Testing of System Aboard Commercial Aircraft Not a Barred Public Use

Honeywell v. Universal Avionics (Fed. Cir. 2007).

GulfstreamHoneywell holds a number of patents covering a virtual terrain warning system for aircraft. The system compares flight-data with a digitized map to ensure a clear path.  Universal and Sandel Avionics have similar functioning systems, and Honeywell sued for infringement. After losing summary judgment, Honeywell appealed on claim construction and the defendants appealed on validity.

On Sale: Section 102(b) of the Patent Act creates a statutory bar to patentability of an invention “in public use or on sale in [the US] more than one year prior to the date of application.”

Under Pfaff, an invention is on sale if (1) subject to a commercial sale or offer for sale and (2) ‘ready for patenting’ at the time of the offer or sale.  Prior to the critical date, Honeywell offered its system for sale to Gulfstream, but required a program to test the system’s in-cockpit results. In its decision, the CAFC agreed that the tests were “part of Honeywell’s program to determine that the invention worked for its intended purpose.”  Thus, even though no system changes were introduced based on the testing, the tests were a “demonstration of the workability or utility of the claimed invention” — thus were sufficient to avoid the ‘ready for patenting’ prong of the on sale bar.

Public Use: The system was tested aboard commercial aircraft. On one flight, a reporter was told of the system — a fact he mentioned in a published article.  This arguably commercial use did not create a public use bar because the use did not employ “a completed invention in public, without confidentiality restrictions, and without permitted experimentation.” 

Claim Construction Jurisdiction: The summary judgment of non-infringement was based on only two-terms. On appeal, the CAFC refused to limit its decision to those terms (as requested by a defendant). Rather, the appellate panel looked at each of the five terms where “the district court discerned factual issues in dispute regarding infringement.”  According to the Court, the two primary terms were correctly construed, but summary judgment vacated on factual issues — giving Honeywell another shot.

8 thoughts on “Testing of System Aboard Commercial Aircraft Not a Barred Public Use

  1. 8

    I was hired by Honeywell aeronautic systems 7 years ago, I decided to work for Motorola, but I saw their facilities. I went on to work for another large contractor, General Dynamics. I have found as an engineer, that systems like these require a lot of fine tuning before they become useful. For instance, many control systems require adjustment of constants in the control scheme to make them stable. Adjustment of the poles and zeros in a control system must be adjusted to a specific application. It is likely that Honeywells system is a mathematical equation, implemented in a computer onboard the airplane. The laptop is material to the lack opf a reduction to preactice, because often engineers use a laptop setup to fine tune the variable and make the system perform to a practically useful standard. Otherwise, the system would likely be very unstable and not really accomplish anything.

  2. 7

    Anon –

    You are delerious. 102b facts were not decided by lower court on SJ. As CAFC notes it looks like there was a 7 day bench trial on the matter where def’s vetted everything and lost. Jud gets it right — Testing is part of reducing an invention to practice.

  3. 6

    Except that “tri” is not a prefix.

    This tells you what it takes to be a law professor these days.

    tribunal — tribune (as in Rome) — tribus (tribe)

  4. 5

    But testing to make sure the invention works is a step of reducing an invention to practice!

  5. 4

    From the district court opinion, it appears that the flights were on a private King Air test plane where the prototype software was running on a laptop. Questionnaires were given to the invited passengers so that Honeywell could refine operation of the system. Some features of the patented system had not yet been developed or implemented.

  6. 3

    “reduced to practice” and “ready for patenting” are not the same thing. Something is ready for patenting when you have reduced it to practice AND tested it sufficiently to know that it works.

  7. 2

    I have difficultly agreeing with the Court’s conclusion that the invention was not “reduced to practice” at the time it was demonstrated to a reporter and described in the published article. I can’t imagine that Honeywell would bring passengers along, especially press, for an in-flight test of a terrain/obstacle warning system that was not yet reduced to practice.

  8. 1

    I haven’t read the CAFC’s decision, but knowing the facts of the case from the lower court on SJ, this is about as twisted a reading of 102(b) as you can get.

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