 United States Court of Appeals for the Federal Circuit
                                      2008-5181

                         HONEYWELL INTERNATIONAL, INC.,
                  and HONEYWELL INTELLECTUAL PROPERTIES, INC.,

                                                     Plaintiffs-Appellants,

                                          v.

                                  UNITED STATES,

                                                     Defendant-Appellee,

                                         and

                        LOCKHEED MARTIN CORPORATION,

                                                     Defendant-Appellee,

                                         and

                      L-3 COMMUNICATIONS CORPORATION,

                                                     Defendant-Appellee.


      Lawrence J. Gotts, Paul, Hastings, Janofsky & Walker LLP, of Washington, DC,
argued for plaintiffs-appellants. With him on the brief was Elizabeth Miller Roesel. Of
counsel on the brief was Richard G. Taranto, Farr & Taranto, of Washington, DC.

      Christopher L. Crumbley, Attorney, Commercial Litigation Branch, Civil Division,
United States Department of Justice, of Washington, DC, argued for defendant-appellee
United States. With him on the brief were Michael F. Hertz, Acting Assistant Attorney
General, John J. Fargo, Director, and Trevor M. Jefferson, Attorney.

      Thomas J. Madden, Venable LLP, of Washington, DC, for defendant-appellee
Lockheed Martin Corporation.

       John W. Harbin, King & Spalding LLP, of Atlanta, Georgia, argued for defendant-
appellee L-3 Communications Corporation. With him on the brief were Charles A.
Pannell, III and Richard W. Miller. Of counsel on the brief was John H. Horne, Adorno &
Yoss, LLC, of Atlanta, Georgia.

Appealed from: United States Court of Federal Claims

Judge Susan G. Braden
 United States Court of Appeals for the Federal Circuit

                                      2008-5181

      HONEYWELL INTERNATIONAL, INC., and HONEYWELL INTELLECTUAL
                         PROPERTIES, INC.,

                                                            Plaintiffs-Appellants,

                                          v.

                                  UNITED STATES,

                                                            Defendant-Appellee,

                                         and

                        LOCKHEED MARTIN CORPORATION,

                                                            Defendant-Appellee,

                                         and

                      L-3 COMMUNICATIONS CORPORATION,

                                                            Defendant-Appellee.


Appeal from the United States Court of Federal Claims in 02-CV-1909, Judge Susan G.
Braden.

                          ___________________________

                          DECIDED: February 18, 2010
                          ___________________________

Before MAYER, PROST, and MOORE, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE. Opinion dissenting-in-part filed by
Circuit Judge MAYER.

MOORE, Circuit Judge.
       Honeywell International, Inc. and Honeywell Intellectual Properties, Inc.

(collectively, Honeywell) appeal from a final judgment of the U.S. Court of Federal

Claims. The Court of Federal Claims held that the government infringed independent

claim 2 of the patent-in-suit but that this claim is invalid. The Court of Federal Claims

also held that Honeywell lacks standing on its claim for just compensation under the

Invention Secrecy Act and that the first sale doctrine precludes Honeywell from

recovering damages for one particular infringing system. For the reasons set forth

below, we reverse and remand for a determination of damages.

                                     BACKGROUND

       The patent-in-suit is U.S. Patent No. 6,467,914 B1 (the ’914 patent), and it

relates to passive night vision goggles (NVGs) that are compatible with a full color

display when both are used in an aircraft cockpit. See ’914 patent col.1 ll.19–21, col.2

ll.1–5. NVGs operate by amplifying available light, specifically light having a relatively

long wavelength (e.g., red and infrared light). See id. col.1 ll.36–38. Thus cockpit

displays that emit this light, specifically red warning lights, can overwhelm NVG sensor

elements and lead to disruption of vision through the NVGs. Id. col.1 ll.38–41. Still, “[i]t

is important that the display indicators remain illuminated, not only for the benefit of the

crewmen who are not wearing [NVGs], but also because those using the goggles will

typically view the instruments by looking under the goggles.” Id. col.1 ll.42–46.




2008-5181                                    2
       Prior art solutions involved eliminating and/or dimming red and infrared light from

cockpit displays.   But filtration used to eliminate this light “must be very efficient

because small amounts of light within the active frequency range of the [NVGs] will

overwhelm the [NVGs].” Id. col.1 ll.51–54. In addition, “[t]he selective filtration of light

according to wavelength generally prevents the use of full color displays . . . because

frequencies at the lower end of the visible spectrum overlap with those frequencies

which are received by the [NVGs].”         Id. col.1 ll.63–67.   This second problem is

particularly significant because it prevents the use of red warning lights, which are at the

lower end of the visible spectrum, in cockpit displays. Furthermore, with respect to

dimming light that is capable of overwhelming NVG sensor elements, the light must be

dimmed to such a degree that it is no longer visible by crewman not wearing NVGs and

by persons looking under the NVGs.

       In the 1980s, the government developed a standard governing interior cockpit

lighting that also addressed the problem of NVG compatibility in cockpits having full

color displays. As witnesses testified at trial, it was important for the government to

retain red light in cockpits, particularly for use as warning lights. For example, Dr. Harry

Lee Task, a member of the committee developing the military’s corresponding

specification, testified that because red indicates warning “if at all possible the MIL spec

which was in consideration should be such that it would retain red and yellow in the


2008-5181                                    3
cockpit.” J.A. 501730 (explaining that “warning is associated with red and amber is

associated with caution”). And Col. William S. Lawrence, Honeywell’s expert, testified

that “red has always been perceived as the color that denotes danger and we find, as

pilots and test pilots, red to be extraordinarily valuable in that role. The immediate

perception of danger is crucial to survival and we want red in the cockpit.” J.A. 622806.

Nevertheless, in January 1986, the government issued a military specification (MIL-L-

85762) that prohibited the use of red light in NVG-compatible cockpits.

       On October 10, 1985, Allied Corporation filed Patent Application No. 06/786,269

(the ’269 application), which taught a way to continue to have red light in NVG-

compatible cockpits. Pursuant to the Invention Secrecy Act, David McLure, a Naval Air

Systems Command engineer, reviewed this application in March 1986 and concluded

that a secrecy order should be imposed.           Notably, Mr. McClure served on and

eventually chaired the government committee charged with revising MIL-L-85762. After

Mr. McClure reviewed the ’269 application, the government revised its military

specification to permit the use of red light in NVG-compatible cockpits.         The PTO

imposed secrecy orders on the ’269 application, which prevented the patent from

issuing, every year until 2000. By this time, Allied Corporation had become AlliedSignal

Inc., which then merged with Honeywell Inc. to form Honeywell International, Inc. This

latter entity amended the ’269 application, which then issued as the ’914 patent.

       The invention claimed in the ’914 patent permits the use of NVGs in cockpits

having full color displays (including red light) without the aforementioned problems

associated with the prior art. In the claimed invention, a local color display emits blue,

red, and green light. A combination of filters prevents the red light from disrupting vision




2008-5181                                    4
through the NVGs. Specifically, one filter passes only a narrowband (i.e., a narrow

range of frequencies) of red light from the display; another filter at the NVG blocks that

narrowband of red light and passes all other ambient red light. See ’914 patent col.4

ll.54–57, col.5 ll.4–8, col.5 ll.13–15. Thus the narrowband of red light passed from the

display does not reach (and overwhelm) the NVG sensor elements. Figure 3 of the ’914

patent illustrates this combination of filters.




Accordingly, red warning lights inside the cockpit do not disrupt vision through the

NVGs, pilots can look under NVGs to view the warning lights, and crew members not

wearing NVGs can see these lights as well.

       In 2002, about two months after the ’914 patent issued, Honeywell filed a

complaint against the United States.                  Honeywell’s Amended Complaint seeks

compensation under the Invention Secrecy Act for pre-issuance use of the invention

and under 28 U.S.C. § 1498(a) for post-issuance infringement of at least independent

claims 1 and 2.        Relevant to this appeal, the Court of Federal Claims construed

disputed claim terms, see Honeywell Int’l, Inc. v. United States, 66 Fed. Cl. 400 (2005)

(Claim Construction Order), and held a trial on the issue of infringement by three

accused systems: (1) the Color Multifunction Display (CMFD) and NVGs in the F-16


2008-5181                                         5
aircraft, (2) the Radar Display Unit (RDU) and NVGs in the C-130H aircraft, and (3) the

Color Multifunction Display Unit (CMDU) and NVGs in the C-130J aircraft. 1 The court

determined that all three accused systems infringed claim 2—literally and under the

doctrine of equivalents—but that claim 1 and claim 3, which depends from claim 2, were

not infringed.   See Honeywell Int’l, Inc. v. United States, 70 Fed. Cl. 424 (2006)

(Infringement Order).   The Court of Federal Claims then held separate trials on

Honeywell’s claim under the Invention Secrecy Act, on the government’s infringement

defenses, and on damages. Ultimately, the court concluded that claim 2 is invalid under

35 U.S.C. § 103(a) and, in the alternative, the written description requirement of 35

U.S.C. § 112, ¶ 1. See Honeywell Int’l, Inc. v. United States, 81 Fed. Cl. 514, 538–72

(2008) (Invalidity/Defenses Order). The Court of Federal Claims also determined that

Honeywell lacks standing under the Invention Secrecy Act because, according to the

court, the ’914 patent did not issue upon an application that was subject to a secrecy

order pursuant to 35 U.S.C. § 181. See Honeywell Int’l, Inc. v. United States, 81 Fed.

Cl. 224 (2008) (Invention Secrecy Act Order).     Lastly, the Court of Federal Claims

concluded that the first sale doctrine precludes Honeywell from recovering damages

from the government for use of infringing CMFDs and NVGs in the F-16 aircraft

because Honeywell Inc. manufactured and sold the CMFDs at issue.                   See

Invalidity/Defenses Order at 576–77. The Court of Federal Claims entered judgment in




      1
              Lockheed Martin Corporation (Lockheed) intervened with respect to the
§ 1498 claim because it is the supplier and indemnitor to the government for the C-130J
aircraft. L-3 Communications Corporation (L-3 Communications) later intervened as an
indemnitor to Lockheed because it supplied displays for the C-130J aircraft. We will
refer to defendants-appellees, collectively, as “the government.”


2008-5181                                 6
favor of the government, and Honeywell appeals. We have jurisdiction under 28 U.S.C.

§ 1295(a)(3).

                                           DISCUSSION

       This appeal raises issues relating to invalidity, standing under the Invention

Secrecy Act, and the first sale doctrine. We address each issue in turn.

I. Invalidity

       The Court of Federal Claims found that the government proved by clear and

convincing evidence that claim 2 of the ’914 patent is invalid.                Claim 2 recites the

following:

       2. 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, comprising:

             (a) 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; and

                (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; and

             (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.

The Court of Federal Claims based its invalidity determination on 35 U.S.C. § 103(a)

and, in the alternative, the written description requirement of 35 U.S.C. § 112, ¶ 1.




2008-5181                                         7
       A. Obviousness

       A patent shall not issue “if the differences between the subject matter sought to

be patented and the prior art are such that the subject matter would have been obvious

at the time the invention was made to a person having ordinary skill in the art to which

said subject matter pertains.” 35 U.S.C. § 103(a); see KSR Int’l Co. v. Teleflex Inc., 550

U.S. 398, 406–07 (2007) (“If a court . . . concludes the claimed subject matter was

obvious, the claim is invalid under § 103.”). Obviousness is a question of law, which we

review de novo, with underlying factual questions, which we review for clear error

following a bench trial. See Scanner Techs. Corp. v. ICOS Vision Sys. Corp. N.V., 528

F.3d 1365, 1379 (Fed. Cir. 2008). What a particular reference discloses is a question of

fact. See Para-Ordnance Mfg., Inc. v. SGS Imps. Int'l, Inc., 73 F.3d 1085, 1088 (Fed.

Cir. 1995).

       The Court of Federal Claims held that claim 2 of the ’914 patent would have been

obvious to a person of ordinary skill at the time of the invention. Invalidity/Defenses

Order at 538–67.      The court’s obviousness determination involved five prior art

references. The first reference (Uchida) is an article authored by Tatsuo Uchida, titled

“A Liquid Crystal Multicolor Display Using Color Filters,” and presented at the First

European Display Research Conference held on September 16–18, 1981 in Munich,

Germany. The second reference (Stolov) is U.S. Patent No. 4,368,963, titled “Multicolor

Image or Picture Projecting System Using Electronically Controlled Slides” and naming

Michael Stolov as the sole inventor. The third reference (Boehm) is a paper authored

by Dr. H.D.V. Boehm, titled “The Night Vision Goggle Compatible Helicopter Cockpit,”

and presented at the Tenth European Rotorcraft Forum held on August 28–31, 1984 in

The Hague, The Netherlands. The fourth reference (Verney) is an article authored by


2008-5181                                   8
Jay F. Verney, titled “Aircraft Lighting Systems,” and presented at the American

Helicopter Society’s 41st Annual Forum Proceedings held on May 15–17, 1985 in Fort

Worth, Texas. The fifth reference (the German patent application) is German Patent

Application No. DE 33 13 899 A1, published on October 18, 1984. The Court of Federal

Claims found that Uchida and Stolov each disclose elements (a)(1) and (2) of claim 2.

The court found that Boehm discloses elements (a)(3) and (b). The court also found

that Verney discloses element (a)(3) and that the German patent application discloses

element (b). Furthermore, the Court of Federal Claims found that it would have been

obvious to combine these prior art references. Honeywell argues that the Court of

Federal Claims was clearly erroneous in finding, among other things, that Boehm and

Verney each disclose element (a)(3).

       Element (a)(3) of claim 2 recites “a plurality of filters at the local color display

including . . . (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.”              The Court of Federal Claims

construed “local color display” and “color bands” to require perceptible red light. Claim

Construction Order at 444; id. at 466 (“‘color bands’ . . . ‘include the range of

wavelengths, within which the colors blue, red, and green are visible to the human eye’”

(emphasis added)). 2

       Before the Court of Federal Claims, the parties’ disputes regarding infringement

and invalidity raised the issue of whether the claimed invention requires the passing of

perceptible red light. With respect to claim 1, the court explained that this claim requires

       2
              The Court of Federal Claims further construed “red color band” to mean
“[a] range of color from 620 nm to 780 nm” and “narrowband of the red color band” to
mean “a narrow range of wavelengths within the red color band.” Claim Construction
Order at 471, 487.


2008-5181                                      9
the “local color display” to emit perceptible light within the red color band. Infringement

Order at 464 (concluding that the designated displays emit perceptible light within the

red color band).     During the phase of the litigation relating to the government’s

defenses, the Court of Federal Claims explained that this interpretation applies equally

to claim 2. See Trial Tr. 17:25–18:15, Nov. 13, 2006.

       On appeal, the obviousness dispute turns upon whether claim 2 requires

perceptible red light. Claim construction is a question of law, which we review de novo.

Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–56 (Fed. Cir. 1998) (en banc).

Claim 2—and specifically element (a)(3)—requires a local color display.                The

specification describes “[a] local color display which is . . . viewable by the crewmember,

although the crewmember would tend to avoid looking through the [NVG] while viewing

the color local display.”     ’914 patent col.2 ll.40–44.   The specification continues to

explain that “[t]he cockpit has several local displays such as [the aforementioned] color

display, which are illuminated so as to be clearly visible without the use of the [NVG].”

Id. col.2 ll.57–59. In addition, figure 3 of the specification depicts a local color display

with a local source of light that comprises red, green, and blue color bands. Id. col.4

ll.40–41. The district court’s undisputed construction of color bands requires light that is

“visible to the human eye.”

       We conclude that the proper construction of local color display is that it must emit

perceptible red light. Furthermore, element (a)(3) is a filter that passes a narrow band

of this red light. The claimed invention addressed the need for red warning lights in

NVG-compatible cockpits, and it is inconceivable that an aircraft would use warning

lights that are not perceptible to the crew. In other words, there would be no point, in




2008-5181                                    10
the context of this invention, to pass a narrowband of red light that cannot be seen. The

local color display emits perceptible red light, and element (a)(3) requires a narrow band

of this perceptible red light to pass.     We conclude, therefore, that element (a)(3)

requires the passing of perceptible red light—i.e., red light which is visible to the human

eye.

       In the context of obviousness, however, it appears as though the Court of

Federal Claims deviated from its earlier construction with regard to claim 2. Specifically,

the court stated that its claim construction “did not require the perception of the red

primary of a full color display” and instead that the local color display requires only that

“at least one color [be] perceptible.”    Invalidity/Defenses Order at 545 (alteration in

original).   Importantly, the Court of Federal Claims’ obviousness determination is

premised on the conclusion that element (a)(3), and in fact, claim 2, does not require

the passing of perceptible red light. In light of the correct construction of element (a)(3),

which requires the passing of perceptible red light, we conclude that claim 2 would not

have been obvious to one of skill in the art. Neither Boehm nor Verney disclose passing

perceptible red light.

       The government provided no evidence that either Boehm or Verney disclose

perceptible red light.    The government’s expert, Dr. Task, testified that “Boehm

discloses a splitting of the red color band at about 710 nm,” but he did not testify that

Boehm discloses the passing of perceptible red light.           J.A. 623157.      Honeywell

presented unrebutted expert testimony from Mr. Tannas that graph IV of figure 3 does

not disclose the passing of perceptible red light:

       Based upon the information contained in [Boehm, Uchida and Stolov], it
       cannot be shown that the LCD display of [Uchida] or the projection display



2008-5181                                    11
       of [Stolov] would pass a “narrowband of the red color band” if filtered with
       the BG 7 filter. These references contain no information regarding the
       emission spectrum of any light source that would be used to illuminate the
       LCD or projection display and no information regarding the emission
       spectrum of light emitted by the display after filtering with BG 7. Therefore
       it cannot be shown that the LCD display of [Uchida] or the projection
       display of [Stolov] filtered with BG 7 would emit light within the red color
       band or that such light would be perceptible.

J.A. 622958. According to Mr. Tannas, “[b]ased upon its transmission spectrum, it

appears to me that the BG 7 filter would suppress red to such a degree that any red

light passing through the filter would not be sufficient to provide the red primary of a full

color display.” J.A. 622958–59. This unrebutted expert testimony is consistent with

various statements in Boehm. For example, according to section 3 of Boehm, which

identifies problems of cockpit illumination, “[t]he main idea is to use only special green

and blue illumination in the cockpit or switch off all lighting and use a special type of

floodlight when necessary.” J.A. 605298. This requirement of “blue/green lighting” is

listed among “the most important factors for a NVG compatible cockpit.” Id. Moreover,

Boehm mentions the filtering of “red and near [infrared]” light only with respect to

incandescent lighting and discusses green/blue light with respect to lighting from the

display. Boehm also states that “filtering conventional incandescent lighting with dyed-

glass filters [such as BG-7] should be used sparingly.” J.A. 605302. Because the Court

of Federal Claims’ analysis was premised on an erroneous claim construction, it clearly

erred in finding that Boehm discloses element (a)(3) of claim 2.

       With respect to Verney, the Court of Federal Claims’ analysis was more limited.

See Invalidity/Defenses Order at 546. First, the court relied on Dr. Task’s testimony that

Verney “shows excellent transmission out to about 640 nm and measurable

transmission out to about 700 nm.”       J.A. 623178.     Again there is no testimony on



2008-5181                                    12
whether this would result in perceptible red light. Verney teaches the conventional

wisdom that “red or white integral lighting systems cannot be activated while the pilot is

using NVGs due to their adverse interaction . . . . To meet this deficiency, a new infrared

free blue-green light has emerged as the basic type of light to be used in NVG

applications . . . .” J.A. 623393. Though the government claims Verney discloses a

transmission of wavelengths within the red color band construed by the trial court, there

is no evidence that this transmission results in any perceptible red light visible to the

human eye. Second, the court stated that “Honeywell does not dispute that Verney

discloses claim 2(3)(a) [sic].” Invalidity/Defenses Order at 546 (citing Pls.’ Post-Trial

Opp’n Br. Regarding Defenses 61–62). But this statement is directly contradicted by

Honeywell’s brief before the Court of Federal Claims. Citing testimony by Mr. Tannas,

Honeywell argued that “one of ordinary skill in the art would understand that, because

Verney teaches that the filtered red warning light does not adversely affect the

performance of the NVGs, the red warning light would have to be dimmed to a level

where it is not perceptible to the human observer.” Pls.’ Post-Trial Opp’n Br. Regarding

Defenses 65 (explaining that “the Court’s claim construction requires that the

‘narrowband of the red color band’ that is emitted by a local color display be

perceptible”).   Honeywell unambiguously contended that “Verney (DE-511) is

completely unrelated to the ’914 invention.” Id. Third, according to the Court of Federal

Claims, “Mr. Tannas also agreed that ‘[Verney] is very close to the CMFD filter.’”

Invalidity/Defenses Order at 546 (alteration in original). This statement alone, however,

cannot support a finding that Verney discloses the passing of perceptible red light.

Indeed it is clear from the reference itself that Verney discloses only dimming and




2008-5181                                   13
blocking near infrared light, which is not the same as passing perceptible red light.

Specifically, Verney identifies two approaches for permitting aircraft pilots to see caution

and warning lights through NVGs: (1) use limited filtering to “cut[] out the near infrared

[light]” and (2) “where installation of limited filtering proves impracticable,” use dimming

to “set the intensity low enough so that [the] energy level can be seen through the

NVGs.” J.A. 623400 (stating in the context of the first approach that “[t]his filter when

combined with a source that is dimmable provides an effective warning since the energy

emitted from the display stands out in the NVG without adversely affecting their

performance”). Verney concludes: “One significant finding during the BLACK HAWK

development program is that red warning lights are permissible in the cockpit if the

appropriate filtering and dimming is present.” J.A. 623402. The government points to

no record evidence to support a finding that Verney discloses perceptible red light. For

these reasons, the Court of Federal Claims committed clear error in finding that Verney

discloses element (a)(3) of claim 2. Given the failure to prove that the cited references

disclose element (a)(3), the government has failed to carry its burden of proving by clear

and convincing evidence that the claimed invention would have been obvious to one of

skill in the art. In light of the foregoing, we need not address Honeywell’s additional

argument    that   the   objective   considerations    warranted    a   determination     of

nonobviousness.

       B. Written Description

       The Court of Federal Claims concluded, in the alternative, that claim 2 is invalid

under the written description requirement of 35 U.S.C. § 112, ¶ 1. Invalidity/Defenses

Order at 567–72. “Compliance with the written description requirement is a question of



2008-5181                                   14
fact.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376 (Fed. Cir. 2009). To

comply, a patent applicant must “convey with reasonable clarity to those skilled in the

art that, as of the filing date sought, he or she was in possession of the [claimed]

invention.”   Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)

(emphasis omitted).

       According to the Court of Federal Claims, claim 2 encompasses a variety of

displays, but the originally filed ’269 application “contains no indication that the inventor

conceived of the invention being used with any displays other than CRTs.”

Invalidity/Defenses Order at 570. During prosecution of the ’914 patent, Honeywell

amended the ’269 application to substitute claims from another application for which the

PTO had issued a notice of allowability. Honeywell also amended the specification and

drawings of the ’269 application, including replacing figure 3. It is true that figures 2 and

3 of the original application disclosed an embodiment using a local display (37)

consisting of three monochromatic CRTs (51–53).          But the original application also

explained that “[i]n the case of the local display 37 using separate cathode ray tubes

51–53 or other display transducers, it is possible to more easily filter offending colors

from reaching the [NVG].”      J.A. 606271 (emphasis added).        Moreover, the original

application stated that “[w]hile specific configurations of the local display . . . 37 have

been described, it is understood that the present invention can be applied to a wide

variety of display and vision aid devices.” J.A. 606272. While original figure 3 may

have disclosed a CRT, there is no reason, in light of the other statements in the

specification, to limit the disclosure to only CRTs. For these reasons, the Court of

Federal Claims clearly erred in finding that the original application’s disclosure was




2008-5181                                    15
limited to CRT displays and that claim 2 of the ’914 patent is invalid under the written

description requirement of 35 U.S.C. § 112, ¶ 1.

       C. Indefiniteness

       The government contends that the Court of Federal Claims’ invalidity

determination could alternatively be affirmed by concluding that claim 2 is indefinite

under 35 U.S.C. § 112, ¶ 2. Indefiniteness is a question of law, which we review de

novo. Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir.

2001). “[A] claim is indefinite only if the ‘claim is insolubly ambiguous, and no narrowing

construction can properly be adopted.’” Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341

F.3d 1332, 1338–39 (Fed. Cir. 2003) (quoting Exxon, 265 F.3d at 1375).                    “If the

meaning of the claim is discernible, even though the task may be formidable and the

conclusion may be one over which reasonable persons will disagree, we have held the

claim sufficiently clear to avoid invalidity on indefiniteness grounds.” Exxon, 265 F.3d at

1375. Nevertheless, “[e]ven if a claim term's definition can be reduced to words, the

claim is still indefinite if a person of ordinary skill in the art cannot translate the definition

into meaningfully precise claim scope.” Halliburton Energy Servs., Inc. v. M-I LLC, 514

F.3d 1244, 1251 (Fed. Cir. 2008).

       The Court of Federal Claims concluded that claim 2 is not indefinite.

Invalidity/Defenses Order at 574–76.          The court construed “local color display” to

require “color perceptible to an observer or observers utilizing a night vision aid.” Claim

Construction Order at 444. According to the government, claim 2 is indefinite because

“perceptible” is a subjective standard amenable to two different interpretations—color

and brightness. We disagree. In Minnesota Mining & Manufacturing Co. v. Johnson &



2008-5181                                      16
Johnson Orthopaedics, Inc., 976 F.2d 1559 (Fed. Cir. 1992), we upheld a construction

of “lubricant” that used the term “slippery.” Id. at 1567. The accused infringer argued

that this construction “renders the claims indefinite because it is impossible to know how

‘slippery’ the product has to be.” Id. We explained that this argument was “improperly

framed in its use of the term ‘slippery’ because this term is not used in the claims. The

claims only require lubrication.”   Id.   We then held that “the amount of lubrication

required is laid out in the specification and should be sufficient to achieve the

fundamental purpose of the invention.” Id. (stating also that “we do not perceive any

difficulty or confusion in determining what is ‘lubricated’ and what is not lubricated in

terms of the . . . patent”).

       In this case, claim 2 requires a “local color display” and it is the court’s

construction that uses the term “perceptible.” Accordingly, like the accused infringer in

Minnesota Mining & Manufacturing, the government improperly frames its argument by

focusing on the term “perceptible.” With respect to the claim term “local color display,”

the patent specification explains that the display is “viewable by the crewmember.” ’914

patent col.2 ll.40–42. The specification further describers a local color display that uses

a local source of light comprising red, green, and blue color bands, see id. col.4 ll.40–

45, which the Court of Federal Claims construed as “includ[ing] the range of

wavelengths, within which the colors blue, red, and green are visible to the human eye.”

Claim Construction Order at 466 (emphasis added).            Moreover, the fundamental

purpose of the invention is to permit displays that convey information—i.e., red warning

lights—to crewmembers in an aircraft cockpit without such light overwhelming sensor

elements in NVGs. We do not perceive any difficulty or confusion in determining what is




2008-5181                                   17
a local color display and what is not a local color display in terms of the ’914 patent.

That is, local color displays are displays that emit visible, color light.       Therefore,

because “local color display” is amenable to construction and is not insolubly

ambiguous, we agree with the Court of Federal Claims that the government did not

meet its burden of proving that claim 2 is indefinite.

       In sum, we conclude that the government has not met its burden of proving that

claim 2 is invalid. In about 1-1/2 pages of briefing, L-3 Communications provides four

alternative bases on which to affirm. We see no merit in these arguments.

II. Invention Secrecy Act

       Honeywell’s Amended Complaint also seeks compensation under the Invention

Secrecy Act for pre-issuance use of the invention.         The Court of Federal Claims

concluded that “Honeywell cannot establish the second element of Article III standing to

assert a claim for just compensation under the Invention Secrecy Act, i.e., ‘causation—a

fairly traceable connection between the plaintiff’s injury and the complained-of conduct

of the defendant.’” Invention Secrecy Act Order at 233 (quoting Steel Co. v. Citizens for

a Better Env’t, 523 U.S. 83, 103 (1998)). The “right to compensation” provision of the

Invention Secrecy Act provides as follows:

       The owner of any patent issued upon an application that was subject to a
       secrecy order issued pursuant to section 181 of this title, who did not
       apply for compensation [from a government agency] as above provided,
       shall have the right, after the date of issuance of such patent, to bring suit
       in the United States Court of Federal Claims for just compensation for the
       damage caused by reason of the order of secrecy and/or use by the
       Government of the invention resulting from his disclosure.

35 U.S.C. § 183 (emphasis added). Section 184 states that “[t]he term ‘application’

when used in this chapter includes applications and any modifications, amendments, or




2008-5181                                    18
supplements thereto, or divisions thereof.” Id. § 184. The Court of Federal Claims

concluded that “Honeywell’s ’914 patent did not issue ‘upon’ or ‘on’ the ’269 Application

as there is no contiguous relationship or dependence between the two.”             Invention

Secrecy Act Order at 233. According to the Court of Federal Claims, “the claims in the

’269 Application, subject to the April 2, 1986 Secrecy Order, were completely different

than the claims in the ’914 patent that issued on October 22, 2002.” Id. at 232.

       The court’s interpretation of § 183 contradicts the plain language of the statute

and its creation of a “contiguous relationship or dependence” test lacks any foundation

in the text of the statute itself. The ’269 application issued, albeit after amendment, as

the ’914 patent. Section 184 explicitly includes amendments made to an application.

Honeywell owns the ’914 patent, this patent issued from the ’269 application, this

application was subject to a secrecy order, and no other requirement of § 183 is in

dispute. Honeywell thus has standing to assert a claim for just compensation under the

Invention Secrecy Act.

III. First Sale Doctrine

       The Court of Federal Claims concluded that the first sale doctrine precludes

Honeywell from recovering damages from the government for use of at least one

infringing system.     This appeal concerns three accused systems: (1) the Color

Multifunction Display (CMFD) and NVGs in the F-16 aircraft, (2) the Radar Display Unit

(RDU) and NVGs in the C-130H aircraft, and (3) the Color Multifunction Display Unit

(CMDU) and NVGs in the C-130J aircraft. Importantly, Honeywell Inc. 3 manufactured


       3
            Recall that AlliedSignal was the original assignee of the ’914 patent and
that Honeywell (specifically Honeywell International, Inc.) resulted from a December
1999 merger between AlliedSignal and Honeywell Inc.


2008-5181                                  19
and sold the CMFDs. According to the Court of Federal Claims, the first sale doctrine

thus precludes Honeywell from recovering damages from the government for use of

infringing CMFDs and NVGs in the F-16 aircraft. For the first sale doctrine to apply,

there must be an authorized first sale. See Jazz Photo Corp. v. Int’l Trade Comm’n,

264 F.3d 1094, 1105 (Fed. Cir. 2001) (“To invoke the protection of the first sale

doctrine, the authorized first sale must have occurred under the United States patent.”).

This case presents a peculiar set of facts, to be sure. Nevertheless, Honeywell Inc.’s

sale of infringing CMFDs was not authorized because, at the time of the sale, Honeywell

Inc. had no rights under the ’914 patent, which AlliedSignal owned.        The fact that

Honeywell now owns the patent does not retroactively authorize the earlier sale. As

such, the first sale doctrine does not preclude Honeywell from recovering damages

against the government for use of infringing CMFDs and NVGs in the F-16 aircraft. To

the extent that the government has recourse, such recourse is not through the first sale

doctrine.

                                    CONCLUSION

       We conclude (1) that the government has not proved by clear and convincing

evidence that claim 2 of the ’914 patent is invalid, (2) that Honeywell has standing to

assert a claim for just compensation under the Invention Secrecy Act, and (3) that the

first sale doctrine does not preclude Honeywell from recovering damages against the

government for use of infringing CMFDs and NVGs in the F-16 aircraft. Accordingly, the

final judgment of the Court of Federal Claims is reversed, and we remand for a

determination of damages.

                             REVERSED and REMANDED



2008-5181                                  20
 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT



                                      2008-5181

                      HONEYWELL INTERNATIONAL, INC.,
               and HONEYWELL INTELLECTUAL PROPERTIES, INC.,

                                                                Plaintiffs-Appellants,

                                            v.


                                  UNITED STATES,

                                                                Defendant-Appellee,

                                            and

                        LOCKHEED MARTIN CORPORATION,

                                                                Defendant-Appellee,

                                            and

                      L-3 COMMUNICATIONS CORPORATION,

                                                                Defendant-Appellee.


        Appeal from the United States Court of Federal Claims in 02-CV-1909,
                              Judge Susan G. Braden.


MAYER, Circuit Judge, dissenting-in-part.

      In my view the trial court correctly decided that claim 2 of U.S. Patent No.

6,467,914 (“the ’914 patent”) is invalid as obvious, that U.S. Patent Application No.

06/786,269 (“the ’269 application”), which eventually issued as the ’914 patent, did not

fully disclose the invention of claim 2 of the ’914 patent, and that Honeywell

International Inc. and Honeywell Intellectual Properties Inc. (collectively “Honeywell”)
are precluded from recovering damages for infringement by products that a predecessor

company, Honeywell Inc., sold to the government. I therefore respectfully dissent from

Parts I.A, I.B, and III of the court’s opinion.

                                        I. Obviousness

       The ’914 patent claims a color display system, such as that used in aircraft

cockpits, that is compatible with the use of night vision goggles (“NVGs”). Compatibility

between a color display and NVGs is a concern because the presence of too much light

inside the cockpit, particularly light with wavelengths in the red and infrared regions of

the spectrum, can overwhelm NVGs and interfere with their use. There is no dispute

that elements (a)(1) and (a)(2) of claim 2 of the ’914 patent, which discuss filtering of the

blue and green bands of the color display, were well known in the art in 1985, the year

the ’269 application was filed.       Honeywell argues that what would not have been

obvious in 1985 is the idea of “splitting” the red color band, using filters to allow a

narrowband of red to be displayed while blocking this same narrowband at the NVGs,

as is taught by claim 2 elements (a)(3) and (b). As the trial court correctly found,

however, the prior art does disclose this concept. One of ordinary skill in the art in 1985

would have known how to apply this prior art to a color display in a cockpit and make

adjustments to the filters and light source to achieve the display system taught in claim

2 of the ’914 patent. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person

of ordinary skill is . . . a person of ordinary creativity, not an automaton.”). I would

therefore affirm the trial court’s determination that the claim is invalid as obvious.

       Element (a)(3) of claim 2 of the ’914 patent teaches a filter “for filtering the red

color band . . . and passing a narrowband of the red color band.” According to the trial




2008-5181                                         2
court’s construction, the red color band represents light with a wavelength between

620nm and 780nm. Honeywell Int’l, Inc. v. United States, 66 Fed. Cl. 400, 470-71

(2005) (Claim Construction Order). One of the prior art references employs a filter that

passes red light from 620nm to 710nm, thereby teaching the limitation of element (a)(3)

of claim 2. See H.D.V. Boehm, The Night Vision Goggle Compatible Helicopter Cockpit,

Tenth European Rotorcraft Forum, August 28-31, 1984 (“Boehm”). A second prior art

reference also discloses the limitation of element (a)(3), as it describes filtering that

allows for “excellent transmission throughout the visible region and then cuts out the

near infrared.”   See Jay F. Verney, Aircraft Lighting Systems, American Helicopter

Society, 41st Annual Forum Proceedings, May 15-17, 1985 (“Verney”). According to

the government’s expert, Verney “shows excellent transmission out to about 640 nm

and measurable transmission out to about 700 nm.”

      The majority agrees with Honeywell’s argument that the limitation of element

(a)(3) of claim 2 is not met because the filters employed in Boehm and Verney would

not pass perceptible red light. This argument confuses the trial court’s holding that

claim 2 requires perceptible light to be emitted within the wavelengths defined as the

red color band with a holding that claim 2 requires light to be emitted which is perceived

as red. The trial court consistently held the former—in its orders on claim construction,

infringement, and validity—and never held the latter. See e.g. Honeywell Int’l, Inc. v.

United States, 70 Fed. Cl. 424, 464 (2006) (Infringement Order) (noting that the light

emitted need not be perceived as red to infringe the red color band element of claim 1);

id. at 467 (“Claim 2(a)(3) of the ’914 patent requires only that the third filter pass a

‘narrow band at the red color band,’ i.e., a narrow range of wavelengths within 620 nm




2008-5181                                   3
to 660 nm.”) (emphasis added); Honeywell Int’l Inc., 81 Fed. Cl. 514, 545 (2008)

(Invalidity/Defenses Order) (“The court’s claim construction . . . did not require the

perception of the red primary of a full color display.”). ∗ In fact, the trial court specifically

found that the accused systems infringe claim 2 despite the fact that they do not emit

perceptible red light; there is no indication that the accused systems would have been

found to infringe had the trial court applied the majority’s new construction.

Infringement Order, 70 Fed. Cl. at 467; see also id. at 464 (rejecting the argument that

an accused system did not infringe claim 1 because there was no evidence that it

“produces red energy that can be detected by the human eye”). In any case, testimony

by experts for both Honeywell and the government indicates that one of skill in the art at

the time would have known how to adjust the light source to increase the perceptibility

of the light in the red color band while employing the filters of Boehm or Verney. In

determining whether a patented invention is invalid for obviousness, “we do not ignore

the modifications that one skilled in the art would make to a device borrowed from the

prior art.” In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).

       Element (b) of claim 2 of the ’914 patent employs a complementary filter at the

NVGs, which blocks the same narrowband of red light that is passed by the filter of

element (a)(3). The use of such a complementary filter at the NVGs is described in

Boehm and a third prior art reference, German Patent Application, DE 33 13 899, Oct.

18, 1984 (“the German patent”). While neither reference teaches a cutoff point (below

       ∗
              While the trial court construed “color bands” “to include the range of
wavelengths, within which the colors blue, red, and green are visible to the human eye,”
Claim Construction Order, 66 Fed. Cl. at 466, this construction does not mean that each
color band is only present when a human can perceive the relevant color. Instead, the
construction reflects the fact that the range of wavelengths associated with each band
can only be defined in terms of colors perceived by humans.


2008-5181                                      4
which light will be blocked from entering the NVGs) in the red color band, as is taught by

the ’914 patent, one skilled in the art at the time the patent application was filed would

have understood that this cutoff point could be shifted along the wavelength spectrum.

In fact, the German patent clearly teaches that the cutoff point can be set at any

wavelength, explaining that the display filter must simply block light above some

threshold wavelength and the NVG filter must block light below that threshold

wavelength.

       The prior art therefore discloses all the elements of claim 2 of the ’914 patent.

While none of the references perform the filtering exactly as taught by the claim, that

does not preclude a finding of obviousness. KSR Int’l, 550 U.S. at 418 (“[T]he analysis

need not seek out precise teachings directed to the specific subject matter of the

challenged claim, for a court can take account of the inferences and creative steps that

a person of ordinary skill in the art would employ.”).      Once the military made the

decision to allow more red light in the cockpit, at the expense of NVG performance, it

would have been obvious to those skilled in the art to combine these references to allow

the display of a limited amount of red light in such a way as not to interfere with the

NVGs, which is taught by claim 2.

       Honeywell’s argument against obviousness relies heavily on secondary

considerations. It places great weight on the fact that, prior to the filing of the ’269

application, the military solved the NVG compatibility problem by limiting the amount of

red light in cockpits. The military later provided a second option to pilots that allowed a

small amount of red light to be displayed with a corresponding degradation in NVG

functionality. According to Honeywell, this change reflects the military’s review of the




2008-5181                                   5
’269 application, pursuant to the Invention Secrecy Act, between the issuance of the two

specifications governing NVG use in cockpits.           Several military witnesses testified,

however, that the two events are unrelated. Invalidity/Defenses Order, 81 Fed. Cl. at

564-65. The change in the military specification reflected a desire on the part of some

military pilots, particularly those of fixed-wing aircraft, to sacrifice some amount of NVG

sensitivity in exchange for allowing more red light to be displayed in the cockpit. This

was a simple shift, changing the cutoff point for the red light that could be displayed

(and was therefore blocked by the NVGs) from 625nm to 665nm, a shift that was well

within the technical ability of those of ordinary skill in the art at the time.

       An additional influence on the military specification was the advancements made

to the color displays themselves, which were in their infancy at the time the original

NVG specification was drafted.        Problems with the use of color displays that were

independent of NVG compatibility—in particular their limited daylight readability—initially

prevented the military from attempting to accommodate their use in cockpits. Once

these problems were resolved and color displays could otherwise be implemented, their

compatibility with NVGs became more important. These factors, not the review of the

’269 application, caused the military to adjust the specification governing red light in

cockpits.   See KSR Int’l, 550 U.S. at 419 (“[I]t often may be the case that market

demand, rather than scientific literature, will drive design trends.”).           The secondary

considerations advanced by Honeywell are therefore insufficient to overcome the strong

showing of obviousness.




2008-5181                                       6
                                   II. Written Description

       The three claims that issued in the ’914 patent were not filed with the original

’269 application.   Instead, they were first filed in a continuation of the related ’268

application, years after the ’269 application was filed. Honeywell later abandoned the

continuation and transferred its allowed claims to the ’269 application, making

conforming amendments to the ’269 specification and drawings.

       The trial court held that the ’269 application did not fully disclose the invention of

claim 2 of the ’914 patent. The ’914 patent claims “a local source of light having blue,

red, and green color bands.” To this single, multiband source of light the ’914 patent

applies “a plurality of filters,” including one that filters only the red color band and

passes a narrowband of red. In contrast, the ’269 application claimed a local source of

light that “includes a plurality of distinct monochromatic color generators.”       In other

words, each color generator would emit a single color: red, green, or blue.             The

application further claimed a bandpass filter “arranged to block light from one of said

color generators except at preferred range of frequencies.” In this manner the ’269

application sought to limit the red light emitted by the display; a bandpass filter over the

red color generator would allow only a portion of the red color band to pass.

       In order to meet the written description requirement of 35 U.S.C. § 112, the

specification “must describe the invention sufficiently to convey to a person of skill in the

art that the patentee had possession of the claimed invention at the time of the

application, i.e., that the patentee invented what is claimed.” LizardTech, Inc. v. Earth

Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). There is no indication in the

’269 application that the inventor conceived, at that time, the invention in claim 2 of the




2008-5181                                    7
’914 patent, which filters a single source of light carrying multiple color bands. As noted

by the trial court, the use of the bandpass filter described in the ’269 application over the

multiband light source claimed in the ’914 patent would render the full color display

inoperative. Invalidity/Defenses Order, 81 Fed. Cl. at 569-70. This is because the

bandpass filter of the ’269 application would block everything except the narrow red

band, including the blue and green light, resulting in the display of only red light. The

trial court therefore did not commit clear error in finding that the original disclosure of

three separate, monochromatic light generators would not demonstrate to one skilled in

the art that the inventor possessed the subject matter of claim 2 at the time the

application was filed.

                                   III. First Sale Doctrine

       One of the accused infringing devices, the Color Multifunction Display (“CMFD”)

installed in F-16 aircraft, was manufactured and sold to the government by Honeywell

Inc. prior to its 1999 merger with AlliedSignal Inc., the company that held the rights to

the ’269 application. Honeywell resulted from the merger of the two companies. The

trial court held that Honeywell is barred by the first sale doctrine from recovering

damages for infringement because “[t]he patentee and the seller of the patented product

. . . are now the same corporate entity.” Invalidity/Defenses Order, 81 Fed. Cl. at 576-

77. Once again, I would affirm.

       The sale by a patentee of a patented product extinguishes the patent rights with

respect to that product. Quanta Computer, Inc. v. LG Elecs., Inc., 128 S. Ct. 2109,

2115 (2008).    While the seller of the CMFDs did not hold the rights to the ’269

application at the time they were sold, the interests of the owner of the application later




2008-5181                                     8
merged with those of the company that sold the infringing devices. Because Honeywell

received compensation for the sales, through Honeywell Inc., its patent rights in those

products are extinguished. The majority’s contrary finding allows Honeywell to recover

for infringement when Honeywell itself is the ultimate recipient of the profits from the

sale of the infringing products.

       This situation parallels that presented in AMP Inc. v. United States, 389 F.2d 448

(Ct. Cl. 1968).    There the court held that a patentee was barred from using a

preexisting, but later acquired, patent to derogate from a license negotiated under a

different patent, noting “[t]he grantor is estopped from taking back in any extent that for

which he has already received consideration.” Id. at 452; see also Hewlett-Packard Co.

v. Repeat-O-Type Stencil Mfg. Corp., 123 F.3d 1445, 1451 (Fed. Cir. 1997) (“Generally,

when a seller sells a product without restriction, it in effect promises the purchaser that

in exchange for the price paid, it will not interfere with the purchaser’s full enjoyment of

the product purchased.”). Similarly, Honeywell should not be permitted to interfere with

the government’s enjoyment of products sold to the government by its predecessor.




2008-5181                                    9
