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Honeywell Int'l , Inc. v. Hamilton Sundstrand Corp.

United States Court of Appeals for the Federal Circuit

June 2, 2004, Decided



 [***1066]   [*1133]  DYK, Circuit Judge.

Honeywell International Inc. and Honeywell Intellectual Properties, Inc. (collectively "Honeywell"), the assignees of the patents in suit, brought suit against Hamilton Sundstrand Corporation ("Sundstrand") for infringement of claims 8, 10, 11, 19 and 23 of United States Patent No. 4,380,893 (the "'893 patent") and claim 4 of Patent No. 4,428,194 (the "'194 patent"). All of the asserted independent claims were originally dependent claims that were rewritten into their present independent form during prosecution. The broader original independent claims were cancelled.

The jury found that the patents in suit were valid and, although not literally infringed, infringed under the doctrine of equivalents. The district court entered judgment against Sundstrand. Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 166 F. Supp. 2d 1008 (D. Del. 2001). [*1134]  

Following our recent decisions in Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314 (Fed. Cir. 2003), and Ranbaxy Pharmaceuticals, Inc. v. Apotex, Inc., 350 F.3d 1235 (Fed. Cir. 2003), we hold that [**3]  the rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel. Accordingly we vacate the judgment of infringement and remand for determination of whether Honeywell can rebut the presumption of surrender under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 152 L. Ed. 2d 944, 122 S. Ct. 1831 (2002), remanded to 344 F.3d 1359 (Fed. Cir. 2003) (en banc). We affirm the district court's judgment rejecting Sundstrand's counterclaims of invalidity.


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370 F.3d 1131 *; 2004 U.S. App. LEXIS 10754 **; 71 U.S.P.Q.2D (BNA) 1065 ***

HONEYWELL INTERNATIONAL INC. (formerly known as AlliedSignal Inc.) and HONEYWELL INTELLECTUAL PROPERTIES, INC. (formerly known as AlliedSignal Technologies, Inc.), Plaintiffs-Appellants, v. HAMILTON SUNDSTRAND CORPORATION (formerly known as Sundstrand Corp.), Defendant-Cross Appellant.

Subsequent History: Later proceeding at Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 543 U.S. 954, 125 S. Ct. 458, 160 L. Ed. 2d 315, 2004 U.S. LEXIS 7107 (2004)

US Supreme Court certiorari denied by Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 545 U.S. 1127, 125 S. Ct. 2928, 162 L. Ed. 2d 865, 2005 U.S. LEXIS 4864 (U.S., 2005)

Prior History:  [**1]  Appealed from: United States District Court for the District of Delaware. Judge Gregory M. Sleet.

Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp., 166 F. Supp. 2d 1008, 2001 U.S. Dist. LEXIS 15991 (D. Del., 2001)

Disposition: Affirmed in part, vacated in part, and remanded.


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Civil Procedure, Trials, Judgment as Matter of Law, General Overview, Appeals, Standards of Review, Substantial Evidence, Sufficiency of Evidence, Abuse of Discretion, Judgments, Relief From Judgments, Motions for New Trials, Patent Law, Infringement Actions, Prosecution History Estoppel, Fact & Law Issues, Doctrine of Equivalents, Jurisdiction & Review, Claims, Claim Language, Elements & Limitations, Claim Interpretation, Scope of Claim, US Patent & Trademark Office Proceedings, Dependent Claims, Specifications, Description Requirement, Reissue Proceedings, Preclusion, Evidence, Inferences & Presumptions, Presumptions, Rebuttal of Presumptions, Jury Trials, Province of Court & Jury, Anticipation & Novelty, Filing Requirements, Drawings, Enablement Requirement, Standards & Tests, Invention Date & Priority, Reduction to Practice, Statutory Bars, On Sale Bar