Honeywell patent to be re-examined

2GIG-Honeywell lawsuit reaches next stage
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Wednesday, August 11, 2010

ALEXANDRIA, Va.—Marking the first development in several months in the Honeywell/2GIG patent infringement lawsuit, the U.S. Patent Office (PTO) has announced it would re-examine the patent involved in the lawsuit.

In response to the requests from 2GIG's legal counsel, the Patent Office announced it would examine all 25 claims of the so-called 148 Patent held by Honeywell in relation to IP-based home control panels.

What are the claims?

Any patent has claims, which are basically descriptions of the qualities of the patent. To get those claims re-examined, 2GIG had to find "prior art," essentially other patents with similar qualities that existed before Patent 148 was issued. The PTO is satisfied that there is enough prior art to warrant a re-examination of the patent.

The case dates back to last December, when Honeywell filed a lawsuit against panel manufacturer 2GIG Technologies, saying 2GIG's GO!Control panel infringed on Honeywell's 148 Patent.

A couple weeks later, 2GIG filed a response and counterclaims, denying infringement, saying Patent 148 was not legally issued, and accusing Honeywell of intentionally trying to "disrupt 2GIG's relationships with its customers."

Asked for comment on the PTO's decision, Honeywell spokesperson David Gottlieb said the company stands by its original statement: "Honeywell filed this suit in order to protect its rights in its security system innovations and developments. Honeywell invests hundreds of millions of dollars every year in innovation and technology and protects that investment through vigorous pursuit of those who infringe its patents."

Todd Santiago president of 2GIG Technologies called the PTO's decision "a very positive step toward resolution" and said the company is eager "to get this behind us."

"The bottom line is that the United States Patent and Trademark Office believes there are substantial new questions regarding the validity of their patent. This goes along with what we've been saying all along.  We believe this lawsuit is simply a case of an industry giant trying to squash a new competitor.  We will continue to aggressively defend our legal right to compete against Honeywell."

So what does this development mean for the case? Chris Caseiro, a patent attorney with Verrill Dana in Portland, Maine, pointed out that the judge in this case acts separately from the PTO. "The judge doesn't have to wait for the patent office ... a judge can make a determination independently."

Also, once the re-examination is complete, Honeywell has the opportunity to respond to the PTO's findings on the 25 claims. "Honeywell could potentially address all of the concerns of the claims," he explained.

So, while the PTO's decision to re-examine the claims is a good thing for 2GIG "it's not a definitive determination [of the patent's validity] by any stretch."