Solvay, S.A. v. Honeywell Specialty Materials LLC

• Citation: 591 F.Supp.2d 729
• Decision Date: 09 December 2008
• Docket Number: Civ. No. 06-557-SLR.
• Parties: SOLVAY, S.A., Plaintiff, v. HONEYWELL SPECIALTY MATERIALS LLC and Honeywell International Inc., Defendants.
• Court: U.S. District Court — District of Delaware

591 F.Supp.2d 729

SOLVAY, S.A., Plaintiff, v. HONEYWELL SPECIALTY MATERIALS LLC and Honeywell International Inc., Defendants.

Civ. No. 06-557-SLR.

United States District Court, D. Delaware.

December 9, 2008.

COPYRIGHT MATERIAL OMITTED

Richard L. Horwitz & David Ellis Moore of Potter Anderson & Corroon, LLP, Wilmington, DE, of Counsel: Arthur I. Neustadt, Barry J. Herman, Jean-Paul Lavalleye, John F. Presper & Michael E. McCabe of Oblon, Spivak, McClelland, Maier & Neustadt, PC, Alexandria, VA, for Plaintiff.

Thomas C. Grimm, Benjamin J. Schladweiler & Leslie A. Polizoti of Morris, Nichols, Arsht & Tunnell, Wilmington, DE, of Counsel: Robert G. Krupka, Laura M. Burson, Amber T. Aubry & Jacob R. Buczko of Kirkland & Ellis, LLP, Los Angeles, CA, for Defendants.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

Plaintiff Solvay, S.A. ("Solvay") brought suit against defendants Honeywell Specialty Materials LLC and Honeywell International Inc. (collectively referred to as "Honeywell") asserting, inter alia, infringement of U.S. Patent No. 6,730,817 ("the '817 patent"). Presently before the court are two motions for summary judgment, each based on 35 U.S.C. § 102(g) as it applies to Solvay's '817 patent. (D.I. 121, D.I. 134) Honeywell is the owner of U.S. Patent No. 5,763,706 (the "'706 patent"). (D.I. 121) The '817 and '706 patents both concern a process for manufacturing 1,1,1,3,3-pentafluoropropane ("HFC-245fa"). (D.I. 178, exs. 31, 33) Solvay has moved for summary judgment of no invalidity because, it contends, Honeywell abandoned, suppressed or concealed its invention. (D.I. 121) Honeywell has moved for summary judgment of invalidity because it asserts that it is the "first inventor" under § 102(g) and, thus, certain claims of Solvay's '817 patent are invalid under 35 U.S.C. § 103.¹ (D.I. 134) For the reasons that follow, Solvay's motion is denied (D.I. 121) and Honeywell's motion is granted (D.I. 134).

II. BACKGROUND

In 1993, Honeywell met with a group of engineers in Russia working at the Russian Scientific Center for Applied Chemistry ("RSCAC"). (D.I. 136, ex. 5 at 5) The meeting sought to "develop breakthrough [f]luorine [p]roduct [t]echnologies which, [ ] if successful, [would] have commercial import." (Id.) In 1994, Honeywell entered into a contract for research with RSCAC. (Id.) Pursuant to the contract, RSCAC was to perform process development studies for the commercial production of HFC-245fa. (Id.) The contract also obligated RSCAC to send monthly reports to Honeywell. (Id.)

In July 1994, RSCAC sent a monthly report to Honeywell in the United States (the "July 1994 report") relating the development work that the Russian engineers had performed. (Id., ex. 5 at 6) In the report, RSCAC described the "liquid phase synthesis of HFC-245fa from HCC-240fa"² and noted the resulting product yield. (Id., ex. 5 at 6-7) The July 1994 report also contained a diagram of the equipment that RSCAC had used to carry out the process. (Id., ex. 5 at 6) RSCAC, in the July 1994 report to Honeywell, further detailed that it carried out a reaction of HCC-240fa and HF in the presence of an antimony pentacholoride catalyst using temperatures between 80-130 degrees Celsius and pressures between 2-40 bar.³ (Id., ex. 5 at 8) In early 1995, Honeywell, using the information that the Russians provided, duplicated RSCAC's experiments using similar conditions and equipment.⁴ (D.I. 123, ex. 5 at 9)

In 1995, Honeywell employed a form entitled "Request and Authority for Patent Application Preparation" (the "RAFPAP form"). (D.I. 123, ex. 2) Generally, the RAFPAP form aided a Honeywell committee in determining whether or not to file a patent application.⁵ (Id., ex. 1) It asked inventors to provide an abstract of the invention and an "evaluation summary." (Id., ex. 2) The evaluation summary section required information regarding innovative content, value to the company of patenting, and the balance between disclosure and trade secret. (Id.) Inventors, for inventions that were "in use" or "definitely scheduled for use," were told to "outline plans for use." (Id.) "For inventions of possible use," inventors were asked to "summarize evaluations which establish definite commercial value." (Id.) "If [such] information [was] not available," then inventors "state[d] why [the] application should not be deferred until such evaluation [was] obtained." (Id.)

On April 15, 1995, Honeywell researchers submitted the form regarding the Buffalo work (the "April 15th form"). (Id.) The innovative content response related that the invention had "several novelties in the manufacturing process, including sulfuric acid absorption, water scrubbing, photochlorination and drying using M.S. 3A." (Id.) The researchers described the value to the company of patenting the invention by stating that "HFC-245fa is the future substitute for 141b in blowing application. A commercial plant is scheduled to be built by 1999." (Id.) Finally, with respect to the balance between trade secret and disclosure, it was noted that "[b]ecause of the competitiveness in the flurorocarbon business, it's recommended to file a patent application to protect this technology." (Id.)

Throughout the summer of 1995, Honeywell continued working to develop and perfect its process for the preparation of HFC-245fa in Buffalo, New York ("Buffalo work"). (D.I. 178, exs. 65, 66) Improvements included finding optimum operating conditions, as well as designing and enabling downstream purification of the HFC-245fa product. (Id.) Honeywell also began designing and implementing a pilot plant to test the process for making HF245fa in August 1995.⁶ (Id. at exs. 41, 65, 66)

The pilot plant "started up on [September 5] and shut down after 24 hours due to greater than expected corrosion. The reactor was damaged beyond repair." (Id., ex. 41 at HON0032554) In early December 1995, Honeywell restarted its pilot plant. (Id., ex. 42 at HON0033441-HON0033442) On February 5, 1996, Dr. Harry Tung ("Dr. Tung") first reported successful operation of the pilot plant in his quarterly status report to Honeywell.⁷ (Id.) In March 1996, Honeywell began drafting the '706 patent's application, which related to Honeywell's Buffalo work. (D.I. 123, exs. 11, 12) On July 3, 1996, Honeywell filed the '706 patent application disclosing an "integrated manufacturing process for producing HFC-245fa...." (Id., ex. 33 at HON0033118)

III. STANDARD OF REVIEW

A court shall grant summary judgment only if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "Facts that could alter the outcome are `material,' and disputes are `genuine' if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct." Horowitz v. Fed. Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d Cir.1995) (internal citations omitted). If the moving party has demonstrated an absence of material fact, the nonmoving party then "must come forward with `specific facts showing that there is a genuine issue for trial.'" Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (quoting Fed.R.Civ.P. 56(e)). The court will "view the underlying facts and all reasonable inferences therefrom in the light most favorable to the party opposing the motion." Pa. Coal Ass'n v. Babbitt, 63 F.3d 231, 236 (3d Cir.1995). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

IV. DISCUSSION

A. Standard

Under 35 U.S.C. § 102(g)(2), an applicant is not entitled to a patent if "before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it." The Federal Circuit has explained that "if a patentee's invention has been made by another, prior inventor who has not abandoned, suppressed, or concealed the invention, § 102(g) will invalidate that patent." Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1035 (Fed.Cir. 2001). The Federal Circuit also has observed that this section "retains the rules governing the determination of priority of invention." Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir.1986) (quoting Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1444 (Fed.Cir.1984)). To this end, a party alleging prior invention can establish that he was the first to invent by showing either: (1) he was first to reduce the invention to practice; or (2) he was first to conceive the invention and then exercised reasonable diligence in attempting to reduce the invention to practice from a date just prior to the applicant's conception to the date of his reduction to practice. 35 U.S.C. § 102(g) ("In determining priority of invention ... there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was the first to conceive and last to reduce to practice, from a time prior to conception by the...