Furuno Electric Co., Ltd. et al. v. Honeywell International Inc. et al.

I'll research this ITC investigation and verify the details against available sources.

Good foundation. Now let me dig into the patents, the accused products, and the parallel litigation.

Now let me verify the parallel district court case, the ALJ, and the related follow-on ITC investigation.

Case Overview & Background

Parties. Both sides are operating companies, not NPEs — there is no university or patent-assertion entity in this case. Complainants were Furuno Electric Co., Ltd. (Nishinomiya, Hyogo, Japan), a Japanese marine-electronics manufacturer founded in 1938 whose core technologies are acoustic, ultrasonic and radio-wave sensing (sonar/fish finders, radar, GPS/chartplotters, navigation and medical electronics), and its U.S. sales/service subsidiary Furuno U.S.A., Inc. (Camas, Washington). Respondents were Honeywell International Inc. (Morristown, NJ) and its U.K. subsidiary Skyforce Avionics Ltd. (Chichester, West Sussex), which AlliedSignal/Honeywell acquired in 1998 and folded into its "Mission Systems" business making helicopter mission-management and moving-map systems (Observer, Sentinel, Skymap). This was a two-front, two-way patent war rather than a one-sided assertion campaign: Honeywell had sued Furuno and others in D. Minn. in 2009 over marine GPS/navigation patents, and in June 2011 filed ITC Inv. No. 337-TA-783 against Furuno; Furuno responded on September 30, 2011 by simultaneously filing ITC Complaint DN 2846 (instituted as 337-TA-810) and a mirror district court case, Furuno Electric Co. v. Honeywell Int'l Inc., No. 3:11-cv-01196 (D. Or., Portland Div., before Magistrate Judge John V. Acosta). See USITC News Release 11-135 (Oct. 28, 2011), https://www.usitc.gov/press_room/news_release/2011/er1028ll1546.htm; 76 Fed. Reg. 68209 (Nov. 3, 2011); Justia docket, https://dockets.justia.com/docket/oregon/ordce/3:2011cv01196/[104394](/patent/104394).

Accused technology and patents. The accused products are aircraft and helicopter navigation displays that present a vehicle's heading and position — principally the Honeywell/Skyforce Observer mission-management displays, the Skyforce Sentinel, and Honeywell Primus Epic avionics (per the D. Or. complaint, reproduced at RPX Insight, https://insight.rpxcorp.com/litigation_documents/51949). Notably, the ITC's institution release flags an unusual competitive asymmetry: "the accused products are used in aircraft and helicopters, while the domestic products are used in boats" — i.e., Furuno's domestic-industry case rested on its marine line even though the accused goods were avionics. Four Furuno patents were asserted, with claim 8 of the '561 patent among the instituted claims (claims 1, 2, 11, 16 of the '565 patent; claim 1 of the '367 patent; claim 1 of the '094 patent; claim 8 of the '561 patent):

• U.S. 6,084,565 — image monitoring/display system that renders multiple windows on a single screen and can carry part of an image from one window into another (picture-in-picture-style screen sharing).
• U.S. 7,095,367 — marine network system tying radar, GPS, echo sounder, sonar and display units together over a shared network (asserted against the networked Primus Epic and Sentinel).
• U.S. 7,089,094 — vehicle/vessel information display that receives surrounding-vessel position data (AIS-type targets), scores each target's importance against thresholds, and displays only those falling in a preset importance range (i.e., target filtering/decluttering).
• U.S. 7,161,561 — digital display system with multiple display units that each can selectively present one or more images sourced from different on-board measuring devices.

(Patent sketches: 76 Fed. Reg. 68209; Furuno's later 337 complaint descriptions as reported in "Furuno Files New 337 Complaint Regarding Certain Navigation Products," Lexology, Sept. 25, 2013, https://www.lexology.com/library/detail.aspx?g=d21df8c7-ff47-4191-81b1-9bdf974101b7. Claim-by-claim technical language for the '561 patent has not been independently verified beyond Furuno's own characterizations.)

Procedural posture, outcome and significance. The Commission instituted 337-TA-810 on November 3, 2011 (voted October 27, 2011), naming Honeywell and Skyforce as respondents; the Office of Unfair Import Investigations did not participate. Rather than litigate to an evidentiary hearing, all parties filed a joint motion to terminate on the basis of a settlement agreement, which the presiding ALJ granted by Initial Determination (Order No. 9) on February 14, 2012; no party petitioned for review, and the Commission terminated the investigation in its entirety on March 13, 2012 (77 Fed. Reg. 16562 (Mar. 21, 2012), https://www.govinfo.gov/content/pkg/FR-2012-03-21/html/2012-6836.htm). The settlement was global — Law360 reports that on February 9, 2012 the Oregon district judge dismissed 3:11-cv-01196 after the parties reached a settlement "that covered cases in both district court and the U.S. International Trade Commission," which in practice also resolved Honeywell's side of the dispute (337-TA-783 / the 2009 D. Minn. action). The case is notable for three reasons: (1) it illustrates defensive-counterclaim symmetry in the marine/avionics electronics sector, where a Japanese operating company used Section 337 offensively against a much larger U.S. conglomerate and its captive U.K. subsidiary, reaching a fast (≈4.5-month) settlement instead of a merits ruling; (2) the cross-market domestic-industry theory — marine products supporting an aviation-infringement claim — is an uncommon DI posture worth noting for § 337(a)(2)/(a)(3) analysis; and (3) it was the first round of a sustained Furuno enforcement campaign: Furuno re-asserted the '565 and '561 patents (with U.S. 6,424,292 and 7,768,447) in a September 23, 2013 ITC complaint against Garmin, Navico and Raymarine (reported as Inv. No. 337-TA-900, instituted Nov. 8, 2013; see https://www.usitc.gov/secretary/fed_reg_notices/337/337_900_notice11082013sgl_0.pdf) plus a parallel D. Or. suit, expressly citing 337-TA-810 as related litigation.

Sourcing caveats. The public record does not disclose the settlement terms, license scope, or any payment; those remain confidential and I have not seen them reported. The identity of the presiding ALJ is not confirmed in the sources I could reach — the notice of investigation only directs Chief ALJ Charles E. Bullock to designate a presiding ALJ (Order No. 9 is the operative ID, but the ALJ's name was not in the Federal Register notices). Furuno's representation by Quinn Emanuel appears in an expert-witness CV filed with the PTAB (retained by "Quinn-Emanuel" on behalf of complainant Furuno, 8/11–12/11); I did not independently confirm the full trial teams for either side via a court or ITC filing. I also found no IPR/PGR petitions challenging the '561 patent tied to this investigation; the '561 patent's later validity history in the 2013 Garmin/Navico/Raymarine matters would need separate verification. Finally, note that the case metadata tracks only the '561 patent, whereas the investigation as instituted covered all four patents listed above.

I'll research this investigation and any parallel proceedings across multiple sources.

Bottom Line

337-TA-810 never reached the merits. It was a short, settlement-driven investigation: complaint filed 2011-09-30, instituted 2011-10-27/11-03, and terminated in its entirety 2012-03-13 after the ALJ granted a joint motion to terminate based on a settlement agreement (Order No. 9, 2012-02-14). There was no Markman/claim construction, no evidentiary hearing, no initial determination on violation, no exclusion order or cease-and-desist order, and no appeal. The '561 patent (claim 8) left the ITC unadjudicated, and Furuno re-asserted it in 2013 against a different respondent group.

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Chronological Developments

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Stage-by-Stage Detail

1. Filing and initial pleadings

• Complaint (2011-09-30): Furuno Electric Co., Ltd. and Furuno U.S.A., Inc. alleged a § 337 violation based on importation/sale of "certain navigation products, components thereof, and related software," asserting four patents: the '565, '367, '094, and '561 patents. Furuno requested a permanent exclusion order and cease and desist orders (76 FR 68209).
• Asserted claims (as instituted): claims 1, 2, 11, and 16 of the '565 patent; claim 1 of the '367 patent; claim 1 of the '094 patent; and claim 8 of the '561 patent (76 FR 68209).
• Respondents: Honeywell International Inc. (Morristown, NJ) and Skyforce Avionics Ltd. (West Sussex, UK). Skyforce was Honeywell's UK avionics affiliate and the source of the accused "Skyforce Observer"/"Sentinel" product lines per the parallel district court complaint.
• OUII did not participate — the Commission's investigative attorney was not a party (76 FR 68209). That is procedurally notable: no independent party existed to press the merits after the private parties aligned on settlement.
• Responses/counterclaims: Respondents' responses are required by 19 C.F.R. § 210.13. I could not verify from a primary source the exact date the responses were filed or whether any antitrust/unfair-competition counterclaims were pleaded in the ITC forum; in a § 337 investigation, counterclaims are not permitted (19 U.S.C. § 1337(c)), so the "counterclaim" vehicle was the parallel D. Or. action and Honeywell's own 337-TA-783 complaint.

2. Pre-trial motions of substance

• No motion to dismiss, transfer, or stay pending IPR is documented in the public record. The transfer/stay toolbox available in district court has no ITC analog; the ITC-side equivalents would be a motion for summary determination or a motion to terminate, and no merits-dispositive motion was ruled on.
• The only substantive motion was the joint motion to terminate based on settlement, granted by Order No. 9 on 2012-02-14 under 19 C.F.R. § 210.21(b).
• The effective "stay" fight was across investigations: with the two parties litigating mirror-image ITC cases (Furuno's 810 vs. Honeywell's 783), the parties moved to suspend 337-TA-783 on 2012-02-21, consistent with a global resolution. (Secondary source only.)

3. Claim construction (Markman)

• None. The investigation terminated roughly 3.5 months after institution — well before any Markman/hearing order. There is no claim construction order, no construction of '561 claim 8, and no Commission or ALJ merits opinion to cite. This is the single most important fact for any later reliance on 810: the case generated zero claim-construction record and zero validity/infringement findings.

4. Discovery milestones

• No public discovery orders of strategic significance are documented. The case settled inside the window in which the parties would have been serving contention interrogatories, exchanging infringement/invalidity contentions, and preparing domestic-industry and economic-prong discovery. Furuno's own litigation-expert disclosures in unrelated later matters describe the engagement as running 8/11–12/11 and "case settled," consistent with an early, pre-expert-report resolution.

5. Trial, verdict, post-trial motions

• No evidentiary hearing, no initial determination on violation, no verdict. No JMOL/new-trial/fee motions — those mechanisms do not exist in the § 337 trial track, and in any event there was no merits judgment to attack. No sanctions or § 285 fee proceedings are documented (contrast the unrelated 2014 ITC matter in which a sanctions motion was mooted by settlement).

6. Final disposition

• 2012-02-14: Order No. 9 granting joint termination motion.
• 2012-03-13: Commission determined not to review; investigation terminated in its entirety (77 FR 16562, published 2012-03-21). No party petitioned for review of the ID, and there was no appeal to the Federal Circuit (none would lie absent a merits determination adverse to a party).
• Practical consequence: No exclusion order, no cease and desist order, no bond, and no Presidential/USTR 60-day review period. Furuno obtained no injunctive or remedial relief from the ITC.
• Parallel D. Or. Case No. 3:11-cv-01196 (Judge John V. Acosta; jury demand; '565, '367, '094, '561 patents; accused "Honeywell Primus Epic," "Skyforce Observer," and "Skyforce Sentinel" products): the docket confirms filing 2011-09-30, but I could not verify the docketed dismissal/termination entry. Given the timing, it is highly likely the same settlement resolved it, but I am not asserting that as fact.

7. Parallel PTAB proceedings

• None. There were no IPR or PGR proceedings on the '561 patent (or the '565/'367/'094 patents) arising from or parallel to 337-TA-810. This is structurally, not just factually, true: the AIA's IPR regime took effect 2012-09-16, roughly six months after this investigation terminated. Only pre-AIA ex parte reexamination was available during the relevant window, and I found no reexamination of the '561 patent tied to this dispute.
• Post-hoc note (unverified): The '561 patent was re-asserted by Furuno in the 2013 Garmin/Navico/Raymarine ITC complaint and D. Or. suit. That later wave is where any IPR challenges to the '561 patent would most plausibly have been filed, but I could not confirm any specific IPR number, petitioner, or institution decision within this research. Treat any such reference as unverified.

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Strategic Significance

1. The '561 patent survived intact and unadjudicated. Because 810 ended by settlement rather than a merits ID, there is no issue preclusion, no statutory estoppel, and no adverse validity or claim-construction ruling attaching to claim 8. Furuno was free to—and did—assert the same patent against Garmin, Navico, and Raymarine in 2013.
2. The settlement was almost certainly portfolio-wide, not patent-specific. The temporal pairing of the 810 termination (2012-02/03) with the suspension of Honeywell's mirror-image 337-TA-783 (2012-02-21), plus the D. Or. case, indicates a global cross-resolution of a two-front, two-patent-family war rather than a purchase of peace in one investigation. The settlement agreement itself is confidential; the public

I'll research the counsel of record for Furuno in ITC Inv. No. 337-TA-810.

Initial searches point to Quinn Emanuel as Furuno's ITC counsel and a parallel D. Oregon case with Schwabe Olson attorneys. Let me nail down the ITC-specific appearances.

Quinn Emanuel is confirmed as Furuno's ITC firm. I need the specific attorneys of record in 337-TA-810 — likely Quinn Emanuel plus ITC local counsel (Adduci Mastriani). Let me find the actual complaint/pleadings.

Bottom line

For ITC Inv. No. 337‑TA‑810, the public record identifies Quinn Emanuel Urquhart & Sullivan LLP as the firm representing complainants Furuno Electric Co., Ltd. and Furuno U.S.A., Inc. I was not able to verify, from any primary source I could reach, the individual attorneys whose names appear on the notices of appearance or the complaint signature block. Because you asked me not to invent counsel, I am giving you the firm-level identification that is documented, flagging exactly what is unverified, and telling you where the name-level record lives.

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Verified

Case posture relevant to counsel identification: the investigation was instituted November 3, 2011 (76 Fed. Reg. 68209; USITC News Release 11‑135, Oct. 28, 2011) and terminated only ~4.5 months later on the parties' joint motion — ALJ Order No. 9 (Feb. 14, 2012), Commission determination not to review, 77 Fed. Reg. 16562 (Mar. 21, 2012) (https://www.govinfo.gov/content/pkg/FR-2012-03-21/html/2012-6836.htm). There was no evidentiary hearing, no initial determination on the merits, and no Commission opinion, so no opinion or Law360 merits piece names plaintiff's trial counsel. The case settled before claim construction.

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Not verified — do not treat as fact

• Individual Quinn Emanuel attorneys of record. I could not retrieve the complaint signature block, the Rule 210.14 notices of appearance, or the joint termination motion from EDIS. Those documents are where the names would appear. I am not supplying names from memory or inference.
• ITC "local counsel" / DC boutique. In this era Quinn Emanuel frequently paired with a Washington, D.C. § 337 boutique (e.g., Adduci, Mastriani & Schaumberg appeared alongside Quinn Emanuel in other ITC matters). I found no document tying any such firm to 337‑TA‑810, so I am not listing one. Treat any such name as speculation unless confirmed on EDIS.
• Brett Watkins (Quinn Emanuel, of counsel, Houston). His firm bio credits him with representing "complainant Furuno in a patent-based International Trade Commission investigation against Garmin, Navico, and Raymarine" (https://www.quinnemanuel.com/attorneys/watkins-brett-n/). Those respondents are not the respondents here (Honeywell and Skyforce), and he joined Quinn Emanuel in 2012 — after this investigation was instituted — so his Furuno work is a different investigation. Do not list him for 337‑TA‑810.

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Adjacent counsel — companion district court case (clearly labeled as NOT the ITC)

Furuno filed a parallel infringement action the same day, Furuno Electric Co., Ltd. v. Honeywell International Inc. et al., No. 3:11‑cv‑01196 (D. Or., filed Sept. 30, 2011) (Judge John V. Acosta). The Justia docket lists plaintiffs' counsel as David W. Axelrod, Laura Caldera Taylor, Wayne Taichi Alexander, Igor Piryazev, Marc K. Weinstein, plus several partially displayed names (Abra T. ___, Ryan S. ___, Johnathan E. ___) — https://dockets.justia.com/docket/oregon/ordce/3:2011cv01196/104394. Axelrod, Taylor and Piryazev are Portland patent litigators at Schwabe, Williamson & Wyatt; the complaint in that case bears an "Of Attorneys for Plaintiff Furuno Electric Co., Ltd." signature block (https://insight.rpxcorp.com/litigation_documents/51949). These attorneys were acting in the district court case; I have no evidence they entered appearances in the ITC investigation, and the ITC matter appears to have been run by Quinn Emanuel.

For completeness on the wider Furuno/Honeywell dispute: in Honeywell's earlier Minnesota action against Furuno (D. Minn., filed Dec. 16, 2009), Furuno's side is associated in expert CVs with Bickel & Brewer — again, a different matter and different counsel.

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How to close the gap (recommended verification path)

1. EDIS (https://edis.usitc.gov), Inv. 337‑TA‑810 — pull the public complaint (Sept. 30, 2011), the Oct. 26, 2011 supplement, all Notices of Appearance under 19 C.F.R. § 210.14, and the joint motion to terminate (filed ~Jan./Feb. 2012). The signature blocks and appearances will give you name, firm, bar number and office.
2. FOIA / Office of the Secretary (202‑205‑2000) for the public versions if EDIS images are degraded — this docket is 14 years old.
3. Cross-check any name found against the State Bar of California / D.C. Bar and the firm's archived 2011–12 website.

Note also that the contact in the Commission's Federal Register notices, Amanda S. Pitcher, Esq., Office of the General Counsel, USITC, is Commission staff, not complainants' counsel — she should not be listed.

I'll research the counsel of record for the respondents in this ITC investigation.

Counsel of Record — Respondents (Honeywell International Inc.; Skyforce Avionics Ltd.)

Bottom line: I was unable to verify from any primary source who entered an appearance for either respondent in Inv. No. 337-TA-810. No attorney should be listed for the defense side in this case without pulling the EDIS docket or the APO service list for this specific investigation. The searches I ran surfaced complainant-side counsel and unrelated Honeywell ITC matters, but nothing tying a named attorney to Honeywell or Skyforce in this investigation. Because the case was instituted November 3, 2011 and terminated March 13, 2012 — a lifespan of roughly four months, ending in a pre-hearing settlement — the universe of appearances is almost certainly small (likely one lead + one backup per respondent, plus in-house), which makes the gap easy to close with the right document, but it cannot be closed by inference.

What is confirmed from the record

The fact that the termination motion was joint and that the Commission noted "none of the parties petitioned for review" means respondents were actively represented by counsel of record at least through February 2012 — this is not a case where a respondent defaulted or never appeared.

What I could not confirm (and why I am not filling it in)

• Honeywell's ITC counsel. I found a Honeywell APO service list naming Daniel Cannistra and Crowell & Moring (Washington, D.C.) as lead counsel — but that service list is captioned APO 21-71, a 2021 trade-remedy investigation, not 337-TA-810. Importing that name into 2012 would be fabrication by analogy; Honeywell's IP and trade-remedy practices used different firms.
• Skyforce's counsel. No hit at all. A UK respondent of this size in a 2011 ITC case would most likely have retained a small DC ITC boutique or been jointly defended with Honeywell, but I have no source for either proposition.
• The Justia "Represented By" list for D. Or. 3:11-cv-01196. The names appearing there (Alexander, Goldstein/Weinstein, Piryazev, Axelrod, Laura Caldera Taylor) are consistent with plaintiff-side counsel and are not evidence of defense appearances — the Justia rendering does not map names to parties reliably. Do not cite it for defense counsel.

Where the answer actually lives

1. EDIS — the ITC's electronic docket (edis.usitc.gov), Inv. No. 337-TA-810. Highest-value documents, in order:

• The joint motion to terminate and settlement-agreement submission (filed c. January–February 2012) — signature blocks for every party. This is the single best source and will name each respondent's counsel and firm.
• Respondents' response to the complaint (due ~20 days after service, per 19 C.F.R. § 210.13) — bears the original appearances.
• Notice of appearance / substitution filings and Order No. 9 (Feb. 14, 2012).

1. APO service list for Inv. No. 337-TA-810 — the Secretary publishes these as PDFs under usitc.gov/secretary/fed_reg_notices/service_lists/. Unlike the public certificate of service, the APO list is organized party-by-party ("On behalf of Honeywell International, Inc.: …"), which is exactly the mapping you need. I confirmed this document format exists (the 21-71 list cited above) but did not retrieve the 810 version.
2. The parallel district court docket, D. Or. 3:11-cv-01196 — defense appearances there were probably the same firms, and PACER shows party-to-counsel mapping cleanly. Honeywell and Skyforce were both named defendants in that case.
3. Related investigation 337-TA-783 — the mirror-image case Honeywell brought against Furuno in June 2011 over U.S. Patent Nos. 7,209,070, 6,865,452, 5,461,388 and 6,088,653. Honeywell's counsel in -783 is a strong lead for -810, since the two were litigated as a coordinated dispute. Furuno was the respondent in -783 (Quinn Emanuel again).

Recommendation

If the deliverable requires named attorneys, I would file this section with the confirmed party/service facts above and a placeholder flagged "counsel to be confirmed from EDIS filings for Inv. No. 337-TA-810" rather than any inferred names. My web research hit its limit before I could retrieve the EDIS documents or the -810 APO service list, and none of the secondary sources I reached (GovInfo Federal Register notices, USITC press release, RPX, Justia, expert-declaration exhibits in later PTAB matters) contain defense-side counsel for this investigation. Notably, the expert declarations from later Furuno litigation that recite the -810 matter describe it only as "Case settled" and identify no defense counsel — a useful negative data point suggesting the defense appearances were not notable enough to appear in subsequent reporting.

Confidence: High on the party/service/termination facts (multiple Federal Register and USITC sources agree). Low/none on defense counsel identities — treat as an open item, not a negative finding.