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

I'll research this case and its context before drafting the overview.

Case Overview & Background

The parties. Both sides are operating companies, not NPEs — this is a commercial rivalry, not a patent-assertion-entity suit. Plaintiff Furuno Electric Co., Ltd. (Nishinomiya City, Hyogo, Japan), founded 1951, is one of the world's principal marine-electronics manufacturers — radar, echo sounders/fish finders, GPS chart plotters, sonar, and the NavNet series of multifunction displays — with roughly $700M in annual revenue and a U.S. arm, Furuno U.S.A., Inc., in Camas, Washington (iKnow/STPI case note; Lexology ITC complaint summary). Defendant Honeywell International Inc. (Morristown, NJ) is the diversified industrial/aerospace giant whose Primus Epic integrated flight deck and Bendix/King line sit at the center of the dispute. Co-defendant Skyforce Avionics Ltd. is Honeywell's wholly owned UK subsidiary at Boxgrove, near Chichester, West Sussex — founded in 1990 and acquired by AlliedSignal (now Honeywell) in 1998 — which designs the Skyforce Observer and Sentinel helicopter mission-management and moving-map systems; it is Honeywell's Mission Systems business, not an independent competitor (AIN, Feb. 2008). Furuno itself described the matchup as "a relative David facing the $32 billion Goliath" (Marine Electronics Journal, Mar./Apr. 2012, p. 23).

Accused technology and patents. Filed September 30, 2011, the complaint asserted four Furuno U.S. patents in four counts against Honeywell's and Skyforce's navigation and display products — the same four patents Furuno simultaneously asserted at the ITC (Justia docket, 3:11-cv-01196; RPX litigation document — complaint text). Per the complaint, the '565 patent (6,084,565) was directed to aviation navigation units and window/inset image monitoring; the '094 patent (7,089,094) to "vehicle display devices including … the Honeywell Skyforce Observer products"; and the '367 patent (7,095,367) to "networking devices including … the Honeywell Primus Epic products and the Honeywell Skyforce Sentinel products." Count IV — the count carried in this case file — asserted U.S. Patent No. 7,161,561 ("Display system"), issued January 9, 2007 from Application No. 10/625,078 (filed July 22, 2003), inventor Kenzo Kitayama, with a Japanese priority date of February 10, 1998 (iKnow patent table). In one line: the '561 patent claims a display architecture in which image signals from several separate measuring devices (radar, GPS chart plotter, echo sounder) are synchronized and selectively multiplexed, under control of a common control line, so that any of multiple displays can present a chosen image or split/overlaid combination — i.e., the networked multi-display, source-selectable bridge/ cockpit architecture (US 2004/0051681 A1; claim summary). Furuno pleaded literal and DOE infringement plus contributory/inducement theories, willfulness, damages, and preliminary and permanent injunctive relief, and demanded a jury. The case was assigned in the Portland Division to Magistrate Judge John V. Acosta (per the Justia docket; I could not verify from a primary source whether an Article III judge was separately designated before dismissal).

Posture, resolution and why it matters. The Oregon complaint was a counterstrike in a two-front, two-way war: Honeywell had sued Furuno (with Navico and Raymarine) in the District of Minnesota on December 16, 2009, asserting five Honeywell navigation-display patents, and Furuno had responded by filing five ex parte reexamination requests and obtaining a stay of that case pending reexamination (Honeywell Int'l v. Furuno, D. Minn., stay order). Furuno then went on offense on the same day in two fora: the Oregon district court action and ITC Inv. No. 337-TA-810, Certain Navigation Products, Components Thereof, and Related Software, instituted in late October/November 2011 against Honeywell and Skyforce, asserting 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 (USITC News Release 11-135; 76 Fed. Reg. 68209 (Nov. 3, 2011)). The pairing of a district-court damages action with a Section 337 exclusion-order proceeding — against the same products, on the same patents, filed the same day — is the case's structural signature. It ended almost as fast as it began: the parties settled across both fora, the ALJ granted a joint motion to terminate the ITC investigation by initial determination of February 14, 2012 (Commission declined review March 13, 2012; 77 Fed. Reg. 16,800 (Mar. 21, 2012)), and Judge Acosta dismissed the Oregon case on February 9, 2012 on the settlement covering both matters (Law360 case page). Three points make it worth studying: (1) it shows a Japanese operating company using the ITC as leverage to force a global settlement of a pre-existing U.S. suit brought against it — roughly four and a half months from complaint to dismissal, with no claim construction, no Markman, and no merits ruling; (2) the '561 patent was

I'll research the docket, filings, and parallel proceedings before drafting the chronology.

Key legal developments & outcome — Furuno v. Honeywell, No. 3:11-cv-01196 (D. Or.)

Sourcing caveat up front. The free docket abstract (Justia) for this case contains only case metadata — no entry-level docket text — and my searches did not surface a RECAP/CourtListener copy of the docket sheet, any opinion, or any order text from the Oregon case. Everything below about the district court file is therefore anchored either to (a) the filing/termination metadata, (b) the Law360 case note describing the dismissal, or (c) the ITC record, which is unusually well documented and closely tracks the district court track. Where I could not confirm an event, I say so rather than infer it. This matters because the case had no merits rulings at all — there is no opinion to cite.

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1. Chronology

Docket life of the Oregon case: 132 days.

2. Filing and initial pleadings

• Complaint (2011-09-30). Four counts, four patents, against Honeywell and Skyforce; jury demand; literal infringement plus DOE, contributory/inducement, willfulness; damages and preliminary/permanent injunction. Count IV was the '561 patent against Honeywell's vehicle display devices (Primus Epic). The plaintiff was Furuno Electric Co., Ltd. only — Furuno U.S.A. was not a district-court plaintiff, though it was a co-complainant at the ITC (where it supplied the domestic-industry showing). That asymmetry is deliberate and is the kind of detail worth carrying forward.
• Answer / counterclaims. Not verified. No free source discloses whether Honeywell answered, whether it counterclaimed (e.g., for declaratory judgment of invalidity/non-infringement), or whether Skyforce was ever served. Given the 132-day life and the coordinated global settlement, any answer or counterclaim played no substantive role. I would not assert one exists.
• Assignment. Docketed to Magistrate Judge John V. Acosta in the Portland Division. The metadata listing a magistrate as "presiding judge" is consistent with consent jurisdiction under 28 U.S.C. § 636(c), but I could not confirm a consent election or a separately designated Article III judge — still an open verification item from the earlier section.

3. Pre-trial motions of substance

None are reflected in the public record I could access. Specifically:

• No Rule 12(b) motion to dismiss and no § 1404(a)/§ 1406 transfer motion is documented. The transfer question was, however, the live strategic risk: Honeywell's D. Minn. action was first-filed (2009-12-16) and was pending (stayed) when Furuno filed in Oregon, so a defense motion to transfer to Minnesota, or to dismiss/consolidate, was the predictable first move. I found no order resolving one. Flag as unverified, not as non-existent.
• No stay motion. Unlike the D. Minn. case — where Furuno won a reexamination stay — no stay was sought or granted here, and none could have been premised on IPR:

I'll research the docket and related filings to identify Furuno's counsel of record.

Plaintiff's counsel of record — Furuno Electric Co., Ltd.

Bottom line: Furuno was represented in the Oregon action by Quinn Emanuel Urquhart & Sullivan LLP as national/lead patent counsel — the same firm that was simultaneously running Furuno's ITC case, 337‑TA‑810 — with an Oregon-local firm providing the local-counsel appearance required by D. Or. practice. I was able to verify the Quinn Emanuel team from the four corners of the complaint itself. I was not able to verify the local-counsel name from a primary filing, and I flag that gap explicitly below rather than guess.

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1. Verified from the complaint's signature block

The September 30, 2011 complaint — the full text of which is available via RPX's litigation-document repository — closes with a Quinn Emanuel signature block identifying five attorneys, each noted "pro hac vice pending" (RPX litigation document 51949). The block reads, in substance:

QUINN EMANUEL URQUHART & SULLIVAN, LLP — Wayne Taichi Alexander, pro hac vice pending (Tel. +81 3 5510 1711); Ryan Goldstein, pro hac vice pending (Tel. 213.443.3000); Marc K. Weinstein, pro hac vice pending (Tel. +81 3 5510 1711); Lance Yang, pro hac vice pending (Tel. 213.443.3000); Igor Piryazev, pro hac vice pending (Tel. 650.801.5000) — Of Attorneys for Plaintiff Furuno Electric Co., Ltd.

Why Quinn Emanuel is not a surprise. The firm's role here is corroborated independently of the Oregon docket: a testifying expert in the parallel investigations described his retention as "by Quinn-Emanuel as an expert on behalf of complainant Furuno" in ITC Inv. No. 337-TA-810 (the Furuno-v.-Honeywell case asserting the same four patents, including the '561 patent) and "on behalf of respondent Furuno" in 337-TA-783 (Honeywell's earlier ITC action against Furuno) (expert CV excerpt, PTAB exhibit). In other words, the Oregon team was the same firm fighting Furuno's two-front war described in the case overview — that continuity, not a one-off local hire, explains the appearance.

2. Local counsel — unresolved

Because every Quinn Emanuel signature was "pro hac vice pending," D. Or. practice required an Oregon-barred attorney to appear. The Justia docket's "Represented By" field for this case lists, in addition to Alexander, Goldstein-variant ("Ryan S. …"), Piryazev, and Weinstein, the name David W. Axelrod (Justia docket, 3:11-cv-01196). Axelrod is a long-standing Portland IP litigator at Schwabe, Williamson & Wyatt — a firm that appears repeatedly as Oregon local counsel in patent cases and that is headquartered at 1211 SW Fifth Avenue, Portland.

However — and this is the caveat the record requires — I could not confirm from a primary filing that Axelrod appeared for Furuno rather than for Honeywell/Skyforce. The Justia "Represented By" list appears to aggregate counsel across all parties on the docket (it also contains truncated names such as "Abra T." and "Johnathan E." that I could not resolve), and I did not have direct PACER access to the individual docket entries (ECF Nos. 1–~30) that would show which attorney filed on whose behalf. Defense-side local counsel is a live alternative, since Honeywell was represented nationally by Robins Kaplan in the related matters (Robins Kaplan case description). Treat "Schwabe/Axelrod for Furuno" as probable but unverified.

3. What the record does not show

• No in-house counsel appeared. Furuno Electric is a Japanese corporation; no Furuno U.S.A. legal-department attorney appears in the complaint signature block. (Note also that the Oregon plaintiff was Furuno Electric only — Furuno U.S.A., Inc. was a co-complainant at the ITC but not a named plaintiff here, per the caption and the Justia party listing.)
• No merits-stage counsel activity to report. Because the case settled and was dismissed on February 9, 2012 — roughly four and a half months after filing, with no Markman and no merits ruling (see case overview) — there are no claim-construction briefs, no dispositive motions, and no trial appearances to attribute to any of these lawyers in this docket. Whether the pending pro hac vice motions were ever granted before dismissal is likewise unverified.
• Nothing sealed that would hide counsel. Nothing in the available materials suggests the appearances were sealed or made under pseudonym; the limitation is docket-access, not sealing.

4. Recommended verification step

Pull the D. Or. docket sheet (ECF Nos. 1–30) via PACER for case 3:11-cv-01196 to confirm (a) the local-counsel appearance and (b) any orders granting the Quinn Emanuel pro hac vice applications. Those two entries are the only material gaps in the above account.

I'll research the docket and related filings to identify defense counsel of record.

Useful lead: Robins Kaplan's own experience page says it represented Honeywell. Let me dig into the actual Oregon docket and related filings.

Counsel of Record — Defendants Honeywell International Inc. and Skyforce Avionics Ltd.

Furuno Elec. Co. v. Honeywell Int'l Inc., No. 3:11-cv-01196 (D. Or.)

Sourcing caveat up front. The Oregon action has an unusually thin public record. It was filed 9/30/2011 and dismissed 2/9/2012 — roughly four and a half months — and the Justia docket summary I could retrieve confirms only the parties, the cause of action (35 U.S.C. § 271), the jury demand, and the referral to Magistrate Judge John V. Acosta (Justia docket 3:11-cv-01196). I was not able to retrieve the PACER docket sheet or any filed pleading bearing a defense signature block in this session, so I cannot give you a verified, name-by-name list of the attorneys who entered appearances for Honeywell/Skyforce in the Oregon case itself. Below I separate what is documented from what is not.

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1. Firm-level representation (documented)

Robins Kaplan describes the engagement as: "Represented Honeywell Inc. in the enforcement of a series of patents related to GPS and navigational systems for use in the recreational marine industry. Filed suit in 2009 in district court; while the patents were waiting re-examination, initiated proceedings before the International Trade Commission against one named defendant, Furuno Electric Co., related to additional acts of infringement of additional patents. Negotiated a successful resolution of that matter, along with resolution of that portion of the original district court action related to that defendant" (robinskaplan.com experience page).

Two caveats worth flagging:

• The firm's blurb is loosely worded (it implies Honeywell "initiated" the ITC proceeding against Furuno, whereas the ITC record shows Furuno was the complainant in Inv. No. 337-TA-810 — 76 Fed. Reg. 68209). The substance — that Robins Kaplan represented Honeywell against Furuno and negotiated the settlement that resolved both the ITC investigation and "that portion of the original district court action related to that defendant" — matches this case's resolution exactly, and is the strongest available link between a firm and Honeywell's defense side.
• This establishes the firm, not the individual Oregon appearances.

Skyforce Avionics Ltd. is Honeywell's wholly owned UK subsidiary, and the ITC record shows both respondents acting jointly (the 2/14/2012 initial determination granted "a joint motion by all of the parties to terminate the investigation" — 77 Fed. Reg. 16,800). I found no indication Skyforce retained separate UK or US counsel of record; the reasonable inference is that it was represented by the same Honeywell team, but that is an inference, not a documented fact for the Oregon docket.

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2. Individual attorneys — what I could and could not verify

Not verified (do not rely without a PACER pull). The only attorney names surfacing in connection with this docket in retrievable text are four truncated entries in the Justia participant list — "David W. …," "Abra T. …," "Ryan S. …," "Johnathan E. …" (visible in the search snippet of the Justia docket page). The snippet is cut off before the party labels, so I cannot attribute any of these four to Honeywell/Skyforce; they are at least as likely to be Furuno's side (see below). I am deliberately not guessing at surnames, firms, or roles from initials.

What is documented on the plaintiff side, for contrast — useful because it tells you whose names should dominate the docket: Furuno was represented by Quinn Emanuel Urquhart & Sullivan LLP in the companion ITC investigation, as confirmed by an expert declaration stating he was "[r]etained by Quinn-Emanuel as an expert on behalf of complainant Furuno … Investigation number 337-TA-810 … Retained 8/11 – 12/11" (PTAB exhibit 1008). I could not verify Furuno's Oregon local counsel either.

In-house counsel. No Honeywell or Skyforce in-house attorney is identified as appearing in the Oregon action in any source I found. Honeywell's in-house litigation team would almost certainly have supervised the matter, but naming anyone would be speculation.

Local counsel. D. Or. LR 83 requires local counsel for out-of-state firms, so Honeywell necessarily had an Oregon lawyer on the pleadings. The Portland IP boutiques active in that period would be the obvious candidates, but I have no source tying any specific Portland firm or lawyer to this docket, so I am not naming one.

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3. Why the record is so thin — and where the names actually are

Given the timeline (complaint 9/30/2011; dismissal 2/9/2012 on a settlement that also terminated the ITC investigation), it is likely — though I could not confirm it — that the defense never reached an answer or Rule 26(f) conference, and that the docket contains little beyond the complaint, summons/waivers of service, any corporate disclosure statements, and the stipulation/order of dismissal. If that is right, the appearances may be limited-purpose, which would explain why no defense signature block surfaces in secondary sources.

Concrete verification path (each of these will name counsel of record definitively):

1. PACER docket, D. Or. 3:11-cv-01196 — pull the docket sheet "Attorneys" tab plus (a) any Notice of Appearance, (b) any Rule 7.1 corporate disclosure statement for Honeywell and Skyforce, and (c) the stipulation/order of dismissal.
2. ITC EDIS, Inv. No. 337-TA-810 — the respondents' notices of appearance and the joint motion to terminate will identify the trial team that almost certainly overlapped with the Oregon defense team.
3. D. Minn. 0:09-cv-03601 (Honeywell Int'l v. Furuno) — Honeywell's counsel in that earlier-filed case (stay order) is the same bench that ran the Furuno defense.

Bottom line: the best-supported statement is that Honeywell and Skyforce were defended by Robins, Kaplan, Miller & Ciresi LLP (Robins Kaplan LLP), Minneapolis, as lead counsel for the dispute as a whole, with an as-yet-unidentified Oregon firm serving as local counsel in the District of Oregon. Individual attorney names of record in the Oregon action could not be verified from the sources available and should be pulled from PACER before being used.