Plaintiff's DOE claims barred by prosecution history estoppel
Honeywell International, Inc. et al. v. Hamilton Sundstrand Corp., No. 99-309 (GMS), Aug. 14, 2006.
Sleet, J. After en banc remand, and two day bench trial the court holds that prosecution history estoppel bars plaintiff from asserting the doctrine of equivalents.
The accused product is an aircraft auxiliary power unit. The disputed claims were initially rejected because they were dependent on rejected claims. The examiner indicated they would be allowable if rewritten as independent clauses, which was done. The Federal Circuit held that the amendments narrowed the claims and raised a rebuttable presumption that plaintiff surrendered the doctrine of equivalents with regard to certain limitations. The Federal Circuit remanded with instructions to determine whether plaintiff can overcome the presumption. It failed to rebut the presumption of surrender through tangential relation criteria and the doctrine of equivalents infringement jury verdict was vacated.
Sleet, J. After en banc remand, and two day bench trial the court holds that prosecution history estoppel bars plaintiff from asserting the doctrine of equivalents.
The accused product is an aircraft auxiliary power unit. The disputed claims were initially rejected because they were dependent on rejected claims. The examiner indicated they would be allowable if rewritten as independent clauses, which was done. The Federal Circuit held that the amendments narrowed the claims and raised a rebuttable presumption that plaintiff surrendered the doctrine of equivalents with regard to certain limitations. The Federal Circuit remanded with instructions to determine whether plaintiff can overcome the presumption. It failed to rebut the presumption of surrender through tangential relation criteria and the doctrine of equivalents infringement jury verdict was vacated.
