Opinion
Civil Action No. 99-309 GMS
January 4, 2001
MEMORANDUM AND ORDER
Honeywell International Inc. ("Honeywell") filed this suit against Hamilton Sundstrand ("Sundstrand") in May of 1999 alleging that Hamilton Sundstrand Corporation ("Sundstrand") is infringing Honeywell patents: 4,380,893, 4,428,194 and the 4,337,615 ((the "'893 patent," "'194 patent," and the "'615 patent," respectively). The lawsuit relates to technology for auxiliary power units ("APU"). An APU is a small gas turbine engine, usually placed in the tail section of an airplane, that generates electricity for use while the aircraft is on the ground or in flight. An APU also provides compressed air for both starting the aircraft's main engine and environmental control of cabin air.
On January 2, 2001, Honeywell advised the court that it has decided to no longer pursue its claims under the `615 patent. As a result, the court will not consider this patent in its analysis.
Presently before the court is Sundstrand's Motion for Summary Judgment wherein Sundstrand contends (1) that all of Honeywell's patents-in-suit are invalid because Honeywell offered the covered inventions for sale more than one year before applying for the patents and (2) that Honeywell cannot obtain damages for any purported infringement occurring before February 1999 because Honeywell failed to mark its own products with the patent numbers. Because there are genuine issues of material fact relating to Honeywell's alleged sale of the inventions more than one year before applying for the patents, the court will deny Sundstrand's motion as to this issue. The court will, however, grant Sundstrand's motion to limit the damages period because Honeywell failed to mark its products.
STANDARD OF REVIEW
"Summary judgment is appropriate only when there is no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law.'" Rodime v. SeagateTech. Inc., 174 F.3d 1294, 1301 (1999) (quoting Fed.R.Civ.P. 56(c)). In reviewing the motion, the court must draw all reasonable inferences in favor of the non-movant. See id. (citing Anderson v. Liberty Lobby Inc., 477 U.S. 242, 255 (1986). With this standard in mind, the court will address the defendant's motion.
DISCUSSiON
Invalidity because of sales more than a year prior to patent applications
Sundstrand challenges the validity of all the patents in suit by alleging that Honeywell offered the covered inventions for sale more than one year before applying for the patents. To support this contention, Sundstrand points to an unspecified contract between Honeywell and Boeing to show that the invention was offered for sale. Sundstrand also alleges that there are diagrams that show that the products at issue were ready for patenting prior to one year before Honeywell filed its patent applications.
In contrast, Honeywell argues that Sundstrand cannot establish by clear and convincing evidence that the patents were on sale prior to the critical date. In particular, Honeywell argues that there are disputed factual issues as to whether there was a definite commercial offer for sale and whether the products at issue where actually the products allegedly offered for sale.
Section 102(b) of the Patent Act prohibits granting a patent for an invention that was "on sale" in the U.S. more than one year before the patent application date. 35 U.S.C. § 102 (b). The "critical date" in a Section 102(b) inquiry is defined as exactly one year before a patent application is filed. Id. The on-sale bar applies when two conditions are satisfied before the critical date of one year before the filing date of the application: 1) a product embodying the claimed invention is the subject of a commercial offer for sale; and 2) the claimed invention is ready for patenting. See Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 67 (1998). A claimed invention is ready for patenting if it is reduced to practice or if there is "proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention." Id. Whether an invention was on sale more than one year before the patent's application date is a question of law for the court to decide based on underlying factual determinations. See Abbot Lab. v. Geneva Pharm., Inc., 182 F.3d 1315, 1317 (Fed. Cir. 1999), cert. denied, 120 S. Ct. 796 (2000); Ferag AG v. Quipp Inc., 45 F.3d 1562, 1566 (Fed. Cir. 1995).
After considering the submissions of the parties, the court will deny summary judgment as to this issue. Although the question of whether a patentee has violated Section 102(b) is a question of law, it is based on underlying factual determinations. For example, under the first prong of the Pfaff standard, it is not clear that there was a definite offer for sale for the actual product embodied in the patents at issue here. Although Sundstrand claims it is undisputed that there was a contract to sell the product in dispute before the critical date, Honeywell counters that the offer to which Sundstrand refers is not specific enough to show that the sale was for the products embodied in the claims of the `893 and `194 patents. Clearly, the court's resolution of this Section 102(b) dispute must await a jury's determination of the facts underlying the dispute.
As to the second prong of Pfaff, whether the invention was ready for patenting, Sundstrand offers a pre-critical date diagram which it alleges could be used by an inventor skilled in the art to make a device which contains all of the elements in the patent. In contrast, Honeywell has adduced sufficient evidence showing that one skilled in the art would not be enabled to make a device based on the diagrams. Because there are underlying factual issues that need to be determined, the court cannot rule as a matter of law that the `893, and `194 patents were on sale one year before the critical date.
Limiting Damages Based on the Failure to Mark
Sundstrand also argues that Honeywell's failure to mark its products before February 1999 limits damages in the event that Sundstrand is found to have infringed Honeywell's patents. In contrast, Honeywell contends that it was not required to mark the products because the patents at issue involve method patents.
A patentee must mark his patent number on products practicing the patent in order to collect damages arising from infringement. 35 U.S.C. § 287 (a). The penalty for failure to mark is that the patentee's damages will be limited to the time frame subsequent to actual notice. See Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed. Cir. 1983). The purpose behind the marking statute is to put the public on notice of the patent See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 162 (1989). Only where there is no device to mark are patentees excused from the marking statute's requirements. See American Med. Sys. Inc. v. Medical Eng'g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993), cert denied, 511 U.S. 1070 (1994).
893 Patent
First, the court will grant Sundstrand's motion with regard to the `893 patent. In its papers Honeywell concedes that it has failed to mark the and `893 patent. See Honeywell's Opposition Brief, at 28 n. 3 (DJ. 130). Specifically, Honeywell says that "Sundstrand admits that Honeywell gave sufficient notice of its infringement claims with regard to the . . . `893 patent[s] on February 3, 1999. Accordingly, Honeywell's damages claims with regard to each of those patents runs from that day forward." Id. As a result of this admission, the court will grant the motion for summary judgment with regard to Honeywell's failure to mark the `893 patent. The period of damages with regard to this patent shall commence on February 3, 1999.
`194 Patent
The `194 patent covers a method for controlling surge rather than an apparatus. Generally, the marking statute does not apply to patent claims which are directed only to a method or process, because there is nothing to mark. See American Med Sys. Inc. v. Medical Eng'g Corp., 6 F.3d at 1538. If there is a tangible item to mark, however, the patentee should mark the product See Id. at 1538-39. Moreover, a plaintiff cannot maintain an entitlement to damages where it asserts infringement of an apparatus patent and a method patent in which the claimed method is the use of the apparatus. American Bank Holographics v. Upper Deck Co., 1997 WL 30886 at *2.
Honeywell claims that its `893 and' 194 patents are not one patent with both method and apparatus claims. Instead, it argues that they are two are separate and distinct patents — one for an apparatus and one for a method. Honeywell specifically points to the patent examiner's decision to separate the patents at the application stage because the two patents claimed "materially different inventions." Thus, Honeywell contends that the `194 patent is distinguishable from the patent in American Medical Systems which involved a single patent with both apparatus and method claims. The plaintiff in American Medical Systems contended that it did not have to mark the product because it was only asserting methods claims. The court was unpersuaded by this argument and held that a party should mark the tangible product even if only method claims are asserted. See id. at 1538-9.
The court is not persuaded by Honeywell's argument and will grant the defendant's motion for summary judgment for failure to mark the `194 patent. The purpose of Section 287(b) is described in American Medical Systems:
The purpose behind the marking statute [ 35 U.S.C. § 287] is to encourage the patentee to give notice to the public of the patent. The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent is directed to only a method or process[,] there is nothing to mark. Where the patent contains both apparatus and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obligated to do so if it intends to avail itself of the constructive notice provisions of [S]ection 287 (a).6 F.3d at 1538-39. After considering the purpose of the statute and the American Medical Systems, the court is compelled to grant summary judgment. In this case, there is something to mark — Honeywell's APU. The `893 and `194 refer to the same product. Honeywell could have marked the product. Thus, the court will grant summary judgment for failure to mark. As a result, the damages period for all three patents in suit runs from February 3, 1999.
For these reasons, IT IS HEREBY ORDERED that:
1. Sundstrand's Motion for Summary Judgment (D.I. 101) is DENIED in part and GRANTED in part;
A. Sundstrand's Motion is DENIED as to the issue of the plaintiff's alleged offer to sell products embodied by the patents-in-suit more than one year before the patent application date;
B. Sundstrand's Motion is GRANTED as to the issue of limiting damages because of
Honeywell's failure to mark its products;
1. The relevant damages period for any infringement of the `893 and `194 patents begins on February 3, 1999.MEMORANDUM AND ORDER
Honeywell International Inc. ("Honeywell") filed this action against Hamilton Sundstrand ("Sundstrand") in May of 1999 alleging that Hamilton Sundstrand Corporation ("Sundstrand") is infringing Honeywell patents: 4,380,893, 4,428,194 and the 4,337,615 ((the "'893 patent," "'194 patent," and the "'615 patent," respectively). On January 2, 2001, Honeywell advised the court that it has decided to no longer pursue its claims under the `615 patent, which relates to fuel control technology. As a result of Honeywell's decision, the court will deny certain pending motions as moot.
For these reasons, IT IS HEREBY ORDERED that:
1. Honeywell's Motion for Partial Summary Judgment that its `615 patent is not unenforceable (D.I. 26) is DENIED as MOOT;
2. Hamilton Sundstrand's Motion for Summary Judgment with regard to non-infringement of Honeywell's `615 patent (D.I. 99) is DENIED as MOOT;
3. Hamilton Sundstrand's Motion wherein it contends that the patents-in-suit are invalid because of the plaintiff's alleged offer to sell products embodied by the patents-in-suit more than one year before the patent application date and the plaintiff's failure to mark its products (D.I. 101) is DENIED as MOOT as the motion relates to the `615 patent.