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Litton Systems, Inc. v. Honeywell, Inc., No. 00-1241, 57 U.S.P.Q.2d (BNA) 1653 (Feb. 5, 2001).




1. Whether a narrowing claim amendment made in response to a rejection under 35 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.


1. Yes. The complete bar rule set forth in Festo indicates that a narrowing claim amendment made for any reason related to the statutory requirements for patentability will give rise to prosecution history estoppel. Therefore, an amendment made in response to a rejection under 35 U.S.C. 112, para. 2, gives rise to prosecution history estoppel and bars application of the doctrine of equivalents.

2. No. A finding of patent infringement may support a state law tort claim, based on improper use of a patent license, but is not required to sustain it. Thus, where a court has entered a judgment as a matter of law of non-infringement of a patent, the court should independently submit the state law tort claims involving disputed issues of material fact to a jury.


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.

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