Honeywell International, Inc., et al. v. ITT Industries, Inc., et al.
The phrase "this invention" in the Written Description Limited the Scope of the Claims.
The CAFC affirmed the district court's grant of a summary judgment of noninfringment of Honeywell's U.S. Pat. No. 5,164,879 (the "879 patent") in favor of ITT.
The 879 patent addressed the "arcing" problem associated with polymeric fuel filter housings which causes microscopic holes to form, leading to breakdowns and fuel leakage. Honeywell claimed a system comprising an electrically conductive pathway, e.g. electrically conductive fibers, between the filter and the frame of a vehicle to prevent "arcing." The accused product produced by ITT are quick connects for joining fuel lines to a fuel filter, said quick connects having a polymer housing interlaced with carbon fibers.
Honeywell argued that the court improperly limited the scope of the claims to the specification's preferred embodiment (a fuel filter), even thought the claim language recited a "fuel injection system component." However, the CAFC disagreed with Honeywell that the construction was improper. The court pointed to at least four instances where Honeywell referred to the fuel filter as "this invention" or "the present invention" in the specification. Accordingly, "[t]he public is entitled to take the patentee at his word and the word was that the invention is a fuel filter."
The court further disregarded statements from prosecution that might suggest broader scope as being inconsistent with the written description. "Where . . . the written edescription clearly identifies what [the] invention is, an expression by a patentee during prosecution that he intends his claims to cover more than what his specification discloses is entitled to little weight."
To add further insult to injury, the CAFC provided separate grounds for affirming the ruling of the lower court by concluding that Honeywell also disavowed carbon fiber from the scope of the claims. In particular, the specification provided reasons why carbon fibers would not be suitable for the invention . . . effectively saying "Do not use carbon fibers."