United States Court of Appeals
for the Federal Circuit
__________________________
HONEYWELL INTERNATIONAL, INC., and
HONEYWELL INTELLECTUAL PROPERTIES,
INC.,
Plaintiffs-Appellants,
v.
UNITED STATES,
Defendant-Appellee,
and
LOCKHEED MARTIN CORPORATION,
Defendant-Appellee,
and
L-3 COMMUNICATIONS CORPORATION,
Defendant-Appellee.
__________________________
2008-5181
__________________________
Appeal from the United States Court of Federal
Claims in 02-CV-1909, Judge Susan G. Braden.
___________________________
Decided: May 25, 2010
___________________________
LAWRENCE J. GOTTS, Paul, Hastings, Janofsky &
Walker LLP, of Washington, DC, argued for plaintiffs-
HONEYWELL INTERNATIONAL v. US 2
appellants. With him on the brief was ELIZABETH MILLER
ROESEL. Of counsel on the brief was RICHARD G.
TARANTO, Farr & Taranto, of Washington, DC.
CHRISTOPHER L. CRUMBLEY, Attorney, Commercial
Litigation Branch, Civil Division, United States Depart-
ment of Justice, of Washington, DC, argued for defendant-
appellee United States. With him on the brief were
MICHAEL F. HERTZ, Acting Assistant Attorney General,
JOHN J. FARGO, Director, and TREVOR M. JEFFERSON,
Attorney.
THOMAS J. MADDEN, Venable LLP, of Washington, DC,
for defendant-appellee Lockheed Martin Corporation.
JOHN W. HARBIN, King & Spalding LLP, of Atlanta,
Georgia, argued for defendant-appellee L-3 Communica-
tions Corporation. With him on the brief were CHARLES
A. PANNELL, III and RICHARD W. MILLER. Of counsel on
the brief was JOHN H. HORNE, Adorno & Yoss, LLC, of
Atlanta, Georgia.
__________________________
Before MAYER, PROST, and MOORE, Circuit Judges.
Opinion for the court filed by Circuit Judge MOORE.
Opinion dissenting-in-part filed by Circuit Judge MAYER.
MOORE, Circuit Judge.
Honeywell International, Inc. and Honeywell Intellec-
tual Properties, Inc. (collectively, Honeywell) appeal from
a final judgment of the U.S. Court of Federal Claims. The
Court of Federal Claims held that the government in-
fringed independent claim 2 of the patent-in-suit but that
this claim is invalid. The Court of Federal Claims also
held that Honeywell lacks standing on its claim for just
3 HONEYWELL INTERNATIONAL v. US
compensation under the Invention Secrecy Act and that
the first sale doctrine precludes Honeywell from recover-
ing damages for one particular infringing system. For the
reasons set forth below, we reverse and remand for the
trial court to resolve the government’s defense related to
pre-issuance damages under the Invention Secrecy Act
and to determine damages.
BACKGROUND
The patent-in-suit is U.S. Patent No. 6,467,914 B1
(the ’914 patent), and it relates to passive night vision
goggles (NVGs) that are compatible with a full color
display when both are used in an aircraft cockpit. See
’914 patent col.1 ll.19–21, col.2 ll.1–5. NVGs operate by
amplifying available light, specifically light having a
relatively long wavelength (e.g., red and infrared light).
See id. col.1 ll.36–38. Thus cockpit displays that emit this
light, specifically red warning lights, can overwhelm NVG
sensor elements and lead to disruption of vision through
the NVGs. Id. col.1 ll.38–41. Still, “[i]t is important that
the display indicators remain illuminated, not only for the
benefit of the crewmen who are not wearing [NVGs], but
also because those using the goggles will typically view
the instruments by looking under the goggles.” Id. col.1
ll.42–46.
Prior art solutions involved eliminating and/or dim-
ming red and infrared light from cockpit displays. But
filtration used to eliminate this light “must be very effi-
HONEYWELL INTERNATIONAL v. US 4
cient because small amounts of light within the active
frequency range of the [NVGs] will overwhelm the
[NVGs].” Id. col.1 ll.51–54. In addition, “[t]he selective
filtration of light according to wavelength generally
prevents the use of full color displays . . . because fre-
quencies at the lower end of the visible spectrum overlap
with those frequencies which are received by the [NVGs].”
Id. col.1 ll.63–67. This second problem is particularly
significant because it prevents the use of red warning
lights, which are at the lower end of the visible spectrum,
in cockpit displays. Furthermore, with respect to dim-
ming light that is capable of overwhelming NVG sensor
elements, the light must be dimmed to such a degree that
it is no longer visible by crewman not wearing NVGs and
by persons looking under the NVGs.
In the 1980s, the government developed a standard
governing interior cockpit lighting that also addressed the
problem of NVG compatibility in cockpits having full color
displays. As witnesses testified at trial, it was important
for the government to retain red light in cockpits, particu-
larly for use as warning lights. For example, Dr. Harry
Lee Task, a member of the committee developing the
military’s corresponding specification, testified that
because red indicates warning “if at all possible the MIL
spec which was in consideration should be such that it
would retain red and yellow in the cockpit.” J.A. 501730
(explaining that “warning is associated with red and
amber is associated with caution”). And Col. William S.
Lawrence, Honeywell’s expert, testified that “red has
always been perceived as the color that denotes danger
and we find, as pilots and test pilots, red to be extraordi-
narily valuable in that role. The immediate perception of
danger is crucial to survival and we want red in the
cockpit.” J.A. 622806. Nevertheless, in January 1986, the
government issued a military specification (MIL-L-85762)
5 HONEYWELL INTERNATIONAL v. US
that prohibited the use of red light in NVG-compatible
cockpits.
On October 10, 1985, Allied Corporation filed Patent
Application No. 06/786,269 (the ’269 application), which
taught a way to continue to have red light in NVG-
compatible cockpits. Pursuant to the Invention Secrecy
Act, David McLure, a Naval Air Systems Command
engineer, reviewed this application in March 1986 and
concluded that a secrecy order should be imposed. Nota-
bly, Mr. McClure served on and eventually chaired the
government committee charged with revising MIL-L-
85762. After Mr. McClure reviewed the ’269 application,
the government revised its military specification to permit
the use of red light in NVG-compatible cockpits. The PTO
imposed secrecy orders on the ’269 application, which
prevented the patent from issuing, every year until 2000.
By this time, Allied Corporation had become AlliedSignal
Inc., which then merged with Honeywell Inc. to form
Honeywell International, Inc. This latter entity amended
the ’269 application, which then issued as the ’914 patent.
The invention claimed in the ’914 patent permits the
use of NVGs in cockpits having full color displays (includ-
ing red light) without the aforementioned problems asso-
ciated with the prior art. In the claimed invention, a local
color display emits blue, red, and green light. A combina-
tion of filters prevents the red light from disrupting vision
through the NVGs. Specifically, one filter passes only a
narrowband (i.e., a narrow range of frequencies) of red
light from the display; another filter at the NVG blocks
that narrowband of red light and passes all other ambient
red light. See ’914 patent col.4 ll.54–57, col.5 ll.4–8, col.5
ll.13–15. Thus the narrowband of red light passed from
the display does not reach (and overwhelm) the NVG
sensor elements. Figure 3 of the ’914 patent illustrates
this combination of filters.
HONEYWELL INTERNATIONAL v. US 6
Accordingly, red warning lights inside the cockpit do not
disrupt vision through the NVGs, pilots can look under
NVGs to view the warning lights, and crew members not
wearing NVGs can see these lights as well.
In 2002, about two months after the ’914 patent is-
sued, Honeywell filed a complaint against the United
States. Honeywell’s Amended Complaint seeks compen-
sation under the Invention Secrecy Act for pre-issuance
use of the invention and under 28 U.S.C. § 1498(a) for
post-issuance infringement of at least independent claims
1 and 2. Relevant to this appeal, the Court of Federal
Claims construed disputed claim terms, see Honeywell
Int’l, Inc. v. United States, 66 Fed. Cl. 400 (2005) (Claim
Construction Order), and held a trial on the issue of
infringement by three accused systems: (1) the Color
Multifunction Display (CMFD) and NVGs in the F-16
aircraft, (2) the Radar Display Unit (RDU) and NVGs in
the C-130H aircraft, and (3) the Color Multifunction
Display Unit (CMDU) and NVGs in the C-130J aircraft. 1
1 Lockheed Martin Corporation (Lockheed) inter-
vened with respect to the § 1498 claim because it is the
supplier and indemnitor to the government for the C-130J
aircraft. L-3 Communications Corporation (L-3 Commu-
nications) later intervened as an indemnitor to Lockheed
7 HONEYWELL INTERNATIONAL v. US
The court determined that all three accused systems
infringed claim 2—literally and under the doctrine of
equivalents—but that claim 1 and claim 3, which depends
from claim 2, were not infringed. See Honeywell Int’l, Inc.
v. United States, 70 Fed. Cl. 424 (2006) (Infringement
Order). The Court of Federal Claims then held separate
trials on Honeywell’s claim under the Invention Secrecy
Act, on the government’s infringement defenses, and on
damages. Ultimately, the court concluded that claim 2 is
invalid under 35 U.S.C. § 103(a) and, in the alternative,
the written description requirement of 35 U.S.C. § 112,
¶ 1. See Honeywell Int’l, Inc. v. United States, 81 Fed. Cl.
514, 538–72 (2008) (Invalidity/Defenses Order). The
Court of Federal Claims also determined that Honeywell
lacks standing under the Invention Secrecy Act because,
according to the court, the ’914 patent did not issue upon
an application that was subject to a secrecy order pursu-
ant to 35 U.S.C. § 181. See Honeywell Int’l, Inc. v. United
States, 81 Fed. Cl. 224 (2008) (Invention Secrecy Act
Order). Lastly, the Court of Federal Claims concluded
that the first sale doctrine precludes Honeywell from
recovering damages from the government for use of in-
fringing CMFDs and NVGs in the F-16 aircraft because
Honeywell Inc. manufactured and sold the CMFDs at
issue. See Invalidity/Defenses Order at 576–77. The
Court of Federal Claims entered judgment in favor of the
government, and Honeywell appeals. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(3).
DISCUSSION
This appeal raises issues relating to invalidity, stand-
ing under the Invention Secrecy Act, and the first sale
doctrine. We address each issue in turn.
because it supplied displays for the C-130J aircraft. We
will refer to defendants-appellees, collectively, as “the
government.”
HONEYWELL INTERNATIONAL v. US 8
I. Invalidity
The Court of Federal Claims found that the govern-
ment proved by clear and convincing evidence that claim
2 of the ’914 patent is invalid. Claim 2 recites the follow-
ing:
2. A display system for use in association with a
light amplifying passive night vision aid and a lo-
cal color display including a local source of light
having blue, red, and green color bands, compris-
ing:
(a) a plurality of filters at the local color
display including
(1) a first filter for filtering the
blue color band of the local source
of light;
(2) a second filter for filtering the
green color band of the local source
of light; and
(3) a third filter for filtering the
red color band of the local source
of light and passing a narrowband
of the red color band; and
(b) a fourth filter which filters light at the
night vision aid, said fourth filter cooper-
ating with said plurality of filters to sub-
stantially block at least said narrowband
of the red color band from being admitted
to the night vision aid.
The Court of Federal Claims based its invalidity determi-
nation on 35 U.S.C. § 103(a) and, in the alternative, the
written description requirement of 35 U.S.C. § 112, ¶ 1.
9 HONEYWELL INTERNATIONAL v. US
A. Obviousness
A patent shall not issue “if the differences between
the subject matter sought to be patented and the prior art
are such that the subject matter would have been obvious
at the time the invention was made to a person having
ordinary skill in the art to which said subject matter
pertains.” 35 U.S.C. § 103(a); see KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406–07 (2007) (“If a court . . . concludes
the claimed subject matter was obvious, the claim is
invalid under § 103.”). Obviousness is a question of law,
which we review de novo, with underlying factual ques-
tions, which we review for clear error following a bench
trial. See Scanner Techs. Corp. v. ICOS Vision Sys. Corp.
N.V., 528 F.3d 1365, 1379 (Fed. Cir. 2008). What a par-
ticular reference discloses is a question of fact. See Para-
Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085,
1088 (Fed. Cir. 1995).
The Court of Federal Claims held that claim 2 of the
’914 patent would have been obvious to a person of ordi-
nary skill at the time of the invention. Invalid-
ity/Defenses Order at 538–67. The court’s obviousness
determination involved five prior art references. The first
reference (Uchida) is an article authored by Tatsuo
Uchida, titled “A Liquid Crystal Multicolor Display Using
Color Filters,” and presented at the First European
Display Research Conference held on September 16–18,
1981 in Munich, Germany. The second reference (Stolov)
is U.S. Patent No. 4,368,963, titled “Multicolor Image or
Picture Projecting System Using Electronically Controlled
Slides” and naming Michael Stolov as the sole inventor.
The third reference (Boehm) is a paper authored by Dr.
H.D.V. Boehm, titled “The Night Vision Goggle Compati-
ble Helicopter Cockpit,” and presented at the Tenth
European Rotorcraft Forum held on August 28–31, 1984
in The Hague, The Netherlands. The fourth reference
(Verney) is an article authored by Jay F. Verney, titled
HONEYWELL INTERNATIONAL v. US 10
“Aircraft Lighting Systems,” and presented at the Ameri-
can Helicopter Society’s 41st Annual Forum Proceedings
held on May 15–17, 1985 in Fort Worth, Texas. The fifth
reference (the German patent application) is German
Patent Application No. DE 33 13 899 A1, published on
October 18, 1984. The Court of Federal Claims found that
Uchida and Stolov each disclose elements (a)(1) and (2) of
claim 2. The court found that Boehm discloses elements
(a)(3) and (b). The court also found that Verney discloses
element (a)(3) and that the German patent application
discloses element (b). Furthermore, the Court of Federal
Claims found that it would have been obvious to combine
these prior art references. Honeywell argues that the
Court of Federal Claims was clearly erroneous in finding,
among other things, that Boehm and Verney each disclose
element (a)(3).
Element (a)(3) of claim 2 recites “a plurality of filters
at the local color display including . . . (3) a third filter for
filtering the red color band of the local source of light and
passing a narrowband of the red color band.” The Court
of Federal Claims construed “local color display” and
“color bands” to require perceptible red light. Claim
Construction Order at 444; id. at 466 (“‘color
bands’ . . . ‘include the range of wavelengths, within which
the colors blue, red, and green are visible to the human
eye’” (emphasis added)). 2
Before the Court of Federal Claims, the parties’ dis-
putes regarding infringement and invalidity raised the
issue of whether the claimed invention requires the
passing of perceptible red light. With respect to claim 1,
the court explained that this claim requires the “local
2 The Court of Federal Claims further construed
“red color band” to mean “[a] range of color from 620 nm
to 780 nm” and “narrowband of the red color band” to
mean “a narrow range of wavelengths within the red color
band.” Claim Construction Order at 471, 487.
11 HONEYWELL INTERNATIONAL v. US
color display” to emit perceptible light within the red color
band. Infringement Order at 464 (concluding that the
designated displays emit perceptible light within the red
color band). During the phase of the litigation relating to
the government’s defenses, the Court of Federal Claims
explained that this interpretation applies equally to claim
2. See Trial Tr. 17:25–18:15, Nov. 13, 2006.
On appeal, the obviousness dispute turns upon
whether claim 2 requires perceptible red light. Claim
construction is a question of law, which we review de
novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1454–56 (Fed. Cir. 1998) (en banc). Claim 2—and specifi-
cally element (a)(3)—requires a local color display. The
specification describes “[a] local color display which
is . . . viewable by the crewmember, although the crew-
member would tend to avoid looking through the [NVG]
while viewing the color local display.” ’914 patent col.2
ll.40–44. The specification continues to explain that “[t]he
cockpit has several local displays such as [the aforemen-
tioned] color display, which are illuminated so as to be
clearly visible without the use of the [NVG].” Id. col.2
ll.57–59. In addition, figure 3 of the specification depicts
a local color display with a local source of light that com-
prises red, green, and blue color bands. Id. col.4 ll.40–41.
The Court of Federal Claims’ undisputed construction of
color bands requires light that is “visible to the human
eye.”
We conclude that the proper construction of local color
display is that it must emit perceptible red light. Fur-
thermore, element (a)(3) is a filter that passes a narrow
band of this red light. The claimed invention addressed
the need for red warning lights in NVG-compatible cock-
pits, and it is inconceivable that an aircraft would use
warning lights that are not perceptible to the crew. In
other words, there would be no point, in the context of this
invention, to pass a narrowband of red light that cannot
HONEYWELL INTERNATIONAL v. US 12
be seen. The local color display emits perceptible red
light, and element (a)(3) requires a narrow band of this
perceptible red light to pass. We conclude, therefore, that
element (a)(3) requires the passing of perceptible red
light—i.e., red light which is visible to the human eye.
In the context of obviousness, however, it appears as
though the Court of Federal Claims deviated from its
earlier construction with regard to claim 2. Specifically,
the court stated that its claim construction “did not re-
quire the perception of the red primary of a full color
display” and instead that the local color display requires
only that “at least one color [be] perceptible.” Invalid-
ity/Defenses Order at 545 (alteration in original). Impor-
tantly, the Court of Federal Claims’ obviousness
determination is premised on the conclusion that element
(a)(3), and in fact, claim 2, does not require the passing of
perceptible red light. In light of the correct construction
of element (a)(3), which requires the passing of percepti-
ble red light, we conclude that claim 2 would not have
been obvious to one of skill in the art. Neither Boehm nor
Verney disclose passing perceptible red light.
The government provided no evidence that either
Boehm or Verney discloses perceptible red light. The
government’s expert, Dr. Task, testified that “Boehm
discloses a splitting of the red color band at about 710
nm,” but he did not testify that Boehm discloses the
passing of perceptible red light. J.A. 623157. Honeywell
presented unrebutted expert testimony from Mr. Tannas
that graph IV of figure 3 does not disclose the passing of
perceptible red light:
Based upon the information contained in [Boehm,
Uchida and Stolov], it cannot be shown that the
LCD display of [Uchida] or the projection display
of [Stolov] would pass a “narrowband of the red
color band” if filtered with the BG 7 filter. These
references contain no information regarding the
13 HONEYWELL INTERNATIONAL v. US
emission spectrum of any light source that would
be used to illuminate the LCD or projection dis-
play and no information regarding the emission
spectrum of light emitted by the display after fil-
tering with BG 7. Therefore it cannot be shown
that the LCD display of [Uchida] or the projection
display of [Stolov] filtered with BG 7 would emit
light within the red color band or that such light
would be perceptible.
J.A. 622958. According to Mr. Tannas, “[b]ased upon its
transmission spectrum, it appears to me that the BG 7
filter would suppress red to such a degree that any red
light passing through the filter would not be sufficient to
provide the red primary of a full color display.” J.A.
622958–59. This unrebutted expert testimony is consis-
tent with various statements in Boehm. For example,
according to section 3 of Boehm, which identifies problems
of cockpit illumination, “[t]he main idea is to use only
special green and blue illumination in the cockpit or
switch off all lighting and use a special type of floodlight
when necessary.” J.A. 605298. This requirement of
“blue/green lighting” is listed among “the most important
factors for a NVG compatible cockpit.” Id. Moreover,
Boehm mentions the filtering of “red and near [infrared]”
light only with respect to incandescent lighting and
discusses green/blue light with respect to lighting from
the display. Boehm also states that “filtering conven-
tional incandescent lighting with dyed-glass filters [such
as BG-7] should be used sparingly.” J.A. 605302. Be-
cause the Court of Federal Claims’ analysis was premised
on an erroneous claim construction, it clearly erred in
finding that Boehm discloses element (a)(3) of claim 2.
With respect to Verney, the Court of Federal Claims’
analysis was more limited. See Invalidity/Defenses Order
at 546. First, the court relied on Dr. Task’s testimony
that Verney “shows excellent transmission out to about
HONEYWELL INTERNATIONAL v. US 14
640 nm and measurable transmission out to about 700
nm.” J.A. 623178. Again there is no testimony on
whether this would result in perceptible red light. Verney
teaches the conventional wisdom that “red or white inte-
gral lighting systems cannot be activated while the pilot
is using NVGs due to their adverse interaction . . . . To
meet this deficiency, a new infrared free blue-green light
has emerged as the basic type of light to be used in NVG
applications . . . .” J.A. 623393. Though the government
claims Verney discloses a transmission of wavelengths
within the red color band construed by the trial court,
there is no evidence that this transmission results in any
perceptible red light visible to the human eye. Second,
the court stated that “Honeywell does not dispute that
Verney discloses claim 2(3)(a) [sic].” Invalidity/Defenses
Order at 546 (citing Pls.’ Post-Trial Opp’n Br. Regarding
Defenses 61–62). But this statement is directly contra-
dicted by Honeywell’s brief before the Court of Federal
Claims. Citing testimony by Mr. Tannas, Honeywell
argued that “one of ordinary skill in the art would under-
stand that, because Verney teaches that the filtered red
warning light does not adversely affect the performance of
the NVGs, the red warning light would have to be
dimmed to a level where it is not perceptible to the hu-
man observer.” Pls.’ Post-Trial Opp’n Br. Regarding
Defenses 65 (explaining that “the Court’s claim construc-
tion requires that the ‘narrowband of the red color band’
that is emitted by a local color display be perceptible”).
Honeywell unambiguously contended that “Verney (DE-
511) is completely unrelated to the ’914 invention.” Id.
Third, according to the Court of Federal Claims, “Mr.
Tannas also agreed that ‘[Verney] is very close to the
CMFD filter.’” Invalidity/Defenses Order at 546 (altera-
tion in original). This statement alone, however, cannot
support a finding that Verney discloses the passing of
perceptible red light. Indeed it is clear from the reference
itself that Verney discloses only dimming and blocking
15 HONEYWELL INTERNATIONAL v. US
near infrared light, which is not the same as passing
perceptible red light. Specifically, Verney identifies two
approaches for permitting aircraft pilots to see caution
and warning lights through NVGs: (1) use limited filter-
ing to “cut[] out the near infrared [light]” and (2) “where
installation of limited filtering proves impracticable,” use
dimming to “set the intensity low enough so that [the]
energy level can be seen through the NVGs.” J.A. 623400
(stating in the context of the first approach that “[t]his
filter when combined with a source that is dimmable
provides an effective warning since the energy emitted
from the display stands out in the NVG without adversely
affecting their performance”). Verney concludes: “One
significant finding during the BLACK HAWK develop-
ment program is that red warning lights are permissible
in the cockpit if the appropriate filtering and dimming is
present.” J.A. 623402. The government points to no
record evidence to support a finding that Verney discloses
perceptible red light. For these reasons, the Court of
Federal Claims committed clear error in finding that
Verney discloses element (a)(3) of claim 2. Given the
failure to prove that the cited references disclose element
(a)(3), the government has failed to carry its burden of
proving by clear and convincing evidence that the claimed
invention would have been obvious to one of skill in the
art. In light of the foregoing, we need not address Hon-
eywell’s additional argument that the objective considera-
tions warranted a determination of nonobviousness.
B. Written Description
The Court of Federal Claims concluded, in the alter-
native, that claim 2 is invalid under the written descrip-
tion requirement of 35 U.S.C. § 112, ¶ 1.
Invalidity/Defenses Order at 567–72. “Compliance with
the written description requirement is a question of fact.”
ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368,
1376 (Fed. Cir. 2009). To comply, a patent applicant must
HONEYWELL INTERNATIONAL v. US 16
“convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in posses-
sion of the [claimed] invention.” Vas-Cath Inc. v. Mahur-
kar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis
omitted).
According to the Court of Federal Claims, claim 2 en-
compasses a variety of displays, but the originally filed
’269 application “contains no indication that the inventor
conceived of the invention being used with any displays
other than CRTs.” Invalidity/Defenses Order at 570.
During prosecution of the ’914 patent, Honeywell
amended the ’269 application to substitute claims from
another application for which the PTO had issued a notice
of allowability. Honeywell also amended the specification
and drawings of the ’269 application, including replacing
figure 3. It is true that figures 2 and 3 of the original
application disclosed an embodiment using a local display
(37) consisting of three monochromatic CRTs (51–53).
But the original application also explained that “[i]n the
case of the local display 37 using separate cathode ray
tubes 51–53 or other display transducers, it is possible to
more easily filter offending colors from reaching the
[NVG].” J.A. 606271 (emphasis added). Moreover, the
original application stated that “[w]hile specific configura-
tions of the local display . . . 37 have been described, it is
understood that the present invention can be applied to a
wide variety of display and vision aid devices.” J.A.
606272. While original figure 3 may have disclosed a
CRT, there is no reason, in light of the other statements
in the specification, to limit the disclosure to only CRTs.
For these reasons, the Court of Federal Claims clearly
erred in finding that the original application’s disclosure
was limited to CRT displays and that claim 2 of the ’914
patent is invalid under the written description require-
ment of 35 U.S.C. § 112, ¶ 1.
17 HONEYWELL INTERNATIONAL v. US
C. Indefiniteness
The government contends that the Court of Federal
Claims’ invalidity determination could alternatively be
affirmed by concluding that claim 2 is indefinite under 35
U.S.C. § 112, ¶ 2. Indefiniteness is a question of law,
which we review de novo. Exxon Research & Eng’g Co. v.
United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001). “[A]
claim is indefinite only if the ‘claim is insolubly ambigu-
ous, and no narrowing construction can properly be
adopted.’” Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341
F.3d 1332, 1338–39 (Fed. Cir. 2003) (quoting Exxon, 265
F.3d at 1375). “If the meaning of the claim is discernible,
even though the task may be formidable and the conclu-
sion may be one over which reasonable persons will
disagree, we have held the claim sufficiently clear to avoid
invalidity on indefiniteness grounds.” Exxon, 265 F.3d at
1375. Nevertheless, “[e]ven if a claim term’s definition
can be reduced to words, the claim is still indefinite if a
person of ordinary skill in the art cannot translate the
definition into meaningfully precise claim scope.” Halli-
burton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
1251 (Fed. Cir. 2008).
The Court of Federal Claims concluded that claim 2 is
not indefinite. Invalidity/Defenses Order at 574–76. The
court construed “local color display” to require “color
perceptible to an observer or observers utilizing a night
vision aid.” Claim Construction Order at 444. According
to the government, claim 2 is indefinite because “percep-
tible” is a subjective standard amenable to two different
interpretations—color and brightness. We disagree. In
Minnesota Mining & Manufacturing Co. v. Johnson &
Johnson Orthopaedics, Inc., 976 F.2d 1559 (Fed. Cir.
1992), we upheld a construction of “lubricant” that used
the term “slippery.” Id. at 1567. The accused infringer
argued that this construction “renders the claims indefi-
nite because it is impossible to know how ‘slippery’ the
HONEYWELL INTERNATIONAL v. US 18
product has to be.” Id. We explained that this argument
was “improperly framed in its use of the term ‘slippery’
because this term is not used in the claims. The claims
only require lubrication.” Id. We then held that “the
amount of lubrication required is laid out in the specifica-
tion and should be sufficient to achieve the fundamental
purpose of the invention.” Id. (stating also that “we do
not perceive any difficulty or confusion in determining
what is ‘lubricated’ and what is not lubricated in terms of
the . . . patent”).
In this case, claim 2 requires a “local color display”
and it is the court’s construction that uses the term “per-
ceptible.” Accordingly, like the accused infringer in
Minnesota Mining & Manufacturing, the government
improperly frames its argument by focusing on the term
“perceptible.” With respect to the claim term “local color
display,” the patent specification explains that the display
is “viewable by the crewmember.” ’914 patent col.2 ll.40–
42. The specification further describes a local color dis-
play that uses a local source of light comprising red,
green, and blue color bands, see id. col.4 ll.40–45, which
the Court of Federal Claims construed as “includ[ing] the
range of wavelengths, within which the colors blue, red,
and green are visible to the human eye.” Claim Construc-
tion Order at 466 (emphasis added). Moreover, the fun-
damental purpose of the invention is to permit displays
that convey information—i.e., red warning lights—to
crewmembers in an aircraft cockpit without such light
overwhelming sensor elements in NVGs. We do not
perceive any difficulty or confusion in determining what is
a local color display and what is not a local color display
in terms of the ’914 patent. That is, local color displays
are displays that emit visible, color light. Therefore,
because “local color display” is amenable to construction
and is not insolubly ambiguous, we agree with the Court
19 HONEYWELL INTERNATIONAL v. US
of Federal Claims that the government did not meet its
burden of proving that claim 2 is indefinite.
In sum, we conclude that the government has not met
its burden of proving that claim 2 is invalid. In about 1-
1/2 pages of briefing, L-3 Communications provides four
alternative bases on which to affirm. We see no merit in
these arguments.
II. Invention Secrecy Act
Honeywell’s Amended Complaint also seeks compen-
sation under the Invention Secrecy Act for pre-issuance
use of the invention. The Court of Federal Claims con-
cluded that “Honeywell cannot establish the second
element of Article III standing to assert a claim for just
compensation under the Invention Secrecy Act, i.e., ‘cau-
sation—a fairly traceable connection between the plain-
tiff’s injury and the complained-of conduct of the
defendant.’” Invention Secrecy Act Order at 233 (quoting
Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 103
(1998)). The “right to compensation” provision of the
Invention Secrecy Act provides as follows:
The owner of any patent issued upon an applica-
tion that was subject to a secrecy order issued
pursuant to section 181 of this title, who did not
apply for compensation [from a government
agency] as above provided, shall have the right,
after the date of issuance of such patent, to bring
suit in the United States Court of Federal Claims
for just compensation for the damage caused by
reason of the order of secrecy and/or use by the
Government of the invention resulting from his
disclosure.
35 U.S.C. § 183 (emphasis added). Section 184 states that
“[t]he term ‘application’ when used in this chapter in-
cludes applications and any modifications, amendments,
or supplements thereto, or divisions thereof.” Id. § 184.
HONEYWELL INTERNATIONAL v. US 20
The Court of Federal Claims concluded that “Honeywell’s
’914 patent did not issue ‘upon’ or ‘on’ the ’269 Application
as there is no contiguous relationship or dependence
between the two.” Invention Secrecy Act Order at 233.
According to the Court of Federal Claims, “the claims in
the ’269 Application, subject to the April 2, 1986 Secrecy
Order, were completely different than the claims in the
’914 patent that issued on October 22, 2002.” Id. at 232.
The court’s interpretation of § 183 contradicts the
plain language of the statute and its creation of a “con-
tiguous relationship or dependence” test lacks any foun-
dation in the text of the statute itself. The ’269
application issued, albeit after amendment, as the ’914
patent. Section 184 explicitly includes amendments made
to an application. Honeywell owns the ’914 patent, this
patent issued from the ’269 application, this application
was subject to a secrecy order. Honeywell thus has stand-
ing to assert a claim for just compensation under the
Invention Secrecy Act.
The government argues that several issues remain to
be decided regarding Honeywell’s pre-issuance damages
claim. All but one of these defenses, however, have been
resolved by our decision on standing. Claim amendments
during prosecution cannot defeat entitlement as the
statute does not require the proposed claims to have
issued – we have rejected the trial court’s “contiguous
relationship or dependence” test. The only remaining
issue is the government’s defense related to pre-issuance
damages for “use by the Government of the invention
resulting from his disclosure.” On remand, the Court of
Federal Claims should determine whether the statute
requires that the government use must result from the
disclosure, and, if so, whether it does in this case.
21 HONEYWELL INTERNATIONAL v. US
III. First Sale Doctrine
The Court of Federal Claims concluded that the first
sale doctrine precludes Honeywell from recovering dam-
ages from the government for use of at least one infring-
ing system. This appeal concerns three accused systems:
(1) the Color Multifunction Display (CMFD) and NVGs in
the F-16 aircraft, (2) the Radar Display Unit (RDU) and
NVGs in the C-130H aircraft, and (3) the Color Multifunc-
tion Display Unit (CMDU) and NVGs in the C-130J
aircraft. Importantly, Honeywell Inc. 3 manufactured and
sold the CMFDs. According to the Court of Federal
Claims, the first sale doctrine thus precludes Honeywell
from recovering damages from the government for use of
infringing CMFDs and NVGs in the F-16 aircraft. For the
first sale doctrine to apply, there must be an authorized
first sale. See Jazz Photo Corp. v. Int’l Trade Comm’n,
264 F.3d 1094, 1105 (Fed. Cir. 2001) (“To invoke the
protection of the first sale doctrine, the authorized first
sale must have occurred under the United States pat-
ent.”). This case presents a peculiar set of facts, to be
sure. Nevertheless, Honeywell Inc.’s sale of infringing
CMFDs was not authorized because, at the time of the
sale, Honeywell Inc. had no rights under the ’914 patent,
which AlliedSignal owned. The fact that Honeywell now
owns the patent does not retroactively authorize the
earlier sale. As such, the first sale doctrine does not
preclude Honeywell from recovering damages against the
government for use of infringing CMFDs and NVGs in the
F-16 aircraft. To the extent that the government has
recourse, such recourse is not through the first sale doc-
trine.
3 Recall that AlliedSignal was the original assignee
of the ’914 patent and that Honeywell (specifically Hon-
eywell International, Inc.) resulted from a December 1999
merger between AlliedSignal and Honeywell Inc.
HONEYWELL INTERNATIONAL v. US 22
CONCLUSION
We conclude (1) that the government has not proved
by clear and convincing evidence that claim 2 of the ’914
patent is invalid, (2) that Honeywell has standing to
assert a claim for just compensation under the Invention
Secrecy Act, and (3) that the first sale doctrine does not
preclude Honeywell from recovering damages against the
government for use of infringing CMFDs and NVGs in the
F-16 aircraft. Accordingly, the final judgment of the
Court of Federal Claims is reversed. We remand for the
trial court to resolve the government’s defense related to
pre-issuance damages under the Invention Secrecy Act
and to determine damages.
REVERSED and REMANDED
United States Court of Appeals
for the Federal Circuit
__________________________
HONEYWELL INTERNATIONAL, INC.,
and HONEYWELL INTELLECTUAL PROPERTIES,
INC.,
Plaintiffs-Appellants,
v.
UNITED STATES,
Defendant-Appellee,
and
LOCKHEED MARTIN CORPORATION,
Defendant-Appellee,
and
L-3 COMMUNICATIONS CORPORATION,
Defendant-Appellee.
__________________________
2008-5181
__________________________
Appeal from the United States Court of Federal
Claims in 02-CV-1909, Judge Susan G. Braden.
MAYER, Circuit Judge, dissenting-in-part.
In my view the trial court correctly decided that claim
2 of U.S. Patent No. 6,467,914 (“the ’914 patent”) is inva-
lid as obvious, that U.S. Patent Application No.
06/786,269 (“the ’269 application”), which eventually
issued as the ’914 patent, did not fully disclose the inven-
HONEYWELL INTERNATIONAL v. US 2
tion of claim 2 of the ’914 patent, and that Honeywell
International Inc. and Honeywell Intellectual Properties
Inc. (collectively “Honeywell”) are precluded from recover-
ing damages for infringement by products that a prede-
cessor company, Honeywell Inc., sold to the government.
I therefore respectfully dissent from Parts I.A, I.B, and III
of the court’s opinion.
I. Obviousness
The ’914 patent claims a color display system, such as
that used in aircraft cockpits, that is compatible with the
use of night vision goggles (“NVGs”). Compatibility
between a color display and NVGs is a concern because
the presence of too much light inside the cockpit, particu-
larly light with wavelengths in the red and infrared
regions of the spectrum, can overwhelm NVGs and inter-
fere with their use. There is no dispute that elements
(a)(1) and (a)(2) of claim 2 of the ’914 patent, which dis-
cuss filtering of the blue and green bands of the color
display, were well known in the art in 1985, the year the
’269 application was filed. Honeywell argues that what
would not have been obvious in 1985 is the idea of “split-
ting” the red color band, using filters to allow a narrow-
band of red to be displayed while blocking this same
narrowband at the NVGs, as is taught by claim 2 ele-
ments (a)(3) and (b). As the trial court correctly found,
however, the prior art does disclose this concept. One of
ordinary skill in the art in 1985 would have known how to
apply this prior art to a color display in a cockpit and
make adjustments to the filters and light source to
achieve the display system taught in claim 2 of the ’914
patent. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is . . . a person of ordi-
nary creativity, not an automaton.”). I would therefore
affirm the trial court’s determination that the claim is
invalid as obvious.
3 HONEYWELL INTERNATIONAL v. US
Element (a)(3) of claim 2 of the ’914 patent teaches a
filter “for filtering the red color band . . . and passing a
narrowband of the red color band.” According to the trial
court’s construction, the red color band represents light
with a wavelength between 620nm and 780nm. Honey-
well Int’l, Inc. v. United States, 66 Fed. Cl. 400, 470-71
(2005) (Claim Construction Order). One of the prior art
references employs a filter that passes red light from
620nm to 710nm, thereby teaching the limitation of
element (a)(3) of claim 2. See H.D.V. Boehm, The Night
Vision Goggle Compatible Helicopter Cockpit, Tenth
European Rotorcraft Forum, August 28-31, 1984
(“Boehm”). A second prior art reference also discloses the
limitation of element (a)(3), as it describes filtering that
allows for “excellent transmission throughout the visible
region and then cuts out the near infrared.” See Jay F.
Verney, Aircraft Lighting Systems, American Helicopter
Society, 41st Annual Forum Proceedings, May 15-17, 1985
(“Verney”). According to the government’s expert, Verney
“shows excellent transmission out to about 640 nm and
measurable transmission out to about 700 nm.”
The majority agrees with Honeywell’s argument that
the limitation of element (a)(3) of claim 2 is not met
because the filters employed in Boehm and Verney would
not pass perceptible red light. This argument confuses
the trial court’s holding that claim 2 requires perceptible
light to be emitted within the wavelengths defined as the
red color band with a holding that claim 2 requires light
to be emitted which is perceived as red. The trial court
consistently held the former—in its orders on claim
construction, infringement, and validity—and never held
the latter. See e.g. Honeywell Int’l, Inc. v. United States,
70 Fed. Cl. 424, 464 (2006) (Infringement Order) (noting
that the light emitted need not be perceived as red to
infringe the red color band element of claim 1); id. at 467
(“Claim 2(a)(3) of the ’914 patent requires only that the
HONEYWELL INTERNATIONAL v. US 4
third filter pass a ‘narrow band at the red color band,’ i.e.,
a narrow range of wavelengths within 620 nm to 660
nm.”) (emphasis added); Honeywell Int’l Inc., 81 Fed. Cl.
514, 545 (2008) (Invalidity/Defenses Order) (“The court’s
claim construction . . . did not require the perception of
the red primary of a full color display.”). ∗ In fact, the trial
court specifically found that the accused systems infringe
claim 2 despite the fact that they do not emit perceptible
red light; there is no indication that the accused systems
would have been found to infringe had the trial court
applied the majority’s new construction. Infringement
Order, 70 Fed. Cl. at 467; see also id. at 464 (rejecting the
argument that an accused system did not infringe claim 1
because there was no evidence that it “produces red
energy that can be detected by the human eye”). In any
case, testimony by experts for both Honeywell and the
government indicates that one of skill in the art at the
time would have known how to adjust the light source to
increase the perceptibility of the light in the red color
band while employing the filters of Boehm or Verney. In
determining whether a patented invention is invalid for
obviousness, “we do not ignore the modifications that one
skilled in the art would make to a device borrowed from
the prior art.” In re Icon Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007).
Element (b) of claim 2 of the ’914 patent employs a
complementary filter at the NVGs, which blocks the same
narrowband of red light that is passed by the filter of
∗
While the trial court construed “color bands” “to
include the range of wavelengths, within which the colors
blue, red, and green are visible to the human eye,” Claim
Construction Order, 66 Fed. Cl. at 466, this construction
does not mean that each color band is only present when a
human can perceive the relevant color. Instead, the
construction reflects the fact that the range of wave-
lengths associated with each band can only be defined in
terms of colors perceived by humans.
5 HONEYWELL INTERNATIONAL v. US
element (a)(3). The use of such a complementary filter at
the NVGs is described in Boehm and a third prior art
reference, German Patent Application, DE 33 13 899, Oct.
18, 1984 (“the German patent”). While neither reference
teaches a cutoff point (below which light will be blocked
from entering the NVGs) in the red color band, as is
taught by the ’914 patent, one skilled in the art at the
time the patent application was filed would have under-
stood that this cutoff point could be shifted along the
wavelength spectrum. In fact, the German patent clearly
teaches that the cutoff point can be set at any wavelength,
explaining that the display filter must simply block light
above some threshold wavelength and the NVG filter
must block light below that threshold wavelength.
The prior art therefore discloses all the elements of
claim 2 of the ’914 patent. While none of the references
perform the filtering exactly as taught by the claim, that
does not preclude a finding of obviousness. KSR Int’l, 550
U.S. at 418 (“[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary
skill in the art would employ.”). Once the military made
the decision to allow more red light in the cockpit, at the
expense of NVG performance, it would have been obvious
to those skilled in the art to combine these references to
allow the display of a limited amount of red light in such
a way as not to interfere with the NVGs, which is taught
by claim 2.
Honeywell’s argument against obviousness relies
heavily on secondary considerations. It places great
weight on the fact that, prior to the filing of the ’269
application, the military solved the NVG compatibility
problem by limiting the amount of red light in cockpits.
The military later provided a second option to pilots that
allowed a small amount of red light to be displayed with a
HONEYWELL INTERNATIONAL v. US 6
corresponding degradation in NVG functionality. Accord-
ing to Honeywell, this change reflects the military’s
review of the ’269 application, pursuant to the Invention
Secrecy Act, between the issuance of the two specifica-
tions governing NVG use in cockpits. Several military
witnesses testified, however, that the two events are
unrelated. Invalidity/Defenses Order, 81 Fed. Cl. at 564-
65. The change in the military specification reflected a
desire on the part of some military pilots, particularly
those of fixed-wing aircraft, to sacrifice some amount of
NVG sensitivity in exchange for allowing more red light to
be displayed in the cockpit. This was a simple shift,
changing the cutoff point for the red light that could be
displayed (and was therefore blocked by the NVGs) from
625nm to 665nm, a shift that was well within the techni-
cal ability of those of ordinary skill in the art at the time.
An additional influence on the military specification
was the advancements made to the color displays them-
selves, which were in their infancy at the time the origi-
nal NVG specification was drafted. Problems with the
use of color displays that were independent of NVG com-
patibility—in particular their limited daylight readabil-
ity—initially prevented the military from attempting to
accommodate their use in cockpits. Once these problems
were resolved and color displays could otherwise be
implemented, their compatibility with NVGs became
more important. These factors, not the review of the ’269
application, caused the military to adjust the specification
governing red light in cockpits. See KSR Int’l, 550 U.S. at
419 (“[I]t often may be the case that market demand,
rather than scientific literature, will drive design
trends.”). The secondary considerations advanced by
Honeywell are therefore insufficient to overcome the
strong showing of obviousness.
7 HONEYWELL INTERNATIONAL v. US
II. Written Description
The three claims that issued in the ’914 patent were
not filed with the original ’269 application. Instead, they
were first filed in a continuation of the related ’268 appli-
cation, years after the ’269 application was filed. Honey-
well later abandoned the continuation and transferred its
allowed claims to the ’269 application, making conforming
amendments to the ’269 specification and drawings.
The trial court held that the ’269 application did not
fully disclose the invention of claim 2 of the ’914 patent.
The ’914 patent claims “a local source of light having blue,
red, and green color bands.” To this single, multiband
source of light the ’914 patent applies “a plurality of
filters,” including one that filters only the red color band
and passes a narrowband of red. In contrast, the ’269
application claimed a local source of light that “includes a
plurality of distinct monochromatic color generators.” In
other words, each color generator would emit a single
color: red, green, or blue. The application further claimed
a bandpass filter “arranged to block light from one of said
color generators except at preferred range of frequencies.”
In this manner the ’269 application sought to limit the red
light emitted by the display; a bandpass filter over the red
color generator would allow only a portion of the red color
band to pass.
In order to meet the written description requirement
of 35 U.S.C. § 112, the specification “must describe the
invention sufficiently to convey to a person of skill in the
art that the patentee had possession of the claimed inven-
tion at the time of the application, i.e., that the patentee
invented what is claimed.” LizardTech, Inc. v. Earth Res.
Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005).
There is no indication in the ’269 application that the
inventor conceived, at that time, the invention in claim 2
of the ’914 patent, which filters a single source of light
HONEYWELL INTERNATIONAL v. US 8
carrying multiple color bands. As noted by the trial court,
the use of the bandpass filter described in the ’269 appli-
cation over the multiband light source claimed in the ’914
patent would render the full color display inoperative.
Invalidity/Defenses Order, 81 Fed. Cl. at 569-70. This is
because the bandpass filter of the ’269 application would
block everything except the narrow red band, including
the blue and green light, resulting in the display of only
red light. The trial court therefore did not commit clear
error in finding that the original disclosure of three sepa-
rate, monochromatic light generators would not demon-
strate to one skilled in the art that the inventor possessed
the subject matter of claim 2 at the time the application
was filed.
III. First Sale Doctrine
One of the accused infringing devices, the Color Multi-
function Display (“CMFD”) installed in F-16 aircraft, was
manufactured and sold to the government by Honeywell
Inc. prior to its 1999 merger with AlliedSignal Inc., the
company that held the rights to the ’269 application.
Honeywell resulted from the merger of the two compa-
nies. The trial court held that Honeywell is barred by the
first sale doctrine from recovering damages for infringe-
ment because “[t]he patentee and the seller of the pat-
ented product . . . are now the same corporate entity.”
Invalidity/Defenses Order, 81 Fed. Cl. at 576-77. Once
again, I would affirm.
The sale by a patentee of a patented product extin-
guishes the patent rights with respect to that product.
Quanta Computer, Inc. v. LG Elecs., Inc., 128 S. Ct. 2109,
2115 (2008). While the seller of the CMFDs did not hold
the rights to the ’269 application at the time they were
sold, the interests of the owner of the application later
merged with those of the company that sold the infringing
devices. Because Honeywell received compensation for
9 HONEYWELL INTERNATIONAL v. US
the sales, through Honeywell Inc., its patent rights in
those products are extinguished. The majority’s contrary
finding allows Honeywell to recover for infringement
when Honeywell itself is the ultimate recipient of the
profits from the sale of the infringing products.
This situation parallels that presented in AMP Inc. v.
United States, 389 F.2d 448 (Ct. Cl. 1968). There the
court held that a patentee was barred from using a preex-
isting, but later acquired, patent to derogate from a
license negotiated under a different patent, noting “[t]he
grantor is estopped from taking back in any extent that
for which he has already received consideration.” Id. at
452; see also Hewlett-Packard Co. v. Repeat-O-Type Sten-
cil Mfg. Corp., 123 F.3d 1445, 1451 (Fed. Cir. 1997)
(“Generally, when a seller sells a product without restric-
tion, it in effect promises the purchaser that in exchange
for the price paid, it will not interfere with the purchaser’s
full enjoyment of the product purchased.”). Similarly,
Honeywell should not be permitted to interfere with the
government’s enjoyment of products sold to the govern-
ment by its predecessor.