Solvay S.A. v. Honeywell Int'l Inc., 2009-1161.

• Decision Date: 13 October 2010
• Docket Number: No. 2009-1161.,2009-1161.
• Citation: 622 F.3d 1367
• Parties: SOLVAY S.A., Plaintiff-Appellant, v. HONEYWELL INTERNATIONAL, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

622 F.3d 1367

SOLVAY S.A., Plaintiff-Appellant,

v.HONEYWELL INTERNATIONAL, INC., Defendant-Appellee.

No. 2009-1161.

United States Court of Appeals,Federal Circuit.

Oct. 13, 2010.

Barry J. Herman, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., of Alexandria, VA, argued for plaintiff-appellant. With him on the brief were Arthur I. Neustadt, Jean-Paul Lavalleye and Jeffrey B. McIntyre. Of counsel was Michael E. McCabe, Jr.

Robert G. Krupka, Kirkland & Ellis LLP, of Los Angeles, CA, argued for defendant-cross appellant. With him on the brief were Laura M. Burson, Guy Ruttenberg; and Gregory F. Corbett, of Washington, DC. Of counsel were Sean M. McEldowney, of Washington, DC; and Shani A. Moore Weatherby, of Los Angeles, CA.

Before DYK, MAYER, and SCHALL, Circuit Judges.

SCHALL, Circuit Judge.

This is a patent case. It arises out of a suit by Solvay S.A. (“Solvay”) against Honeywell Specialty Materials LLC and Honeywell International, Inc. (collectively, “Honeywell”) in the United States District Court for the District of Delaware for infringement of U.S. Patent No. 6,730,817 (“the '817 patent”) owned by Solvay. Solvay now appeals the final judgment of the district court in favor of Honeywell dismissing Solvay's suit. The court's judgment in favor of Honeywell was based on two rulings on summary judgment. First, the court held that although asserted claims 1, 5, 7, 10, and 11 of the '817 patent were infringed, they are invalid under 35 U.S.C. § 102(g)(2) because Honeywell was a prior inventor of the subject matter of the claims who had not abandoned, suppressed, or concealed its invention. ¹ Solvay, S.A. v. Honeywell Specialty Materials LLC, 591 F.Supp.2d 729 (D.Del.2008) (“ Invalidity Ruling ”). Second, the court held that asserted claims 12-18, 21, and 22 of the ' 817 patent were not infringed by Honeywell. Solvay, S.A. v. Honeywell Specialty Materials LLC, 591 F.Supp.2d 724 (D.Del.2008) (“ Non-infringement Ruling ”).

For the reasons set forth below, we hold that the district court erred in ruling claims 1, 5, 7, 10, and 11 of the '817 patent invalid. We do so because we conclude that Honeywell was not a prior inventor for purposes of § 102(g)(2). We also hold, however, that the district court did not err in its rulings that claims 1, 5, 7, 10, and 11 of the '817 patent were infringed and that claims 12-18, 21, and 22 were not infringed. The judgment of the district court is therefore affirmed-in-part and reversed-in-part. The case is remanded to the district court for further proceedings consistent with this opinion.

Background

I.

Solvay's '817 patent has a priority date of October 23, 1995. The '817 patent is directed to methods for making 1,1,1,3,3-pentafluoropropane (“HFC-245fa”). HFC-245fa has been found to be advantageous as a blowing and insulation agent in the preparation of expanded polymeric materials, of the type commonly used in refrigeration and heat storage systems. See '817 patent, col.1 ll.12-14. HFC-245fa is one of a group of non-ozone-depleting hydrofluorocarbons that were legislatively mandated to replace ozone-depleting chlorofluorocarbons and hydrochlorofluorocarbons. The '817 patent discloses methods for making HFC-245fa by reacting 1,1,1,3,3-pentachloropropane (“HCC-240fa”) with hydrogen fluoride (“HF”) in the presence of a hydrofluorination catalyst. Specifically, the patent claims processes for making HFC-245fa that include continuously drawing off gaseous HFC-245fa and hydrogen chloride (“HCl”) from the reaction mixture.

Claims 1 and 12 are the patent's two independent claims. Claim 1 reads as follows:

In a process for the preparation of [HFC-245fa] comprising reaction of [HCC-240fa] with [HF] in the presence of a hydrofluorination catalyst, the improvement which comprises carrying out the reaction at a temperature and under a pressure at which [HFC-245fa] is gaseous and isolating and [sic] [HFC-245fa] from the reaction mixture by drawing off [HFC-245fa] and [HCl] in a gaseous phase as each of said [HFC-245fa] and [HCl] is being formed.

'817 patent, col.5 ll.36-46.

Claim 12 reads as follows:

In a process for the preparation of [HFC-245fa] comprising reaction of [HCC-240fa] with [HF] in the presence of a hydrofluorination catalyst, the improvement which comprises carrying out the reaction in a reactor equipped with a device for drawing off a gas stream at a temperature and under a pressure at which [HFC-245fa] is gaseous and wherein said device is controlled (a) to draw off a gas stream comprising [HFC-245fa] and [HCl] as each of said [HFC-245fa] and [HCl] is being formed thereby isolating said [HFC-245fa] from the reaction mixture (b) to keep in the reactor in the liquid state the unconverted [HCC-240fa], most of the [HF] and most of the products of partial fluorination of [HCC-240fa].

Id. at col.6 ll.15-30.

II.

Honeywell produces HFC-245fa in its plant located in Geismar, Louisiana, by reacting HCC-240fa and HF in the presence of a hydrofluorination catalyst (“the Geismar process”). The Geismar process is a continuous process, where HFC-245fa, HCl, unreacted HF, and other by-products are drawn off from the reactor in gaseous form. Except for the catalyst that escapes from the reactor and that is returned to the reactor by the reflux in the catalyst stripper, the other components of the process exit the reactor as a gas stream for further processing. Notably, most of the HF (approximately 70%) that enters the reactor subsequently leaves the reactor as part of the gas stream. The gas stream then enters downstream equipment, including an HF recovery unit which recovers unreacted HF. The unreacted HF is later recycled and refed, as a gas, to the reactor.

III.

Solvay brought suit against Honeywell in the District of Delaware, alleging that the Geismar process infringed claims 1, 5, 7, 10-18, 21, and 22 of the ' 817 patent. In due course, Honeywell moved for summary judgment of invalidity of claims 1, 5, 7, 10, and 11 of the '817 patent. Honeywell moved on the ground that, under 35 U.S.C. § 102(g)(2), it was a prior inventor of the claimed invention. For its part, Solvay cross-moved for summary judgment of no invalidity on the ground that Honeywell was not a prior inventor and that, even if it was, Honeywell had abandoned, suppressed, or concealed its invention. For purposes of summary judgment on the validity issue, the parties stipulated to the following facts:

In early 1994, Honeywell (then AlliedSignal, Inc.) entered into a research contract with the Russian Scientific Center for Applied Chemistry (“RSCAC”). Pursuant to the contract, RSCAC engineers performed process development studies for the commercial production of HFC-245fa. See Invalidity Ruling, 591 F.Supp.2d at 732. In July 1994, RSCAC sent a report to Honeywell in the United States documenting that it had carried out the liquid phase synthesis of HFC-245fa from HCC-240fa using a continuous process. Id. The report documented that RSCAC had carried out a reaction of HCC-240fa and HF in the presence of an antimony pentachloride catalyst using temperatures between 80-130 degrees Celsius and pressures between 2-40 bar. Id. The report also documented the resulting product yield, and it contained a diagram of the equipment that RSCAC had used to carry out the process. Id. It is undisputed that the process the RSCAC engineers performed and reported to Honeywell in July 1994 corresponds to the invention claimed in Solvay's '817 patent, and that RSCAC engineers both conceived the invention and reduced it to practice in Russia.

In early 1995, Honeywell used the information that RSCAC had provided to duplicate RSCAC's experiments, with similar conditions and equipment. Id. at 736 (noting that Honeywell does not dispute that it replicated or reproduced the work of the RSCAC engineers, such that Honeywell “derived” the invention from RSCAC). It is undisputed that Honeywell performed this work in the United States prior to Solvay's priority date of October 23, 1995.

Throughout the summer of 1995, Honeywell continued working to develop and perfect its process for the preparation of HFC-245fa. Id. at 733. The work included finding optimum operating conditions for the process, as well as designing and enabling downstream purification of the HFC-245fa product. Id. Development of a pilot plant to test a commercially viable manufacturing process for HFC-245fa was begun by Honeywell, and the plant was in successful operation by February 1996. In March 1996, Honeywell began drafting a patent application on an improvement process for making HFC-245fa. The application was filed on July 3, 1996, and eventually issued as U.S. Patent No. 5,763,706 (“the '706 patent”). The '706 patent discloses a process for the continuous preparation of HFC-245fa, using optimal conditions for downstream purification, so that the HFC-245fa recovered by distillation has a high purity (at least about 99.5%). See '706 patent, col.1 l.60-col.2 l.25; col.4 ll.40-42.

On December 9, 2008, the district court granted Honeywell's motion for summary judgment of invalidity of claims 1, 5, 7, 10, and 11 of the '817 patent and denied Solvay's motion for summary judgment of no invalidity. See Invalidity Ruling, 591 F.Supp.2d at 743. The court ruled that Honeywell had previously made the invention of the '817 patent in the United States in August 1995, prior to the '817 patent's priority date, and that the asserted claims thus were invalid based on Honeywell being a prior inventor under 35 U.S.C. § 102(g)(2). Id. at 739, 743.

In arriving at its ruling, the court rejected Solvay's contention that Honeywell was not an “inventor” under § 102(g)(2). Solvay had urged that the invention at issue was “conceived” abroad by RSCAC's engineers and that Honeywell's “mere reproduction” of a foreign invention in the United States did not make Honeywell an inventor because an inventor must be involved in the conception of the invention. The district court agreed that...