Solvay S.A. v. Honeywell International Inc.
742 F.3d 998
| Fed. Cir. | 2014Background
- Solvay sued Honeywell alleging infringement of claim 1 of U.S. Patent No. 6,730,817 (priority Oct. 23, 1995) covering an improved process to make HFC-245fa by drawing off gaseous HFC-245fa and HCl as they form.
- Prior to Solvay’s priority date, Russian scientists at RSCAC conceived and documented a continuous process for HFC-245fa in a 1994 Russian patent application and sent a report to Honeywell under a collaborative research agreement.
- Honeywell personnel replicated the RSCAC process in the United States in 1995 using the RSCAC’s instructions; Honeywell later filed its own U.S. patent on an improved process.
- The district court construed “isolating” in claim 1 to mean separating (not necessarily permanently) and found infringement but granted judgment of invalidity under 35 U.S.C. § 102(g)(2) after a jury found the Russians did not abandon, suppress, or conceal the invention.
- On prior appeal (Solvay I) the court held Honeywell did not originate the invention (it derived it from RSCAC) and reversed a prior § 102(g)(2) ruling as to Honeywell; on remand Honeywell argued the RSCAC made the invention in the U.S. because Honeywell’s U.S. reduction to practice was done on RSCAC’s behalf.
- The Federal Circuit majority affirmed invalidity under § 102(g)(2): it held (1) the district court’s claim construction was proper and not waived, (2) the RSCAC authorized Honeywell to practice the invention (inurement), and (3) the Russian application disclosed the invention (no suppression/abandonment).
Issues
| Issue | Plaintiff's Argument (Solvay) | Defendant's Argument (Honeywell / RSCAC) | Held |
|---|---|---|---|
| Proper construction of “isolating” in claim 1 (permanence) | "Isolating" requires permanent removal (no return to reactor); Russian app did not disclose that scope | "Isolating" means drawing off/separating (open-ended “comprising” allows later steps) | Court: Solvay waived new permanence claim; claim construction (separating, not necessarily permanent) is correct and upheld |
| Whether RSCAC’s invention was “made in this country” under § 102(g)(2) via Honeywell’s U.S. work (inurement) | Inurement requires an express request/authorization; RSCAC did not expressly direct Honeywell to reduce to practice, so Honeywell’s U.S. work shouldn’t inure to RSCAC | RSCAC authorized Honeywell under the research agreement and provided instructions; Honeywell’s U.S. reduction to practice inured to RSCAC | Court: Inurement does not require an express directive; the collaborative agreement and RSCAC’s reports authorized Honeywell’s work to inure to RSCAC; invention deemed made in U.S. by another inventor under § 102(g)(2) |
| Whether RSCAC abandoned, suppressed, or concealed the invention (disclosure) | The Russian patent application did not disclose the full (properly-constructed) claim scope; thus RSCAC suppressed/concealed | RSCAC filed a 1994 Russian patent application and provided full process information to Honeywell | Court: Jury verdict that RSCAC did not abandon/suppress/ conceal stands; disclosure requirement satisfied under the court’s claim construction |
| Waiver of claim-construction objections | Solvay failed to ask district court to modify construction to require permanence; thus cannot raise it on appeal | Honeywell argued construction and obtained district court instruction; Solvay agreed below | Court: Solvay waived the new construction argument; appellate review denies the new contention |
Key Cases Cited
- Solvay S.A. v. Honeywell Int’l, Inc., 622 F.3d 1367 (Fed. Cir. 2010) (prior panel decision addressing derivation and claim construction)
- Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) (conception and reduction to practice standards)
- Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031 (Fed. Cir. 2001) (§ 102(g) suppression/ concealment standard)
- In re DeBaun, 687 F.2d 459 (C.C.P.A. 1982) (reduction to practice on inventor’s behalf may inure)
- Litchfield v. Eigen, 535 F.2d 72 (C.C.P.A. 1976) (attribution of reduction to practice to inventor when done on his behalf)
- Kendall v. Searles, 173 F.2d 986 (C.C.P.A. 1949) (joint development program; inurement of third‑party reduction to inventor)
- OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) (secret prior art is disfavored; prior art normally must be publicly accessible)
- Kimberly‑Clark Corp. v. Johnson & Johnson, 745 F.2d 1437 (Fed. Cir. 1984) (definition of § 102 prior art as technology available to the public)