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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 2011
- **Citation:** 564 U.S. 1029

## Text

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.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2602%3A2. Public record. Not legal advice.