
tion (“Safe Flight”), filed suit against the defendant, Sund-
strand Data Control, Inc. (“Sundstrand”’), for alleged infringe-
ment of Safe Flight’s two patents, U.S. Patent Nos. 4,012,713
(the “’713 patent”) and 4,079,905 (the “°905 patent”), which
cover avionic windshear equipment. In its answer, the defend-
ant asserted six counterclaims: Claims I and II allege that the
°713 and °905 patents are not infringed, Claims III and IV
allege that the °713 and °905 patents are invalid, Claim V
alleges that the patents are unenforceable because of inequitable
conduct in the prosecution of the patents, and Claim VI alleges
that Safe Flight competed unfairly with the defendant.

We denied the plaintiff's motion for a preliminary injunction
by Memorandum Opinion and Order dated August 30, 1988.
On February 17, 1989, we granted the defendant’s motion for
summary judgment of noninfringement of the °713 and *905
patents.' Presently before the Court are five motions: (1) Safe
Flight’s Motion for Reconsideration of the Grant of Summary
Judgment of Noninfringement (D.I. 117); (2) Safe Flight’s
Motion for Entry of Final Judgment Pursuant to Rule 54(b);
(D.I. 105); (3) Safe Flight’s Motion for a Stay of Proceedings
(D.1. 107); (4) Safe Flight’s Motion to Stay Boeing Depositions
(which stay, because the depositions have already taken place,
would have to be ordered nunc pro tunc) (D.I. 103); and (5)
Sundstrand’s Motion for an Order Compelling the Production
of Documents (D.I. 109). All five motions are ripe for our
consideration and will be addressed seriatim.

‘This decision, in effect, granted the defendant's first two counterclaims
which allege noninfringement.

AS

1. Safe Flight’s Motion for Reconsideration.

Safe Flight requests that we reconsider our decision to grant
summary judgment of noninfringement to Sundstrand based
on the Court of Appeals for the Federal Circuit’s decision in
Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868
F.2d 1251 (Fed. Cir. 1989). Safe Flight raises three arguments
in an attempt to persuade us to vacate our decision. First,
according to Safe Flight, “the standard applied by this Court
in analyzing whether Sundstrand Parts infringe under the doc-
trine of equivalents is contrary to the holding in Corning
Glass.” Safe Flight’s Opening Brief in Support of Motion for
Reconsideration at 4 (D.I. 118). Second, Safe Flight argues
alternatively that “there is a factual dispute concerning the
equivalency of the accused device and the claimed invention,”
Opening Brief for Reconsideration at 7, and that “equivalence
is an undisputed fact in this case.” Safe Flight’s Reply Brief
in Support of Motion for Reconsideration at 2 (D.I. 121).
Lastly, Safe Flight claims that there is a dispute as to whether
the °905 patent is infringed. We disagree with each of these
contentions.

We do not read the decision in Corning Glass as modifying
the Federal Circuit’s analysis of the issue of equivalency pro-
vided in Pennwalt Corp. v. Durland-Wayland, Inc., 833 F.2d
931 (Fed. Cir. 1987) (in banc), such that a different result is
required in this case. As a preliminary matter, we noted that
if the Corning Glass decision attempted to overrule the Federal
Circuit’s decision in Pennwalt, it could not because Pennwalt
was decided in banc and Corning Glass was not. See Texas
Instruments, Inc. v. United States International Trade Com-
mission, 846 F.2d 1369, 1372-73 (Fed. Cir. 1988) (Nies, J.,
dissenting).

More importantly, we find more factual similarities between
this case and the facts in Pennwalt than between this case and

A6é

the facts in Corning Glass. For instance, in Pennwali, as in
this case, the claims at issue were in a means-plus-function
format; the claims in Corning Glass were not. In Pennwalt,
as we found in this case, there was no pioneer invention; in
Corning Glass, there was. In Pennwalt, as here, in order to
secure a patent over prior art, the patentee amended its claims
very specifically to include functional limitations; in Corning
Glass, there is no indication that any functional claim amend-
ments were made to overcome prior art. Furthermore, as in
Pennwalt, the patentee in this case sought then to evade those
very specific claim limitations by asserting the doctrine of
equivalents; the patentee in Corning Glass did not. Finally,
in Corning Glass the Court could find equivalence under the
“All Elements” rule. Corning Glass, 868 F.2d at 1259 (citing
Pennwalt, 833 F.2d at 935). Because of the undisputed facts
underlying summary judgment here, we cannot find such
equivalence. We conclude therefore that Corning Glass does
not require us to alter our decision to enter summary judgment
of noninfringement.

We reject Safe Flight’s argument that there is a factual
dispute regarding the issue of equivalency and Safe Flight's
alternative assertion that equivalency is undisputed. As the
court in Corning Glass noted, “|w hat constitutes equivalency
must be determined against the context of the patent, the prior
art, and the particular circumstances of the case.” 868 F.2d at
1260 (quoting Graver Tank & Manufacturing Co. v. Linde
Air Products Co., 339 U.S. 605, 609 (1950) ). Safe Flight has
raised no new arguments and has brought to life no facts not
already considered by this Court in our analysis of equivalency
between the accused parts and the claimed parts. We conclude,
therefore, that Corning Glass does not require any alteration of
the conclusions reached in our Opinion of February 17, 1989.

Moreover, we reject Safe Flight’s arguments that there is a
dispute as to whether the "905 patent is infringed. The "905

A7

patent comprises the same windshear detection elements of
the 713 patent, with the addition of a downdraft drift angle.
Safe Flight Instrument vy. Sundstrand Data Control, 706 F.
Supp. 1146, 1147 (D. Del. 1989). Safe Flight made arguments
to the Patent and Trademark Office (the “PTO”) in its prosecu-
tion of the "905 patent which were identical to arguments made
to the PTO to distinguish the °713 patent over the prior art.
As such, these arguments are part of the prosecution history
estoppel of the "905 patent even though, because of the amend-
ments already made to obtain the °713 patent, the claims of
the "905 patent did not have to be modified by successive
applications to the PTO. See Hughes Aircraft Co. v. United
States, 717 F.2d 1351, 1362 (Fed. Cir. 1983). The arguments
presented to the PTO limit the scope of the "905 patent and
the range of equivalents to be afforded to it in the same manner
that the "713 patent is limited. Thus, neither patent is afforded
a wide range of equivalents. We find, therefore, no merit in
Safe Flight’s contention that there is a dispute as to whether
the "905 patent is infringed.

For all of the foregoing reasons, Safe Flight’s Motion for
Reconsideration will be denied.

2 & 3. Safe Flight’s Motion for Entry of Final Judgment
and Motion for a Stay of Proceedings.

Having denied Safe Flight’s Motion for Reconsideration,
we consider next whether it is appropriate to enter a final
judgment under Rule 54(b) of the Federal Rules of Civil Pro-
cedure by certifying our Opinion and Order of February 17,
1989, granting summary judgment of noninfringement. The
decision to enter a final judgment under Rule 54(b) is left to
the sound discretion of the trial judge. This decision, which
is accorded substantial deference on review, is permissible
upon an express finding that there is “no just reason for delay.”

As

Fed. R. Civ. P. 54(b). The essential inquiry is “whether after
balancing the competing factors, finality of judgment should
be ordered to advance the interests of sound judicial adminis-
tration and justice to the litigants.” Curtiss-Wright Corp. v.
General Electric Co., 446 U.S. 1, 5 (1980).

In Curtiss-Wright, the Supreme Court listed with approval
several factors which the district court considered in determin-
ing that certification of a judgment under Rule 54(b) was appro-
priate: (1) whether certification would result in unnecessary
appellate review by having to decide the same issues more
than once if there were subsequent appeals; (2) whether the
claims are separate, distinct and independent of any of the
other claims or counterclaims involved; (3) whether review of
the claims would not be mooted by future developments in
the case; and (4) whether the balance of the financial hardships
involved favors certification. Curtiss-Wright, 446 U.S. at 6.
In addition, in U.S. Golf Association v. St. Andrew Systems,
749 F.2d 1028 (3d Cir. 1984), the Court of Appeals for the
Third Circuit, in interpreting Curtiss-Wright, stated that entry
of a final judgment under Rule 54(b) is appropriate if unsettled
issues would be clarified on appeal. 749 F.2d at 1031 n.5.
Lastly, the Supreme Court held that “the mere presence of
[nonfrivolous counter|claims does not. . . render Rule 54(b)
certification inappropriate.” Curtiss-Wright, 446 U.S. at 9.

We find in this case that there is no just reason for delay.
Therefore our decision granting summary judgment of nonin-
fringement will be entered as a final judgment for immediate
appellate review.

As we have already stated, the essential question in determin-
ing whether to grant Rule 54(b) certification is whether the
interests of sound judicial administration and justice to the
parties is served by entry of a final judgment. In this case, it
is clear that both interests are served by entering final judgment
for immediate appellate review.

A9

First, during the March 23, 1989, teleconference we asked
counsel for the defendant, “If the Federal Circuit should affirm
the granting of summary judgment on non-infringement, how
would Sundstrand have standing to maintain its counterclaim
for invalidity?” Transcript of March 23, 1989, Teleconference
at 4(D.1. 119). Defendant's counsel responded, “Your Honor,
I don’t think we would even want to press the counterclaim
for invalidity.” /d. at 5. Thus, if this Court's decision is af-
firmed on appeal, the defendant’s counsel has represented to
the Court that two of the remaining counterclaims probably
would not be pursued.’ This fact favors entry of a final judg-
ment under Rule 54(b).

Second, although the defendant wishes to persist in maintain-
ing its counterclaim based on the allegation of inequitable
conduct before the PTO to support a claim for attorneys’ fees,
we do not find that the authority relied on by defendant's
counsel supports their position that Court time should be spent
to enlarge the existing record so that a claim for attorneys’
fees can be pursued.

The defendant argues that the decision in A.B. Chance v.
RTE Corp., 854 F.2d 1307, 1312 (Fed. Cir. 1988), stands for
the proposition that it can proceed with the inequitable conduct
counterclaim, regardless of whether or not the granting of
summary judgment on the noninfringement counterclaim is
affirmed. However, our reading of A.B. Chance persuades us
that, although inequitable conduct is a separate defense to an
infringement claim, we need consider it as the basis for an
award of attorneys’ fees only when evidence in support of that
defense is before the Court. In the present case, there has been

*Once a summary judgment of noninfringement was affirmed, there is a
question of whether this Court would still have jurisdiction to consider a
counterclaim of invalidity by Sundstrand since Sundstrand need no longer then
be apprehensive of allegations of infringement. Indium Corp. of America v.
Semi-Alloys, Inc., 781 F.2d 879, 883 (Fed. Cir. 1985); Millipore Corp. v.
University Patents, Inc., 682 F.Supp. 227, 231-32 (D. Del. 1987).

Al0

no motion for summary judgment made on the ground of
inequitable conduct. This issue is, therefore, not appropriately
before the Court. If the granting of defendant’s motion for
summary judgment on the ground of noninfringement is up-
held, there will be no need to take further proceedings in this
matter to develop and consider evidence on the separate defense
of inequitable conduct.

Moreover, there is nothing in the A.B. Chance opinion to
suggest that a defendant, that succeeds in fending off an alle-
gation of patent infringement, should be able to use valuable
court time to expand the record to document alleged inequitable
conduct before the PTO in order to justify an award of attor-
neys’ fees. We conclude that such a use of judicial resources
should not be permitted. In the instant case, the defendant
could have pressed the invalidity and/or the inequitable conduct
defenses immediately after filing its answer and could have
developed the record accordingly to support its allegations.
Instead, Sundstrand chose to defend itself against the charges
of patent infringement by pressing its defense of noninfringe-
ment. Having failed to pursue inequitable conduct and invalid-
ity initially,’ we think that it would be improper to permit the
defendant to continue this litigation merely to seek attorneys’
fees.* If, therefore, the granting of summary judgment is af-

‘As we stated in footnote 9 of our Opinion of February 17, 1989, commenting
on our discussion of patentable subject matter, “[WJe do not comment on the
validity of the plaintiff's patents. . . . [This question] was not raised in this
dispute and therefore is not addressed by the Court.”

*Even if Sundstrand were permitted to advance its claims of inequitable
conduct, and even if it were successful in proving inequitable conduct, this
does not mean that an award of attorneys fees would be required. As the Court
of Appeals for the Federal Circuit stated in Gardco Manufacturing, Inc. v.
Herst Lighting Co., 820 F.2d 1209, 1215 (Fed. Cir. 1987), “[I]}t has not been
held that every case of proven inequitable conduct must result in an automatic
attorney fee award, or that every instance of inequitable conduct mandates an
evaluation of the case as ‘exceptional.’ After the district court determines that
a case is exceptional, there remains in every case its freedom to exercise its
discretion, ‘infermed by the court’s familiarity with the matter in litigation and

All

firmed, the issue of inequitable conduct need never be consid-
ered. This is further reason to grant certification.

In addition, we find that the factors enumerated in Curtiss-
Wright and U.S. Golf favor certification especially because
we will also grant Safe Flight’s Motion for a Stay of Proceed-
ings pending the outcome of the appeal. First, unnecessary
appellate review would not result regardless of the outcome
of the immediate appeal. As our analysis has just demonstrated,
if our decision is affirmed, it is likely that the controversy will
be concluded. In the event that our decision is reversed, our
conclusion of noninfringement will necessarily either be re-
versed or reversed and remanded to us for further consideration.
In either event, the stay of proceedings ensures that certifying
the decision of summary judgment of noninfringement will
not waste judicial resources because we will not consider the
remaining counterclaims unless it is necessary to do so.

The determination of noninfringement in this case can be,
and was, done without reference to the subject matter of the
remaining counterclaims. Thus, our decision of noninfringe-
ment, which we certify, is separate, distinct, and independent
of the remaining counterclaims. Although consideration of
Sundstrand’s counterclaims will likely implicate issues raised
by the noninfringement issue, this does not prohibit certifica-
tion. The stay of proceedings will ensure that the remaining
counterclaims, which may involve facts and issues raised in
the certified decision of noninfringement, are not considered
pending the outcome of the appeal. Thus, a ruling from the
Federal Circuit on those issues which may affect the outcome
of Sundstrand’s counterclaims will be given full consideration
in evaluating these counterclaims should that be necessary.

the interest of justice,’ [and deny an award of attorneys’ fees.]” (emphasis
added) (citing S.C. Johnson & Son, Inc. v. Carter-Wallace, Inc., 781 F.2d
198, 201 (Fed. Cir. 1986) ).

Al2

We also find that review of the noninfringement issue will
not be mooted by future developments in the case. Since a
stay will be entered, the Federal Circuit’s consideration of the
appeal will not be affected by any action in our Court. If the
Federal Circuit affirms our decision, the litigation will likely
be over. If our decision is reversed, proceedings on all the
claims will proceed in this Court.

A balance of the financial hardships involved also favors
certification. If our decision is upheld, but the defendant still
wishes to — and is able to — proceed with its outstanding
counterclaims, then only one trial will be necessary. On the
other hand, if the Federal Circuit disagrees with our analysis,
the stay creates the possibility that all claims can be resolved
in one trial. In either instance, certification accompanied by
the stay will ensure only one trial. One trial (possibly none in
the event of an affirmance) conserves judicial resources and
serves the interests of justice for the parties.

Lastly, we find that, if resolution of the remaining counter-
claims is necessary, that resolution might involve the analysis
of issues necessarily addressed in our decision of noninfringe-
ment. Therefore, it is possible that the immediate appeal of
our decision to the Federal Circuit will serve to clarify questions
of law that will facilitate resolution of the counterclaims, if
that should become necessary. As a result, this factor also
favors certification.

Therefore, for all of the foregoing reasons, Safe Flight’s
Motion for Entry of a Final Judgment and Motion to Stay
Proceedings will be granted.

4. Safe Flight’s Motion to Stay Boeing Depositions.

Safe Flight makes this motion to prevent, nunc pro tunc,
the deposition of several Boeing employees. On February 24,

Al3

1989, Safe Flight filed a Motion for a Protective Order Staying
the Depositions Noticed in the Confirming Notice of Deposi-
tions Filed with the Court on February 23, 1989. (D.I. 103).
On March 3, 1989, Sundstrand filed a Notice in Response to
this motion, (D.I. 108), allegedly informing the Court that the
depositions had taken place and that therefore, Safe Flight’s
February 23, 1989, Motion was moot. According to Local
Rule 4.3, however, Safe Flights filing of its Motion for a
Protective Order stays discovery on the subject matter of the
motion until further order of the Court. Despite the defendant’ s
counsel’s apology, we cannot permit a violation of our Local
Rules simply because out-of-town counsel are not familiar
with them. Safe Flight’s motion to Stay Boeing Depositions
will be granted nunc pro tunc and under Local Rule 9.2 we
will award Safe Flight expenses, including attorneys fees, in
connection with the filing of the papers on this motion.

5. Sundstrand’s Motion for an Order Compelling
the Production of Documents.

Because we have granted Safe Flight’s Motion for a Stay
of Proceedings, resolution of this motion is not necessary at
this time. If, after the Federal Circuit issues its decision, it is
appropriate for Sundstrand to pursue this Motion and, if Sund-
strand wishes to do so, it will be free to renew its Motion at
that time.

An appropriate order will follow.

Al4

In the United States District Court
for the District of Delaware.

SAFE FLIGHT INSTRUMENT

CORPORATION,
Plaintiff,
Civil Action No.
™ 87-545 IRR
SUNDSTRAND DATA CONTROL,
INC.,
Defendant.

ORDER

On this 26th day of June, 1989, for the reasons stated in
the Court’s Memorandum Opinion of this date,

IT IS ORDERED THAT:

1. Safe Flight’s Motion for Reconsideration is denied.

2. Having found that there is no just reason for delay, Safe
Flight’s Motion for Entry of a Final Judgment of this Court’s
decision of February 17, 1989, granting summary judgment
of noninfringement is hereby granted and, pursuant to Rule
54(b) of the Federal Rules of Civil Procedure, a final judgment
is entered granting the relief sought by the defendant in Counts
I and II of its counterclaims. Our decision is therefore im-
mediately appealable to the Court of Appeals for the Federal
Circuit.

3. Safe Flight’s Motion for a Stay of Proceedings pending
the outcome of its appeal to the Federal Circuit is granted.

4. Safe Flight’s Motion for a Stay of Certain Boeing Deposi-
tions is granted nunc pro tunc, and Safe Flight is awarded

Al5

expenses, including attorneys fees, in connection with prepa-
ration of the papers on this motion. Safe Flight shall submit
an application for fees, supported by affidavits, within two
weeks of the date of this order.

5. The Court reserves decision on Sundstrand’s Motion for
an Order Compelling Production of Documents. If, after the
Federal Circuit issues its decision on appeal, Sundstrand is
able to and wishes to pursue this Motion, it will be permitted
to do so at that time.

/s/ Jane R. Roth
UNITED STATES DISTRICT JUDGE

Al6
APPENDIX C.

In the United States District Court
for the District of Delaware.

SAFE FLIGHT INSTRUMENT

CORPORATION,
Plaintiff,
Civil Action No.
me 87-545 JRR
SUNDSTRAND DATA CONTROL,
INC.,
Defendant.

Daniel F. Wolcott, Jr., Esquire of Potter, Anderson & Corroon,
Wilmington, Delaware

OF COUNSEL: Edward V. Filardi, Esquire, Robert Neuner,
Esquire, James J. Maune, Esquire, and Daniel A. DeVito,
Esquire of Brumbaugh, Graves, Donohue & Raymond, New
York, New York; and David E. Dougherty, Esquire of Bacon
& Thomas, Alexandria, Virginia.

Attorneys for Plaintiffs

C. Waggaman Berl, Jr., Esquire, Wilmington, Delaware

OF COUNSEL: Theodore W. Anderson, Esquire, William M.
Wesley, Esquire, Richard A. Cederoth, Esquire, and Steven
P. Petersen, Esquire of Neuman, Williams, Anderson &
Olson, Chicago, Illinois; and Trevor B. Joike, Esquire, and
Michael S. Yatsko, Esquire of Sundstrand Corporation,
Rockford, Illinois.

Attorneys for Defendants

OPINION
February 17, 1989

Al7
ROTH, District Judge

The plaintiff in this action, Safe Flight Instrument Corpora-
tion (“Safe Flight”), alleges that the defendant, Sundstrand
Data Control, Inc. (“Sundstrand”), infringes its two patents,
U.S. Patent Nos. 4,012,713 (the “’713 patent”) and 4,079,905
(the “ °905 patent”), which cover avionic windshear equipment.
We denied the plaintiff's motion for a preliminary injunction
by Memorandum Opinion and Order dated August 30, 1988.
The defendant has now moved for summary judgment of nonin-
fringement of the plaintiff's patents.

I. FACTS

Windshear, or more specifically microburst, describes an
aviation hazard which occurs when a plane on takeoff or land-
ing encounters violent, quick, and local shifts in wind direction.
This can result in disaster if the pilot cannot compensate quickly
and properly for the changing conditions. Equipment for warn-
ing of the presence of windshear can be located either on the
ground or on board the aircraft.

The two Safe Flight patents in suit cover on-board systems
of detecting windshear. Windshear is measured in these patents
by comparing the rate of change of the instantaneous airspeed
(the speed of an aircraft measured against the surrounding air)
with the change in groundspeed (the speed of an aircraft mea-
sured against the earth; this change in speed is also termed
“horizontal inertial acceleration”) and in the ’905 patent, by
adding a downdraft angle. As the defendant explained in its
Opening Brief and at oral argument, because the two patents
are similarly written only claim 1 of the ’713 patent needs to
be considered. If this claim is not infringed, then no claim of
either patent is infringed. Defendant’s Opening Brief at 3 (D.I.
54); Transcript of January 30, 1989, Oral Argument at 12 [here-
inafter Transcript] (D.I. 95). Claim 1 of the ’713 patent reads:

Al8

A system for generating a windshear signal repre-
senting the windshear condition encountered by an
aircraft comprising:

means for generating a signal representing the
rate of change of the instantaneous airspeed of the
aircraft,

means for generating a signal representing the
horizontal inertial acceleration of the aircraft,

means for subtracting the horizontal inertial ac-
celeration signal from the rate of change of the
instantaneous airspeed signal to provide a wind-
shear signal representing windshear, and

means for processing said windshear signal to
provide an indication representing the magnitude
thereof.

Schematically, the Safe Flight patents generates a windshear
signal according to the following basic diagram:

AIRSPEED

& FILTER

HORIZONTAL ACCELERATION

Fig. 2. HORIZONTAL WINDSHEAR COMPUTATION

Affidavit of Philip A. Blythe [hereinafter Blythe Affidavit],
Figure 2 (D.I. 81.2).

ao

Al9

Sundstrand manufactures and sells several products known
as Ground Proximity Warning Systems (“GPWS”). Sundstrand
produces three types of GPWS that include a windshear warn-
ing capability: Part Numbers 965-0648 (“#648”), 965-0676
(“#676”), and 965-0876 (“#876”) (collectively the “Sund-
strand Parts”). Part # 648 uses one of The Boeing Company’s
algorithms' to calculate windshear; Parts #676 and #876 use
algorithms of Sundstrand’s own design to calculate windshear.’
The following basic diagram represents Sundstrand’s commer-
cially produced method for generating a windshear signal:

AIRSPEED ; > WINDSHEAR

, SIGNAL
HORIZONTAL |

ACCELERATION “8 pl FuTER

Fig. 3. ALTERNATE WINDSHEAR COMPUTATION
Blythe Affidavit, Figure 3 (D.I. 81.2).

‘As described in the Court’s previous opinion, Safe Flight entered into a
license arrangement with The Boeing Company (“Boeing’’) to permit “Boeing
to manufacture wind shear equipment using the plaintiff's patented technology
or to have a third party manufacture such equipment.” Safe Flight Instrument
Corp v. Sundstrand Data Control, Inc., slip op. at 2 (D. Del. Aug. 30, 1988)
(“Safe Flight [’) (D.1. 67). Boeing chose not to manufacture the equipment
itself and instead contracted with Sundstrand to produce the wind shear devices
to meet its needs. /d. at 3.

? Although Sundstrand originally briefed its Motion for Summary Judgment
of Noninfringement based only on Part #648, Defendant’s Opening Brief at
3 (D.1. 54), the plaintiff, in opposing the Motion, argued that all three Parts,
#648, #676, and #876, infringe its patents. Plaintiff's Answering Brief at 2
(D.1. 81.1). Sundstrand maintains its position that it is entitled to summary
judgment by arguing that nene of its parts infringe the plaintiff's patents and
by adopting Safe Flight’s position that all of Safe Flight’s charges against
Sundstrand will fail if summary judgment is granted. See Defendant’s Reply
Brief at 1-2 n.1 (D.I. 88); Transcript at 5 (D.I. 95). The analysis in this
opinion, therefore, applic, w all three Sundstrand Parts and addresses the
plaintiff's assertion that all three Parts infringe its patents.

A20
ll. ANALYSIS

A. The Standard for Summary Judgment. Rule 56 of the
Federal Rules of Civil Procedure provides the standard for
summary judgment: Summary judgment should be granted
when there are no genuine issues of material fact and the
movant is entitled to judgment as a matter of law. Avia Group
International, Inc. v. L.A. Gear California, Inc., 853 F.2d
1557, 1560 (Fed. Cir. 1988) (citing Fed. R. Civ. P. 56);
Moeller v. lonetics, Inc., 794 F.2d 653, 657 (Fed. Cir. 1986)
(same). Summary judgment is as appropriate in patent cases
as in other cases. Avia Group, 853 F.2d at 1561 (citations
omitted).

The burden of proving that there are no genuine issues of
material fact rests on the moving party. Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). Summary judgment may
be granted if there is “evidence that is merely colorable . . .
or [that] is not significantly probative.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 249-50 (1986) (citations omitted).
“Factual disputes that are irrelevant or unnecessary will not
be counted.” /d. at 248. Furthermore, reliance on mere asser-
tions in the pleadings is not permissible. Jd. There must be
enough evidence to enable a reasonable jury to find for the
nonmoving party on the issue for which summary judgment
is sought. /d. at 249; Avia Group, 853 F.2d at 1560.

If the nonmoving party fails to make a sufficient showing
of an essential element of the case for which that party has
the burden of proof, the moving party is entitled to summary
judgment as a matter of law. Liberty Lobby, 477 U.S. at 322.
But the moving party need not “produce evidence showing the
absence of a genuine issue of material fact”; it is sufficient for
the moving party to demonstrate to the court that the nonmoving
party's case is not supported by the evidence. Avia Group,
853 F.2d at 1560 (quoting & citing Celotex, 477 U.S. at 325).

A2l

Finally, it is well-settled law that in a motion for summary
judgment the evidence should be viewed in a light most favor-
able to the nonmoving party, Adickes v. S.H. Kress & Co.,
398 U.S. 144, 157 (1970), and that this applies with equal
force in patent actions. Avia Group, 853 F.2d at 1560; Moeller,
794 F.2d at 656 (citing SRI International v. Matsushita Electric
Corp., 775 F.2d 1107, 1116 (Fed. Cir. 1985) (en banc) ).

Although the same standard for summary judgment is used
in patent cases as in other cases, the standard is somewhat
more difficult to meet in patent cases, because not only must
no genuine issues of material fact exist, but to grant summary
judgment properly, the trial court must in addition construe
the claim Correctly and conclude that it would not be possible
for the trier of fact to find infringement. Moeller, 794 F.2d at
656 (citing Porter v. Farmers Supply Service, Inc., 790 F.2d
882, 884 (Fed. Cir. 1984) ). We address the defendant's argu-
ments with this summary judgment standard in mind.

B. Infringement Under the Doctrine of Equivalents. A\-
though Safe Flight argues in its brief that Sundstrand literally
infringes both of its patents, Plaintiffs Answering Brief at
24-25 (D.1. 81.1), earlier in its brief Safe Flight indicates that
the configuration which Sundstrand commercially produces
does not literally infringe its patents, id. at 9, and at oral
argument Safe Flight did not argue that its patents are literally
infringed, but instead argued that its patents are infringed under
the doctrine of equivalents.’ See Transcript at 34-35, 37, 39

‘Although Safe Flight never explicitly abandoned its position that its patents
are literally infringed, it is clear to the Court after oral argument that Safe
Flight’s literal infringement argument is based on one of Sundstrand's pre-pro-
duction versions of a GPWS with windshear warning that, if produced, would
literally infringe the Safe Flight patents. This version is shown in Figure 2,
supra p. |A18). The windshear warning system in Sundstrand’s commercially
produced GPWS with windshear warning is shown in Figure 3, supra p. [A19].
See Transcript at 39 (first embodiment [Figure 2] refers to a windshear config-
uration representing the Safe Flight patents and a Sundstrand pre-production

A22

(D.1. 95). We conclude, based on these facts together with
our independent evaluation of the Safe Flight patents and the
Sundstrand products that the Sundstrand Parts do not literally
infringe the Safe Flight patents. Thus, summary judgment will
be appropriate if Sundstrand can show that its Parts do not
infringe the Safe Flight patents under the doctrine of equiva-
lents or, alternatively , if it can show that Safe Flight’s argument
that the Sundstrand Parts do infringe its patents under that
doctrine is not supported by the evidence.*
version of a GPWS. with windshear warning, : second 1 configuration [Figure 3)
refers to Sundstrand’s commerciaily produced windshear warning system), id.
at 35 (first schematic [Figure 2] refers to Sundstrand’s pre-production version
of a GPWS with windshear warning that Safe Flight agrees has not been
commercialized by Sundstrand, second schematic {Figure 3} is Sundstrand’s
present commercial embodiment), Plaintiff's Answering Bref at 8-9 (plaintiff
alleging that one arrangement, the first [Figure 2], infringes Safe Flight patents
lnterally; other arrangement, the second {Figure 3}, infringes Safe Flight patents
under the doctrine of equivalents). Because there has been no allegation before
the Court that Sundstrand’s pre-production version has ever been produced
commercially, we will move onto the relevant analysis required by this contro-
versy: whether the Safe Flight patents have been infringed by Sundstrand under
the doctrine of equivalents.

* Likewise, we find that the plaintiff's argument based on 35 U.S.C. § 112,
* 6 is without merit. Safe Flight argues that this section requires us “to construe
the claims of the patents in suit to cover both the means for generating the
rate of change of instantaneous airspeed disclosed in the specification... and
any equivalent means thereof.” Plaintiff's Answering Brief at 19. We find the
Federal Circuit's statements in Pennwalt Corp. v. Durand-Wayland, Inc., 833

F.2d 931 (Fed. Cir. 1987) (en banc}, to be controlling. Specifically, there the
court stated:

[|Sjection 112, paragraph 6, rules out the possibility that any and
every means which performs the function specified in the claim
literally satisfies that limitation. . . . If the required function is
not performed exactly in the accused device, i must be borne in
mind that section 112, paragraph 6, equivalency is not involved.
_ [It ts erroneous to argue that} if an accused structure performs
the function required by the claim, it is per se structurally equiva-
lent. erlang Anca rage, 5 to paragraph 6, re-
striction and has been rejected [by} the . _ _ precedent of this court.

Id. at 934.
Thus only Safe Flight’s argument that its patents are infringed under the
doctrine of equivalents will be addressed by the Court.

A23

The doctrine of equivalents has existed since Winans v.
Denmead, 56 U.S. (15 How.) 329 (1853). The Supreme
Court’s seminal decision on the doctrine was delivered in
Graver Tank & Manufacturing Co. v. Linde Air Products Co.,
339 U.S. 605 (1950). The doctrine of equivalents is an equit-
able doctrine, at odds with the requirement that patent claims
must be precisely worded to warn others of exactly what inven-
tion is claimed. See, e.g., State Industries, Inc. vy. A.O. Smith
Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985). The doctrine
was developed to provide additional protection to a pateniee
by permitting him to maintain an action against one who prac-
tices his invention but is not within the literal scope of the
patent claims. As constructed by the Supreme Court in Graver
Tank, the doctrine allows a court to find infringement if the
alleged infringer produces a device that “performs substantially
the same function in substantially the same way to obtain the
same result.” /d. at 608 (quoting Sanitary Refrigerator Co. v.
Winters, 280 U.S. 30, 42 (1929)).

For years, the doctrine of equivalents remained more or less
unchanged, being limited only by the fact that “the doctrine
{does} not extend (1) to cover an accused device in the prior
art, and (2) to allow the patentee to recapture through equiva-
lence certain coverage given up during prosecution.” Pennwalt
Corp. v. Durand-Wayland, inc., $33 F.2d 931, 934 n.1 (Fed.
Cir. 1987) (en banc) (citing Loctite Corp. v. Ultraseal Ltd.,
781 F.2d 861, 870 (Fed. Cir. 1985) ). In Pennwalt, the Coun
of Appeals for the Federal Circuit clarified the doctrine by
holding that in order to find infringement under the doctrine
of equivalents, a court cannot merely view an invention as a
whole, rather it must perform an element-by-element analysis
of the patent in suit and must find that each element in the
claimed invention, or its equivalent, is found in the alleged
infringing product. /d. at 935-39.

A24

In Pennwalt, the plaintiff alleged that the defendant, Durand-
Wayland, infringed claims of its fruit sorter covered by
Pennwalt’s U.S. Patent No. 4,106,628. After dismissing
Pennwalt’s contention that its patent was literally infringed,
id. at 933-34, the court of appeals affirmed the district court’s
finding that there also was no infringement under the doctrine
of equivalents. /d. at 934-39. The analysis used by the
Pennwalt court is applicable in the case sub judice.

Initially, the court of appeals in Pennwalt stated that “if

. . even a single function required by a claim or an equivalent
function is not performed by the Durand-Wayland sorters, the
[district] court’s finding of noninfringement must be upheld.”
Id. at 936. The district court had identified the relevant differ-
ence between the patented device and the alleged infringing
device as the fact that certain functions of the claimed inven-
tions were missing from the accused devices. /d. at 935. Spec-
ifically, the patented device’s ability to continuously track the
positions of the items before each item is discharged and the
accused device’s inability to do the same was the critical differ-
ence between the devices.° /d. =

The court of appeals upheld the district court finding of
noninfringement on three grounds. First, the court stated that
the plaintiff's expert witness testimony supported the finding
that there was no infringement because he testified that the
accused device and the patented device perform only “some
of the same type of operations.” Id. at 937. The court of
appeals found that this testimony, and the absence of any
testimony to the effect that the devices performed each and
every function of the other, supported the finding by the district
court that some of the functions of the patented device were
not performed by the accused infringing device. Thus there
could be no infringement under the doctrine of equivalents. /d.

* As discussed infra, another difference between the devices was the position
of an element in the invention versus the position of a similar element in the
alleged infringing sorter. 833 F.2d at 938.

A25

Second, the court of appeals noted that the language of the
patent should be-construed narrowly based on its prosecution
history and on the fact that it was not a pioneer invention.
This narrow reading, in accordance with the usual rule that a
patentee cannot recapture through the doctrine of equivalents
certain coverage given up during prosecution, supra, resulted
in the conclusion of noninfringement. The court found that
since the patented invention was merely an improvement in
an already crowded field, the addition of the phrases regarding
how the sorter worked in the patented device, specifically as
to how it continuously tracked the location of an item in transit,
was “crucial to patentability,” because these phrases narrowed
the claim making it was patentable over the prior art. According
to the court, in this type of situation, the patent claim “ ‘should
be read in light of the careful phraseology [of functions] chosen
by the inventors’ because ‘the machine disclosed in the patent-
in-suit was carefully described so that it did not read on the prior
art.’” [d. (quoting Pennwalt Corp. v. Durand-Wayland, Inc.,
225 U.S.P.Q. (BNA) 558, 570 (N.D. Ga. 1984) ). Moreover,
because “the accused machine simply does not do what. . .
‘could’ be done,” the court of appeals rejected Pennwalt’s
argument that the accused device necessarily had to infringe
its patents because it was possible to find the location of the
items using the accused device. /d. at 937-38.

Lastly, the court rejected on two grounds Pennwalt’s argu-
ment that the defendant’s shifting of “the position of an oper-
able element” did not preclude a finding of infringement.
Pennwalt, in effect, argued that its patent was infringed be-
cause, although the accused devices did not make a required
comparison between certain values, as prescribed in Pennwalt’s
patent, the operation and results achieved were the same as
those claimed by its patent. First, according to the court, the
specific claim language in the patent required that the position
indicating means (which was crucial to patentability over the

A26

prior art) be responsive to certain specified signals. /d. at 938.
The court found that there could be no finding of infringement
because the accused device did not include any method to
respond to those specified signals. Jd. Second, the court re-
jected the plaintiffs argument that the memory component of
the defendant’s device, which stored information as to the
weight and color of an item, was the same or substantially the
same function as the function of “continuously indicating”
where an item is located in the sorter. /d. Again, the court
found it significant that the record in the case was clear that,
before the words “continuously indicating” were added as an
additional limitation to the patent, it was unpatentable in view
of the prior art which, like the accused device, stored informa-
tion with respect to sorting criteria in its memory Dut did not
“continuously” track the location of any item. /d. As the court
stated, “the inventors could not obtain a patent in which the
functions were described more broadly. Having secured claims
only by including very specific functional limitations, Pennwalt
now seeks to avoid those very limitations under the doctrine
of equivalents. This it cannot do.” /d. (citations omitted).
Thus, after Pennwalt, for infringement to exist under the
doctrine of equivalents, an element-by-element identity must
exist between the patented invention and the alleged infringing
product. Further, a finding of infringement will not be sup-
ported: (1) when the plaintiff's expert testimony fails to pre-
clude a finding that there are substantial differences between
the patented device and the accused device; (2) where the
prosecution history and nature of the patent have limited the
patent to a narrow reading, especially where the specific claim
language in the patent requires certain functions to be per-
formed and the accused device does not perform these func-
tions, even though there exists the possibility that the accused
device could perform them; and (3) where the plaintiff’s claims
of infringement are based on an argument that the operation

A27

and results achieved by the accused device are the same as
those claimed by the plaintiff’s patent, but certain functions
added to achieve patentability are not present in the accused
device.

Using this standard to determine infringement under the
doctrine of equivalents, there is no infringement in this case.
Safe Flight’s patents claim a system for generating a signal
representing windshear. It claimed this system very specifi-
cally. Its signal representing windshear is produced by a system
that has: (1) the means for generating a signal representing the
rate of change of the instantaneous airspeed of the aircraft; (2)
the means for generating a signal representing the horizontal
inertial acceleration of the aircraft; (3) the means for subtracting
the horizontal inertial acceleration signal from the rate of
change of the instantaneous airspeed signal to provide a wind-
shear signal representing windshear; and (4) the means for proc-
essing the windshear signal to provide an indication represent-
ing the magnitude thereof. In the Sundstrand Parts, it is impos-
sible to identify either the first or the third step in the Safe
Flight patents. An isolated signal representing the rate of
change of the instantaneous airpseed of the aircraft cannot be
identified in the Sundstrand Parts. Similarly, the third step,
wherein the horizontal inertial acceleration signal is subtracted
from the airspeed rate, cannot be identified in the Sundstrand
Parts. Thus, the required element-by-element comparison re-
sults in the conclusion that there is no infringement under the
doctrine of equivalents and supports the conclusion that Sund-
strand is entitled to summary judgment of noninfringement as
a matter of law.

Additionally, none of Safe Flight’s expert witnesses has
either submitted an affidavit or testified during a deposition
that it is possible to identify an isolated signal representing
the rate of change of the instantaneous airspeed of the aircraft.
Thus, we find that there are significant differences between
the Safe Flight patents and the Sundstrand Parts and that this

A28

finding has not been refuted by the plaintiff's experts. This
analysis therefore reinforces our finding that the defendant is
entitled to summary judgment of noninfringement.

It is also relevant in this case to examine the prosecution
history of the Safe Flight patents after noting that the patents
are not pioneer patents in the field of windshear equipment.
See, e.g., Petersen Affidavit, Exhibit 5, Nov. 5, 1976, Re-
sponse to Official Action at 1-3 (discussing the Lambregts and
Scholeman patents) (D.I. 55); /d., Exhibit 6, Feb. 7, 1977,
Request for Examination at 1-11 (discussing 10 patents as prior
art including the Lambregts patents) (D.I. 55).

As first presented to the Patent and Trademark Office (the
“PTO”), the °713 patent was rejected as unpatentable over the
prior art. Petersen Affidavit, Exhibit 5, Nov. 5, 1976, Re-
sponse to Official Action at 2 (D.I. 55). At that time, the
claims were amended to use the term “representing” in place of
the term “in accordance with” in the original submission. /d.
at 1. As the applicant stated in the Response to the rejection,
the effect of this replacement was to remove the applic. jon
from the scope of the prior art because the term “in accordance
with” was so broad that it could reasonably be interpreted to
read on the prior art, but the term “representing” could not
read on the prior art. /d. at 2-3. In its brief, the plaintiff admits
that substituting “representing” for “in accordance with” nar-
rowed the scope of the claims. Plaintiff's Answering Brief at
29 (D.1. 81.1). The claims were narrowed because the prior
art disclosed signals that were functions of windshear and
which contained the variables necessary to calculate windshear.
However, signals covered by the prior art did not actually
represent any of these values. Thus, it was the applicant’s
position that “in accordance with” permitted signals to be a
function of the values which they were supposed to indicate,
but that “representing” did not. It was on this basis that the
claims were finally allowed.°

‘The "905 patent was similarly worded to avoid the same problems. Petersen
Affidavit, Exhibit 4, Greene *905 patent, at Column 6 (D.I. 55); id., Exhibit

A29

We find that the Pennwalt court’s language is applicable
here: The patent claims “ ‘should be read in light of the careful
phraseology [of functions] chosen by the inventors’ because
‘the [device] disclosed in the patent-in-suit was carefully de-
scribed so that it did not read on the prior art.’ /d. (quoting
Pennwalt, 225 U.S.P.Q. (BNA) at 570). Safe Flight’s argu-
ment that the windshear signal is the signal that represents the
rate of change of the instantaneous airspeed is therefore mis-
guided, as it seeks to reclaim part of what was given up during
the prosecution of its patents. Plaintiff's Answering Brief at
32-34 (D.I. 81.1). Had Safe Flight not replaced the “in accord-
ance with” language with “representing,” its argument that the
signal “in accordance with windshear” is also the signal “in
accordance ‘with the rate of change of the instantaneous air-
speed” would probably have merit, but, then again, Safe Flight
would not have been granted the patents had it not narrowed
the scope of these claims. Because it is unacceptable to “allow
the patentee to recapture through equivalence certain coverage
given up during prosecution,” Pennwalt, 833 F.2d at 934 n.1,
this analysis supports our conclusion that the defendant is
entitled to summary judgment of noninfringement as a matter
of law.

Finally, Safe Flight, like the plaintiff in Pennwalt, unpersua-
sively argues that a change in the “position of an operable
element” in the claimed invention is insufficient to remove the
accused device from the scope of its patent. Plaintiff’s Answer-
ing Brief at 33 (D.I. 81.1). Here, it is significant that Safe
Flight argues that the change in placement of the summation
device in the windshear circuit makes no difference in the
overall calculation. Jd. Assuming that this is true, the plaintiff's
position would have merit only if no difference, either step-by-
step or overall, resulted from the change in placement of the

6, Feb. 7, 1977, F Request for Examination. Thus, our analysis of the effect of
the term “representing” in the '713 patent applies to the ’905 patent, as well.

A30

summation device.’ The change in structure of the elements
to calculate the signal representing windshear in the Sund-
strand Parts does, however, result in a difference. As we stated
earlier, in the Sundstrand Parts it is impossible to locate a
signal representing the rate of change of the instantaneous air-
speed. This difference is significant, and as the court in Penn-
walt noted, a patentee, by application of the doctrine of equi-
valents, cannot avoid language added to patent claims to make
a rejected patent application patentable. This analysis, like the
others already performed, supports the conclusion that the
defendant is entitled to summary judgment of noninfringement
as a matter of law.

C. Patentable Subject Matter. Safe Flight, however, con-
tends that a genuine issue of material fact exists because it
claims, in fact, that there is a dispute over whether Sundstrand
has a means for producing a signal representing the rate of
change of the instantaneous airspeed of the aircraft. Safe Flight
argues that the Sundstrand Parts necessarily have the means
for producing such a signal because its Parts produce a wind-
shear signal. According to Safe Flight, because windshear is
the difference between the rate of change of the instantaneous
airspeed and the horizontal inertial acceleration, then necessar-
ily, the rate of change of the instantaneous airspeed is contained
within the windshear signal and if one wanted to, one could
find out the value of that signal by analyzing the signal repre-

*The summation device is labelled “3” in Figures 2 and 3 supra [pp. Al8,
A19]. By way of illustration, if the Safe Flight and Sundstrand filters contained
the exact same electronic elements, but were arranged differently, this differ-
ence would not matter if the two filters were fed the same input and produced
the same output, and Safe Flight’s position would have merit. Here, however,
the filters do not receive the same input. The different arrangement of the filter
and of the summation device means that there is different input to the filter,
producing a different output from the filter, albeit the same final result is
produced in the wind shear signal. This difference is significant and thus,
pursuant to Pennwalt, Safe Flight’s position is without merit.

A31

senting windshear. See Plaintiff's Answering Brief at 30-34.
This argument, however, is a tautological circle that is unsup-
ported in the law.

Safe Flight cannot patent the concept of windshear. Diamond
v. Diehr, 450 U.S. 175, 185 (1981). As the Supreme Court
stated in Diehr:

Excluded from . . . patent protection are laws of
nature, natural phenomena, and abstract ideas. . . .
An idea of itself is not patentable. . . . [In this re-
spect], ‘Einstein could not patent his celebrated law
that E=mc’; nor could Newton have patented the
law of gravity. Such discoveries are “manifestations
of. . . nature, free to all men and reserved exclusive-
ly to none.”’

Id. (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309
(1980)) (other citations omitted) (emphasis added). Thus, if
we were to accept Safe Flight’s argument that Sundstrand
infringes its patents because the Sundstrand Parts produce a
windshear signal, part of which is necessarily a “signal” rep-
resenting the rate of change of the instantaneous airspeed of
the aircraft, we would preclude all other companies from pro-
ducing windshear alert systems. This we will not do.

In Diehr, the respondents filed a patent application that
claimed an invention covering a process for molding raw,
uncured synthetic rubber into cured precision products. /d. at
177. Among the many variables that enter into the curing
process, controlling the cure time had always presented a prob-
lem. /d. It was industry practice to calculate the cure time by
use of the Arrhenius equation which is dependent on well-
known time, temperature, and cure relationships, but it was
difficult to measure the temperature of the curing press, the

A32

only unknown variable in the equation." /d. at 177-78. The re-
spondents claimed to have solved this problem by measuring
the temperature inside the mold constantly and by feeding
these measurements into a computer which repeatedly recalcu-
lated the cure time by use of the Arrhenius equation. /d. at
178. The respondents claimed that the continuous measurement
of the temperature inside the mold, the transfer of this informa-
tion to a computer, the continuous calculations performed by
the computer, and the signalling by the computer to open the
press when the curing process was complete were all new to
the art. /d. at 179.

Initially, the patent examiner rejected the claims as being
unpatentable because the claims covered nonstatutory subject
matter under 35 U.S.C. section 101 in that he determined that
“the claims defined and sought protection of a computer pro-
gram for operating a rubber-molding process.” /d. at 179-81.
Although on appeal the claims were held allowable by the
Court of Customs and Patent Appeals, /n re Diehr, 602 F.2d
982 (C.C.P.A. 1979), the Supreme Court granted certiorari
to clarify the standard to be applied.

The Supreme Court held that the claims were proper subject
matter for a patent. /d. at 184. The Court viewed the respond-
ent’s claims as covering an industrial process for curing rubber
and concluded that such processes historically enjoyed the
protection of the patent laws. /d. & n.8. Careful to note that
“a process is not unpatentable simply because it contains a
law of nature or a mathematical algorithm,” id. (quoting Parker

“The Arrhenius equation for rubber curing can be expressed as follows:
Inv =cz +x

wherein In v is the natural logarithm of the v, the total cure time; c is the
activation constant which is unique to the particular composition of the material
being molded; z is the temperature of the mold; and x is a geometric constant
unique to the configuration-of the particular mold. Thus, assuming that the
constants, c and x, are computed accurately, it is critical to measure z accurately,
otherwise the cure time will be inappropriate. 450 U.S. at 177 & n.2.

A33

v. Flook, 437 U.S. 584, 590 (1978) ), the Court rejected the
notion that the subject matter was unpatentable even though
several steps in the process relied on a mathematical formula.
Id. at 185. However, the Court came to this conclusion only
after restating the notion that “laws of nature, natural phenom-
ena, and abstract ideas,” supra, are not patentable and finding
that the respondents did not seek to patent the Arrhenius equa-
tion, the mathematical formula employed by its computer in
its patent. /d. at 187. As the Court stated, “Their process
admittedly employs a well-known mathematical equation, but
they do not seek to preempt use of that equation. Rather they
seek only to foreclose from others the use of that equation in
conjunction with ail the other steps in their claimed process.”
Id. (emphasis added). It was only when viewed in this light
that the Court held that the claims covered patentable subject
matter.

In the present controversy, Safe Flight describes its method
for calculating windshear alternatively as an algorithm or an
algebraic expression. See, e.g., Plaintiff's Answering Brief at
32 (D.I. 81.1); Transcript at 32, 34-35, 38 (D.I. 95). Unlike
the respondents in Diehr, the plaintiff here does seek to preempt
use of the general windshear equation. If we were to adopt
Safe Flight’s argument, it would enjoy complete insulation
from any company that marketed a product that produces a
windshear signal. Windshear is represented by the difference
between the rate of change of the instantaneous airspeed of
the aircraft and the horizontal inertial acceleration. Thus, a
system that produces a signal representing windshear would
necessarily have the means for producing signals representing
the rate of change of the instantaneous airspeed and horizontal
inertial acceleration. It logically follows that every system that
would produce such a signal would thereby infringe Safe
Flight’s patent claims. To adopt Safe Flight’s argument would
permit Safe Flight, in effect, to patent the windshear equation.

A34

This it cannot do. Safe Flight can patent the use of the wind-
shear signal in its airplane control systems once that signal
has been produced, as long as it seeks protection for the use
of the windshear equation in conjunction with all of the other
steps in the system. It cannot, however, as it seeks to do here,
prevent others from using the equation which simply describes
a natural phenomenon.” Diehr, 450 U.S. at 185, 191-92.

Ill. CONCLUSION

The Sundstrand Parts do not literally infringe the

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385020_2538%3A1. Public record. Not legal advice.