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   Author  Topic: Honeywell v. Sundstrand  (Read 1796 times)
aaron
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Honeywell v. Sundstrand
« on: Jun 2nd, 2004, 11:59am »
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New en banc decision by the Feds re: Festo issues.  What do you think?
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Isaac
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Re: Honeywell v. Sundstrand
« Reply #1 on: Jun 5th, 2004, 2:56am »
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The result is what I would have expected.  What it pretty much says is that drafting tricks to avoid Festo problems during prosecution probably will not work.
 
To me that seems infinitely logical.  That's completely separate from the question of whether Festo itself is a good idea.
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Isaac
Isaac
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Re: Honeywell v. Sundstrand
« Reply #2 on: Jun 5th, 2004, 11:09am »
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The dissenting judge in the case complains that the ruling will only encourage the use of more expensive and error prone independent claims in place of dependent claims.  This theory assumes that the cancellation of an independent claim could not have the same result as simply cancelling an independent claim and promoting a dependent claim.
 
I don't see anything in the logic of the main opinion that would suggest that if the original dependent claim had been written in independent format that cancelling a 2nd independent claim would not produce the same result.
My question may be unclear, so I'll present an example.
 
claim sequence 1
1. An independent claim
2. A dependent claim.
 
claim sequence 2.
1. An independent claim
2. An independent claim
 
Assuming that both sets of claims cover the same subject matter, why should the Festo result be different if in case one, the independent claim is cancelled during prosecution and the dependent claim is rewritten in independent format, and in situation two if Claim 1 is simply cancelled?
 
Newman's dissent assumes that the result should be different, but I think such a result would be silly.
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Isaac
BillyBob
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Re: Honeywell
« Reply #3 on: Jun 5th, 2004, 6:56pm »
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The reason for the dissent is because there is a difference between an independent and then a dependent, and 2 independent claims.
 
The reasoning of the majority and its "support" by Festo was due to the fact that the Dependent Claims were AMENDED and the Independent claim was CANCELED.  Once the dependent claims were amended to allow them to be patented, then Festo took effect.  
 
However, if all the claims were written as independent claims, then the issued claims would never have been AMENDED, and thus Festo would never become an issue.
 
The majority ruling states that is the act of amending the claim (even though as the dissenting judge points out that the dependent claims were never actually amended) that triggers Festo.
 
I think this ruling will go to the Supremes because the reasoning of the court does not make sense in light of 112.
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JimIvey
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Re: Honeywell v. Sundstrand
« Reply #4 on: Jun 6th, 2004, 5:55pm »
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I have not yet read as much about this particular case as I'd like to, but I'd have to agree with the dissent at this point.
 
From what I understand, the amendment to the claim was not narrowing in any way.  If that's true, the Supreme Court said that there is no prosecution history estoppel.  Remember, the amendment must (i) narrow the claim and (ii) be made for a reason related to patentability.  I don't see where the Fed Circuit has any room to say otherwise, but apparently the Fed Circuit doesn't see it that way.  I want to go back over the majority opinion's rationalization on this point, so my post here is a bit premature.
 
Here's why I don't think the dependent claim was narrowed.  It was amended only to make the implicit limitations inherited from the parent claim explicit.  Here's an example:
 
Claim 1: A ball.
Claim 2: The ball of claim 1 wherein the ball is red.
 
Claim 2b: A ball wherein the ball is red.
 
What's the difference (in terms of what's covered) between Claims 2 and 2b?  Absolutely nothing.  So, would amending Claim 2 to be in the form of Claim 2b be a narrowing of Claim 2?  Nope.  Festo shouldn't apply.
 
I certainly hope the majority didn't engage in circular reasoning by saying that, by operation of Festo, all claim amendments affect the doctrine of equivalents and are therefore narrowing, making Festo applicable.
 
Like I've said before, the Fed Circuit hates the doctrine of equivalents and will do whatever it can to get rid of it.  We should all be drafting and prosecuting applications with this in mind.  Be perfect.  Be clairvoyant.
 
Regards.
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