*1 INTERNATIONAL, HONEYWELL
INC., Intellectual
Properties, Inc., Plaintiffs-Appellants,
v. STATES, Defendant-Appellee,
UNITED Corporation,
Lockheed Martin
Defendant-Appellee, Corporation,
L-3 Communications
Defendant-Appellee.
No. 2008-5181. Appeals,
United States
Federal Circuit.
May
Rehearing and En Banc Rehearing
Denied June *2 Gotts, Paul,
Lawrence Ja- Hastings, J. LLP, of nofsky Washington, & Walker DC, argued plaintiffs-appellants. for With him Roe- on the brief was Elizabeth Miller sel. Of counsel on the brief was Richard Taranto, Taranto, Washing- Farr & G. ton, DC.
Christopher Crumbley, Attorney, L. Branch, Litigation Commercial Civil Divi- sion, Justice, Department United States DC, Washington, argued defendant- him on the appellee United States. With Hertz, brief Michael F. Acting were Assis- the first sale precludes Honeywell doctrine General, Attorney tant J. Di- Fargo, John from recovering damages for one particu- rector, Jefferson, and Trevor Attorney. M. infringing system. lar For the reasons set *3 below, forth we reverse and remand for Madden, LLP, J. Thomas Venable the trial court to government’s resolve the DC, Washington, for defendant-appellee defense related to pre-issuance damages Corporation. Lockheed Martin under the Invention Secrecy Act and to Harbin, John King LLP, W. Spalding & determine damages. Atlanta, GA, argued for defendant-ap- pellee L-3 Corporation. Communications BackgRound With him on the brief were Charles A. Pannell, III and Richard W. Miller. Of patent-in-suit is U.S. Patent No. Horne, counsel on the brief was H. John (the 6,467,914 B1 patent), '914 and it re- Yoss, LLC, Atlanta, &
Adorno GA. passive lates to night goggles vision (NVGs) that are compatible with a full MAYER, PROST, MOORE, Before color display when both are used an Judges. Circuit aircraft cockpit. '914 patent See col.l 11.19-21,col.2 11.1-5. operate by NVGs am- Opinion dissenting-in-part by filed plifying available light, specifically light Judge Circuit MAYER. having a relatively long wavelength (e.g., MOORE, Judge. Circuit red and light). infrared See id. col.l 11.36- Honeywell International, Inc. Thus displays that emit this Properties, Intellectual light, specifically warning lights, red can (collectively, Honeywell) from fi- appeal overwhelm NVG sensor elements and lead judgment nal of the U.S. of Federal disruption Court to of vision through the NVGs. Claims. The Court of Federal Claims held Still, Id. col.l 11.38-41. important “[i]t infringed independent that the display indicators remain illumi- claim 2 of the patent-in-suit nated, but that this not only for the benefit of the crew- claim is invalid. The Federal men who wearing [NVGs], are not but also Claims also held that Honeywell lacks because using those the goggles will typi- standing on its claim for just compensation cally view the by instruments looking un- under the Invention Secrecy Act and that der goggles.” Id. col.l 11.42^6.
Prior art solutions involved eliminating eliminate light very “must be effi- dimming red and light infrared and/or cient because small amounts of within from cockpit displays. But filtration used the active frequency range of the [NVGs] L-85762) the use of prohibited Id. 11.51— col.l the [NVGs].”
will overwhelm cockpits. NVG-compatible addition, he filtration selective “[t] generally wavelength according 10, 1985, Corporation Allied On October 06/786,269 ... No. Application full color Patent use filed prevents way (the taught application), '269 lower end at the frequencies because in NVG- to have to continue those overlap with spectrum the visible In- Pursuant cockpits. compatible are received frequencies which McLure, Act, a Na- David Secrecy vention second This 11.63-67. Id. col.l [NVGs].” re- engineer, Systems Air Command val significant particularly problem *4 and in March 1986 application viewed warning lights, of red the use prevents it be secrecy order should that concluded of the visible lower end are at which the on served Notably, McClui-e Mr. imposed. Further- displays. cockpit in spectrum, government the eventually chaired and that is dimming more, light respect with i"evising MIL-L- with charged committee ele- sensor overwhelming NVG capable the reviewed After Mr. McClure 85762. to such ments, must be dimmed light the revised the application, '269 by crew- longer visible it is no degree that use permit the military specification its persons and wearing NVGs man not cockpits. NVG-compatible light in of red looking under the NVGs. the secrecy orders on imposed The PTO pat- the prevented which application, '269 1980s, developed In the every year until issuing, ent from interior governing a standard time, be- Corporation had By this Allied problem addressed the lighting that also merged then AlliedSignal which come having cockpits in compatibility of NVG to form Honeywell Inc. with testified As witnesses displays. full color entity International, This latter trial, govern- for the important at was then application, the '269 which amended cockpits, partic- light in retain red ment to patent. as the '914 issued For ex- warning lights. for use ularly as '914 patent in the invention claimed Task, a Lee member Harry Dr. ample, hav- cockpits the use of permits NVGs military’s developing committee light) (including red ing full color testified corresponding specification, problems asso- the aforementioned without “if at all warning red indicates In the art. claimed prior with the ciated in con- was spec MIL possible blue, invention, display emits a local it would be such that should sideration A combination light. red, cockpit.” J.A. yellow retain red and disrupt- from the red prevents filters is associ- “warning (explaining Specifically, NVGs. through the ing vision is associated red and amber ated with (i.e., a only a narrowband passes filter one Lawrence, caution”). S. And Col. William frequencies) of red range of narrow “red has expert, testified Honeywell’s filter another display; from the color as always perceived been blocks narrowband NVG find, pilots and we danger denotes light. ambient passes all other extraordinarily valu- be 11.4-8, red to pilots, 11.54-57, test col.5 patent col.4 '914 See percep- The immediate in that able role. of red Thus narrowband 11.13-15. col.5 we survival and crucial to danger does passed tion overwhelm) (and sensor J.A. NVG cockpit.” want red reach 3 of Nevertheless, govern- Figure January elements. of filters. (MIL- this combination illustrates military specification
ment issued
*5
Accordingly,
warning lights inside the
three
systems
accused
2 —
infringed claim
disrupt
not
through
literally
do
vision
and
the
equiva
the
under
doctrine of
NVGs,
3,
lents —but
claim 1
pilots can look
and claim
under
NVGs to view
2,
depends from claim were not infringed.
the warning lights, and crew
members
Int’l,
Honeywell
States,
See
Inc. v. United
wearing
can
lights
NVGs
see these
as well.
(2006)
(Infringement
Fed.Cl. 424
Or
2002,
about two
after
months
).
der
The Court of Federal Claims then
issued,
patent
Honeywell
complaint
filed a
separate
held
on Honeywell’s
trials
claim
against
the United
Honeywell’s
States.
Act,
under the
Secrecy
Invention
on the
Complaint
Amended
compensation
seeks
government’s
defenses,
infringement
and
under
Invention Secrecy
Act for pre-
damages.
on
Ultimately, the court con
issuance
use
the invention and under 28
cluded that
2 is
claim
invalid under 35
1498(a)
§
U.S.C.
post-issuance
in
103(a) and,
alternative,
§
U.S.C.
in the
fringement of at
independent
least
claims written description requirement of 35
1 and 2. Relevant to
appeal,
the Court
¶
§
Int’l,
Honeywell
U.S.C.
1. See
of Federal Claims construed disputed
States,
v. United
81 Fed.Cl.
538-72
terms,
Int’l,
see Honeywell
Inc. v.
(2008)
Order).
(Invalidity/Defenses
States,
(2005)
United
Invalidity/Defenses
A. Obviousness
judgment
entered
Claims
of Federal
“if the
not issue
shall
A
government,
in favor
subject matter
between
differences
under 28
jurisdiction
have
appeals. We
art
prior
are
patented
sought
be
1295(a)(3).
§
U.S.C.
have
subject matter would
such
the invention was
at the time
obvious
been
Discussion
ordinary skill
person having
made to a
relating to in-
appeal raises issues
This
per
subject matter
which said
the art to
Se-
Invention
standing under the
validity,
103(a);
§
see KSR Int'l
tains.”
U.S.C.
Act,
doctrine. We
and the first sale
crecy
398, 406-07,
Inc., 550 U.S.
v.Co. Teleflex
in turn.
issue
address each
(“If
1727,
Element of claim 2 recites plu- “a 914 col.2 11.40-44.The specification rality of filters at the local color display explain continues to that he “[t] ... including filtering a third filter for has several local such as [the color red band of the local source of display, aforementioned] color which are light and of passing a narrowband the red as clearly illuminated so to be visible with color band.” The of Court Federal Claims out the use of the Id. col.2 [NVG].” 11.57- addition, display” construed “local color and “color 59. In figure specification 3 of the require light. bands” to perceptible depicts display red a local color a local with 444; red, Claim Construction at id. at source light comprises green, Order of (“ ... range ‘color bands’ ‘include the and blue color bands. Id. col.4 11.40-41. wavelengths, of within which the undisputed colors Court of Federal Claims’ blue, red, visible requires light are construction of color bands ’ ” added)).2 eye (emphasis human that is to eye.” “visible the human range wavelengths 2. The Court of Federal further con- Claims narrow of within the red range strued "red band” mean “[a] to of color band.” Claim Construction Order color from nm nm” to 780 and "narrow- band of the red color to mean “a band” nm,” testify not but he did construc- about proper that the We conclude of passing perceptible it display is that must Boehm discloses tion of local color Furthermore, Honeywell pre- light. red J.A. 623157. light. red perceptible emit (a)(3) testimony from expert unrebutted passes a filter that sented element light. The 3 does graph figure of this red IV of narrow band Mr. Tannas perceptible addressed the need of red passing claimed invention not disclose the NVG-compatible warning lights light: red that an
cockpits, and it is inconceivable contained in upon Based the information are warning lights that aircraft would use Stolov], [Boehm, it cannot be Uchida In other to the crew. perceptible of display [Uchida] that the LCD shown words, point, would be no there projection display [Stolov] of or invention, a narrow- pass of this context of the red pass would a “narrowband be seen. The light of red that cannot band BG 7 if filtered with the color band” display perceptible emits red local color no in- filter. These references contain (a)(3) a narrow requires and element light, regarding spec- the emission formation perceptible light pass. red band of this that would be any light trum of source (a)(3) conclude, therefore, that element We projection or used to illuminate LCD perceptible of requires passing regarding and no information display which is visible to the i.e., light red— emitted spectrum the emission eye. human BG 7. display filtering after with it cannot be shown that the Therefore obviousness, In the context of how projec- or the display LCD [Uchida] ever, appears though it tion filtered with BG [Stolov] its earlier Federal Claims deviated from emit within the red color would Specif claim 2. regard construction percep- band or that such would be ically, the court stated that its claim con tible. require perception struction “did not Tannas, display” a full color primary According
the red to Mr. J.A. 622958. display requires instead that the local color upon spectrum, its transmission “[b]ased percepti “at one color [be] least me that BG 7 filter would appears to (al Invalidity/Defenses at 545 ble.” Order degree any suppress red to such original). Importantly, teration the filter would not light passing through Federal obviousness de Court of Claims’ provide primary be sufficient to the red on the conclusion premised termination is display.” a full color J.A. 622958-59. This *8 (a)(3), fact, that element and testimony is consistent expert unrebutted perceptible of require passing does in Boehm. For with various statements of the correct construc light. red Boehm, 3 of example, according to section (a)(3), requires the tion of element problems cockpit of illumi- which identifies light, we con passing perceptible red nation, to use main idea is “[t]he 2 would not have been clude that claim illumination in the special green blue in the art. Neither obvious to one of skill and use a cockpit lighting or switch off all Verney passing per Boehm nor disclose necessary.” special type floodlight when ceptible light. red requirement This J.A. 605298. “blue/ “the most lighting” among is listed provided no evidence compatible important factors for a NVG Verney per- discloses that either Boehm or Moreover, mentions Id. Boehm cockpit.” government’s ex- ceptible light. red near Task, filtering [infrared]” of “red and testified that “Boehm dis- pert, Dr. to incandescent light only respect at with splitting a of the red color band closes lighting green/blue ceptible and discusses to the human observer.” Pis.’ respect lighting display. with from the Opp’n Post-Trial Br. Regarding Defenses Boehm also that “filtering states conven- 65 (explaining that “the Court’s claim con- lighting dyed- tional incandescent requires struction that the ‘narrowband of glass filters should be used [such BG-7] the red color band’ that is emitted aby sparingly.” J.A. 605302. Because the local be perceptible”). analysis Court Federal Claims’ was Honeywell unambiguously contended that premised on an erroneous claim construc- (DE-511) “Verney completely is unrelated tion, clearly erred in finding that Boehm Third, to the '914 invention.” Id. accord- (a)(3) discloses element of claim 2. Claims, ing to the Court of Federal “Mr. respect Verney, With agreed Tannas ‘[Verney] very also ” Federal analysis Claims’ was more limited. close to the CMFD filter.’ Invalidity/De- Invalidity/Defenses See at Order (alteration in original). Order fenses First, the court relied on Dr. Task’s testi- alone, however, This statement cannot sup- mony Verney “shows excellent trans- port finding that Verney discloses the mission out to about 640 nm and measura- passing perceptible red light. Indeed it ble transmission out to about 700 nm.” is clear from the reference itself that Ver- Again J.A. 623178. testimony there is no ney only dimming discloses blocking on whether perceptible this would result in near infrared light, which is not the same light. Verney red teaches the convention- as passing perceptible light. Specifi- al wisdom that integral “red or white light- cally, Verney approaches identifies two ing systems cannot be activated while the permitting pilots aircraft to see caution pilot is using NVGs due to their adverse (1) and warning lights through NVGs: use interaction.... To meet deficiency, filtering limited out the near “cut[] new blue-green infrared free light has [light]” infrared “where installation emerged type as the basic to be of limited filtering proves impracticable,” ” applications.... used NVG JA. use dimming intensity to “set low Though claims enough so that energy level can be [the] Verney discloses transmission of wave- through seen the NVGs.” J.A. 623400 lengths within the red color band con- (stating in the approach context of the first court, strued the trial there is no evi- filter when combined with a “[t]his dence that this transmission in any results source provides that is dimmable an effec- perceptible visible human warning tive the energy since emitted eye. Second, court stated that from the display stands out the NVG “Honeywell does not dispute Verney adversely without affecting perform- their 2(3)(a) discloses claim [sic].” Invalidi- ance”). Verney concludes: “One signifi- ty/Defenses at 546 (citing Order Pis.’ Post- finding cant during the BLACK HAWK Opp’n Trial Br. Regarding Defenses 61- development program is that red warning 62). But this statement directly contra- lights permissible are if the by Honeywell’s dicted brief before the *9 appropriate filtering dimming pres- Court of Federal Citing testimony Claims. government ent.” J.A. 623402. The Tannas, Mr. argued that points support to no record evidence to a ordinary “one of in skill the art would finding Verney that perceptible discloses that, understand Verney teaches reasons, light. For the these Court of that the warning light filtered red does not adversely affect Federal Claims committed clear error in performance the of the NVGs, warning light finding Verney the red that would have to discloses element (a)(3) be dimmed to a level where it is not per- prove of claim 2. Given the failure to
1301 display transduc- 51-53 or other ray tubes element disclose the cited references that ers, easily more filter carry possible to to (a)(3), has failed it the reaching convinc- the by clear and colors proving offending its burden added). claimed invention (emphasis the ing evidence J.A. 606271 [NVG].” to one of skill in have been Moreover, application would obvious stated original the foregoing, we need of the the art. specific configurations the that “[w]hile argu- additional Honeywell’s described, not address ... 37 have been display local considerations objective ment the invention present the is understood that of nonobvious- a determination warranted variety applied to a wide can be ness. 606272. J.A. and vision aid devices.” have figure may 3 disclosed original While Description B. Written reason, CRT, in of the there is no of Federal Claims The Court specification, the other statements alternative, concluded, claim 2 CRTs. For limit the disclosure description the written is invalid under reasons, Federal Claims the Court of these ¶ 112, § 1. Inval requirement of 35 U.S.C. original the finding clearly erred “Compli 567-72. idity/Defenses Order was limited to CRT application’s disclosure description require ance with written 2 that claim of the '914 displays and Med., of fact.” ICU question ment is a description is invalid under written F.3d Sys., 558 v. Alans Inc. Med. ¶ 112, § requirement of 35 U.S.C. (Fed.Cir.2009). 1368, comply, To “convey with rea patent applicant must C. Indefiniteness in the art clarity to sldlled sonable those contends that that, sought, he or she date filing invalidity Claims’ Federal inven possession [claimed] was af alternatively be determination could Mahurkar, 935 v. tion.” Inc. Vas-Cath claim 2 is by concluding that indefi firmed (Fed.Cir.1991) (empha F.2d 1563-64 ¶ § Indefinite nite under U.S.C. omitted). sis law, review question of which we ness is a According to Court of Federal v. Eng’g Exxon & Co. de novo. Research variety Claims, encompasses (Fed. States, 1371, 1376 265 F.3d United appli- filed '269 originally displays, but Cir.2001). only if claim is indefinite “[A] no indication that in- cation “contains no insolubly ambiguous, and the ‘claim is being invention conceived ventor be properly can narrowing construction than displays other CRTs.” any used with ” Int’l, v. Int’l adopted.’ Honeywell During at 570. Invalidity/Defenses Order Comm’n, F.3d 1338-39 Trade patent, Honeywell of the '914 prosecution Exxon, (Fed.Cir.2003) 265 F.3d at (quoting application to substitute amended 1375). meaning “If of the claim is application claims from another discernible, may the task be though even allowability. a notice of the PTO had issued may be conclusion one formidable and the specification Honeywell also amended will persons dis over which reasonable application, in- drawings of the '269 sufficiently have the claim agree, we held It is true replacing figure 3. cluding invalidity on indefiniteness clear to avoid application original 3 of the figures Exxon, at 1375. 265 F.3d Nev grounds.” using a local dis- disclosed an embodiment ertheless, if term’s defini a claim “[e]ven (37) consisting of three monochromat- play words, the claim is tion can be reduced (51-53). original applica- But ic CRTs *10 ordinary person if skill still indefinite case that explained “[i]n tion also the definition in the art translate cannot display using separate cathode the local into meaningfully precise claim local scope.” color display that uses a local source Servs., Energy Halliburton Inc. v. M-I red, of light comprising green, and blue LLC, (Fed.Cir.2008). 514 F.3d bands, col.411.40-45, color see id. which the Court of Federal Claims construed as “in-
The Court of Federal Claims concluded
cluding]
range
of wavelengths, within
claim is not indefinite.
Invalidi
blue, red,
which the colors
are
ty/Defenses
Order
574-76.
court
visible to
eye.”
the human
construed “local color
Con-
display”
require
Claim
added).
“color
stniction
perceptible to an
Order at 466 (emphasis
observer or ob
Moreover,
servers utilizing a night vision aid.”
the fundamental purpose of the
Claim Construction Order at 444. Ac
invention
permit
is
displays
that convey
cording to the government, claim 2 is in
i.e., red warning lights
information —
—to
definite
“perceptible”
because
subjec
is a
in
crewmembers
an
aircraft
with-
tive
amenable
standard
to two different
out such light overwhelming sensor ele-
interpretations
brightness. ments in
—color
do
perceive
NVGs. We
not
any
disagree.
We
In Minnesota Mining & difficulty or confusion in determining what
Manufacturing
v.Co.
Johnson & Johnson
is a local
display
color
and what is not a
(Fed.Cir.
Orthopaedics,
what is ‘lubricated’ what is lubri II. Invention Secrecy Act cated in patent”). terms of the ... Honeywell’s Amended Complaint ease,
In this claim 2 requires a “local also seeks compensation under the Inven display” and it is the court’s con- tion Secrecy Act for pre-issuance use of struction uses the term “perceptible.” the invention. The Court of Federal like Accordingly, the accused infringer in Claims concluded that “Honeywell cannot Mining Minnesota & Manufacturing, establish the second element of Article III improperly argu- frames its standing to by ment assert a claim focusing just compen on the term “percepti- sation respect Act, ble.” With to the claim under Invention Secrecy term “lo- i.e., display,” cal color patent specification fairly ‘causation—a traceable connec explains tion plaintiffs injury “viewable between and the ” '914 patent eomplained-of crewmember.” 11.40— col.2 conduct of the defendant.’ 42. The specification further describes a Secrecy Invention (quot- Act Order at 233 *11 appli- the '269 ent, issued from Env’t, patent this Better a v. Citizens Steel
ing Co. for to cation, subject a 1003, was 103, application 118 S.Ct. 523 U.S. (1998)). to thus has stand- “right Honeywell com- secrecy The order. L.Ed.2d Se- just compensation Invention of the a claim for provision to assert pensation” ing Secrecy as follows: Act. crecy provides Act the Invention under upon issued an any patent The owner isr that several argues government a subject to secre- that was application regarding to be decided remain sues to section 181 pursuant issued cy order claim. damages pre-issuance Honeywell’s title, for com- apply who did not of this however, defenses, these All one of but government agency] pensation [from decision on by our have been resolved right, the shall have provided, as above during pros- amendments standing. Claim patent, such of issuance of after the date as the defeat entitlement ecution cannot States Court in the United bring suit require proposed the statute does compensation just for Federal Claims rejected have issued—we to have claims by reason damage the caused relationship or “contiguous trial court’s the by the Gov- secrecy use order of and/or remaining is- test. The dependence” resulting from of the invention ernment related to the defense sue is government’s his disclosure. the Gov- “use damages for pre-issuance added). (emphasis § 183 35 U.S.C. Sec- resulting from invention his ernment of the ‘applica- term that “[t]he tion 184 states remand, the Court On disclosure.” chapter in this includes used tion’ when whether should determine Federal Claims modifications, amend- any and applications government requires that the statute thereto, ments, or divisions supplements or and, disclosure, if must from the use result Id, Feder- § 184. The Court thereof.” so, in this it does case. whether “Honeywell’s '914 al concluded Claims ‘upon’ or ‘on’ '269 not issue patent did First Sale Doctrine III. rela- contiguous as there no Application of Federal Claims The Court the two.” between tionship dependence or pre doctrine the first sale concluded that at 233. Ac- Secrecy Act Order Invention recovering dam from Honeywell cludes Claims, of Federal cording the Court for use of at ages from subject Application, in the '269 “the claims appeal This infringing system. least one Order, Secrecy were April (1) the systems: accused concerns three than the claims different completely (CMFD) Display and Multifunction Color on October issued '914 (2) aircraft, the Radar F-16 NVGs at 232. 2002.” Id. (RDU) in the C- and NVGs Display Unit §of 183 con- interpretation The court’s aircraft, Multifunc and Color 130H statute plain language tradicts the (CMDU) and NVGs in Display tion Unit relation- “contiguous its creation of Honey Importantly, aircraft. C-130J any founda- test lacks ship dependence” or sold Inc.3 manufactured well itself. text of statute tion of Fed According to the Court CMFDs. issued, after amend- albeit application '269 Claims, doctrine thus the first sale eral ment, Section 184 patent. the '914 recovering dam Honeywell precludes made an amendments explicitly includes of in- for use from the pat- ages the '914 Honeywell owns application. (cid:127) merger Inc.) from December original resulted AlliedSignal was the 3. Recall that Honey- AlliedSignal Honeywell Inc. patent and that assignee between International, (specifically well *12 1304 (“the 6,467,914 patent”) in the '914 is invalid as
fringing CMFDs and NVGs F-16 obvious, doctrine to aircraft. For the first sale Application that U.S. Patent No. (“the be an first apply, 06/786,269 there must authorized application”), '269 which Corp. See Photo v. Int’l Trade sale. Jazz eventually patent, issued as the '914 did Comm’n, (Fed.Cir. 264 F.3d 1105 fully the invention of 2 disclose (“To 2001) protection invoke the '914 patent, Honeywell and that doctrine, sale first authorized first sale Honeywell International Inc. and Intellec- must have occurred under the United Properties (collectively “Honey- tual patent”). presents pe States This case well”) precluded are from recovering dam- facts, culiar set of to be sure. Neverthe ages infringement by products that a less, Honeywell infringing Inc.’s sale of Inc., Honeywell predecessor company, sold because, CMFDs was not authorized at the government. respectful- I therefore sale, Honeywell time of the Inc. had no LA, I.B, ly dissent from Parts and III of rights under the '914 patent, Allied- opinion. the court’s Signal owned. The fact that Honeywell patent now owns the not retroactively does I. Obviousness such, authorize the earlier sale. As patent display The '914 claims a color preclude first sale doctrine does not system, such in as that used aircraft cock- Honeywell from recovering damages pits, compatible is with the use of against government for use of infring (“NVGs”). night goggles Compati- vision ing CMFDs and in the F-16 air NVGs bility display between a color and NVGs craft. To government the extent that the presence a concern because the too recourse, through has such recourse is not cockpit, particularly much inside the the first sale doctrine. wavelengths in- red and regions spectrum, frared can over-
Conclusion whelm NVGs and interfere with their use. (1) We conclude (a)(1) dispute There is no that elements proved by convincing has not clear and (a)(2) 2 patent, and of claim of the '914 2 evidence that claim of the '914 filtering which discuss of the blue and (2) invalid, Honeywell has standing to display, bands of the color were well just compensation assert claim for under in in year known the art (3) Act, Secrecy the Invention that the application Honeywell argues was filed. preclude first sale doctrine does not that what not have in would been obvious recovering damages “splitting” 1985 is the idea of the red color against infring- for use of band, ing using filters to CMFDs and NVGs the F-16 air- allow narrow-band Accordingly, judgment craft. the final displayed blocking of red to be while this the Court of Federal Claims is reversed. NVGs, same narrowband at as is We remand for the trial court to resolve (a)(3) (b). 2 taught by claim elements government’s pre- defense related to found, however, correctly As the trial court issuance damages under the Invention Se- prior concept. art does disclose this crecy damages. Act and to determine ordinary One of skill the art in 1985 apply prior would have known how to
REVERSED REMANDED art to a color in a and make MAYER, Judge, dissenting-in- Circuit adjustments to the filters and source part. display system taught to achieve the 2 my patent. the trial claim of the '914 KSR Int’l correctly view court de- Co. 398, 421, cided claim of U.S. Patent No. v. U.S. Teleflex (“A perceptible light 2 requires that claim L.Ed.2d 705 S.Ct. *13 wavelengths defined within the person ... a be emitted ordinary skill is person of automaton.”). holding that I band with a an as the red color ordinary creativity, not requires light the trial court’s 2 to be emitted therefore affirm claim would invalid as that the claim is The trial court consis determination as red. perceived on obvious. the former —in its orders tently held construction, and va infringement, (a)(3) claim 2 of the '914 Element e.g. latter. never held the See lidity the red filtering filter “for —and teaches a States, Int’l, 70 Honeywell Inc. v. United a narrowband passing ... and color band (2006) 424, (Infringement 464 Or Fed.Cl. According to the color band.” red der) need emitted (noting construction, the red color trial court’s infringe as red to the red perceived not be wavelength with a represents light band 1); id. at 467 band element of claim color Honeywell and 780nm. between 620nm (“Claim 2(a)(3) patent requires of the '914 States, Int’l, 66 Fed.Cl. Inc. v. United ‘narrow Order). pass the third filter (2005) (Claim only 470-71 Construction band,’ i.e., a narrow band at red employs prior of the art references One nm to 660 range wavelengths to within 620 red from 620nm passes filter that nm.”) added); 710nm, Int’l thereby teaching (emphasis the limitation (a)(3) Inc., H.D.V. of claim 2. See element 81 Fed.Cl. CInvalidi Boehm, Order) (“The Night Goggle Compati- Vision court’s claim ty/Defenses European Tenth Helicopter Cockpit, ble per ... require did not construction Forum, 28-31, 1984 August Rotorcraft full color ception primary of the red of a (“Boehm”). art reference prior A second fact, specifi In the trial court display.”).* of element the limitation also discloses systems in cally found that the accused (a)(3), filtering that allows as it describes they fringe despite claim 2 the fact that do throughout the “excellent transmission light; there is no perceptible not emit red out the near region and then cuts visible systems that the accused would indication Jay Verney, See F. infrared.” infringe had the trial have been found Aircraft Helicopter Lighting Systems, American construc applied majority’s court new Proceedings, Society, 41st Annual Forum Order, 70 Fed.Cl. at Infringement tion. 15-17, (“Verney”). According to May 467; (rejecting the see also id. at 464 Verney “shows government’s expert, not argument system that an accused did to about 640 transmission out excellent no evi infringe claim 1 because there was out to nm measurable transmission “produces energy dence about 700 nm.” In by eye”). the human can be detected case, any testimony by experts for both Honeywell’s majority agrees indicates Honeywell and the limitation of element argument in art at the time that one of skill (a)(3) met of claim is not adjust would have known how Verney in Boehm and employed filters perceptibility source to increase the light. This pass perceptible not would employing in the red color band while holding light trial court’s argument confuses the * present perceive can the rele- when a human trial court construed "color bands" While the Instead, wavelengths, range within "to include the color. the construction reflects vant blue, red, are which the colors wavelengths range associ- the fact that the eye,” to the human Claim Construction visible only each band can be defined ated with Order, 466, this construction 66 Fed.Cl. at perceived humans. terms of colors color band is does not mean that each the filters of Boehm Verney. or deter of a limited amount of red light mining patented whether a invention is way such a interfere with the obviousness, invalid for do not ignore “we NVGs, which taught by claim 2. the modifications that one skilled the art Honeywell’s argument against obvious-
would make to a device borrowed from the ness relies heavily on secondary consider- prior Fitness, art.” In re Icon & Health ations. It places great weight on the fact (Fed.Cir.2007). 496 F.3d that, prior to the filing of the '269 appli- *14 (b) Element of 2 the '914 patent of cation, the military the solved NVG com- employs a complementary filter at the patibility problem by limiting the amount NVGs, which blocks the same narrowband of light red in cockpits. military The la- of light red that passed is by the filter of ter provided a second option to pilots (a)(3). element The use of such a comple- that allowed a small amount of red light mentary filter at the NVGs described in to be displayed with a corresponding deg- Boehm reference, and a third prior art radation in NVG functionality. According German Patent Application, 899, DE 33 13 to Honeywell, this change reflects the 18, (“the Oct. 1984 patent”). German military’s review of the '269 application, While neither reference teaches a cutoff pursuant Act, Invention Secrecy (below point which light will be blocked between the specifica- issuance the two NVGs) from entering the in the red color tions governing NVG use in cockpits. band, taught by as is patent, the '914 one Several military testified, witnesses how- skilled in the art at the the patent time ever, that the two events are unrelated. application was filed would have under- Order, Invalidity/Defenses at Fed.Cl. stood point that this cutoff could be shifted 564-65. change in the military spec- along the wavelength fact, spectrum. ification reflected a desire part on the the German clearly teaches that the military some pilots, particularly those of cutoff can point any be set at wavelength, aircraft, fixed-wing to sacrifice some explaining that the display filter must sim- amount of NVG sensitivity in exchange ply light block above some threshold wav- allowing for more red to be dis- elength and the NVG filter must block played in cockpit. the This was a simple light below that wavelength. threshold shift, changing the cutoff point for the The prior art therefore discloses all the (and that could be displayed elements of claim 2 of the '914 patent. NVGs) therefore was blocked the While none of the perform references the 665nm, 625nm to a shift that was well filtering exactly claim, as taught by the within technical ability of those or- preclude does not a finding of obvious dinary skill in the at art the time. 418, 127 ness. KSR 550 U.S. at S.Ct. Int'l An additional (“[T]he influence on the military analysis need not seek out specification was the advancements made precise teachings specific directed to the to the color themselves, subject claim, matter of the challenged in infancy were their at the a court can time the origi- take account of the inferences nal specification NVG was steps creative drafted. person Prob- ordi nary lems with the skill in use color displays the art would employ.”). Once the military independent made were the decision to NVG compatibility— allow particular more red in in cockpit, their daylight at the limited reada- expense of performance, NVG bility initially prevented would the military — have been obvious to those skilled in from attempting to accommodate their use art to combine these references to allow cockpits. problems Once these were description meet the to written In order otherwise displays could
resolved speci- § of 35 U.S.C. compatibility requirement their implemented, be invention suffi- These fac describe the important. fication “must more became NVGs application, of skill in tors, convey person of the '269 to a ciently the review specifica military adjust possession patentee caused the that the had art cockpits. See governing appli- the time of tion at claimed invention Int'l, 127 S.Ct. at 550 U.S. i.e., invented what cation, patentee KSR (“[lit that market may be the case LizardTech, often v. Earth is claimed.” literature, demand, than scientific rather 424 F.3d Mapping, Res. trends.”). secondary design will drive indication (Fed.Cir.2005). There no by Honeywell are advanced considerations con- the inventor application that overcome insufficient therefore time, in claim ceived, invention showing of obviousness. strong single filters a patent, which 2 of the '914 *15 multiple carrying color light source of Description II. Written court, the by trial noted the bands. As in the '914 claims that The three issued the described bandpass the filter use of original '269 with not filed the patent were light multiband over the application '269 Instead, they were first filed application. would patent '914 claimed source appli- '268 of the related in a continuation inoperative. display full color render the application was cation, the '269 after years Order-, at 81 Fed.Cl. Invalidity/Defenses the con- abandoned Honeywell later filed. fil- bandpass the is because This 569-70. its transferred allowed tinuation and block application would the '269 ter of making con- application, claims to the '269 band, red the narrow except everything specifica- to the '269 amendments forming result- light, the blue and including green drawings. tion and only light. red ing the appli- the '269 held that The trial court not commit clear trial therefore did court fully the invention disclose cation did disclosure original the finding that error The '914 patent. claim of monochromatic separate, of three hav- local claims “a source patent to one not demonstrate would generators red, To blue, bands.” color ing pos- the inventor in the art skilled the source single, multiband the of claim at subject matter sessed filters,” plurality “a applies '914 was filed. application time the red only filters color including one of red. a passes narrowband band First Doctrine Sale III. a contrast, claimed application '269 devices, infringing of the accused One plural- light that “includes local source of (“CMFD”) Display Multifunction the Color genera- color monochromatic ity of distinct aircraft, was manufac- F-16 installed in words, genera- color each tors.” In other by sold tured and red, green, single color: tor would emit merger its Honeywell prior to claimed a application further or blue. The Inc., company AlliedSignal with “arranged to block bandpass filter application. '269 rights to the held the except generators color from one said merger of the Honeywell resulted from In this frequencies.” range of preferred court held The trial companies. two sought to limit application manner '269 sale doc- by the first Honeywell is barred display; a by the light emitted the red for in- recovering damages trine from genera- color over bandpass filter patentee fringement “[t]he portion would allow tor ... are product patented of the the seller pass. band now the same corporate entity.” Invalidi- Order,
ty/Defenses
Once I would affirm.
The sale a patentee patented of a
product extinguishes the patent rights respect Quanta product. Elecs.,
Computer,
Inc.,
Inc. v. LG
553 U.S.
2109, 2115,
128 S.Ct.
(2008). While the seller of CMFDs did
not hold rights to the '269 application sold, they
at the time were the interests of
the owner application merged later
with those of the company that sold the
infringing devices. Because Honeywell re sales, compensation
ceived for the through
Honeywell patent rights its in those
products are extinguished. The majority’s
contrary finding allows to re
cover for infringement when Honeywell
itself is the recipient ultimate profits
from the sale of the infringing products. parallels
This situation presented States,
AMP Inc. v. United 182 Ct.Cl. (1968).
that a patentee was barred from using
preexisting, but acquired, patent later
derogate from a negotiated license under a patent,
different noting grantor “[t]he
estopped taking in any back extent
that for which already he has received 452;
consideration.” Id. at see also Hew
lett-Packard Co. v. Repeat-O-Type Stencil (Fed.Cir.
Mfg. Corp., 123 F.3d
1997) (“Generally, when a seller sells a restriction,
product without in effect
promises the purchaser that in exchange
for the price paid, it will not interfere with purchaser’s enjoyment full prod purchased.”).
uct Similarly, Honeywell
should not permitted be to interfere with government’s enjoyment of products government by
sold predecessor. its