Opposition Brief — L-3 Communications Corp. v. Honeywell International Inc.

No. 10-491 Los nes ceccrens |

Un the

Supreme Court of the Gnited States

L-3 COMMUNICATIONS CORP. AND

LOCKHEED MARTIN CORP..,

Petiti >) ¢ rs.

v.

HONEYWELL INTERNATIONAL INC. AND HONEYWELI

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR HONEYWELL IN OPPOSITION

GREGORY G. GARRE

Counsel of Record

LAWRENCE J. GOTTS

ELIZABETH M. ROESEL

LATHAM & WATKINS LLP

555 llth Street, NW

Suite 1000

Washington, DC 20004

(202) 637-2207

gregory. .garre@lw.com

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5

nor dimming was an acceptable solution because

neither permitted red warning lights and full color

displays to be visible when NVGs are being used in the

cockpit. USBr. 3-4.

Consistent with the conventional wisdom, the prior

art references relied upon by petitioners—Boehm and

Verney—taught that red light should not. be used in

the cockpit with NVGs. Boehm® states that “[tlhe

main idea is to use only special green and blie

illumination in the cockpit.”” Pet. App. 15 (quoting C.A.

App. 605298). Similarly, Verney® states: “a new

infrared free blue-green light has emerged as the basic

type of light to be used in NVG applications.”’ Pet.

App. 16 (quoting C.A. App. 628398).

The state of the art in 1985 is reflected in a military

specification issued in January 1986 relating to NVG

compatible interior aireraft lighting. Pet. App. 4-5.

The specification— MIL-L-85762-- was the culmination

of years of investigation by a committee of government

engineers. After consulting with experts from both

government. and private industry, the committee

adopted a standard that effectively prohibited the use

of red light and full color displays in NVG compatible

aircraft cockpits. /d.

The committee adopted the “no red” NVG

compatibility standard with full knowledge of the

importance of red light in military cockpits,

2 HLD.V. Boehm, Tenth European Rotoreraft Forum, Paper Nr.

AO, The Night Vision Goggle Compatible Helicopter Cockpit 1-26

(Aug. 28-31, 1984); C.A. App. 605285-38 11.

3 Jay EF. Verney, American Helicopter Society, 41st) Annual

Forum Proceedings, Aircraft Lightong Systems 111-12 (May 15-17,

1985); C.A. App. 628893-404.

6

particularly for red warning lights. The government's

expert witness at trial, Dr. Harry Lee Task, had

himself urged the committee to retain red light in the

standard “if at all possible,” conceding at trial that “[i]t

was my opinion that if at all possible the MII, spee

which was in consideration should be such that it would

retain red and yellow in the cockpit.” ©C.A. App.

501730; see also Pet. App. at 5. Military jet aircrews

had also expressed a strong opinion that “we needed to

keep red.” Pet. App. 171) (quoting testimony of

yovernment witness Mr. Reetz). Colonel William 5.

Lawrence, Honeywell's expert witness, explained why:

“red has always been perceived as the color that

denotes danger and we find, as pilots and test pilots,

red to be extraordinarily valuable in that role. The

immediate perception of danger is crucial to survival

and we want red in the cockpit.” Pet. App. 5.

Despite years spent studying the tissue and

developing a standard, and despite the fact. that red

light displays were believed to be “extraordinarily

‘raluable,” id., in aircraft cockpits, the government's

committee of experts nevertheless adopted an NVG

compatibility specification in 1986 that eliminated red

warning lights and did not permit full color displays to

be used in the cockpit with NVGs, 7d. It was not

apparent even to these highly skilled engineers that

full color displays could be made compatible with

NVGs without removing red light. And the military

did not revise its specification to permit red hght in

NVG compatible cockpits until after Honeywell

submitted its patent application and that application

was reviewed, and recommended for placement under

a government secrecy order, by a member of the

military specification committee and its eventual

chairman. Pet. App. 5-6.

Honeywell’s patented invention was a significant

and innovative departure from) the conventional

wisdom in 1985, providing for the first time a way to

make a full color display that could display red and yet

be compatible with NVGs. Pet. App. 51. Whereas the

conventional NVG compatibility solution was to

remove red light from the cockpit, the "914 patented

invention achieved the conflicting goals of full color and

NVG compatibility by providing a display that emits

just a narrowband of red wavelengths and blocking

just that narrowband at the NVG. Pet. App. 6-7.

Honeywell's inventor, Richard Cohen, taught that a

narrowband of red wavelengths could be produced by a

combination of a display hght source, e.g., the light

emitted by a phosphor coating In a CRT, and a filter

that passes just a narrowband of wavelengths emitted

by the CRT phosphor. C.A. App. 854 (4:49-57); C.A.

App. 355 (5:1-12). That narrowband of passed red light

would provide sufficient red light to be visible on the

display, therefore providing a full color image that

could be seen by the pilot and crew with the naked eye.

C.A. App. 351-52 (Figs. 2, 3); C.A. App. 355 (4:40-48).

Only that narrowband of red wavelengths then needed

to be filtered out at the NVG, permitting it to operate

at near maximum efficiency, since all other red and

infrared wavelengths, e.g., from reflected starlight and

moonlight, could enter and be amplified by the NVG.

C.A. App. 355 (5:18-20); USBr. 4.

The government’s own expert at trial admitted that

Cohen’s idea of using “a narrow band of frequencies” to

“get rid of the red problems” was “probably a unique

idea at the time.” C.A. App. 501605-06.

.

B. The Court Of Federal Claims Proceedings

Honeywell brought suit against the government in

the Court of Federal Claims (CIC) pursuant to 28

U.S.C. § 1498, alleging that display systems in certain

military aircraft infringe the "914 patent. The case

proceeded in several different phases. Following a

hearing, the court construed the disputed claim terms.

Hloneywell Int'l, Ine. v. United States, 66 Fed Cl. 400

(2005) (“Claim Construction Order’). Following a trial

on the issue of infringement with respect to three of

the accused display systems, the court found that the

three systems infringed claim 2 of the '914 patent, both

hterally and under the doctrine of equivalents.

Honeywell Int'l, ine. v. United States, 70 Fed. Cl. 424

(2006) (“Infringement Order’). The court then held

trials on Honeywell's claim under the’ Invention

secrecy Act, on the infrinvement defenses raised by

petitioners and the government (including invalidity),

and on damages. Following these trials, the CFC made

several rulings. Relevant to the current petition, the

CFC concluded that claim 2 of the ‘914 patent. is invalid

for obviousness under 35 U.S.C. § 108(a). Honeywell

Int'l, Inc. v. United States, 81 Fed. Cl. 514. 588-72

(2008) (“Tnvalidity/Defenses Order’).

In these proceedings, the meaning of the claim term

“narrowband of the red color band” became critical. At

the claim construction stage, the government argued

that “red color band” should be defined by a specific

range of wavelengths. C.A. App. 124-25. The CFC

agreed and defined “red color band” as “a range of

color from 620 nm to 780 nm,” C.A. App. 155, noting

that the term would be “psychological and subjective”

without) these wavelength parameters. Claim

Construction Order, 66 Fed. Cl. at 470-71

At the infringement stage, the government and

petitioner Lockheed* contended that the amount of

light emitted by the accused displays in the 620-780 nm

wavelength range was not enough to satisfy the claim.

The government argued that the “narrowband of the

‘sufficient hght such that the

‘

red color band” requires

result is visible and perceptible by the observer.” C.A.

App. 615262 (415). Lockheed elaborated on the

government's perceptibility argument, making a

careful distinction between whether the light is

perceptible as red (versus, say, pinkish-orange) - a

subjective test already rejected by the CFC at the

claim construction stage—and whether the amount of

light in the defined wavelength range of 620-780 nm is

sufficient to be perceived, which is required. C.A. App.

201509. The CFC, in finding infringement (a finding

not chalienged in the petition), specifically adopted the

defendants’ understanding, stating that the claim

requires that the display “emit hight within the ‘red

color band,’ 7.e., 620 nm to 780 nm, that is perceptible,”

but does not require that the “lhght emitted be

perceived as red.” Infringement Order, 70 Fed. Cl. at

464; C.A. App. 214; Pet. App. 12-13.°

At the defenses stage, the government and [.-8 took

a Shotgun approach, raising nearly every possible

statutory ground for invalidity, as well as inequitable

4 Lockheed Martin Corp. (“Lockheed”) intervened as a partial

indemnitor of the government, and L-3 Communications Corp

(“L,-3") later intervened as an indemnitor of Lockheed. Pet. App

Sn.l

° The CFC made these statements regarding claim 1 of the ‘914

patent, but later explained that the same interpretation applies to

claim 2. Pet. App. 13

10

conduct, “first sale” doctrine, and prosecution laches.

Pet. App. 45-49, 77. As to obviousness, the

government’s expert relied upon 25 different prior art

references. Pet. App. 57. He divided them into two

categories—references that disclosed complementary

filtering and references that disclosed color displays-

and opined that it would have been obvious to combine

the two concepts. C.A. App. 623127-29 (4925-31); C.A.

App. 623208-13 (44205-213). He further opined that

the requirement for perceptible light within the red

color band made the claim indefinite, C.A. App. 623123

(G16); C.A. App. 628152 (477), but he did not address

whether the prior art = disclosed a_ perceptible

narrowband of red light or whether it would have been

obvious to have a display that emits perceptible red

light in the cockpit with NVGs.

In their post-trial briefs, the government and

petitioner L-8 argued that claim 2 was obvious in view

of various combinations of prior art references, which

they contended disclosed all elements of the claim. L-3

Post-trial Br., Docket No. 293 (Fed. Cl. Aug. 24, 2007)

(“L3 8/24/2007 Br.”) at 12-19, 54; US Post-trial Br.,

Docket No. 292 (Fed. Cl. Aug. 24, 2007) (“US 8/24/2007

Br.”) at 26-28, 82-34; L-3 Reply Br. Docket No. 301

(Fed. Cl. Nov. 9, 2007) (“L3 11/9/2007 Br.”) at 30-382; US

Reply Br., Docket No. 302 (Fed. Cl. Nov. 10, 2007) at

10. But that argument, like the expert testimony,

ignored the claim understanding defendants had

pressed during the infringement phase: they now

argued that the amount of light in the red color band

(620-780 nm) is “irrelevant.” US 8/24/2007 Br. 30; see

also 3 11/9/2007 Br. 34-35. While the government

argued that “it would have been obvious to try ... other

filters ... with the goal of locating a filter that passed

1]

sufficient red lhght,” US 98/24/2007 Br. 30, and L-3

argued that skilled artisans knew “how to turn the

power up on a red emitter,’ L3 11/9/2007 Br. 38,

neither defendant pointed to any evidence in the record

showing the obviousness of passing a_ perceptible

narrowband of red light in the context of an NVG

compatible display.

The CFC accepted the obviousness defense. Pet.

App. 103-83. However, notwithstanding its prior claim

construction, the CFC made no findings regarding the

obviousness of employing a perceptible narrow band of

red passed by the display and blocked by the goggles.

C. The Federal Circuit Proceedings

Honeywell appealed, seeking reversal of the

judgment of invalidity for obviousness.6 Honeywell

pointed to the unusually compelling objective evidence

of nonobviousness here, based on the military’s

removal of red light from cockpits before the patent

taught how to avoid that safety-compromising NVG

compatibility solution. Honeywell further argued that

the CFC’s finding that element (a)(3) was disclosed in

Boehm and Verney was clearly erroneous because it

ignored the requirement for perceptible light in the red

color band, which the CFC had recognized during the

infringement phase. Pet. App. 12.

6 Honeywell also challenged the CFC’s determinations relating to

adequacy of the written description, standing under the Invention

Secrecy Act, and the government's defense under the first sale

doctrine. Pet. App. 18-19, 22-24, 24-25. The Federal Circuit

reversed those rulings. Pet. App. 25-26. Petitioners, however,

have not challenged those aspects of the Federa} Circuit's decision

before this Court and they therefore are not at issue.

lz

The Federal Cireuit agreed with Honeywell,

concluding that “the obviousness dispute turns upon

whether claim 2 requires perceptible red light.” Pet.

App. 13. The Federal Circuit determined that

“element (a)(3) requires the passing of perceptible red

light—i.e., red light which is visible to the human eye.”

Pet. App. 14. As the court explained, “there would be

no point, in the context of this invention, to pass a

narrowband of red light that cannot be seen.” Zd.

The Federal Circuit then observed that the CFC,

which had recognized the correctness of that claim

interpretation at the infringement stage, had failed to

apply it at the invalidity stage. Instead of requiring

that the display emit light within the red color band

that is perceptible, the CFC relied upon a construction

that “‘did not require the perception of the red primary

of a full color display’” and requires only that ““‘at least

one color {be] perceptible’ on the local color display.

Pet. App. 14 (quoting /nvalidity/Vefenses Order, 81

Fed. Cl. at 545); Pet. App. 128. The CFC’s conclusion

was therefore infected by a_ basic legal

misunderstanding as to the proper claim construction.

The Federal Circuit then examined the sum total of

evidence that defendants advanced on obviousness

under the proper perceptible-light claim understanding

and concluded that “claim 2 would not have been

obvious to one of skill in the art.” Pet. App. 14. In

particular, the court noted that “|t]lhe government

provided no evidence that either Boehm or Verney

discloses perceptible red light.” /d. With respect to

Boehm, the court explained that Honeywell presented

unrebutted expert testimony that it does not disclose

the passing of perceptible red light. Pet. App. 15. The

court concluded that the CFC’s “analysis was premised

13

on an erroneous claim construction” and therefore the

CFC “clearly erred in finding that Boehm discloses

element (a)(3) of claim 2.” Pet. App. 16. With respect

to Verney, the court considered and rejected each of

the reasons given by the CFC for holding that Verney

disclosed element (a)(3). Pet. App. 16-17. The court

further explained that “[t]he government points to no

record evidence to support a finding that Verney

discloses perceptible red light.” Pet. App. 18

Judge Mayer dissented. On oDviousness, he

disagreed with the majority’s claim construction (an

issued not challenged by petitioners in this Court),

and—without citing any particular evidence, or

distinguishing what artisans would find obvious from

what they would know how to do after learning the

inventive concept—disagreed with the majority’s

review of the record. Pet. App. 29-30.

REASONS FOR DENYING THE PETITION

Certiorari should be denied on both of the petition’s

questions presented. Far from announcing any new or

bright-line rule on “the meaning of this Court’s decision

in ASR International Co. v. Teleflex, Inc.,” Pet. 2, the

Federal Circuit simply reached the common sense and

record-specific conclusion that petitioners’ obviousness

challenge could not succeed in this case given the fact

that they presented “no evidence” that the claim would

have been obvious under a claim construction that

petitioners do not challenge in this Court. Pet. App. 14.

That case-specific, and correct, ruling does not conflict

with any decision of this Court and is grounded on

defendants’ fundamental evidentiary shortcoming and

the unchallenged claim construction in this case. Not

surprisingly, the government agrees that the Federal

Circuit’s ruling is “fact-bound,” announces no “general

14

rule governing obviousness challenges,” and “does not

warrant the Court’s review.” USBr. 7.

The tacked-on challenge to the burden of proof also

does not merit review. Petitioners (and the

government) waived that issue in the court of appeals

and therefore cannot press it here. Moreover, lowering

the burden of proof here would not help them, given

the total absence of proof on the pertinent issue.

Petitioners’ efforts to manufacture a _ question

warranting this Court’s review simply underscores the

lack of any certworthy issue presented by the case that

was actually litigated and decided below.

I. THE FEDERAL CIRCUIT’S OBVIOUSNESS

RULING DOES NOT MERIT REVIEW

A. As The Government Recognizes, The

Federal Circuit Decision In This Case

Announced No “General Rule”

The petition’s first question is not presented by the

decision below. As the government recognizes, the

Federal Circuit’s decision nowhere states or applies a

“general rule governing obviousness challenges,”

USBr. 7, but instead simply finds a lack of evidence in

the record to support obviousness based on a claim

construction that petitioners do not challenge.

1. The Federal Circuit’s decision is grounded upon

the case-specific determination “whether claim 2

requires perceptible red light,” Pet. App. 13, and not on

the theoretical question that petitioners attempt to

raise in this Court. Element (a)(5) of claim 2 recites: “a

plurality of filters at the local color display including ...

(3) a third filter for filtering the red color band of the

local source of light and passing a narrowband of the

red color band.” Pet. App. 9-10. As construed by the

15

CFC during the infringement phase of the case, this

claim element requires that the “narrowband of the red

color band,” 2.e., that the light emitted by the display

within the 620-780nm wavelength range, be

perceptible to the human eye. Pet. App. 12-14; Claim

Construction Order, 66 Fed. Cl. at 444, 466;

Infringement Order, 70 Fed. Cl. at 433, 464./

On appeal to the Federal] Circuit, Honeywell argued

that the CFC’s findings regarding Boehm and Verney

and claim element (a)(3) were clearly erroneous

because neither reference discloses the passing of

perceptible light in the red color band (620-780 nm).

Honeywell Br. (Dec. 19, 2008) (““HWBr.”) at 34-35, 37.

38; Honeywell Reply Br. (May 21, 2009) (“HWReply”)

at 6-8, 9-10. In response, L-3 argued that

“perceptibility was not required.” L-3 Br. (Apr. 3,

2009) (“Appellee L3Br.”) at 40 (internal quotation

marks and emphasis’ omitted). Similarly,

notwithstanding the claim construction it advanced

before the CFC, the government argued that “there is

no requirement that there be a perceptible emission in

’ The Federal Circuit majority did not, as argued by petitioners

and the government, construe claim element (a)(3) as requiring

the passing of light “that is perceptible as being red,” Pet. 10, or

“perceptible as red to the human eye.” USBr. 6. Rather, the

Federal Circuit applied the construction that was advanced by the

government and Lockheed before the CFC and adopted by the

CFC at the infringement stage, requiring that the display emit

light within the red color band (620-780 nm) that is perceptible,

not light that is perceived as being red. Pet. App. 12-14; Claim

Construction Order, 66 Fed. Cl. at 470-71; Infringement Order, 70

Fed. Cl. at 464; C.A. App. 214. Accordingly, the government’

repeated references to “perceptible as red,” USBr. 6, 7, 9, 10, do

not accurately reflect the claim construction applied by the

Federal Circuit (which is not challenged by petitioners)

16

the red color band.” US Br. (Apr. 3, 2009) (“Appellee

USBr.”) at 29. Neither L-3 nor the government

identified any record evidence supporting the CFC’s

findings regarding claim element (a)(3), if it were

construed to require perceptible red light.®

The Federal Circuit rejected petitioners’ contention

that a perceptible emission in the red color band is not

required. Pet. App. 14. The petition does not challenge

that claim construction ruling. Nor does it challenge

the Federal Circuit’s determination that neither

Boehm nor Verney discloses passing perceptible red

light, as required by the claim. Pet. App. 14-18.

Indeed, the premise of the petition’s first question is

that claim element 2(a)(3) is not disclosed in the prior

art. Yet when the Federal Circuit at oral argument

invited the government and L-3 to point to evidence

that would support the obviousness of the claim, if it

were construed to require perceptible red light, they

were unable to point to anything. Oral Argument at

17:29-37, 18:25-19:48, Honeywell Int'l, Inc. v. United

States, 609 F.3d 1292 (No. 2008-5181), available at

http://www.cafe.uscourts.gov/oral-argument-

recordings/2008-5181/all (“Oral Argument Tr.”)

That is the record of evidence and argument on

which the Federal Circuit concluded: “Given the

failure to prove that the cited references disclose

element (a)(3), the government has failed to carry its

burden of proving by clear and convincing evidence

that the claimed invention would have been obvious to

one of skill in the art.” Pet. App. 18. When viewed in

context, rather than in isolation, cf. USBr. 10, this

5 Lockheed submitted no brief of its own to the Federal Circuit

and simply joined the briefs submitted by L3 and the government.

17

conclusion does not reflect the application of a bright

line rule, but rather a case-specific determination that,

under the correct claim construction, the record before

the Federal Circuit did not support a judgment of

obviousness. That record-grounded conclusion is

unassailable and, as the government submits, “does not

warrant the Court’s review.” USBr. 7.

2. Petitioners contend that the Federal Circuit’s

analysis was “truncated” and petitioners accuse the

appellate court of ignoring “the CFC’s alternative

findings.” Pet. 11, 16. Those broad-brush accusations

have no concrete support in the record below. As the

Federal Circuit correctly held, the CFC applied the

wrong claim interpretation in determining obviousness,

Pet. App. 14, and made no alternative findings of fact

based on a correct interpretation of the claim.

Petitioners fail to cite to any such alternative findings

or to point to any evidence that, once the clearly

erroneous findings regarding the Boehm and Verney

references were corrected, could support the

conclusion that element (a)(3), as properly construed,

would have been obvious.

In discussing “the CFC’s alternative findings,” Pet.

ll, petitioners seem to be referring to the following

passage from the C'©’s opinion:

Assuming, arguendo, that VERNEY and the

GERMAN PATENT did not disclose how to

‘

‘split the red color band,” the record evidences

that one skilled in the art, in 1985, could have

determined which filters to use. First, Mr.

Tannas admitted that, after one skilled in the art,

in 1985, identified the need to split the red color

band, determining the appropriate filters to use

also would be known. See DMX 4 at 1000590

Is

(Figure 3). In fact, such filters were available on

the market at that time. See TR 1847-49.

Pet. App. 157, selectively quoted at Pet. 9-10.

Contrary to petitioners’ characterizations, the

quoted passage is not an alternative finding that. the

patented invention was obvious despite the absence of

particular disclosures in the prior art. Cf. Pet. 9-10.

The passage does not actually address obviousness, but

rather whether the claimed invention, once conceived,

could have been implemented by one skilled in the art

in 1985, e.g., by selecting the appropriate filters. Nor

does the passage provide an alternative to the CFC’'s

erroneous finding that Boehm discloses claim element

(a(S). In fact, the passage cites to Figure 3 of

Boehm—“DMX 4 at D000590 (Figure 3)”—supgesting

that the finding is premised on the same misreading of

soehm set forth earlier in the CFC’s opinion, rather

than some other evidence that would support

obviousness. Pet. App. 123, 157. Likewise, the one

other CFC record citation in this passage, 'T’'r. 1347-49

(Docket No. 263 Dec. 14, 2006), merely establishes that

the patent could be put into practice using filters

available off-the-shelf, providing no support for the

obviousness of the inventive concept. Accordingly,

nothing in the quoted passage either finds, or cite:

evidence that shows, the obviousness of creating a

perceptible narrowband of the red color band in the

context of a display to be used in the cockpit with

NVGs. See Pet. App. 13.

Petitioners cite no other findings by the CFC or

record evidence that could establish the obviousness of

the patented invention, given the unchallenged claim

interpretation that the filtered display must emit

perceptible light within the red color band. Cf. Pet. &

19

10. The absence of such evidence is confirmed by the

CFC’s opinion, which comprehensively recites the

evidence relied upon by defendants, but—aside from

the erroneous findings regarding Boehm and Verney-

identifies no evidence supporting the obviousness of

passing a “narrowband of the red color band,” when

correctly construed to require perceptible light in the

620-780 nm wavelength range.

The CFC’s statement that “even if prior art did not

disclose all the elements, the court, could still determine

that the ‘914 patent was obvious,” Pet. App. 134, is

merely a statement of the law, not a finding of fact.

While petitioners cite the CFC’s findings relating to

the use of complementary filtering to “split the red

color band,” Pet. 9-10, 17, these findings do not say, or

rest on evidence that shows, that it would have been

obvious to filter a display so that it emits perceptible

light in a narrowband within the 620-780 nm range in

the context of an NVG compatible cockpit. Petitioners

point to nothing in the record that would support such

a conclusion. In fact, petitioners argue that “a filter

capable of splitting the red color band” and “the

emission of perceptible red hght” are two separate

elements of the claim, implicitly conceding that the

CFC’s findings, which relate solely to the first of these

elements, are insufficient to support obviousness. Pet

nm Qg

if,

3 Contrary to petitioners’ assertion, the CFC did not find that “the

military had not previously wanted to use red light in cockpits

equipped with night vision technology.” Pet. 9. In fact, the CFC’s

opinion says just the opposite, quoting the testimony of the

government’s witness that jet air crews wanted to “keep red” and

stating: that, “[ bly the mid-1980's ... there was a clear demand by

the military for a full color display in aircraft.” Pet. App. 162.

20

3. Judge Mayer’s dissent provides no support. for

petitioners’ argument that the majority apphed a

bright-line rule and truneated its analysis by ignoring

supposed alternative findings of the CFC. The dissent

said nothing about a bright-line rule, but instead

criticized the majority for relying upon an incorrect

claim construction. Pet. App. 29-30. Petitioners do not

challenge that construction in this Court. Further,

although the dissent reached a different. conclusion on

obviousness. it did so based on de novo factual findings

that are unsupported by the record. Pet. App. 28, 31.

And, in any event, there is no reason for this Court to

grant certiorari to arbitrate this case-specific dispute.

B. The Decision Below Does Not Conflict

With Any Precedent Of This Court

The Federal Circuit’s ruling is consistent with this

Court’s decision in ASR International Co. v. Teleflex,

Inc., 550 U.S. 398 (2007), as well as the other precedent

cited by petitioners. And the record-dependent ruling

reached by the Federal Circuit below makes this case a

singuiarly ill-suited vehicle for this Court to opine on

its recent decision in AS/t, even if it wished to do so.

The Federal Circuit’s decision faithfully adheres to

the approach established by Graham v. John Deere Co.,

383 U.S. 1, 17 (1966), and reiterated in ASR, including a

“flexible” analysis of obviousness, guided by “common

sense” and without “overemphasis” on the explicit

content of prior art documents. ASR, 550 U.S. at 415,

41%, 419, 420, 421. Rather than seeking out. “precise

teachings directed to the specific subject matter of the

challenged claim,” the court relied on the expert

testimony relating to Boehm and Verney in order to

determine how one of ordinary skill in the art would

have understood and applied the disclosure of these

él

prior art references. /d. at 418; Pet. App. 14-18 (citing

testimony of witnesses Task and Tannas). The court

further invited petitioners to identify evidence beyond

the prior art references supporting the obviousness of

a perceptible narrow band. They simply failed to do so.

See Oral Argument Tr. at. 18:34-41.

The court also took into account. the evidence of

“market demand” and “the inferences and creative

steps that a person of ordinary skill in the art would

employ.” AS, 550 U.S. at 419, 418. That evidence

showed that, just before seeing Honeywell’s newly

filed patent application, the military Issued a

specification banning the use of red hght in NVG

compatible cockpits, despite the contemporaneous

protests of jet pilots and the government’s expert that

red is necessary for warning and should be retained “if

at all possible.” Pet. App. 4-5 (quoting C.A. App.

501730). Ultimately, however, the Federal Circuit

rested its decision on a failure of evidence, since the

government and L-38 failed to present even a prima

facie case that a core concept of the invention—a

perceptible narrow band of the red color band- was

known or would have been obvious to one of ordinary

skill in the art. Pet. App. 18. The Federal Circuit did

not apply a “[r]igid” rule, ASA, 550 U.S. at 421, or limit

its analysis to the express disclosures of Boehm and

Verney, but instead compared all the evidence relied

upon by defendants with the claims as_ properly

construed.

Nothing in the Federal Circuit’s decision conflicts

with Hollister v. Benedict & Burnham Manufacturing

Co., 118 U.S. 59 (1885). In contrast to this case, the

dispute in Hollister did not “turn{]) upon” claim

construction, Pet. App. 138, and the claim element. that

Was missing from the prior art. was a simple variation

of what was affirmatively shown to be a “matter of

common knowledge and practice before the date of

thle] patent.” Hollister, 118 U.S. at 72. Hlere,

petitioners were unable to point to any similar gap

filling evidence with respect to a perceptible narrow

band of the red color band. Instead, they argued that

perceptibility was not required. Appellee L3Br. 40;

Appellee USBr. 29; Oral Argument 'Tr. at 16:12-14 (“we

take issue with that interpretation’). The Federal

Circuit. rejected that argument, and petitioners do not

challenge that ruling here.

This case also differs from Sakraida v. Ag Pro, Ine.,

425 U.S. 273 (1976), where the patent was held obvious

because it) “simply arranges old elements with each

performing the same function it had been known to

perform, although perhaps producing a more striking

result than in previous combinations.” /d. at 282.

Here, in contrast, the claimed invention is not simply a

combination of old elements because claim element

(a)(3)- passing a perceptible narrowband of the red

color band—is not the same function that had been

performed in the pror art. To the contrary, in the

prior art, cockpit lighting and displays were filtered to

remove red light, not to pass a narrowband of red light

that is perceptible to the naked eye. See Pet. App. 4, 5;

HWekr. 9-14.10 The petition’s first question in facet

assumes that claim element (a)(3) is missing from the

prior art.

10 Notably, the Brief for the United States does not address

petitioners’ argument that the decision below conflicts with this

Court’s precedent in //ollister and Sakraida

C. Federal Circuit Case Law Both Before

And After The Decision Below Refutes

Petitioners’ Characterization Of The

Court’s Ruling In This Case

As the government agrees, the Federal Circuit has

not adopted any categorical rule that pnor art must

disclose every element of a claim in order for the

claimed invention to be obvious. USBr. 11.) Rather,

the Federal Circuit has faithfully followed the

teachings of ASA and has not hesitated to hold patent

claims obvious as a matter of law in appropriate cases.

See, e.g., Western Union Co. v. MoneyGram Payment

Sys., Inc., Nos. 2010-1080, 2010-1210, 2010 WL 4942124,

at. *7-8 (Fed. Cir. Dee. 7, 2010) (reversing judgment of

nonobviousness, citing and quoting ASA); Ritchie v.

Vast Res., Inc., 563 F.8d 1334, 1857-38 (Fed. Cir.)

(same), cert. denied, 1380S. Ct. 269 (2009); Muniauction,

Inc. v. Thomson Corp., 5382 F.8d 1318, 1824-28 (Fed.

Cir. 2008) (same), cert. denied, 129 8S. Ct. 1585 (2009).

This is no less true where one or more claim elements

is not found in the prior art. In a variety of procedural

contexts and with differing conclusions on the ultimate

question of obviousness, the Federal Cireuit has

consistently shown that it does not apply a bright-line

rule preventing a finding of obviousness in such cases.

For example, in Perfect Web Technologies, Inc. v

InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009), the

Federal Circuit reviewed a decision granting summary

judgment of invalidity for obviousness. The parties

agreed that the prior art disclosed the first three steps

of the claimed method, and that the fourth and last

step—requiring that the first three steps be

repeated—did not appear in the prior art. /d. at 1327.

Given these undisputed facts, application of the bright-

24

line rule hypothesized by petitioners would have

required reversal. Instead, the court agreed with the

district court’s conclusion that, as a matter of law, the

fourth step was a matter of common sense and

affirmed. Jd. at 1330-31 (citing ASA, 550 U.S. at 418).

The government cites several Federal Circuit cases

decided subsequent to the present case that likewise

underscore that the Federal Circuit has not adopted

“any categorical rule that prior art must disclose every

element of a claim in order for the claimed invention to

be obvious.” USBr. 11; see USBr. 11-12 (citing Geo M.

Martin Co. v. Alliance Mach. Sys. Int'l LLC, 618 F.8d

1294, 1300-04 (Fed. Cir. 2010); Dow Jones & Co. v.

Ablaise Ltd., 606 F.8d 13888, 1849-58 (Fed. Cir. 2010);

Lucky Litter LLC v. ITC, Nos. 2009-1470, 2009-1474,

2010 WL 39387587, at *4 (Fed. Cir. Oct. 6, 2010)).

Petitioners incorrectly assert that adoption of a

bright-line rule is evident in three Federal Circuit

decisions—Callaway Golf Co. v. Acushnet Co., S576

I 8d 1831 (Fed. Cir. 2009), cert. dented, 180 8S. Ct. 1525

(2010); Ainetie Concepts, Ime. v. Blue Sky Medical

Group, Inc., 554 F.3d 1010 (Fed. Cir.), cert. denied, 130

S. Ct. 624 (2009); and Abbott Laboratories v. Sandoz,

544 F.3d 1341 (Fed. Cir. 2008). Pet. 20-23. No

statement of such a rule can be found in those

decisions, which instead are record-specifie reviews of

trial court judgments in view of the particular

arguments and evidence relied upon by the parties.

See USBr. 12-18.

[In Callaway, the appellant (validity challenger)

focused on the prior art. references and did not seek to

establish obviousness independent of the disclosures of

the references. See 576 F.3d at 1339-41. Furthermore,

as in this case, the failure to prove obviousness was due

in part to the claim construction, which limited the

types of evidence that could establish obviousness. See

id. at 1338, 13840. Callaway, like the Federal Circuit’s

decision in this case, rests on a failure of proof, not on

the application of a bright-line rule.

Similarly, in Ainetic Concepts, the “Defendants’

obviousness argument at tria! relied heavily on the

prior art references ....” 554 F.3d at 1021. The Federal

Circuit concluded that substantial evidence supported

the jury’s implicit finding that none of the references

taught or suggested a major part of the claim. Jd. at

1020. Again, claim construction played an important

role because, as properly construed, a key term used in

the claim did not cover what was desembed in the prior

art. Jd. at 1018. As the government observes, neither

Callaway nor Kinetic Concepts “purported to establish

or apply a bright-line rule.” USBr. 12. This Court

denied certiorari in both cases. Callaway, 130 8. Ct.

1525 (2010); Arnetic Concepts, 13808. Ct. 624 (2009).

Abbott likewise provides no support for petitioners’

argument. There was no majority opinion on the issue

of obviousness in Abdott: Section | of Judge Newman's

opinion, which embraces the obviousness issue, was not

joined by either of the other judges on the panel and

therefore is not the law of the Federal Cireuit.

Furthermore, the excerpt criticized by petitioners

(Pet. 22) is from the district court’s opinion. Judge

Newman relied on a different rationale, concluding that

the patents-in-suit did not represent an “‘identified,

predictable solution’” to the problem addressed by the

invention. Abbott, 544 F.3d at 1352 (quoting ASR, 550

U.S. at 421); see USBr. 18.

Ultimately, petitioners themselves acknowledge

that the Federal Circuit has not adopted a categorical

26

rule. They concede that no bright-line rule was applied

in either Leapfrog or Media Techs.,)) even though an

element of the claim was “missing” from the prior art

in both cases. Pet. 23-24. Instead of “mak[ing] matters

worse,” Pet. 24, these cases are further proof that the

Circuit has not adopted the kind of bright-line rule that

petitioners have hypothesized. See USBr. 12-13.!°

Il. THE BURDEN OF PROOF QUESTION IS

WAIVED AND IMMATERIAL ON THE

RECORD IN THIS CASE

Nor is there any basis to grant review on the

second question presented by petitioners on the burden

of proof governing their obviousness defense.

Petitioners waived that issue in the court of appeals,

and given the complete failure of proof on obviousness

they could not prevail under a lower standard in any

ll Leapfrog Enters. v. Fisher-Price, Inc., 485 F.3d 1157, 1161-62

(Fed. Cir. 2007) (affirming judgment of obviousness); Media Teclis

Licensing, LLC v. Upper Deck Co., 596 F.3d 1334, 1337-39 (Fed.

Cir.) (same), cert. denied, 1351S. Ct. 305 (2010).

l2 Petitioners wrongly imply that a law review commentator has

criticized the Federal Circuit for applying a rigid rule regarding

missing claim elements. Pet. 28 (citing Nicholas Angelocci, ASR v.

Teleflex: Obvious Ambiguity, 18 DePaul J. Art Tech. & Intell.

Prop. L. 293, 320 (2008) (“Angelocci”)). Angelocei's criticism is in

fact just the opposite of petitioners’-—he argues that the Federal

Circuit has too readily found obviousness when all elements of the

claim are in the prior art. In fact, the author disagreed with the

result in /n re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed.

Cir. 2007), a case heavily relied upon by petitioners below. See

Appellee L&8Br. 39, 40, 42, 44, 47. in any event, Angelocci’s

criticism is entirely one-sided, as evidenced in his contention that

this Court “erred when it rejected the approach of the Federal

Circuit” in ASR. Angellocei at 304.

event. For these reasons, there is also no reason to

hold the petition pending the Court’s disposition in

Microsoft, supra, No. 10-290. USBr. 14.

A. Petitioners Have Waived Any Challenge

To The Burden Of Proof

Petitioners have waived their argument that the

clear-and-convincing-evidence standard should not

govern their obviousness defense. Although

petitioners raised this argument in the CFC, neither

petitioners nor the government preserved it in the

court of appeals, even as an argument responding to

Honeywell's request for outright reversal of the

obviousness judgment. Accordingly, the issue was

neither pressed nor passed upon below.

In its post-trial brief on defenses in the CFC, L-3

challenged application of the “clear and convincing

standard of review” to their obviousness defense. L3

8/24/2007 Br. 4 n.2; see also id. at 52-54; Pet. App. 71-73.

But the CFC rejected that argument, Pet. App. 77, and

neither petitioners nor the government challenged that

ruling in the Federal Circuit. Instead, on Honeywell's

appeal, L-3 argued that the evidence of obviousness

was clear and convincing, without questioning that

standard or even hinting that, if the court of appeals

declined to affirm the invalidity rulings, the court

should remand for new factfinding under a lower

burden of proof. Appellee L3Br. 18. Because

petitioners both abandoned and failed to challenge the

burden of proof standard on appeal, the Federal Circuit

did not address the issue.

Under these circumstances, the question of whether

petitioners were required to prove their obviousness

defense by clear and convincing evidence is not

28

properly before this Court. Delta Air Lines, Inc. v.

August, 450 U.S. 346, 362 (1981) (question presented in

petition for certiorari “was not raised in the Court of

Appeals and is not properly before us”); Adickes v. S.H.

Kress & Co., 398 U.S. 144, 147 n.2 (1970) (“Where

issues are neither raised before nor considered by the

Court of Appeals, this Court will not ordinarily

consider them.”); see also KSR, 550 U.S. at 423 (“Given

the significance of that finding to the District Court’s

judgment, it is apparent that Teleflex would have made

clearer challenges to it if it intended to preserve this

claim.”’).

Petitioners attempt to excuse their failure to raise

the burden of proof issue before the Federal Circuit by

arguing doing so “would have been futile.” Pet. 35.

But this argument is belied by petitioners’ own actions

in raising this issue in the CFC, as well as those of

other litigants, such as Microsoft, which have raised

this issue in the Federal Circuit. L-3 could not have

believed that a challenge to the clear-and-convincing-

evidence standard was futile, or it would not have

asked the CFC to apply a different standard of proof.

See L3 8/24/2007 Br. 52 (arguing that this Court’s

opinion in ASR brought the clear-and-convincing-

evidence standard “into significant question”).

Neither case cited by petitioners supports a grant

of certiorari to review the Federal Circuit’s clear-and-

convincing-evidence standard under the circumstances

of this case. Cf. Pet. 35. In United States v. Williams,

504 U.S. 36, 40-45 (1992), the question presented was

expressly decided by the court of appeals, even though

it was not contested by petitioner in that court. Here,

in contrast, the Federal Circuit did not pass upon the

propriety of the clear-and-convincing-evidence

standard for proving obviousness. And, unlike Lebron

v. National Railroad Passenger Corp., 513 U.S. 374

(1995), the clear-and-convincing-evidence standard is

not “a new argument to support what has been

[petitioner’s] consistent claim.” /d. at 379. The

question is not new. Petitioners raised it in the CFC—

then simply abandoned it. And it is not being raised

merely as a supporting argument, but rather as a

Separate question and ground for overturning the

judgment below, which petitioners claim is one of “the

most important questions in patent law today.” Pet. 2.

This case is therefore analogous to Delta Air Lines, 450

U.S. at 362, and similar cases in which the Court

concluded that an issue not pressed or passed upon in

the court below was not properly before this Court.

B. The Evidentiary Standard Could Not

Alter The Obviousness Conclusion In This

Case In Any Event

In any event, even if it were properly presented

the burden of proof is immaterial on the record here.

Petitioners do not and cannot show that the result here

could be any different under a preponderance-of-the-

evidence standard for proving invalidity. Cf. Pet. 32.

The procedural posture in this case is entirely

different from Microsoft, No. 10-290, where the jury

was instructed to apply the clear-and-convincing.

evidence standard and the court of appeals affirmed a

judgment of no invalidity. 747 Ltd. P’ship v. Microsoft

Corp., 598 F.3d 831, 848, 864 (Fed. Cir. 2010). Here,

the Federal Circuit reversed a _ judgment of

obviousness. In so doing, the court could not and did

not weigh the evidence, but instead correctly concluded

that there was no evidence supporting the trial court’s

judgment under a correct claim construction. In

oO

contrast to Microsoft, which “turned largely on the

credibility” of certain witnesses, id. at 846, the

obviousness dispute in this case “turn|ed] upon” claim

construction, Pet. App. 13. Petitioners have not

challenged that claim construction in this Court. And

they fail to identify any factual questions resolved by

the Federal Circuit—taking into account’ the

unchallenged claim construction adopted by the

Federal Circuit—where the difference between the

burdens of proof (clear and convincing evidence versus

a preponderance of the evidence) could possibly have

made a difference in the outcome.

Petitioners have pointed to no evidence whatever

that could support obviousness of the critical element

a perceptible narrowband of light in the 620-780 nm

wavelength range—in the relevant NVG context. In

light of petitioners’ failure to submit any evidence of

perceptibility, their obviousness defense would fail

even under even a preponderance standard.

Because the burden of proof issue was not pressed

by petitioners in the Federal Circuit or passed upon by

the Federal Circuit, and because the outcome of this

ease would not change even if a preponderance-of-the-

evidence standard were applied, there is also no reason

to hold this case pending a decision in Microsoft, No.

10-290, as the government suggests. USBr. 14. In

making that suggestion, the government simply points

to the fact that the same issue is raised in Microsoft,

but it fails to account for the fact that—for the reasons

just discussed—the outcome in this case cannot be

affected by the disposition in Microsoft.