Federal Circuit Finds Testing of Prototype And Publication About Test Are Experimental And Not Public Use or On Sale Bars under 35 U.S.C. §102(b)

In its opinion in Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982 ;82 U.S.P.Q.2d 1886 (Fed Cir. 2007), the United States Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded the Delaware District Court’s decision invalidating certain claims and finding no infringement of Honeywell patents involving aviation electronic and terrain warning systems. 


In the field of terrain warning technology for aviation, known “ground proximity warning systems” (GPWSs) have significantly reduced accidents resulting from planes flying into terrain since the 1970’s.  GPWSs use radio waves to measure the distance from the plane to the ground, which worked well for gradual changes in terrain.  However, GPWSs do not provide information regarding the terrain in front of a plane.  As a result, Honeywell began research in the 1980 to develop a “look ahead” terrain warning system.  Honeywell came up with a virtual system, which compared the plane’s position with a map of the earth terrain.   In 1995, Honeywell received 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).  

The accident that claimed the life of Ron Brown, Commerce Secretary, led to the FAA requiring that all commercial aircraft be equipped with a look ahead warning system.  Consequently, Universal and Sandel began developing such systems.  Honeywell then brought suit against both Universal and Sandel alleging infringement of the Honeywell patents.  The district court granted the defendant’s summary judgment motions of invalidity of claims withdrawn from litigation and of non-infringement; however, the court denied all of the defendant’s remaining counterclaims. 

The Federal Circuit addressed several issues during appeal.  After determining that material issues remained as to whether there was infringement such that the summary judgment was inappropriate, the Federal Circuit went on to review whether the claims were invalid under 35 U.S.C. § 102(b) for being “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.”

Section 102 (b) states that “[a] person shall be entitled to a patent unless . . . the invention was patented or described in a printed publication in this or a foreign country or 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 . . .”  The district court found that Honeywell claims were not invalidated by public use or commercial sale, and the Federal Circuit agreed. 

No On Sale Bar Since Transfer Was For Experimental Use and Was Not Commercial

According to Pfaff v. Wells Elec. Inc., 525 U.S. 55 (1998), for there to be an on sale bar, an invention must 1) be the subject of a commercial sale or offer for sale, and 2) be ready for patenting at the time of the sale or offer, to be unpatentable under the on-sale bar.  In reviewing the facts of the case, in 1994, Honeywell conducted negotiations with Gulfstream and Canadair to incorporate the Honeywell system into luxury planes.  However, these projects were for experimental purposes so that Honeywell could test the systems with human pilots in real cockpit setting.  Also, Honeywell did not refer to the system as ready for sale and the record shows that negotiations and proposals before the critical date were for experimentation purposes.   As such, there was no commercial sale pending in 1994.

Additionally, the record indicates that Honeywell’s invention was not ready for patenting before the critical date.  According to the Federal Circuit, 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”.  The record shows a videotape of Honeywell’s system on an aircraft before the critical date and other documentation, including an article (the “George article”) published in June 2004 and which described a flight with this developmental system.  However, the testing of the system was conducted to reduce the invention to practice, rather than to show actual reduction of the invention.  Thus, this evidence merely demonstrates that the invention was not ready for patenting at that time.  As such, the 1994 negotiations were not an on sale bar for purposes of 35 U.S.C. 102(b).

No Public Use Since Use Was Experimental

Regarding the George article, Universal argues that it demonstrates public disclosure, but the district court concluded that the “George article clearly indicates that the system is in its developmental phase.”  A patent will be barred by public use when the invention has been in public use for more than one year before the filling of the patent, and such use does not have confidentiality restrictions and does not involve permitted experimentation.  Allied Colloids Inc. v. Am. Cyanamid Co., 64 F.3d 1570 (Fed. Cir. 1995).  In order to determine when a use is a public use as opposed to an experimental use for purposes of 35 U.S.C. 102(b), the Supreme Court stated that “a bona fide effort to bring [the] invention to perfection, or to ascertain whether it will answer the purpose intended” does not constitute “public use.”  City of Elizabeth v. Am. Nicholson Pave Co., 97U.S. 126, 137 (1877).  In the present case, Honeywell conducted demonstrations of its system to industry people aboard an aircraft using a laptop computer with the demonstration system.  While these test flights did result in the George article, these demonstrations were performed to demonstrate the workability of the system, and thus were experimental and not public uses which would bar patentability of the invention.

Federal Circuit Finds Mere Response To RFP Does Not Constitute Offer To Sell Infringing Device

In FieldTurf Intr., Inc. et al. v. SprinTurf, Inc. et al. and SportFields LLC and Orion, 433 F.3d 1366, 77 U.S.P.Q.2D 1468 (Fed. Cir. 2006), the Federal Circuit affirmed a summary judgment of non-infringement in favor of SportFields LLC and Orion (collectively “SportFields”) and reversed summary judgment in favor of SportFields on its counterclaims of intentional interference with prospective economic advantage and unfair competition, and vacated the award of attorney fees. Continue reading Federal Circuit Finds Mere Response To RFP Does Not Constitute Offer To Sell Infringing Device