Honeywell International Inc. v. Universal Avionics Systems Corp.

United States Court of Appeals for the Federal Circuit

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HONEYWELL INTERNATIONAL INC. and
HONEYWELL INTELLECTUAL PROPERTIES INC.,

Plaintiffs-Appellants,

v.

UNIVERSAL AVIONICS SYSTEMS CORP.,

Defendant-Cross Appellant,

and

SANDEL AVIONICS INC.,

Defendant-Cross Appellant.

Steven D. McCormick, Kirkland & Ellis, LLP, of Chicago, Illinois, argued for
plaintiffs-appellants. With him on the brief was Christopher Landau, of Washington, DC.
Of counsel on the brief was Sarah Sklover, Mayer Brown Rowe & Maw LLP, of New
York, New York. Of counsel was John C. O’Quinn.

Scott J. Bornstein, Greenberg Traurig, LLP, of New York, New York, argued for
defendant-cross appellant Universal Avionics Systems Corp. With him on the brief was
William G.Todd.

Howard G. Pollack, Fish & Richardson P.C., of Redwood City, California, argued
for defendant-cross appellant Sandel Avionics, Inc. With him on the brief were Frank E.
Scherkenbach, of Boston, Massachusetts, Michael R. Headley, of Redwood, California,
and John A, Dragseth, of Minneapolis, Minnesota.

Appealed from: United States District Court for the District of Delaware

Magistrate Judge Mary Patricia Thynge
 United States Court of Appeals for the Federal Circuit

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HONEYWELL INTERNATIONAL INC. and
HONEYWELL INTELLECTUAL PROPERTIES INC.,

Plaintiffs-Appellants,

v.

UNIVERSAL AVIONICS SYSTEMS CORP.,

Defendant-Cross Appellant,
and

SANDEL AVIONICS INC.,

Defendant-Cross Appellant.

___________________________

DECIDED: May 25, 2007
___________________________

Before RADER, GAJARSA, and DYK, Circuit Judges.

RADER, Circuit Judge.

In a series of decisions on summary judgment, the United States District Court

for the District of Delaware invalidated certain claims and found no infringement of

patents owned by Honeywell International Inc. and Honeywell Intellectual Properties

Inc. (Honeywell). Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp., 343 F. Supp. 2d

272 (D. Del. 2004) (Final Decision); Honeywell Int'l, Inc. v. Universal Avionics Sys.

Corp., 264 F. Supp. 2d 135 (D. Del. 2003) (Claim Construction Decision); Honeywell

Int'l, Inc., v. Universal Avionics Sys. Corp., 288 F. Supp. 2d 638 (D. Del. 2003)
(Invalidity Decision); Honeywell Int'l, Inc., v. Universal Avionics Sys. Corp., 289 F. Supp.

2d 493 (D. Del. 2003) (Non-infringement Decision). Honeywell contests issues of claim

construction, infringement, and subject matter jurisdiction on a few claims withdrawn

from the litigation. Universal Avionics Systems Corp. (Universal) and Sandel Avionics

Inc. (Sandel) cross-appeal the district court's final decision that other remaining claims

were not barred by public uses or premature sales activity. Final Decision, 343 F. Supp.

2d at 309. In addition, Sandel appeals the district court's determination that Honeywell

did not commit inequitable conduct. Id. at 313. Universal further appeals the district

court's denial of its commercial counterclaims. Final Decision, 343 F. Supp. 2d at 319.

Finding errors, this court vacates the claim construction of a few terms and remands for

a new infringement determination. This court affirms the district court’s retention of

jurisdiction over the withdrawn claims and the district court's decision that § 102(b) does

not erect a bar.

I

This patent infringement case involves aviation electronics, specifically terrain

warning systems. "Terrain warning systems" warn pilots to prevent them from flying into

a mountain or hillside. This type of accident is called a "controlled flight into terrain"

(CFIT).

Air travel has benefited from terrain warning technology for approximately thirty

years. The prior art technology, known as "ground proximity warning systems" or

(GPWS), sharply reduced CFIT accidents beginning in the 1970s and 80s. This GPWS

technology, however, featured a number of limitations. GPWS technology used radio

waves to measure the distance of the aircraft above the ground. Using the downward

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looking information from the radio altimeter, GPWS technology tried to predict the threat

of CFIT posed by terrain near the aircraft. This system worked well for gradual changes

in terrain. The GPWS system, however, provided no reliable warnings in abruptly

changing terrain. In sum, the prior art did not provide information regarding the terrain

ahead of the aircraft.

Honeywell began research in the 1980s aimed at developing a "look ahead"

terrain warning system. Without forward-looking radar or forward-looking sensors

aboard civilian aircraft, Honeywell's research focused on a "virtual" look ahead system.

This virtual system would not physically detect the terrain ahead of the aircraft but

instead would compare the aircraft’s position with an on-board digitized map of the

earth’s terrain and man-made obstacles. In 1995, Honeywell received patent protection

for its virtual look ahead system, including the five patents-in-suit: U.S. Patent Nos.

5,839,080 (the '080 patent), 6,092,009 (the '009 patent), 6,122,570 (the '570 patent),

6,138,060 (the '060 patent), and 6,219,592 (the '592 patent). These patents fall into two

main categories: the "look ahead patents" ('080, '570, and '592) and the "display

patents" ('060 and '009).

The patented technology works as a system of algorithms that define a volume of

space referred to as an alert envelope. The alert envelope is defined by: (1) the

aircraft's flight path, (2) the look ahead distance, and (3) the terrain boundary floor. This

alert envelope takes into account the position and speed of the aircraft as well as the

flight path. The system then searches the database of digitized maps and warns about

any terrain or obstacles within the alert envelope. The system refers to alert distance in

front of the aircraft as the "look ahead distance." The distance that the system looks

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below the aircraft depends on a safe terrain clearance value, referred to as a "terrain

floor boundary." This boundary varies as a function of the aircraft's distance from a

reference point, such as an airport or runway. The look ahead patents disclose the

inputs into the system, the definition of alert inputs, and the output alerts. The display

patents disclose and claim various methods for providing representations of the terrain

surrounding the aircraft, including the display of the contours of threatening terrain.

Honeywell contacted the FAA in early 1995 seeking certification for its "look

ahead" terrain warning system. Honeywell called its system an "Enhanced Grand

Proximity Warning System" or "EGPWS." In 1996, stemming from the CFIT accident

that claimed the life of Commerce Secretary Ron Brown, the United States Congress

pressured the FAA to issue regulations raising the requirements for CFIT prevention

technology. The FAA now requires that all commercial aircraft of a certain size include

a look ahead warning system.

Following the release of FAA's system requirements, Universal and Sandel

began to develop competing terrain warning systems. Universal introduced its certified

system, which it called TAWS, in 2000. Sandel announced its system, which it called

the ST3400 TAWS/RMI in 2000. Both the Universal and Sandel systems are virtual

look ahead systems. Sandel asserts, however, that its device lacks at least five

limitations in the asserted patent claims. Similarly, Universal argues that the asserted

claims as construed by the trial court do not cover its system.

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 Honeywell brought suit against Universal and Sandel in the District of Delaware

in 2002. 1 The district court construed the claims in a Memorandum Opinion dated May

30, 2003. Claim Construction Decision, 264 F. Supp. 2d at 135. On October 16, 2003,

the district court granted defendants' motions for summary judgment of invalidity of

certain claims that had been withdrawn from the litigation. Invalidity Decision, 288 F.

Supp. 2d at 638. The district court granted defendants' summary judgment motions of

non-infringement on October 28 and 29, 2003. Non-infringement Decision, 289 F.

Supp. 2d at 493. The district court denied all of defendants' remaining counterclaims of

invalidity during a seven-day bench trial which began on November 2, 2003. Final

Decision, 343 F. Supp. 2d at 272.

II

Honeywell appeals the district court's construction of five claim terms. This court

reviews claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138

F.3d 1448, 1456 (Fed. Cir. 1998). Claim one of the '080 patent contains four of those

five contested claim terms, including the claim terms "signals representative of," "look

ahead distance," "alert envelope," and "terrain floor boundary." These terms mean the

same thing in each patent. Claim 1 of the '080 patent recites:

An apparatus for alerting a pilot of an aircraft of proximity to terrain,
the apparatus comprising:

an input for receiving signals representative of a position of the
aircraft, a flight path angle of the aircraft and a speed of the aircraft and
coupled to a data base of stored terrain information;

1
The case was originally assigned to the Honorable Roderick McKelvie, but after
he announced his departure from the bench the parties agreed to have the case tried by
Magistrate Judge Mary Patricia Thynge.

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 an output;

a signal processing device, coupled to said input, and coupled to
said output, for:

(a) defining a look ahead distance as a function of the speed
of the aircraft;

(b) defining a first alert envelope, indicative of a first severity
of terrain threat,

wherein boundaries of said first alert envelope are determined as a
first function of the flight path angle, said look ahead distance, and a
terrain floor boundary;

(b) [sic] defining a second alert envelope, indicative of a
second severity of terrain threat, wherein boundaries of said second alert
envelope are determined as a second function of the flight path angle,
said look ahead distance and said terrain floor boundary; and

(d) outputting an alert signal when a subset of the stored
terrain information is located within the boundaries of at least one of the
said first and said second alert envelopes.

(emphases added).

The one remaining contested claim term —highest hmax and lowest hmin—

appears only in the '009 patent, one of the display patents. Independent claim 1 of the

'009 patent recites:

An aircraft terrain information system for providing a visual display to the
pilot of the contours of the terrain proximate to the aircraft, the warning
system comprising:

position means for receiving signals representative of the position of the
aircraft terrain data means for storing terrain data representative of terrain
elevations;

a cockpit display; and

contour means, responsive to said position means and said terrain data
means, for displaying on said cockpit display a display of the contours of
at least a portion of the terrain proximate to the aircraft wherein said

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 contour display includes the highest hmax and lowest hmin terrain levels of
said portion of the terrain.

(emphasis added).

Only two of the five contested terms contributed to the summary judgment of

non-infringement. Universal advises this court to construe only the terms "look ahead

distance" and "terrain floor boundary" because those terms controlled the district court's

infringement determination. Without citing any authority, Universal argues that this

court may not have jurisdiction to consider the construction of the remaining claim

terms. However, the district court discerned factual issues in dispute regarding

infringement of those remaining terms. Thus, this court proceeds to evaluate all five

contested terms.

A. "Look ahead distance"

Claim 1 of the '080 patent requires a signaling device for "defining a look ahead

distance as a function of the speed of the aircraft." The district court construed the term

"look ahead distance" to mean "a distance along the ground track of the aircraft that

marks the outer limit of each alert envelope that is a function of aircraft speed and time

to complete an evasive maneuver." Claim Construction Decision, 264 F. Supp. 2d at

146.

Honeywell argues that the correct construction of this term would define the

distance the system looks ahead of the aircraft as a function of speed of the aircraft,

according to the language of the claim. While the specification describes in detail the

manner in which Honeywell calculates the time component of the look ahead distance in

its preferred embodiment, the claim itself includes no limitation regarding the time

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component, asserts Honeywell. Thus, Honeywell argues the district court improperly

read a limitation into the claim from a preferred embodiment.

The district court correctly construed "look ahead distance." "Look ahead

distance" is not a term of art. As the record shows, time is inherent in the calculation of

"look ahead distance." Usage within the patent makes clear that the purpose of the

"look ahead distance" limitation is to allow time to make an evasive maneuver. The

specification states that "look ahead distance" is a function of airplane speed and "look

ahead time." '080 patent col.9 ll.14-15. "Look ahead time" is thus the time necessary to

make an evasive maneuver. In the preferred embodiment, the patent describes "look

ahead distance" as the sum of time for "a single turning radium," time for "terrain

clearance at the top of the turn," and "a predetermined reaction" time. '080 patent col.9

ll.16-19; see also '080 patent FIGURE 5. Given the clear purpose of the "look ahead

distance" limitation, this court concludes that the district court correctly construed it to

mean "[a] distance along the ground track of the aircraft that marks the outer limit of

each alert envelope and that is a function of aircraft speed and time to complete an

evasive maneuver."

However, even under the district court’s claim construction, this court finds that

the grant of summary judgment was improper. The record shows a genuine issue of

material fact because there is evidence that the allegedly infringing devices were also

set to provide a warning that allows time to conduct an evasive maneuver. As the

district court noted, Sandel’s system provides a "caution" alert at 60 seconds, which is

called the "time to impact scheme," and a "warning" alert at 30 seconds. Expert

testimony noted that Sandel’s system provided "the pilot time to decide what is the best

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course of action under the unique circumstances presented." Universal’s system also

uses a fixed "time to impact," which is set to a default of 30 and 60 seconds.

Documents that were part of the summary judgment record specifically suggest that the

"look ahead" feature allowed "time for the pilot to make the necessary maneuvers or

data corrections for terrain avoidance." Accordingly, this court remands on the question

of whether the allegedly infringing devices infringe under the district court’s construction

of "look ahead distance."

B. "Terrain Floor Boundary"

Claim 1 of the '080 patent further requires alert envelopes which are calculated in

part by a measurement of the "terrain floor boundary." The district court construed the

term to mean "a boundary that extends downwardly below the aircraft which is

proportional to the distance to the closest runway." Claim Construction Decision, 264 F.

Supp. 2d at 150 (emphases added). Honeywell finds no limitation in the claim tying this

term to a proportional distance to the closest runway. Again, Honeywell argues that the

district court incorrectly read a limitation from the specification into the claim.

As the district court correctly noted, the term "terrain floor boundary" had no

ordinary meaning to a skilled artisan at the time of filing of the patent application. Id. at

151 ("Further, there is no evidence to indicate that 'terrain floor boundary' was a term

having ordinary meaning known to one skilled in the art at the time of the filing of the

patent application."). Without a customary meaning of a term within the art, the

specification usually supplies the best context for deciphering claim meaning. Irdeto

Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004). Here,

the specification states: "The terrain floor boundary is the basis for the terrain threat

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boundaries and is similar to the terrain floor developed for the GPWS." '080 patent

col.10 ll.38-40. The patent then explains: "The terrain floor relates to a distance ∆H

below the aircraft and is proportional to the distance to the closest runway to prevent

nuisance warnings when the aircraft is taking off and landing . . . ." '080 patent col.10

ll.40-42 (emphasis added). The district court used this general language about the

terrain floor as its primary reference for defining "terrain floor boundary." While

Honeywell notes that the patent proceeds later to discuss "terrain floor boundary" more

specifically as a "function of the distance from the runway," '080 patent col.11 ll.18-19

(emphases added), and again, in the discussion of terrain warning boundaries, the

patent defines the ∆H terrain floor as "a function of the distance from a runway," '080

patent col.12 ll.8-10 (emphases added), this function is defined in the specification as

distance proportional to the closest runway. As such, this court disagrees with

Honeywell that the district court improperly read a limitation from the specification into

the claim.

However, this court again finds that while the district court correctly construed the

term, its finding of non-infringement by Sandel and Universal was erroneous. The

Universal device calculates terrain floor boundary as a function of the destination

runway. However, Universal's software requirements state that when the airplane

deviates from the flight plan, the software redefines the destination as the airport and

runway "with the closest Runway Threshold." Sandel's device calculates the terrain

floor boundary—which Sandel calls "clearance buffer"—as a function of the distance to

the closest runway and the altitude of the airplane. Sandel's CEO, Gerald Block,

testified that Sandel's "clearance buffer" "is based on both the distance of the airplane

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from and the altitude of the airplane above the weighted average distance of the nearest

runways or airport reference points." Thus this court discerns issues of material fact

regarding whether the accused devices infringe the "terrain floor boundary" limitation as

construed by the district court.

C. "Signals Representative Of"

Claim 1 of the '080 patent further requires that the apparatus have "an input for

receiving signals representative of a position of the aircraft, a flight path angle of the

aircraft and the speed of the aircraft coupled to a data base of stored terrain

information." (emphasis added). The district court interpreted the phrase "signals

representative of" to mean "[t]he signals received by the apparatus are instantaneous

values of the recited variables; i.e. they indicate the numerical value of that variable at a

given sampling time." Claim Construction Decision, 264 F. Supp. 2d at 145. In

explaining this claim construction, the district court stated:

Honeywell argues that its patent covers any signal relating to the angle,
position, and speed of the flight . . . The terrain awareness systems
compare flight data with stored terrain information, in order to warn the
pilots of danger. If the court construed Honeywell's patent to include any
signal representing one of the previously mentioned variable, it would
claim both signals which indicate threat, and signals which do not. Since
the point of the invention is to warn of dangerous conditions, the patent
should be limited to signals which represent threat. Because a pilot
cannot read a signal, the signals are transformed into numbers, thus
"dangerous signals" are understood in terms of numbers . . . Thus,
reading the patents in the broad manner that Honeywell proposes, that is,
allowing the patents to apply to the entire spectrum of signals, would
defeat the purpose of the patent.

Id. at 145-46.

Honeywell argues on appeal that the district court unduly narrowed the term

"signals." Honeywell contends that the term should encompass any electronic, visual,

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audible, or other ways to convey such information. Further, Honeywell argues that

"signals representative of" are, by definition, such signals that represent or portray.

Honeywell argues that nothing in the claims, specification, or prosecution history limits

the signals to instantaneous and numerical values.

Universal states that the term "signals representative of" should mean "that the

input receives signals from other devices which represent discreet and instantaneous

numeric values of recited variables that warn a pilot of dangerous conditions."

However, Universal offers no argument to support this interpretation.

Sandel supports the district court's construction as based on the claim language

itself; i.e. that the claim requires "signals representative of" position, flight path angle,

and speed in calculating distances and creating alert envelopes. According to Sandel,

only numerical terms allow the system to function, but Sandel offers no evidence in

support of this assertion.

This court has acknowledged: "In some cases, the ordinary meaning of claim

language . . . involves little more than the application of the widely accepted meaning of

commonly understood words." Phillips, 415 F.3d at 1314. Consistent with that

guidance, this court perceives that the signals represent the inputs into the system,

namely the position, flight path angle, and speed of the aircraft. The patent does not

require numerical or instantaneous signals. In context, one of ordinary skill in this art

would consider the district court's construction too narrow.

Apparently the district court unduly narrowed the claim based on its overall

perception of the invention. Specifically, the district court assumed that the pilot reads

the signals at issue. Claim Construction Decision, 264 F. Supp. 2d at 145-46. To the

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contrary, the signals represent the inputs into the system about aircraft position, speed,

and flight angle, not a data representation for pilot consumption. The pilot does not

read these inputs. Instead the system's software processes these inputs to generate

visual and aural warnings. Thus, the trial court erred by stating that the pilot would read

these signals.

In sum, one of ordinary skill in this art would not limit this term to numerical or

instantaneous values. Rather these signals are inputs into the system which uses its

algorithms to process this information into appropriate warnings.

D. "Alert Envelope"

Honeywell appeals the district court's claim construction of the term "alert

envelope." Claim 1 of the '080 patent calls for a "first alert envelope" and a "second

alert envelope." According to the claim, these indicate a first and second terrain threat.

The district court construed "first alert envelope" as a "term of art in avionics and means

an at least 2-dimensional region in the vertical plane surrounded by a continuous

boundary." Claim Construction Decision, 264 F. Supp. 2d at 148. For the term "second

alert envelope," the district court required "two distinct alert zones, the boundaries of

which are independently determined by distinct first and second functions of the same

variables; specifically flight path angle, look ahead distance, and terrain floor boundary."

Id. The district court construed the terms according to its reading of "the language set

forth in the claim." Id.

Claim 1 of the '080 patent describes the "first alert envelope" as a determination

of the "first function of the flight path angle, said look ahead distance and said terrain

floor boundary." Claim 1 of the '080 patent describes the "second alert envelope" as

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"indicative of a second severity of terrain threat, wherein boundaries of said second alert

envelope are determined as a second function of the flight path angle, said look ahead

distance and said terrain floor boundary" and "outputting an alert signal when a subset

of the stored terrain information is located within the boundaries of at least one of said

first and second alert envelopes."

Once again, the claim itself provides considerable information about its meaning.

In part, the district court correctly defined the "alert envelope" as a two dimensional

region of space with some detail about the way to determine the boundaries of each

envelope. The district court, however, incorrectly added the limitations not found in the

specific language of the claim. Specifically, the trial court read in requirements that the

alert envelope appear "in the vertical plane" and "surrounded by a continuous

boundary." The claim itself explains that "alert envelope" encompasses "an at least two

dimensional region whose boundaries are determined as a function of the flight path

angle, look ahead distance and terrain floor boundary." In sum, one of skill in this art

would agree that the claim defines this term adequately without additional limitations.

E. Highest Hmax and lowest Hmin

Finally, Honeywell appeals the district court's claim construction of the

requirement of a "highest Hmax and lowest Hmin." Claim 1 of the '009 patent requires the

terrain display to include "the highest hmax and lowest hmin terrain levels of said portion of

the terrain." The district court construed this phrase to require "that the display show a

numeric value for the highest and lowest points." Claim Construction Decision, 264 F.

Supp. 2d at 155. The district court stated that "without numeric values, the highest and

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lowest points display would be useless to the pilot because he would have no frame of

reference of the terrain relative to the aircraft." Id.

Once again, as occurred with the numeric inclusion above, the district court

included an unnecessary limitation in the claim. Indeed, dependent claim 21 specifically

discloses a display with numeric information. '009 patent col.40 ll.8-10 ("The system of

claim 1 wherein said contour means additionally displays on said cockpit display a

range value.") As this court has noted, "the claims themselves provide particular

meaning to claim terms." Phillips, 415 F.3d at 1314. "Other claims of the patent in

question, both asserted and unasserted, can also be valuable sources of enlightenment

as to the meaning of a claim term." Id. (citing Virtonics Corp. v. Conceptronic, Inc., 90

F.3d 1576, 1582 (Fed Cir. 1996)). Finally, "the presence of a dependent claim that adds

a particular limitation gives rise to a presumption that the limitation in question is not

present in the independent claim." Phillips, 415 F.3d at 1315 (citing Liebel-Flarsheim

Co. v. Medrad, Inc., 353 F.3d 898, 910 (Fed. Cir. 2004)). Thus, the language of claim

21 is strong evidence against limiting claim 1 to require a numeric display. As such, this

court construes the claim phrase "highest hmax and lowest hmin" to require only an

apparatus that shows the highest and lowest points of the terrain within the portion of

terrain displayed.

In light of the full context of the claims and intrinsic evidence, this court

determines that one of ordinary skill in this art would perceive undue limitations in three

of the five contested aspects of the district court's claim construction. On remand, the

trial court will have an opportunity to apply this broader claim construction in the context

of infringement and validity.

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 III

The district court precluded Honeywell from relying on the doctrine of

equivalents. In fact, the trial court excluded Honeywell's only evidence of equivalents,

the deposition testimony of Dr. Hansman. The district court determined that Dr.

Hansman's belated testimony on the doctrine of equivalents was defective because it

was not contained in his expert report.

The district court set a fixed date for disclosing expert testimony and Honeywell

made no mention of the doctrine of equivalents in its expert reports filed on that date.

During cross examination for Dr. Hansman's deposition, he did not testify about the

doctrine of equivalents other than a statement that he had not formed any opinions on

the matter. On the next day, during direct examination by his attorney, however, Dr.

Hansman expressed an opinion on equivalents. Dr. Hansman admitted to discussions

with his counsel.

On appeal this court must determine whether Honeywell properly supplemented

Dr. Hansman's expert report under Fed. Rule of Civ. Proc. 26(e). Evidentiary rulings do

not generally raise issues unique to patent law. Therefore, this court applies the law of

the appropriate regional circuit to such procedural rulings. Rhodia Chimie v. PPG

Indus. Inc., 402 F.3d 1371, 1376-77 (Fed. Cir. 2005) (citing ATD Corp. v. Lydall, Inc.,

159 F.3d 534, 548 (Fed. Cir. 1998)). The United States Court of Appeals for the Third

Circuit reviews a district court's decision to exclude evidence for abuse of discretion.

Rhodia Chimie, 402 F.3d at 1377 (citing Glass v. Philadelphia Elec. Co., 34 F.3d 188,

191 (3rd Cir. 1994)). Even when an exclusion of evidence occasions severe forfeiture

for a party, the Third Circuit will not disturb those decisions absent a clear abuse.

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 Rhodia Chimie noted that the Third Circuit typically considers four factors in

evaluating whether the district court properly exercised its discretion:

(1) the prejudice or surprise in fact of the party against whom the
excluded evidence would have been submitted; (2) the ability of
that party to cure the prejudice; (3) the extent to which waiver of
discovery deadline would disrupt the orderly and efficient trial of the
case or of other cases in the court, and (4) bad faith or willfulness in
failing to comply with the district court's order.

Id. at 1381 (citing In re TMI Litig., 193 F.3d 613, 721 (3d Cir. 1999)). In this case, the

district court did not address these factors in its opinion. Rather, the district court simply

limited the expert's testimony to information contained in the expert report. The district

court cited several cases where courts excluded testimony that fell outside the expert's

report.

Honeywell attempts to distinguish these cases as featuring evidence offered on

the doorstep of the trial. Thus Honeywell argues, the rule seeks to prevent ambush at

trial, which is not the case here. Honeywell argues that Dr. Hansman merely

supplemented his testimony in response to evidence from Universal that appeared

several days before Dr. Hansman’s deposition. However, Dr. Hansman only a day

earlier on cross examination expressed no opinion regarding the doctrine of

equivalents. With this context, the district court properly perceived the prospect of

surprise, or "ambush" with Dr. Hansman's new testimony. After all, he had indicated he

had not considered equivalents just a day earlier. Under the circumstances, applying

Third Circuit law, this court cannot discern that the district court abused its discretion in

excluding Dr. Hansman’s deposition testimony.

IV

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 Honeywell further appeals the district court's October 16, 2003, decision granting

defendants' motions for summary judgment of invalidity for claims withdrawn from the

litigation. Specifically, Honeywell argues that the district court erred by exercising

jurisdiction over defendants' request for declaratory relief on the withdrawn claims of the

'009 and '060 patents.

At the district court, Honeywell represented to Universal and Sandel that it would

not pursue infringement of these previously asserted claims of the '009 and '060

patents. Based on this representation, Honeywell attempted to withdraw all of the

originally asserted display claims, except claims 27-33 of the '009 patent and claims 4-5

of the '060 patent. The district court determined that Honeywell's refusal to withdraw all

of the claims in the display patents left the defendants with a reasonable apprehension

of suit. As such, the district court maintained jurisditicion over the claims Honeywell

sought to withdraw. Ultimately the district court found claims 1-3, 8, 9, 13, 24, 34-36,

41, and 43-45 of the '009 patent and claims 1-3 of the '060 invalid based on anticipation.

The Supreme Court's decision in MedImmune, Inc. v. Genetech Inc., 549 U.S.

____ (2007), recently eliminated this court's "reasonable apprehension of imminent suit"

test. Under the new legal regime envisioned by the Supreme Court, this court analyzes

whether the district court erred as a matter of law in finding an actual controversy

between the parties, as required by the Declaratory Judgment Act, 28 U.S.C. § 2201(a),

and Article III of the Constitution.

Of course, infringement of a dependent claim also entails infringement of its

associated independent claim. When Honeywell withdrew some independent claims

from the litigation, it also chose to maintain causes of action based on certain

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dependent claims relating to its display technology. As noted, Honeywell thus left the

entire subject matter of the display claims at issue. This case differs from the situation

in Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 905 (Fed. Cir.

1988), which Honeywell cites for support. In Grain Processing, the patentee agreed not

to assert an entire group of process claims that had initially formed a basis for the

complaint, leaving at issue only the four asserted product claims. Id. at 904. Honeywell

made no such blanket withdrawal of the display claims in this case. Further, Honeywell

has also charged Sandel with infringement of the display patents in another lawsuit. As

such, this court affirms the district court's decision to retain jurisdiction over the

withdrawn claims of the '060 and '009 patents. Honeywell does not appeal the

substance of the trial court's decision on the invalidity of those claims. Accordingly, this

court affirms that decision.

V

On cross-appeal, Sandel and Universal appeal the district court's denial of

defendants' remaining counterclaims of invalidity under 35 U.S.C. § 102(b). The Patent

Act entitles an inventor "to a patent unless . . . the invention was . . . in public use or on

sale in this country, more than one year prior to the date of the application for patent in

the United States." Id. The district court held a seven-day bench trial on Sandel's and

Universal's counterclaims of invalidity based on these bars. The district court

determined that the claims were not invalid for either a public use or a commercial sale.

Following a bench trial, this court reviews the district court’s conclusions of law

without deference and its findings of fact for clear error. Merck & Co., Inc. v. Teva

Pharms. USA, Inc., 395 F.3d 1364, 1369 (Fed. Cir. 2005). The same standards apply

05-1112, -1151, -1152 19
to review of "on sale" or "public use" determinations. Unitherm Food Sys., Inc. v. Swift-

Eckrich, Inc., 375 F.3d 1341, 1349-50 (Fed. Cir. 2004).

A. On-sale Bar

The on-sale bar prohibits the patenting of an invention that has been the subject

of an offer for sale before critical date in § 102(b). Pfaff v. Wells Elecs., Inc., 525 U.S.

55, 66-67 (1998). In applying the statutory on-sale bar, this court follows the test set

forth in Pfaff. 525 U.S. at 67. The Pfaff test requires that (1) the invention be the

subject of a commercial sale or offer for sale and (2) the invention be "ready for

patenting" at the time of the offer or sale. Id. An accused infringer may overcome a

patent’s presumption of validity by presenting clear and convincing evidence that the

patented device was on-sale before the critical date. A defendant must prove that both

prongs of the test occurred before the critical date.

In this case, Universal and Sandel point to Honeywell's proposals to Gulfstream

and Canadair to develop its systems with their luxury airplane. Negotiations associated

with that proposal occurred between January and July of 1994.

Honeywell negotiated with Gulfstream and Canadair to apply the new system in

luxury airplanes. As the district court found, "both projects involved experimental

aircraft, uncertified equipment . . . ." Final Decision, 343 F. Supp. 2d at 295. Moreover,

the record shows that Honeywell entered into these negotiations to facilitate its

programs to test its new system with human pilots in a genuine cockpit setting. These

human factor and cockpit integration tests were a part of Honeywell's program to

determine that the invention worked for its intended purpose. If, and only if, these tests

were successful, Honeywell proposed commercial terms for the supply of 100 new

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systems to replace the GPWS systems. If the tests were not successful, Honeywell

proposed to supply its GPWS systems instead. Beyond these experimental programs,

Honeywell did not offer its inventive system to any other customer until well after the

critical date. The record also shows, often in the form of internal corporate

communications, that Honeywell did not refer to the new system as ready for sale.

Thus, the record consistently shows that Honeywell's negotiations and proposals before

the critical date evinced a purpose of experimentation, as the district court found. See

TP Labs, Inc. v. Prof'l Positioners, Inc., 724 F.2d 965 (Fed. Cir. 1984).

Although the experimentation did not alter any specific part of Honeywell's

claimed system, this aspect of the record does not prejudice Honeywell's invocation of

experimentation to negate any on-sale bar. Although such evidence would strengthen

the case for negating experimentation, this negating doctrine does not require changes

to the claimed invention to substantiate an experimental use. See City of Elizabeth v.

Am. Nicholson Pave Co., 97 U.S. 126, 135 (1877).

Regarding the second prong of the Pfaff test, the record also shows that the

invention was not "ready for patenting" before the critical date. An invention is "ready

for patenting" when evidence shows that the invention was reduced to practice or

described in a written description sufficient to permit one of ordinary skill in the art to

practice the invention without undue experimentation. Pfaff, 525 U.S. at 67-68. An

invention is reduced to practice when the patentee has an embodiment that meets

every limitation and operates for its intended purpose. Eaton v. Evans, 204 F.3d 1094,

1097 (Fed. Cir. 2000). An invention works for its intended purpose when there is a

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demonstration of the workability or utility of the claimed invention. Fujikawa v.

Wattanasin, 93 F.3d 1559, 1563 (Fed. Cir. 1996).

The record in this case features a videotape of the invention in use aboard an

actual airplane. This video shows that the invention in operation before the critical date,

which in this case is July 31, 2004. In addition, other documents and demonstrations,

such as Hans Muller’s Design Notes and an article published by a reporter in June,

2004, (the "George article") allegedly support a reduction to practice. Reduction to

practice requires proof that the invention worked for its intended purpose. EZ Dock v.

Schafer Sys., Inc., 276 F.3d 1347, 1351 (Fed. Cir. 2002). The video, according to the

record and the findings of the district court, shows that Honeywell performed tests to

determine that the invention worked for its intended purpose. These tests, however,

were part of the Honeywell effort to reduce the invention to practice, rather than an

actual reduction. Following these tests, Honeywell still had work to do to ascertain the

success of the operation. Further, the documents show that the system was still in

development at the time of the tests and the other documentation. In sum, Honeywell

used computer simulations, test aircraft, and demonstrations to those with expertise in

air safety such as pilots to move the invention toward a reduction to practice. These

tests began slightly before and continued well after the critical date. The district court,

after a seven-day bench trial, determined that the evidence did not clearly and

convincingly show that Honeywell had reduced the invention to practice before the

critical date. Further, the district court determined that the documents, including the

Design Notes, did not sufficiently enable one skilled in the art to practice the invention.

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Thus, the record supports the district court's findings and conclusions after trial. As

such, this court affirms the district court's decision.

B. Public Use

Universal and Sandel also argue on appeal that Honeywell's claims are invalid

under § 102(b) based on public use. Specifically, Universal and Sandel argue that

Honeywell's flight demonstrations had a commercial purpose. The district court

disagreed: "Although these flights allowed contact with potential customers, there is no

evidence that they were solely or primarily for marketing purposes." Final Decision, 288

F. Supp. 2d at 308. Further, Universal and Sandel argue that one of these flights, in

which a reporter was aboard, constituted a public disclosure. This reporter published an

article, the George article, about this flight in which he indicated the system was still

under development. Thus the district court determined that "[t]he George article clearly

indicates that the system is in its development phase." Id. at 287.

The § 102(b) bar prohibits a public use of an invention more than one year before

the filing date of the patent application. A barring public use requires a public use more

than one year before the patent filing date that employs a completed invention in public,

without confidentiality restrictions, and without permitted experimentation. Allied

Colloids Inc. v. Am. Cyanamid Co., 64 F.3d 1570, 1574 (Fed. Cir. 1995). As noted, an

experimental purpose can negate a purportedly public use. Pfaff, 535 U.S. at 66-68.

"This court has repeatedly stressed that evidence of experimental use . . . operates to

negate application of section 102(b)." EZ Dock, 276 F.3d at 1351-52. In explaining the

difference between "experimental" use and "commercial" or "public use," the Supreme

Court noted that "a bona fide effort to bring [the] invention to perfection, or to ascertain

05-1112, -1151, -1152 23
whether it will answer the purpose intended" does not constitute a "public use." City of

Elizabeth, 97 U.S. at 137. "Any attempt to use [the invention] for a profit, and not by

way of experiment . . . would deprive the inventor of his right to a patent." Id.

Based on City of Elizabeth, this court has consistently distinguished permitted

experimental uses from barred public or commercial uses. EZ Dock, 276 F.3d at 1352;

Allied Colloids Inc., 64 F.3d at 1574. Thus, the focus of the test is whether the use was

truly experimental or in fact commercial. Allied Colloids, 64 F.3d at 1576-77. Applying

these negating principles to this case shows that from 1993 through the critical date,

Honeywell demonstrated a version of its look ahead system to aviation-industry people

through a series of in-flight demonstrations aboard its King Air airplane using a laptop

computer prototype. One of these demonstrations, in March of 1994, involved the pilot

and writer, Fred George (author of the George article).

These demonstrations, as the district court correctly found, were experimental

and not barring public uses. Although these demonstrations did not always relate to

claimed features, this court permits testing to determine the workability of an invention

even if the claims do not expressly set forth the intended use under examination. EZ

Dock, 276 F.3d at 1353. All of the demonstrations involved testing Honeywell’s

EGPWS system on flights, the intended use of the invention. In any event, because, as

set forth above, this court agreed with the district court that the claimed invention was

not ready for patenting prior to the critical date, this court sustains as well the trial

court's finding that the presentations, including the presentation which included Fred

George, are not a bar under § 102(b).

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 VII

Sandel appeals the district court’s determination that Honeywell had not

committed inequitable conduct in its procurement of its patents relating to its EGPWS

system. Sandel's inequitable conduct claim arises from Honeywell's alleged failure to

disclose the Gulfstream documentation or the George article. Honeywell submitted

declarations from two individuals, a Mr. Daly and a Mr. Torget. Mr. Daly was Vice

President and General Manager of the Flight Safety Systems Division during the

relevant time period and Mr. Torget was a mechanic for the King Air aircraft. Mr. Daly

filed his declaration in support of the '080 patent application. In it, he noted that

regulatory approval required prior commercial use. In addition, his statement discloses

the flight demonstrations and the use of the system on the Gulfstream flight. Mr. Torget

was the mechanic for the King Air aircraft and responsible for maintaining the

documentation necessary on the aircraft to obtain FAA authorization. He too submitted

his declaration as part of the prosecution of the '080 patent. In it, he states that the

activities were experiments to satisfy applicable FAA regulations.

Thus, the district court, after hearing evidence from both sides, concluded that

Honeywell had made affirmative disclosures of the Gulfstream and Collins proposals

and the King Air aircraft flight, which was one of the flights which resulted in the George

article, to the United States Patent and Trademark Office (Patent Office). Further, the

district court did not find any intent on the part of Honeywell to deceive the Patent

Office. Thus, the district court concluded: "In light of the information disclosed to the

examiner, Sandel and Universal have not shown that any material misstatement or

05-1112, -1151, -1152 25
omission by Honeywell during the prosecution of the patents in suit [evinces] an intent

to deceive." Final Decision, 343 F. Supp. 2d at 312.

Applicants for patents have a duty to prosecute patent applications in the Patent

Office with candor, good faith, and honesty. Molins PLC v. Textron, Inc., 48 F.3d 1172,

1178 (Fed. Cir. 1995); see also 37 C.F.R. § 1.56. A breach of this duty—including

affirmative misrepresentations of material facts, failure to disclose material information,

or submission of false material information—coupled with an intent to deceive,

constitutes inequitable conduct. See Molins, 48 F.3d at 1178. In determining whether

inequitable conduct occurred, a trial court must determine whether the party asserting

the inequitable conduct defense has shown by clear and convincing evidence that the

alleged nondisclosure or misrepresentation occurred, that the nondisclosure or

misrepresentation was material, and that the patent applicant acted with the intent to

deceive the United States Patent and Trademark Office. Glaxo Inc. v. Novopharm Ltd.,

52 F.3d 1043, 1048 (Fed. Cir. 1995). The nondisclosure or misrepresentation must

meet threshold levels of both materiality and intent. Molins, 48 F.3d at 1178. Once the

threshold levels of materiality and intent have been established, the trial court must

weigh materiality and intent to determine whether the equities warrant a conclusion that

inequitable conduct occurred. Id. The more material the information misrepresented or

withheld by the applicant, the less evidence of intent will be required in order to find

inequitable conduct. N.V. Akzo v. E.I. DuPont de Nemours, 810 F.2d 1148, 1153, (Fed.

Cir. 1987). This court reviews all of these underlying factual determinations for clear

error. Glaxo, 52 F.3d at 1028.

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 On appeal, Sandel challenges the district court’s determination that the

Gulfstream documentation and George article were not material. Information is material

"if there is a 'substantial likelihood that a reasonable examiner would have considered

the information important in deciding whether to allow the application to issue as a

patent.' " Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435, 1440 (Fed. Cir.

1991) (quoting 37 C.F.R. § 1.56 (1989)). Information cumulative of other information

already before the Patent Office is not material. Here, as the district court found,

Honeywell provided the Patent Office with express statements about its commercial

flights and about the industry demonstrations. Final Decision, 343 F. Supp. 2d at 313.

Moreover, Sandel does not challenge the district court’s determination that Honeywell

had no intent to deceive the Patent Office regarding its pre critical date activates. As

such, this court affirms the district court’s decision denying inequitable conduct.

VIII

Finally, Universal appeals the district court's decision regarding its commercial

counterclaims. At the district court, Universal alleged that Honeywell "filed the lawsuit

against it in bad faith with knowledge that its patents were invalid under § 102(b) and

unenforceable due to inequitable conduct, as part of an overall scheme to monopolize

the market and for the purpose of interfering with Universal's actual and prospective

business relations." Universal asserted that Honeywell "employed negative publicity

and filed the litigation against it to disrupt its business relations with potential

customers." In other words, Universal charged that Honeywell's litigation was a sham.

The district court, applying the standard set forth in Professional Real Estate

Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49, 56 (1993), determined

05-1112, -1151, -1152 27
that "while summary judgment of non-infringement and anticipation was ultimately

grounded, a reasonable litigant could have expected success on the merits of

Honeywell's claim for patent infringement against those parties." Final Decision, 343

F. Supp. 2d at 326. Further, the district court determined that Universal had not shown

that Honeywell used the litigation as an anti-competitive weapon. Id. After all, the

record showed that Honeywell conducted a reasonable pre-suit investigation. Id.

Moreover, with regard to Honeywell's publicity, the trial court correctly noted that

"patentees are permitted to make representations about their rights even though they

are inaccurate." Id. Because Universal did not show by clear and convincing evidence

that Honeywell acted in bad faith, the district court denied Universal's counterclaims. Id.

The Supreme Court, in Professional Real Estate, 508 U.S. at 50, outlined a two-

part definition of sham litigation: Only if the litigation is shown to be objectively meritless

may a court proceed to examine the litigant's subjective motivation to ascertain if the

litigation merely masks illegal behavior. If the litigation is not objectively baseless, it

cannot be deemed a sham regardless of the subjective intent involved in bringing the

litigation. "[A]n objectively reasonable effort to litigate cannot be sham regardless of

subjective intent." Professional Real Estate, 508 U.S. at 57.

"We must approach a federal antitrust claim as would a court of appeals in the

circuit of the district court whose judgment we review." Loctite Corp. v. Ultraseal Ltd.,

781 F.2d 861, 875 (Fed. Cir. 1985); U.S. Philips Corp. v. Windmere Corp., 861 F.2d

695, 702 (Fed. Cir. 1988). However, questions about whether conduct in procuring or

enforcing a patent is sufficient to strip a patentee of its immunity from the antitrust laws

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is decided on Federal Circuit law. Nobelpharma AB v. Implant Innovation, Inc., 141

F.3d 1059, 1067 (Fed. Cir. 1998).

Universal has not identified any evidence of record that shows a genuine case

that Honeywell's infringement action was "so baseless that no reasonable litigant could

realistically expect to secure favorable relief." Professional Real Estate, 508 U.S. at

673. This court agrees with the district court that Universal's assertions are without

merit. Accordingly, this court holds that the district court did not err in denying

Universal's commercial counterclaims.

COSTS

Each party shall bear its own costs.

AFFIRMED-IN-PART, VACATED-IN-PART, and REMANDED.

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