November 2010

Spotlight Info

In Solvay S.A. v. Honeywell International, Inc., No. 09-1161 (Fed. Cir. Oct. 13, 2010), the Federal Circuit held, inter alia, that the district court erred in ruling that certain claims of U.S. Patent No. 6,730,817 (“the ’817 patent”) were invalid under 35 U.S.C. § 102(g)(2).  Solvay S.A.’s (“Solvay”) ’817 patent is directed to methods for making a compound used in the preparation of expanded polymeric materials.  Solvay sued Honeywell Specialty Materials L.L.C. and Honeywell International, Inc. (collectively “Honeywell”) for infringement of the ’817 patent based on Honeywell’s process of producing the compound.  But Honeywell argued that the ’817 claims were invalid because it was “another inventor” under § 102(g)(2).  The Federal Circuit, however, found that Honeywell was not “another inventor” because it had merely obtained instructions from a Russian company to duplicate the claimed process in the United States.  The Court held that this did not constitute conception and, therefore, Honeywell could not be an inventor for purposes of § 102(g)(2).  Accordingly, the Federal Circuit held that the district court erred in ruling that certain claims of the ’817 patent were invalid by reason of prior inventorship.  See the full summary in this issue.