1. Whether a narrowing claim amendment made in response to a rejection under
U.S.C. § 112, para. 2 gives rise to prosecution history estoppel with respect
to the amended claim element under the complete bar rule set forth in Festo
Corp. v. Shokestsu Kinzoku Kogyo Kabushiki Co., Ltd. 234 F.3d 558, 56 U.S.P.Q.2d
(BNA) 1865 (Fed. Cir. 2000).
2. Whether a finding of patent infringement is necessary to support the wrongful means element of state tort law claims predicated upon licensing of the patent at issue.
Litton Systems, Inc. ("Litton") obtained U.S. Pat. No. 4,142,958 ("the '958 patent") in 1979, claiming a process for fabricating multiple layer optical films using an ion beam. Litton's initial claim amendments to the invalid '958 patent were rejected as obvious over the prior art. The '958 patent was subsequently rendered invalid for obviousness and Litton sought reissue in 1985, proposing a narrowing amendment requiring the use of a Kaufman-type ion beam. These amendments led to U.S. Reissue Pat. No. 32,849 the ("'849 reissue").
In 1990, Litton sued Honeywell, Inc. ("Honeywell"), Anthony Louderback
("Louderback"), and Louderback's company, Ojai Research Inc. ("Ojai")
for infringement of the '849
reissue. Litton alleged that Louderback breached an exclusive consulting
agreement resulting in infringement of the '849 reissue. Litton also filed state
tort law claims for intentional interference with contractual relations and
intentional interference with prospective economic advantage.
After Litton won a jury verdict on its claims, the United States District Court
for the Central District of California granted summary judgment and JMOL of
non-infringement of Litton's '849
reissue for Honeywell. The Federal Circuit Court of Appeals reversed the
JMOL, and the Supreme Court vacated and remanded that decision. See Honeywell,
Inc. v. Litton Sys. Inc., 520 U.S. 1111, 117 S.Ct. 1240 (1997). On remand,
the Federal Circuit determined that the '849 reissue was not literally infringed,
but vacated and remanded for consideration of infringement under the doctrine
of equivalents. The Federal Circuit also reversed the judgment as a matter of
law with regard to the state tort claims reasoning that the jury may have improperly
relied on the patent infringement claims as a basis for the wrongful means supporting
the state tort claims. See Litton
Sys., Inc. v. Honeywell, Inc. 140 F.3d 1449 U.S.P.Q. (BNA) 1321 (Fed. Cir. 1998).
On remand the district court granted summary judgment and judgment as a matter
of law for Honeywell on the state tort law claims. Litton appealed.
The Federal Circuit ruled that Litton's narrowing amendment, requiring a "Kaufman-type
ion beam source" in the '849
reissue, was made in direct response to a rejection under 35
U.S.C. § 112, para. 2. Therefore, the Court held that because the amendment
was made to further patentability, it gave rise to prosecution history estoppel.
The Court applied Festo's "complete bar" rule to the amendment, holding
that no range of equivalents was available for Litton's amended claim element.
Thus, the Federal Circuit ruled that the district court properly granted judgment
as a matter of law of non-infringement for Honeywell's use of the '849 reissue.
The Federal Circuit, however, held that the state tort law claims should have been submitted to a jury to resolve remaining factual issues of the wrongful means element. Accordingly, the Court reversed, vacated, and remanded the issue to be reconsidered in accordance with state law. The Court note that the district court's ruling "impermissibly decided disputed issues of material fact" regarding Honeywell's use of the patented technology.
Circuit Judge Bryson wrote a separate opinion, concurring in-part and dissenting-in part. Judge Bryson concurred in the judgment as a matter of law for non-infringement of the '849 reissue, but dissented as to the reversal of the district court's judgment on the state tort law claims in favor of Honeywell. Judge Bryson argued that the state tort claims were unsupported by the evidence at trial and that there was no substantial evidence of use of wrongful means. Accordingly, Judge Bryson indicated that no issue of material fact remained for a jury to consider.
Prepared by the liibulletin-patent Editorial Board.