In the United States Court of Federal Claims No. 02-1909C Filed: April 14, 2008 TO BE PUBLISHED (CORRECTED) *************************************** * Anticipation, 35 U.S.C. § 102(a), (b); HONEYWELL INTERNATIONAL INC., * Best Mode; and HONEYWELL INTELLECTUAL * Definiteness, 35 U.S.C. § 112 ¶ 2; PROPERTIES INC., * Disclosure, 35 U.S.C. § 112 ¶ 1; * Enablement; Plaintiffs, * “First Sale” Doctrine; * Implied License; v. * Inequitable Conduct; * Jurisdiction; THE UNITED STATES, * Obviousness; * Ordinary Skill In The Art; Defendant, * Patent Act, 35 U.S.C. §§ 102(a),(b), * 112, 282; LOCKHEED MARTIN CORP., * Patent Infringement Defenses; * Prior Art; Defendant-Intervenor, and, * Prosecution Laches; * Secondary Considerations; L-3 COMMUNICATIONS CORP., * Teaching Away; * Validity, 35 U.S.C. § 282. Defendant-Intervenor. * *************************************** Lawrence J. Gotts, Mark Koehn, and Elizabeth Miller Roesel, Paul, Hastings, Janofsky & Walker, LLP, Washington, D.C., Counsel for Plaintiffs. Christopher L. Crumbley and Trevor M. Jefferson, United States Department of Justice, Civil Division, Commercial Litigation Branch, Washington, D.C., Counsel for Defendant. Thomas J. Madden, Paul A. Debolt, and Justin E. Pierce, Venable, LLP, Washington, D.C., Counsel for Defendant-Intervenor, Lockheed Martin Corp. John Harbin, King & Spalding, Washington, D.C., Counsel for Defendant-Intervenor, L-3 Communications Corp. MEMORANDUM OPINION1 REGARDING PATENT INFRINGEMENT DEFENSES. The Government and Defendant-Intervenors have asserted ten patent infringement defenses including: validity; anticipation; obviousness; the written description requirement; enablement; best mode; definiteness; the “first sale” doctrine; inequitable conduct; and prosecution laches. The court has determined herein that claim 2 of the ‘914 patent was obvious and failed to meet the written description requirement of Section 112 ¶ 1 of the Patent Act, 35 U.S.C. § 112. In addition, Honeywell is barred from recovering damages from the Government under the “First Sale” Doctrine. To facilitate a review of this Memorandum Opinion regarding the patent infringement defenses asserted in this case, the court has provided the following outline: I. RELEVANT FACTUAL BACKGROUND AND PROCEDURAL HISTORY. II. DISCUSSION. A. Jurisdiction And Standing. B. The Court’s Determination Regarding Scope And Content Of Prior Art. 1. The Parties’ Agreement Regarding Certain Prior Art Relevant In This Case. 2. The UCHIDA And STOLOV References Are Prior Art. 3. The REETZ THESIS Reference Is Not Prior Art. C. Defenses Asserted By The Government And Defendant-Intervenors. 1. Validity. 2. Anticipation. a. Claim Construction. 1 On April 3, 2008, a pre-publication draft of the Memorandum Opinion was provided under seal to the parties. The parties were instructed to propose any redactions on or before April 14, 2008. On April 14, 2008, this Memorandum Opinion was published.. 2 b. Comparison Of The Construed Claims Against The Prior Art. i. “A display system” ii. “for use in association with a light amplifying passive night vision aid” iii. “and a local color display” iv. “including a local source of light having blue, red, and green color bands” v. “a first filter for filtering the blue color band of the local source of light” vi. “a second filter for filtering the green color band of the local source of light” vii. “a third filter for filtering the red color band of the local source of light and passing a narrowband of the red color band” viii. “a fourth filter which filters light at the night vision aid, said fourth filter cooperating with said plurality of filters to substantially block at least said narrowband of the red color band from being admitted to the night vision aid” 3. Obviousness. a. Governing Precedent. b. The Scope And Content Of The Prior Art. c. The Level Of Ordinary Skill In The Art. d. The Differences Between The Prior Art And Claims At Issue. i. Comparison Of The Elements Of Claim 2 Of The ‘914 Parent With Prior Art. 3 (a) Claim 2 Preamble: “A Display System For Use In Association With A Light Amplifying Passive Night Vision Aid And A Local Color Display Including A Local Source Of Light Having Blue, Red, And Green Color Bands.” (1) Uncontested Prior Art. (2)TASK & GRIFFIN III And KNIGHT & RITTER. (3)GERMAN PATENT. (b) Claims 2(a), 2(a)(1), 2(a)(2): “A Plurality Of Filters At The Local Color Display including (1) A First Filter For Filtering The Blue Color Band Of The Local Source Of Light; (2) A Second Filter For Filtering The Green Color Band Of The Local Source Of Light.” (1)UCHIDA, STOLOV, and VERNEY. (2)TASK ARTICLES. (c) Claim 2(a)(3): “A Third Filter For Filtering The Red Color Band Of The Local Source Of Light And Passing A Narrowband Of The Red Color Band.” (1)TASK & GRIFFIN I And KNIGHT & RITTER. (2) BOEHM. (3)GERMAN PATENT. (4) SCOUGHTON. (5) VERNEY. (d) Claim 2(b): “A Fourth Filter Which Filters Light At The Night Vision Aid, Said Fourth Filter Cooperating With Said Plurality Of Filters To Substantially Block At Least Said Narrowband Of The Red Color Band From Being Admitted To The Night Vision Aid.” (1) BOEHM. 4 (2) TASK & GRIFFIN III. (3) GERMAN PATENT. (4) VERNEY. ii. Considerations Of The ‘914 Patent As A Whole. (a) Prior Art Combinations. (1) The Parties’ Arguments. (2) The Court’s Resolution. (b) Obvious to Combine The Prior Art. (1) The Parties’ Arguments. (2) The Courts Resolution. iii. Teaching Away. e. Secondary Considerations. i. Governing Precedent. ii. “Long Felt Need.” iii. “Failure Of Others.” iv. “Commercial Success.” 4. Defenses Set Forth In The First Paragraph Section 112 Of The Patent Act. a. The Written Description Requirement. b. Enablement. c. Best Mode. 5. Definiteness Defense Set Forth In The Second Paragraph Of Section 112 Of The Patent Act. 5 6. The “First Sale” Doctrine. 7. Inequitable Conduct. 8. Prosecution Laches. III. CONCLUSION. * * * , 3 I. RELEVANT FACTUAL BACKGROUND AND PROCEDURAL HISTORY. 2 The United States military uses night vision goggles (“NVG”) to assist pilots in operating rotary and fixed wing aircraft, because NVGs create a brighter night view of terrain outside the cockpit. See Honeywell III, 70 Fed. Cl. at 437-38. In addition, NVGs can amplify interior cockpit lights. Id. Dual amplification, however, can distort pilot vision by interrupting NVG functionality. Id. Aviation Night Vision Imaging System (“ANVIS”) goggles solved part of the distortion problem, because they were not sensitive to light with a visible wavelength below 580 nanometers (“nm”). Id. at 440. ANVIS also used “automatic gain control” to prevent intense light from overwhelming the sensors in the goggles. Id. In addition, automatic gain control reduced the intensity of all lights and the ability of pilots to see light outside, as well as inside, the cockpit. Id. Light with a wavelength above 580 nm, however, continued to limit the visible colors that could be used in the cockpit. Id. at 437-40. In the mid-1980’s, Mr. Richard Cohen, an employee of Allied Signal 2 Incorporated herein are four prior Memoranda Opinions of the court that provide an extensive discussion about the technology at issue in this patent case and the background of the patent at issue: Honeywell Int’l, Inc. v. United States, 65 Fed. Cl. 809 (2005) (“Honeywell I”) (jurisdiction); Honeywell Int’l, Inc. v. United States, 66 Fed. Cl. 400 (2005) (“Honeywell II”) (granting Lockheed Martin Corp. intervenor status and Markman proceedings to construe certain claims requested by the parties); Honeywell Int’l, Inc. v. United States, 70 Fed. Cl. 424 (2006) (“Honeywell III”) (determining literal infringement, or alternatively, under the Doctrine of Equivalents as to claim 2 of the ‘914 Patent); and Honeywell Int’l, Inc. v. United States, 71 Fed. Cl. 759 (2006) (“Honeywell IV”) (granting L-3 Communications Corp.’s Motion to Intervene). In addition, Honeywell’s claims under the Invention Secrecy Act as subject to a separate Memorandum Opinion also issued on this date. See Honeywell Int’l, Inc. v. United States, __ Fed. Cl. __ (2008) (“Honeywell V”) (Invention Secrecy Act). 3 The procedural history of this case between December 18, 2002 and the June 14, 2005 Memorandum Opinion and Order is set forth in Honeywell II, 66 Fed. Cl. at 413-18. The procedural history of this case between June 14, 2005 and the April 28, 2006 Memorandum Opinion and Order is set forth in Honeywell III, 70 Fed. Cl. at 433-37. 6 Technologies, Inc. (“Allied Signal”)4, attempted to solve the problem of using red light and full-color displays in cockpits, together with NVGs. Id. On October 10, 1985, Allied Signal filed United States Patent Application Serial No. 06/786,269 (“the ‘269 Application”). Id. at 413-14, 444. On October 22, 2002, United States Patent No. 6,467,914 (“the ‘914 patent”) was issued to Honeywell. Id. On December 18, 2002, Honeywell International Inc. and Honeywell Intellectual Properties Inc. (collectively hereafter “Honeywell”) filed a Complaint in the United States Court of Federal Claims alleging that the United States (“the Government”) violated: (1) the Invention Secrecy Act of 1951, 35 U.S.C. §§ 181-88, as a result of the Government’s issuance of Secrecy Orders regarding U.S. Patent Application Serial No. 06/786,268 (“the ‘268 Application”); (2) the Fifth Amendment to the United States Constitution, as a result of the Government’s taking of Honeywell’s ‘914 patent and related ‘269 Application; (3) 28 U.S.C. § 1498(a), as a result of the unlicensed, or otherwise unlawful, use of the U.S. Patent No. 6,142,637 (“the ‘637 patent”) and the ‘914 patent by or on behalf of the Government; and (4) the Fifth Amendment to the United States Constitution for the taking of the ‘637 and ‘914 patents for public use without just compensation. See Compl. ¶¶ 1, 53-75. (“Compl.”). On May 31, 2005, Honeywell filed an Amended Complaint (“Amend.