Petition for Writ of Certiorari — Honeywell International International Inc. v. Hamilton Sundstrand Corp. (No. 08-262)

IN THE

Supreme Court of the United States

HONEYWELL INTERNATIONAL INC.

AND HONEYWELL INTELLECTUAL PROPERTIES INC..,

Petitioners,

V.

HAMILTON SUNDSTRAND CORP.,

Respondent.

On Petition For Writ Of Certiorari

To The United States Court Of Appeals

For The Federal Circuit

PETITION FOR CERTIORARI

JONATHAN F. PUTNAM

Counsel of Record

LEE ANN STEVENSON

KEVIN N. MALEK

KIRKLAND & ELLIS LLP

153 East 53rd St.

New York, NY 10022

Of Counsel:

CHRISTOPHER LANDAU, P.C.

KIRKLAND & ELLIS LLP

655 Fifteenth Street, N.W.

Washington, DC 20005

August 25, 2008

ROBERT G. KRUPKA, P.C.

KIRKLAND & ELLIS LLP

777 South Figueroa St.

Los Angeles, CA 90017

Attorneys for Petitioners

spiiecteneee

WALSON-EPES PRINTING CO., INC. — (202) 789-0096 — WASHINGTON, D.C. 20002

QUESTION PRESENTED

The doctrine of equivalents is intended to prevent a

copyist from avoiding infringement by making

insubstantial changes to a product to avoid a patent.

This Court unanimously reaffirmed the doctrine in

Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,

520 U.S. 17 (1997), and Festo Corp. v. Shoketsu

Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), in

each case reversing a divided en banc decision of the

U.S. Court of Appeals for the Federal Circuit that had

placed improper limits on the doctrine.

In another divided en banc decision, the Federal

Circuit held in this case that changing the mere form

of a claim, such as by transforming it from a dependent

claim into an independent claim, is a narrowing

amendment that gives rise to prosecution history

estoppel. This decision effectively denied Honeywell

access to the doctrine of equivalents, as the subsequent

panel decision below demonstrated.

This is new law. It contradicts this Court’s long-

standing precedents, and it works a dramatic and

unwelcome change in the United States patent system.

The question presented, therefore, is:

Whether change only to the form of an original

patent claim that is for a reason unrelated to

patentability and that does not change the claim’s

scope nonetheless gives rise to prosecution history

estoppel.

i

RULE 29.6 STATEMENT

The Petitioners are Honeywell International Inc. and

Honeywell Intellectual Properties Inc. Honeywell

International Inc. is publicly held and has no parent.

State Street Bank holds over 10 percent of the stock,

some as trustee under the company’s savings plans.

Honeywell Intellectual Properties Inc. was merged into

Honeywell International Inc. as of December 2007. At

the time this lawsuit was filed, Honeywell

International Inc. was known as AlliedSignal Inc. and

Honeywell Intellectual Properties Inc. was known as

AlhedSignal Technologies Inc.

i

TABLE OF CONTENTS

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PERTINENT CONSTITUTIONAL AND

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STATEMENT OF THE CASB.................cccscccssessseesneees 5

A. The Honeywell Technology .....................ccccscecsseeeeees 8

B. The Original District Court Proceedings............. 10

C. The En Banc Federal Circuit Proceedings .......... 10

ED. ‘TRO ROMANE PROCCOGIIGS, ....<<00cciccscsssscccescscsseccsseess 13

REASONS FOR GRANTING THE WRIT................ 14

I. The Decision Below Is Contrary To Statute, To

This Court’s Precedent, And To Good Patent Policv16

A. The Decision Below Is Contrary To 35 U.S.C.

© RE Pe Sircstenita cote nde ieae 16

B. The Decision Below Is Contrary To This Court’s

Longstanding Jurisprudence................ccccccceseseeeeeeeeees 18

C. The Decision Below Will Complicate Patent

Prosecution And Disrupt Settled Expectations. .....22

CASO FINDEN scinivisishsinistaicntnasentetmneaeecamattaianiians 27

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TABLE OF AUTHORITIES

CASES

Bloom Eng'g Co., Inc. v. North Am. Mfg. Co., Inc.,

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Bose Corp. v. JBL, Inc.,

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Exhibit Supply Co. v. Ace Patents Corp.,

Be ae I ioe iis nncenesnncectaacceeieaneblasinna 19

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki

Co.,

Be Rc, IE ITED htscchaichaiacheenicisnstacnacocmnesicasoninin passim

Festo Corp. v. Shoketsu Kinzoku Kogyu Kabushiki

Co.,

344 F.3d 1359 (Fed. Cir. 2003) (en banc)............... 11

Graver Tank & Mfg. Co. v. Linde Air Products Co.,

ita I I i oc casa ccneatcnecninadaninnciecusidanniiaies 5

L.T.S. Rubber Co. v. Essex Rubber Co..,

Fe a scaling anuabibling 18

Insta-Foam Products, Inc. v. Universal Foam

Systems, Inc.,

006 F.2d GB6 red. Cir. 1900).........ccc0cccc..000s.00ccc00.. 17

Shepard v. Carrigan,

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Vermeer Mfg. Co. v. The Charles Machine Works,

Inc..,

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Vv

Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,

Be see I akieen cis ticntivannvederntanersnexnaciainneraian passim

Winans v. Denmead,

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STATUTES

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U.S. Constitution, Article 1, section 8, clause 8........ 4

OTHER AUTHORITIES

111 CONG. REc. H5,267 (daily ed. Mar. 17, 1965)

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Honeywell International Inc. and Honeywell

Intellectual Properties Inc. (collectively “Honeywell”)

hereby petition for a writ of certiorari to review the

judgments of the United States Court of Appeals for

the Federal Circuit entered in this case.

INTRODUCTION

This is the second time this case appears before the

Court. In August 2004, Honeywell sought certiorari

when the case stood in interlocutory posture, with a

divided en banc Federal Circuit having reversed a jury

verdict in Honeywell's favor and remanded the case to

the district court for further proceedings. In response

to Honeywell’s earlier petition, the Court asked for the

views of the Solicitor General, see Honeywell Intl Inc.

v. Hamilton Sundstrand Corp., 543 U.S. 954 (2004),

but ultimately denied the petition. Honeywell Intl Inc.

v. Hamilton Sundstrand Corp., 545 U.S. 1127 (2005).

In opposing the grant of certiorari in the 2004 Term,

both the Solicitor General and Respondent Hamilton

Sundstrand Corp. argued that the then-pending

remand proceeding would provide an opportunity to

ameliorate the harms argued by Honeywell. The

ordered remand now having taken place, and this case

having produced yet another divided Federal Circuit

decision, the opposite is true: the further proceedings

below only confirmed Honeywell’s warnings about the

pernicious effects of the original en banc decision. This

case now stands in the posture of a final judgment, and

this petition provides a clean opportunity for this Court

to correct an important mistake by the Federal Circuit

regarding the application of the doctrine of equivalents

and prosecution history estoppel.

In its 2004 en banc decision, the Federal Circuit

majority held that Honeywell had narrowed its patent

2

claim during prosecution when, at the Patent

Examiner's direction, it rewrote a dependent claim into

independent form, even though that action, by

definition, did not make any change to the claim’s

scope. Appendix (“App.”) 10a-lla, 33a-37a. The

appellate court held that prosecution history estoppel

applied and remanded for a determination of whether

Honeywell could rebut the presumption of surrender of

equivalents under Festo. App. 3la. That ruling was

contrary to this Court’s longstanding precedents, which

dictate that a narrowing amendment giving rise to

estoppel occurs only where new limitations are added

to the claim during prosecution. It was also contrary to

35 U.S.C. § 112, 4] 4, which dictates that a dependent

claim incorporates all of the limitations of the

independent claim on which it depends. Thus, by

statute, Honeywell’s change in claim form from

dependent to independent had no effect on the scope of

the claim and therefore could not have constituted a

“narrowing amendment” raising an estoppel issue.

What is more, had Honeywell merely presented all of

its claims in independent form in the first place, no

question of estoppel would have arisen.

By thus exalting form over substance, the en banc

decision not only upset settled expectations of patent

holders but also judicially eviscerated 35 U.S.C. § 112,

{14 by burdening dependent claiming with the

presumptive loss of the ability to rely on the doctrine of

equivalents. The Patent Act provides for and

encourages dependent claiming, and this Court has

recognized the practice’s salutary effects. The result

below, by arbitrarily penalizing that practice,

constitutes judicial legislation incompatible with long-

accepted patent policy.

3

The remand proceedings have confirmed these ill

effects. Specifically, a divded panel of the Federal

Circuit held on remand that MHoneywell’s

transformation of its dependent claim into independent

form was necessarily directly related to the Hamilton

Sundstrand equivalent, even though it is undisputed

that the equivalent was not in any of the prior art

before Honeywell or the Patent Office. App. 201a.

This analysis rendered the Festo presumption

irrebuttable under the “tangential relation” prong.

Accordingly, under the combined effect of the two

Federal Circuit decisions below, Honeywell is held to

have surrendered equivalents when it merely changed

the form of the claim from dependent to independent,

which did not, as a matter of settled law, in any way

alter its scope. This result is contrary to the

longstanding precedent of this Court, and it should not

be allowed to stand.

OPINIONS BELOW

The Federal Circuit’s en banc decision reversing the

jury’s verdict of infringement in favor of petitioners

and remanding for further consideration is reported at

370 F.3d 1131 (Fed. Cir. 2004) (en banc) and reprinted

at App. la-49a. The district court’s opinion denying

post-trial motions and upholding the _ jury’s

infringement verdict in favor of Honeywell is reported

at 166 F.Supp.2d 1008 (D. Del. 2001) and is reprinted

at App. 50a-121a. The district court’s opinion denying

respondent’s motion for summary judgment with

regard to infringement and validity is reported at 2001

WL 66348 (D. Del. Jan. 8, 2001) and is reprinted at

App. 122a-138a.

There are several opinions subsequent to the en banc

Federal Circuit’s remand of the case to the district

4

court for further findings. The district court’s opinion

on remand from the Federal Circuit’s 2004 judgment is

reported at 2006 WL 2346446 (D. Del. August 14,

2006) and is reprinted at App. 182a-203a. The decision

of the divided panel of the Federal Circuit affirming

the district court’s judgment on remand that

prosecution history estoppel applies in favor of

respondents is reported at 523 F.3d 1304 (Fed. Cir.

2008) and is reprinted- at App. 143a-181la. The

Federal Circuit’s order denying rehearing or rehearing

en banc is unreported and is reprinted at App. 204a-

205a.

JURISDICTION

The judgment of the United States Court of Appeals

for the Federal Circuit affirming the district court’s

decision on remand was entered on April 18, 2008.

Upon Honeywell’s timely petition, the Federal Circuit

denied rehearing and rehearing en banc on May 29,

2008. The jurisdiction of this Court is invoked

pursuant to 28 U.S.C. § 1254(1). The Federal Circuit

had jurisdiction over the appeal pursuant to 28 U.S.C.

§ 1295(a). The District Court had jurisdiction over the

original proceeding pursuant to 28 U.S.C. § 1338(a).

PERTINENT CONSTITUTIONAL AND

STATUTORY PROVISIONS

Article 1, section 8, clause 8 of the Constitution

provides: “Congress shall have the power ... to promote

the Progress of Science and useful Arts, by securing for

limited Times to Authors and Inventors the exclusive

Rig’:t *o their Respective Writings and Discoveries.”

35 U.S.C. § 27i(a) provides: “Except as otherwise

provided in this title, whoever without authority

makes, uses, offers to sell, or sells any patented

+)

invention, within the United States or imports into the

United States any patented invention during the term

of the patent therefore, infringes the patent.”

35 U.S.C. § 112, | 4 provides: “Subject to the following

paragraph, a claim in dependent form shall contain a

reference to a claim previously set forth and then

specify a further limitation of the subject matter

claimed. A claim in dependent form shall be construed

to incorporate by reference all the limitations of the

claim to which it refers.”

STATEMENT OF THE CASE

This case raises a question of broad and general

importance: should prosecution history estoppel apply

to a claim that was never rejected or narrowed during

prosecution. The answer to that question will

determine the effective scope of countless issued U.S.

patents and pending applications.

This Court set out the “modern contours” of the

doctrine of equivalents in Graver Tank & Mfg. Co. v.

Linde Air Products Co., 339 U.S. 605 (1950), providing

that a product or process that does not literally

infringe under the express terms of a patent claim may

nonetheless be found to infringe “if it performs

substantially the same function in substantially the

same way to obtain the same result,” id. at 608. In

doing so, this Court confirmed what at the time was

century-old precedent tracing its roots back to Winans

v. Denmead, 56 U.S. 330, 343 (1853). The Court

instructed that the purpose of the doctrine was to

prevent an infringer from practicing a “fraud on a

patent” by “stealing the benefit of the invention”

through unscrupulous copying. Graver Tank, 339 U.S.

at 608.

6

The related doctrine of prosecution history estoppel,

which is also firmly grounded in precedent dating back

to the nineteenth century, circumscribes the scope of

equivalent subject matter that can be captured by a

patentee through the doctrine of equivalents. The

purpose of the estoppel is to prevent an inventor from

recapturing claim scope during litigation that had been

expressly surrendered by a claim amendment (or

argument) during prosecution to obtain issuance of the

patent. Festo Corp. v. Shoketsu Kinzoku Kogyo

Kabushiki Co., Ltd., 535 U.S. 722, 734 (2902); Warner-

Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S.

17 (1997); L.7.S. Rubber Co. v. Essex Rubber Co., 272

U.S. 429, 444 (1926); Shepard v. Carrigan, 116 U.S.

593 (1886).

Indeed, in both Warner-Jenkinson and Festo, this

Court unanimously reversed decisions by a divided en

banc Federal Circuit that would have otherwise

improperly restricted access to the doctrine of

equivalents. In both cases, this Court held that

prosecution history estoppel may be invoked only

where a claim has been amended and narrowed in

scope for purposes related to patentability. The Court

explained that such acts give rise to a presumption of

prosecution history estoppel, but that the presumption

can be rebutted “where the equivalent was

unforeseeable at the time of the application or the

rationale underlying the amendment bears but a

tangential relation to the equivalent.” Festo, 535 U.S.

at 725. Warner-Jenkinson and Festo reflected a

practical judgment—grounded in more than 150 years

of this Court’s precedents—that prosecution history

estoppel does not restrict access to the doctrine of

equivalents in the absence of a narrowing amendment

7

that surrenders subject matter claimed by the

invention. Warner-Jenkinson, 520 U.S. at 31-32.

For its part, 35 U.S.C. § 112, 4 4, provides that a

claim may be written in independent or dependent

form. Under the statute, a claim written in dependent

form incorporates all of the limitations of the

independent claim on which it depends. See id. Thus,

under Section 112, there is no difference between the

scope of a dependent claim and the scope of that claim

if written in independent form, as each incorporates

the identical limitations

The decision below upset the balance between the

doctrine of equivalents and prosecution history

estoppel and, in the process, judicially eviscerated

Section 112, § 4. In holding that the transformation of

a dependent claim into independent form without any

change in the original claim language is a narrowing

amendment that gives rise to a presumptive surrender

of equivalents, the divided en banc Federal Circuit

ignored both the statutory language and this Court’s

precedents. As Judge Newman, dissenting from the en

banc decision, succinctly summarized it, the decision

below “change[d] the law in two new ways. The first

way is directly contrary to statute [35 U.S.C. § 112,

{1 4]. The second is simply another restriction on

equivalency, far exceeding the holdings of the Supreme

Court in Festo and Warner-Jenkinson.” App. 32a

(Newman, J., dissenting).

Just as in Festo and Warner-Jenkinson, the Court

should grant certiorari to protect the doctrine of

equivalents from the divided en banc decision of the

Federal Circuit that has improperly limited its scope.

The issue is ripe for review by this Court, and this case

provides an excellent vehicle to do so.

8

A. The Honeywell Technology

Petitioner Honeywell owns the U.S. Patents at issue

here, Nos. 4,428,194 and 4,380,893, which relate to air

control units or auxiliary power units (APUs) that are

typically located in the tail section of commercial

aircraft. App. 3a-4a. These units are used to supply

compressed air and electrical power to the aircraft

before the main engines are started, such as when the

aircraft is parked at the gate. /d. Honeywell has been

the leading pioneer in APU technology since it

manufactured the very first APU over fifty years ago.

Honeywell’s ‘194 and ‘893 patents claim several

novel methods and apparatuses for efficiently

controlling airflow in an APU. To achieve efficient and

safe operation, the Honeywell patents monitor a flow-

related parameter that measures the air flow out of the

compressor. App. 4a-5a. The patented systems also

monitor the position of the “inlet guide vanes” (IGVs),

which are regulators that open and close like Venetian

blinds over the air inlet of the load compressor in order

to control the amount of air that is drawn through the

compressor. Id.

Honeywell asserted six patent claims at trial:

independent claim 4 of the ‘194 patent, and

independent claims 8 and 19 and dependent claims 10,

11 and 23 of the ‘893 patent. App. 13a-14a. The jury

found that Hamilton Sundstrand had infringed each of

the asserted claims under the doctrine of equivalents.

Id.

Independent claim 4 of the ‘194 patent was original

application claim 51, a dependent claim. App. 10a-11la.

In his initial substantive action on claim 51, the

Examiner objected to the claim solely on the basis that

he simultaneously rejected the independent claim from

9

which claim 51 depended; the Examiner indicated that

claim 51 would be “allowed if rewritten in independent

form.” App. lla. Accordingly, Honeywell rewrote

claim 51 in independent form, thereby incorporating

expressly the limitations from the original independent

claim that had previously been incorporated by

reference pursuant to Section 112, | 4. Honeywell

made no other change to the claim, and it issued as

claim 4 of the ‘194 patent. App. 10a-lla.

Independent claims 8 and 19 of the ‘893 patent were

originally dependent claims 17 and 35 and were

similarly objected to by the Examiner because the

claims on which they depended were rejected. Id.

Accordingly, as it did with original claim 51, Honeywell

rewrote original claims 17 and 35 into independent

form, and they eventually issued as claims 8 and 19 of

the ‘893 patent. Jd.

The limitation of claims 4, 8 and 19 that was the

focus of the doctrine of equivalents dispute at trial was

the control system's use of IGVs. Importantly, the IGV

limitation was never narrowed or amended for any

reason at all: it appeared identically in original claims

51, 17 and 35 and issued claims 4, § and 19. App. 5a-

7a, 10a-1la. Further, other than the change in form of

rewriting the originally dependent claims as

independent claims, Honeywell made no change to the

asserted independent claims during prosecution. And

because the form (independent or dependent) of a claim

under Section 112, {| 4 does not affect its scope, the

scope of the asserted claims was never expanded or

narrowed during prosecution.

The patented inventions were incorporated into

many of Honeywell’s APU models in the early 1980s

and were a huge commercial success. These APUs

10

continue to be used on Boeing 737 and 757 aircraft as

well as the Airbus A320, 330 and 340 models.

_ B. The Original District Court Proceedings

Honeywell filed its complaint alleging infringement

of the ‘194 and ‘893 patents in the U.S. District Court

for the District of Delaware in May 1999. App. 10a.

The parties filed numerous summary judgment

motions in late 2000. As relevant here, Sundstrand

filed a motion seeking to apply prosecution history

estoppel to Honeywell's claim for infringement under

the doctrine of equivalents on the ground that claims 8

and 19 of the ‘893 patent and claim 4 of the ‘194 patent

had been narrowed by amendment during prosecution.

App. 129a-138a. On January 8, 2001, the district court

(Sleet, J.) rejected Sundstrand’s argument for

prosecution history estoppel, holding that “Honeywell

did not give up an embodiment of the invention with

the inlet guide vane,” and that “the elements at issue

were not surrendered” during prosecution. App. 137a.

Trial commenced on February 5, 2001 in front of an

eight-person jury and concluded on February 16, 2001.

App. 5la. In its verdict, the jury found that

Sundstrand willfully infringed all six asserted claims

of the ‘194 and ‘893 patents under the doctrine of

equivalents. App. 5la-52a. The jury awarded $45

million in lost profit damages, plus reasonable royalty

damages of $1,578,065, for a total damages award to

Honeywell of $46,578,065. Jd.

C. The En Banc Federal Circuit Proceedings

Both parties appealed to the Federal Circuit, and

oral argument was held before a three-judge panel on

August 7, 2002. App. 139a. Before any panel opinion

1]

issued, on February 5, 2004, the Court of Appeals sua

sponte ordered en banc review of the appeal. /d.

On June 2, 2004, the en banc Federal Circuit

reversed the judgment in Honeywell’s favor, over a

vigorous dissent filed by Judge Newman. The majority

held that Honeywell’s rewriting of claims 8 and 19 of

the ‘893 patent (original claims 17 and 35) and claim 4

of the ‘194 patent (original claim 51) irom dependent to

independent form during prosecution, combined with

the cancellation of the antecedent independent claims,

constituted a narrowing amendment that resulted in

the presumptive surrender of all equivalents to the

IGV limitation. App. la-3la. Accordingly, the court

remanded the case to the district court to consider

whether Honeywell could rebut that presumption

under the criteria laid out in Festo Corp. v. Shoketsu

Kinzoku Kogyu Kabushiki Co. (“Festo IT’), 344 F.3d

1359, 1368 (Fed. Cir. 2003) (en banc) (citing Festo

Corp. v. Shoketsu Kinzoku Kogyu Kabushiki Co., 535

U.S. 722, 741 (2002)). App. 30a-31a.

Judge Newman, in dissent, explained that the en

banc majority opinion both was “directly contrary to

statute” and “far exceed[ed] the holdings of the

Supreme Court in Festo and Warner-Jenkinson.” App.

32a.

First, Judge Newman challenged the majority’s

holding that the rewriting of a dependent claim into

independent form constitutes a narrowing amendment.

As she explained, this ruling is contrary to statute,

since “35 U.S.C. § 112 4 4 assured that claim scope is

unrelated to whether the claim is in independent or

dependent form.” App. 34a. In addition, Judge

Newman pointed out that “[t]his new rule will simply

drive patent applicants away from dependent claims

12

and away from the accepted protocol of presenting

successively narrowed dependent’ claims for

examination. This new rule will simply raise the cost

and increase the difficulty of patent examination.”

App. 30a-31la.

Judge Newman also focused on the devastating

effects of the majority’s holding on patent owners and

inventors. “By adding presumptive estoppels to

elements and limitations that were never a basis of

rejection and never narrowed during examination, the

court further erodes the ability of inventors to protect

their inventions.” App. 32a-33a. “The majority opinion

changes the basic premise of presentation of claims of

varying scope and divergent content, in holding that by

dropping a broader claim, the claims subordinate to

that claim became subject to presumptive estoppel,

whether or not the subject matter at issue was

included in the broader claim. That is far removed

from the Court’s holding in Festo.” App. 39a.

Judge Newman further explained that the new rule

announced by the en banc majority produced, in stark

contrast to the Festo principle, “unbounded estoppel.”

App. 48a. That is, the en banc majority’s decision

created “estoppel against the entire universe of

technology ... when an element was not originally

claimed at all.” App. 34a. Here, the IGV limitation was

not in the cancelled, independent claim.

Finally, Judge Newman echoed this Court’s concern

in Festo that the decision would disrupt the “settled”

and “legitimate expectations of inventors in their

property.” See Festo, 535 U.S. at 739. Judge Newman

explained that the real “losers are those patentees who

had no reason to foresee today’s new rule, and future

patentees who will have to cope with it.” App. 49a.

13

Honeywell sought certiorari from the Federal

Circuit’s interlocutory decision. See Petition for

Certiorari, Honeywell Intl Inc. v. Hamilton

Sundstrand Corp., No. 04-293 (August 31, 2004). The

Court called for the views of the Solicitor General (see

Honeywell Intl Inc. v. Hamilton Sundstrand Corp., 543

U.S. 954 (2004)), who opposed the grant of cert. on the

petition as it then stood and stated that Honeywell was

entitled to a “meaningful opportunity [on remand] to

rebut the presumption against its invocation of the

doctrine of equivalents.” Br. for the U.S. as Amicus

Curiae, Honeywell Intl Inc. v. Hamilton Sundstrand

Corp., No. 04-293, at 20 (May 19, 2005). The Court

thereafter denied the petition without comment.

Honeywell Intl Inc. v. Hamilton Sundstrand Corp., 545

U.S. 1127 (2005).

D. The Remand Proceedings

The remand proceedings in this case confirmed the

pernicious effects of the en banc decision. Specifically,

a divided panel of the Federal Circuit held on remand

that in the case of a transformation of a dependent

claim into independent form, the amendment was

necessarily more than tangentially related to the

equivalent. App. 164a-166a Judge Newman again

dissented, and observed that the decision “renders the

presumption of estoppel irrebuttable, whatever the

reason for the amendment.” App. 179a.!

The panel decision on remand thus confirms the far-

ranging effects of the en banc decision below. Any time

‘ Under this Court’s Festo decision, the presumption of surrender

of equivalents may also be rebutted if the equivalent was

unforeseeable or if there is “some other reason” suggesting the

appropriateness of rebuttal. Festo, 535 U.S. at 740-41. Neither

was determined to be applicable here.

14

that an applicant rewrites a dependent claim in

independent form during prosecution, the applicant is

estopped from later claiming equivalents to that claim.

This is not, and should not be, the law, and it merits

the Court’s review.

REASONS FOR GRANTING THE WRIT

The Federal Circuit’s decision overturning the jury’s

finding of infringement on the basis of prosecution

history estoppel should be reversed. The decision

below judicially eviscerates 35 U.S.C. § 112, 4 4 of the

Patent Act and conflicts with longstanding precedent of

this Court. This Court’s caselaw establishes that

amendment-based prosecution history estoppel applies

only where a patent claim is narrowed by amendment

through the introduction of an additional or limiting

term. Here, by contrast, Honeywell’s patent claim was

never rejected and was merely transformed from

dependent to independent form. By statutory

definition, this formal amendment did not affect the

scope of the claim. Thus, the Federal Circuit’s divided

en banc decision applying prosecution history estoppel

in these circumstances is contrary to statute and to

this Court’s dictates.

The Federal Circuit’s new law jeopardizes both

longstanding patent practice and an overwhelming

number of existing patents in substantial ways. First,

the decision greatly disincentivizes the use of

dependent claims in patent prosecution. Dependent

claiming simplifies the patent prosecution process and

the evaluation of issued patents by the public by

clarifying the relationship among a patent’s various

claims. Dependent claiming is therefore encouraged as

a matter of public policy by lower application fees.

Under the decision below, however, the equal status

-_

15

between dependent and independent claims provided

by Section 112, 4 4 has been nullified. Applicants will

now be penalized for using dependent claims, because

the rejection of any broader independent claim will

mean the forfeiture of equivalents as to all narrower

dependent claims, which would not occur if all the

claims were originally presented in independent form.

Because the scope of a claim in dependent form is, by

statute, identical to the scope of the same claim if

written in independent form, treating the two claims

differently for estoppel purposes is bad law and bad

policy.

Furthermore, by changing settled statutory law, not

only does the Federal Circuit usurp the power granted

exclusively to Congress, but the decision below also

disrupts the settled expectations of patent owners, who

prosecuted and obtained patents in an era where

dependent claims were encouraged, not burdened by a

surprising and counter-intuitive, form-over-substance

penalty.

Finally, this case presents an excellent vehicle for

resolving these important issues. The case stands at

final judgment. The factual history is straightforward

and undisputed: the independent claims that the jury

found infringed issued from what were originally filed

dependent claims that were merely rewritten into

independent form during prosecution. App. 10a-14a.

Still further, the claims were not rejected for reasons

related to patentability. Moreover, neither the

relevant limitation nor the equivalent was mentioned

during prosecution. App. 167a. And it is undisputed

that the equivalent was not disclosed in the prior art

before the Patent Office. Jd. This petition therefore

presents, in pure form, the question whether this

16

Court will allow the Federal Circuit to apply

prosecution history estoppel to claims that were never

narrowed during prosecution, thereby vastly expanding

such estoppel and correspondingly contracting the

doctrine of equivalents.

I. The Decision Below Is Contrary To Statute,

To This Court’s Precedent, And To Good

Patent Policy

A. The Decision Below Is Contrary To 35

U.S.C. § 112, Paragraph 4

Under this Court’s decision in Festo, the threshold

question in the prosecution history estoppel analysis is

whether a patentee has “narrow[ed] a claim as a

condition for obtaining a patent.” 535 U.S. at 737; see

also id. at 733 (doctrine applies where “the patentee

originally claimed the subject matter alleged to

infringe but then narrowed the claim in response to a

rejection”). If this inquiry is answered in the negative,

and there is no “narrowing amendment,” the inquiry

ends and prosecution history estoppel does not apply.

Id. at 737. Because the asserted independent claims

here had never been narrowed, but rather only were

rewritten from dependent to independent form, there

should have been no estoppel.

As Judge Newman pointed out in her dissent from

the en banc decision, the Federal Circuit’s holding that

a narrowing amendment occurred in this case is

“directly contrary” to 35 U.S.C. § 112, 49 4. App. 32a.

That statute provides that “[a] claim in dependent form

shall be construed to incorporate by reference all

limitations of the claim to which it refers.” 35 U.S.C.

§ 112. Accordingly, when Honeywell rewrote formerly

dependent claims in independent form, it merely

included explicitly in the claims limitations that were

17

already incorporated by reference under Section 112.

This action did not change the scope of the claims in

any way and should not be deemed a narrowing

amendment. By statute, the newly independent claims

claimed exactly the same subject matter as the original

dependent claims did, and they had not been narrowed

at all. Thus, neither the IGV, nor any other limitation

of the disputed claims, was added when the claims

were rewritten from dependent form into independent

form at the Examiner’s request.

The plain meaning of 35 U.S.C. § 112, | 4 has been

reaffirmed in numerous court decisions, which have

previously held, without controversy, that simply

rewriting a dependent claim in independent form is not

a substantive modification that changes the scope of

the claim. Thus, in Jnsta-Foam Products, Inc. v.

Universal Foam Systems, Inc., 906 F.2d 698, 703 (Fed.

Cir. 1990), the Federal Circuit declined to apply

prosecution history estoppel to a claim that was

rewritten in independent form after the patent

examiner rejected the antecedent independent claim.

Similarly, in Bloom Eng’g Co., Inc. v. North Am. Mfg.

Co., Inc., 129 F.8d 1247, 1250 (Fed. Cir. 1997), the

Federal Circuit overturned a district court’s holding

that the rewriting of a dependent claim to independent

form, with no other changes, was a substantive change.

And the Federal Circuit reached the same conclusion

in Vermeer Mfg. Co. v. The Charles Machine Works,

Inc., 251 F.3d 168 (Fed. Cir. 2000) (“[P]Jrosecution

history estoppel does not bar this claim interpretation

because issued Claim 1 was never rejected and was

only rewritten in independent form and amended to

correct an antecedent basis problem.”) (citing Warner-

Jenkinson, 520 U.S. at 32-33); see also Bose Corp. v.

JBL, Inc., 274 F.3d 1354 (Fed. Cir. 2001) (rewriting of

18

dependent claim in independent form as required by

patent examiner did not constitute a narrowing

amendment under Festo).

The decision below essentially eviscerates 35 U.S.C,

§ 112, 4 4 and is contrary to the long understood, and

statutorily mandated, precept that identical patent

claims share the same scope, regardless of whether

they are in dependent or independent form.

B. The Decision Below Is Contrary To This

Court’s Longstanding Jurisprudence

The decisien below is in square conflict with this

Court’s body of precedent on the doctrine of

equivalents and prosecution history estoppel. This

Court has applied prosecution history estoppel, also

called “file wrapper estoppel” or simply estoppel, to

limit the doctrine of equivalents in numerous cases

dating to the nineteenth century. But nowhere in this

over one- hundred-year-old body of law has this Court

held that prosecution history estoppel foreclosed access

to the doctrine of equivalents with respect to a claim

that was never rejected or amended, and that issued

with the same scope as it was filed. To the contrary,

this Court has consistently limited estoppel to

situations where the applicant added limitations to

narrow the claim during prosecution. The Court’s

precedents are in direct conflict with the decision

below.

In LT7.S. Rubber, the Court confirmed that

prosecution history estoppel focuses on entirely new

elements to a patent application where the applicant

“is compelled by the Patent Office to narrow his claim

by the introduction of a new element.” 272 U.S. at 443.

The Court explained that the sine qua non giving rise

to the estoppel are “limitations imposed by the

19

inventor, especially such as were introduced into an

application after it had been persistently rejected.” Id.

at 444 (emphasis added). That decision highlights the

error in the Federal Circuit’s decision below—the en

banc court applied estoppel to a claim that was present

in the original application rather than introduced into

the application during prosecution or amended after a

rejection by the Patent Office Examiner.

Similarly, in Exhibit Supply Co. v. Ace Patents Corp.,

315 U.S. 126 (1942), the Court distinguished the

present situation, where an original claim is 1n dispute,

from the “very different issue,” deserving of estoppel,

that arises when the patentee responds to a rejection

through amendment that adds new elements to a

claim. The Court explained that “the patentee would

have been entitled to equivalents embracing the

accused devices had he originally claimed” the element

that was later added by amendment. Jd (emphasis

added). Still further, the Court recognized that

prosecution history estoppel circumscribes the doctrine

of equivalents only in so far as the patentee attempts

“to recapture claims which the patentee has

surrendered by amendment.” Jd. The Court’s holding

thus rejects the result of the decision below in which

the patentee loses equivalents to an element of a

surviving and distinct original claim that was never

narrowed during prosecution.

This Court reaffirmed these principles in Warner-

Jenkinson: “Chief Justice Stone distinguished

inclusion of a limiting phrase in an original patent

claim from the ‘very different’ situation in which ‘the

applicant, in order to meet objections in the Patent

Office, based on references to the prior art, adopted the

phrase as a substitute for the broader one’ previously

20

used.” 520 U.S. at 31 (quoting Exhibit Supply). As the

Court explained, prosecution history estoppel does not

apply where “an amendment required during

prosecution had a purpose unrelated to patentability,”

and the proper focus is on the “new element” that is

added by amendment. /d. at 33, 40.

In Festo, this Court again reaffirmed these bedrock

principles, explaining that “our ‘prior cases have

consistently applied prosecution history estoppel only

where claims have been amended” for a “substantial

reason related to patentability.” 535 U.S. at 735.

Indeed, the Festo Court distinguished changes that

“concern the form of the application and not the subject

matter of the invention,” such as an amendment “to

rewrite a dependent claim as an independent one.” /d.

at 736. The Court explained that “[i]f a §112

amendment is truly cosmetic, then it would not narrow

the patent’s scope or raise an estoppel.” Id. at 736-37.

The .en banc decision below unambiguously

contravenes these rulings: the rewriting of a

ependent claim into independent form is the epitome

of a cosmetic change that does not alter the claim’s

scope, and yet the Federal Circuit foreclosed access to

the doctrine of equivalents through application of

prosecution estoppel in just this situation. And that

conflict has not gone unnoticed. Commentators have

characterized the en banc decision below as in

“apparent disregard for the spirit of controlling

Supreme Court law and [relying on] various out-of-

context quotations from the controlling cases.” Werner

H. Stemer, Honeyweil Intl v. Hamilton Sundstrand

Corp.: The Federal Circuit Goes To The Extreme In Its

Latest Attack On The Doctrine Of Equivalents, 87

Journal of the Patent & Trademark Office Society 71,

21

76 (2005); see also Catriona M. Collins, Post-‘Festo’

Cases Raise More Issues, 26 National Law Journal 82

(May 9, 2005) (noting that the en banc decision below

is logically problematic and inconsistent with this

Court’s Festo decision).

Not only do the decisions below apply estoppel in a

circumstance contrary to this Court’s prior rulings, but

the extent of estoppel produced by those decisions far

exceeds anything that this Court has previously

approved. According to the en banc majority, “the

surrendered subject matter is defined by the

cancellation of independent claims that do not include

a particular limitation and the rewriting into

independent form of dependent claims that do include

that limitation. Equivalents are presumptively not

available with respect to that added limitation.” App.

171a-172a. But as Judge Newman recognized, this

new form of estoppel created by the majority is “an

unbounded estoppel, for there is no measure of the

yielded territory.” App. 48a. Under this Court’s

precedents, the effect of prosecution his’ sry estoppel is

ordinarily restricted to the territory between a rejected

claim and the amended version of that same claim.

Here, however, the Federal Circuit defined estoppel by

comparing the rejected independent claim that did not

contain the IGV limitation to a different dependent

claim that did. App. 10a-14a, 33a. This gave rise to an

estoppel “against the entire universe of technology.”

App. 34a (Newman, J., dissenting).

This unbounded estoppel illustrates the error in the

en banc decision below. In both Warner-Jenkinson and

Festo, the limitations that gave rise to prosecution

history estoppel did not appear in the original patent

applications; they were added during prosecution to

22

overcome prior art. See Warner-Jenkinson, 520 U.S. at

22; Festo, 535 U.S. at 728. Here, the limitation to

which the Federal Circuit applied the estoppel was not

added, amended, or objected to during prosecution, but

rather appeared in the original application exactly as it

later issued. App. 35a-36a.

Significantly, the Federal Circuit has applied the

rule that it promulgated in its en banc decision below

in a number of subsequent cases. See, e.g., O2 Micro

Intern. Ltd. v. Beyond Innovation Technology Co., Ltd.,

521 F.3d 1351, 13864 (Fed.Cir. 2008); Cross Medical

Products, Inc. v. Medtronic Sofamor Danek, Inc., 480

F.3d 1335, 1341 (Fed.Cir. 2007); Biagro Western Sales,

Inc. v. Grow More, Inc., 423 F.3d 1296, 1305 (Fed.Cir.

2005). Thus, the erroneous ruling below stands today

as the clear law of that court, and it will remain so

absent corrective action by this Court.

C. The Decision Below Will Complicate

Patent Prosecution And Disrupt Settled

Expectations.

The decision below, if allowed to stand, will have a

number of undesirable consequences for patent

prosecution. In the first place, as Judge Newman

predicted in her dissent from the en banc ruling, “this

new rule will simply drive patent applicants away from

dependent claims and away from the accepted protocol

of presenting successively narrowed dependent claims

for examination.” App. 32a (Newman, J., dissenting).

Fearing that a broader, independent claim might be

rejected, and that they would be required to rewrite a

formerly dependent claim in independent form and

face the same irrebuttable, unbounded estoppel as

Honeywell, cautious patent applicants will be forced to

23

rely on multiple independent claims with minor

differences.

As Judge Newman observed, “[t]his new rule will

simply raise the cost and increase the difficulty of

patent examination.” App. 32a. A claim in dependent

form readily isolates the differences between it and the

broader claim on which it depends, making the scope of

and relationship among the claims much more

apparent to both the examiner and the public. By

contrast, successive independent claims are much

harder to evaluate. By greatly discouraging the use of

dependent claims, the decision below will make the

patent application process longer, more difficult, and

more expensive.

In fact, a study cited by both houses of Congress in

their reports on 35 U.S.C. § 112 found that even in the

case of simple patents, “the time saved in analyzing

the difference between claims is approximately 2 to 1

in favor of the dependent form of claim.” S. REP. No.

89-301, at 2321 (1965); see also H.R. REP. No. 89-113,

at 16 (1965). Issued patents will also be wordier, more

complicated, and more difficult to understand.

According to Congressional debate, dependent claims

help make interpretation and understanding of patent

applications easier for judges and members of the bar,

as well as for patent examiners. 111 CONG. REC.

H5,267 (daily ed. Mar. 17, 1965) (statement of Rep.

Poff). All of these are reasons why “[t]he use of

dependent claims is encouraged by the patent

examining authority as an aid to examination. Their

value during examination,” Judge Newman pointed

out, “is reflected in the significantly lower fees charged

for examination of dependent claims.” App. 37a. See

37 C.F.R. § 1.16.

24

As noted above, dependent claims also serve to

highlight for the public, including competitors trying to

avoid infringement, the sometimes subtle distinctions

between multiple claims in a patent. Faced with

patents utilizing only independent claims instead, the

public will be forced to wade through lengthy, multiple

claims to discern the small differences, thus

undermining the primary notice function of the patent

laws and significantly hindering the public’s efforts to

comply with owners’ patents rights.

Patent practitioners have recognized that the

decision below discourages the practice of dependent

claiming. When discussing the potential impact of the

en banc decision below on patent practice, one

practitioner concluded that the “court holding appears

to be contrary to [35 U.S.C.] section 112, paragraph 4.”

Robert C. Faber, Claim Forms And Formats In

General, 2 Landis on Mechanics of Patent Claim

Drafting 9 (2006). Another commentator characterized

the en banc decision as contrary to the “well-

established law and practice” of rewriting a dependent

claim into independent form. Eugene R. Quinn, A

Slow Death? Killing the Doctrine of Equivalents, 164

Pat. World 50, 50 (2004).

Moreover, the decision below disrupts the settled

expectations of patent holders. This Court instructed

in Warner-Jenkinson, and again in Festo, that “courts

must be cautious before adopting changes that disrupt

the settled expectations of the inventing community.”

Festo, 535 U.S. at 739 (citing Warner-Jenkinson, 520

U.S. at 28). The Court warned that “[f]Jundamental

alterations in [the doctrine of equivalents and

prosecution history estoppel] risk destroying the

legitimate expectations of inventors in their property.

25

... ‘To change so substantially the rules of the game

now could well subvert the various balances the PTO

sought to strike when issuing the numerous patents

which have not yet expired and which would be

affected by our decision.” Festo, 535 U.S. at 739

(citation omitted). Just as it did when initially

deciding Festo, the Federal Circuit has ignored the

Court’s solicitude for settled expectations in deciding

this case. This Court’s admonition in Festo applies

with equal force here:

As Warner-Jenkinson recognized, patent

prosecution occurs in light of our case law.

Inventors who amended their claims under

the previous regime had no reason to believe

that they were conceding all equivalents. If

they had known, they might have appealed

the rejection instead. There is no

justification for applying a new and more

robust estoppel to those who relied on prior

doctrine.

535 U.S. at 739. Patent owners who agreed to rewrite

dependent claims in independent form prior to the

decisions below likewise had no reason to believe that

they were conceding all equivalents to all limitations

not also contained in another claim. If they had, they

would surely have appealed the rejection during the

prosecution process. The Federal Circuit has put

forward no rationale or justification for suddenly

imposing this “new and more robust estoppel” on the

large number of patent owners who prosecuted their

patents under the prior regime.

Furthermore, allowing Honeywell the benefit of the

doctrine of equivalents to establish Sundstrand’s

infringement of its patent claims, including the IGV

26

limitation, is consistent with the original purpose

behind the doctrine. The doctrine of equivalents is

primarily concerned with copyists “who make

unimportant and _ insubstantial changes and

substitutions in the patent which, though adding

nothing, [absent the doctrine of equivalents] would be

enough to take the copied matter outside the claim,

and hence outside the reach of the law.” Graver Tank,

339 U.S. at 607. This Court reiterated the value of the

doctrine of equivalents to protect legitimate inventors

against copyists over fifty years later in Festo:

“(Without the doctrine of equivalents,] unimportant

and insubstantial substitutes for certain elements

could defeat the patent, and its value to inventors

could be destroyed by simple acts of copying.” Festo,

535 U.S. at 731. Both the jury and the district court

found that Hamilton Sundstrand had engaged in just

such copying after a ten-day trial in this matter. The

jury found willful infringement of all six asserted

claims, and the district court noted the evidence that

Sundstrand engineers had knowledge of Honeywell’s

patented surge control system during development of

the infringing APUs. App. 112a. Despite this evidence

of copying of two valid patents, the Federal Circuit has

held that the doctrine of equivalents is not available to

Honeywell for a claim limitation that was never

amended, added or rejected, but instead issued exactly

as written in the original patent application. This

irrational and unjust result should be overturned, and

the doctrine of equivalents should be returned to the

strength mandated by the decisions of this Court.

27

CONCLUSION

For the foregoing reasons, the petition for a Writ of

Certiorari should be granted.

Respectfully submitted,

JONATHAN F. PUTNAM

COUNSEL OF RECORD

LEE ANN STEVENSON

KEVIN N. MALEK

KIRKLAND & ELLIS LLP

153 East 53rd St.

New York, NY 10022

(212) 446-4800

Of Counsel:

CHRISTOPHER LANDAU, P.C.

KIRKLAND & ELLIS LLP

655 Fifteenth Street, N.W.

Washington, DC 20005

ROBERT G. KRUPKA, P.C.

KIRKLAND & ELLIS LLP

777 South Figueroa St.

Los Angeles, CA 90017

Attorneys for Petitioners

August 25, 2008