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Reproducing an Invention in the United States Does Not Constitute Inventorship Under 35 U.S.C. § 102(g)(2)

09-1161
October 13, 2010
Cyr Ph.D., Shana K.

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Last Month at the Federal Circuit - November 2010

Judges: Dyk, Mayer, Schall (author)

[Appealed from: D. Del., Judge Robinson]

In Solvay S.A. v. Honeywell International, Inc., No. 09-1161 (Fed. Cir. Oct. 13, 2010), the Federal Circuit held 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).  The Court also held that the district court did not err in ruling that certain claims were infringed while certain other claims were not infringed. 

Solvay S.A.’s (“Solvay”) ’817 patent is directed to methods for making a pentafluoropropane 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 pentafluoropropane compound.

Over one year before the priority date of the ’817 patent, Honeywell contracted with a Russian company to conduct process development studies for the commercial production of the pentafluoropropane compound.  The Russian company consequently conceived the invention claimed in the ’817 patent and reduced it to practice in Russia.  Honeywell used the information from the Russian company to duplicate the process in the United States prior to the priority date of the ’817 patent.

The parties cross-moved the district court for SJ on the issues of invalidity and infringement.  The district court granted Honeywell’s motion for SJ of invalidity, finding that Honeywell was a prior inventor under § 102(g)(2) and that it did not abandon, suppress, or conceal the invention.  The district court granted, as an alternative, Solvay’s motion for SJ of infringement of the claims it ruled invalid, and granted Honeywell’s motion for SJ of noninfringement of certain other claims.  The district court dismissed Solvay’s suit, entering judgment in favor of Honeywell, and Solvay appealed.

The Federal Circuit held that the § 102(g)(2) language that “the invention was made in this country” requires the act of inventing to occur in the United States, and that Honeywell was not an inventor of the process claimed in the ’817 patent.  The Court reasoned that because Honeywell did not originate the invention and merely reproduced it in the United States following instructions from the Russian company, Honeywell did not conceive of the invention and did not qualify as “another inventor” under § 102(g)(2).  Thus, the district court erred in ruling that certain claims of the ’817 patent were invalid by reason of prior inventorship.

Turning to the issue of infringement, the Federal Circuit found that Honeywell infringed certain claims of the ’817 patent.  The Court held that the district court properly construed the term “isolating” as not requiring purification of the pentafluoropropane compound, as Honeywell asserted.  Because Honeywell did not dispute that its accused process satisfied the “isolating” limitation, the Court found that the district court did not err in ruling that certain claims of the ’817 patent were infringed.    

As for Solvay’s appeal of the district court’s grant of SJ of noninfringement of certain other claims of the ’817 patent, the Court affirmed the district court’s construction of the limitation “to keep in the reactor in the liquid state” to mean that the reactants must stay in the reactor in the liquid state until they leave as a gas and cannot return after being reprocessed.  Although the specification was broad enough to include unconverted and partially converted reactants that return to the reactor for further use in the process, the Court found that statements made by Solvay to overcome prior art during prosecution precluded such a broad construction.  Accordingly, because it was undisputed that Honeywell’s process did not satisfy the limitation, the Court found no error in the district court’s ruling that Honeywell did not infringe those claims of the ’817 patent. 

 

Summary authored by Shana K. Cyr, Ph.D., Esq.