HONEYWELL INTERNATIONAL INC. v. HAMILTON SUNDSTRAND CORP., (D.Del. 2001)

GREGORY SLEET, United States District Judge.

Honeywell International Inc. ("Honeywell") filed this action against Hamilton Sundstrand ("Sundstrand") in May of 1999 alleging that Hamilton Sundstrand Corporation (Sundstrand") is infringing Honeywell patents: 4,380,893, 4,428,194 and the 4,337,615 ((the "`893 patent," "`194 patent," and the "`615 patent," respectively). The lawsuit relates to technology for auxiliary power units ("APU"). An APU is a small gas turbine engine, usually placed in the tail section of an airplane, that generates electricity for use while the aircraft is on the ground or in flight. An APU also provides compressed air for both starting the aircraft's main engine and environmental control of cabin air. Presently before the court is Sundstrand's Partial Motion for Summary Judgment to Limit Damages. The court will deny this motion because there are genuine issues of fact that prevent the court from ruling as a matter of law.

On January 2, 2001, Honeywell advised the court that it has decided to no longer pursue its claims under the `615 patent. As a result, the court will not consider this patent in its analysis.

BACKGROUND

Sundstrand produces an APU called the APS 3200 which is used on the Airbus A320 family of aircraft. This product competes with Honeywell's model 131-9[A]. In 1994, while Sundstrand was developing the APS 3200, Sundstrand proposed a related APU, the APS 3000 for the Boeing 737x family of aircraft. This proposal was rejected by Boeing in 1994 because Boeing chose the Honeywell model 131-9[B] instead of the Sundstrand APS 3000.

In its interrogatory responses, Honeywell has indicated that it is seeking damages for lost profits and/or price erosion with regard to the 131-9[B] APU. Honeywell alleges that the basis for this claim is that Sundstrand made, used, sold and/or offered for sale an infringing APU, the APS 30001. As a result Honeywell argues that it was forced to offer price concessions that it would not otherwise have offered.

STANDARD OF REVIEW

"Summary judgment is appropriate only when `there is no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law.'" Rodime v. Seagate Tech. Inc., 174 F.3d 1294, 1301 (1999) (quoting Fed.R.Civ.P. 56(c)). In reviewing the motion, the court must draw all reasonable inferences in favor of the non-movant. See id. (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). With this standard in mind, the court will address the defendant's motion.

DISCUSSION

Sundstrand argues in its motion for partial summary judgment that it could not have engaged in acts of infringement with regard to the 131-9[B] because it did not make, use, or sell the patented invention. Sundstrand does concede that it offered the product for sale. Despite this concession, Sundstrand argues that damages should be limited because prior to 1996, offering an infringing product for sale did not constitute infringement.

In its answering brief, Honeywell argues that Sundstrand made or used the patented invention. Thus, Sundstrand's alleged infringement would not have been based on an offer for sale of the patented invention. Honeywell argues that because Sundstrand's two APUs — the APS 3200 and 3000, are basically the same product, Sundstrand has also infringed its 131-9[B] APU. In other words, Sundstrand's making of the APS 3200 constituted infringement of both the 131-9[A] [B] APUs. Honeywell then goes on to allege facts that show that if the APS 3000 is essentially the same as the APS 3200, then there was significant making and using of the patented invention.

In reply, Sundstrand argues that the it never made the APS 3000 (which it claims is the competing product for the 131-9[B] model) so it could not have infringed that particular model. Sundstrand also contends that the APS 3000 and APS 3200 are indisputably different.

35 U.S.C. § 271 states that whoever" makes, uses, offers to sell, or sells any patented invention . . . infringes the patent." Prior to 1996, it was not infringement to "offer for sale" a patented invention. See Rotec Indus., Inc. v. Mistubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000). In this case, the parties do not dispute that making, using, or offering to sell the product after 1996 would constitute infringement. The real dispute here is whether the APS 3000 and APS 3200 are essentially the same. This is a factual determination for a jury to make. See Tate Access Floors, Inc. Maxcess Techs. Inc., 222 F.3d 958, 964 (Fed. Cir. 2000). Because there are genuine issues of material fact concerning the similarity of the products, the court will deny the defendant's motion.

For these reasons, IT IS HEREBY ORDERED that:

1. Sundstrand's Motion for Partial Summary Judgment Limiting Damages (D.I. 163) is DENIED.