Solvay v. Honeywell Specialty Materials LLC

• Decision Date: 26 August 2011
• Docket Number: No. 06-557-SLR,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

SOLVAY, S.A., Plaintiff,

v.HONEYWELL SPECIALTY MATERIALS LLC and HONEYWELL INTERNATIONAL INC., Defendants.

No. 06-557-SLR

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

Dated: August 26, 2011

Richard L. Horwitz & David Ellis Moore of Potter Anderson & Corroon, LLP, Wilmington,

Delaware. Attorneys for Plaintiff. Of Counsel: Barry J. Herman, Jean-Paul Lavalleye,

Richard D. Kelly , Jeffrey B. McIntyre, Tia D. Fenton & John F. Presper of Obion,

Spivak, McClelland, Maier & Neustadt, PC.

Thomas C. Grimm & Benjamin J. Schladweiler of Morris, Nichols, Arsht & Tunnell,

Wilmington, Delaware. Attorneys for Defendants. Of Counsel: Robert G. Krupka,

Laura M. Burson & Guy Ruttenberg of Kirkland & Ellis, LLP.

MEMORANDUM OPINION

Dated: August 26, 2011

Wilmington, Delaware

ROBINSON District Judge

I. INTRODUCTION

Plaintiff Solvay, S.A. ("Solvay") brought suit against defendants Honeywell Specialty Materials LLC and Honeywell International Inc. (collectively, "Honeywell") asserting, inter alia, infringement of U.S. Patent No. 6,730,817 ("the '817 patent"). The parties cross-moved for summary judgment regarding infringement and validity of the '817 patent. (D.I. 121, D.I. 134) On December 9, 2008, this court granted Honeywell's motion for summary judgment of invalidity of the '817 patent, concluding that Honeywell was the first inventor pursuant to 35 U.S.C, § 102(g). (D.I. 230) The court also granted Solvay's motion for summary judgment of infringement of claims 1, 5-7 and 10-11 of the '817 patent, and granted in part Honeywell's motion for summary judgment of no infringement, concluding that claims 12-18, 21 and 22 of the '817 patent were not infringed. (D.I. 229) On appeal, the Federal Circuit upheld the court's determination on infringement but reversed in part the court's opinion on invalidity, holding that Honeywell was not a prior inventor of the '817 patent for purposes of § 102(g). See Solvay S.A. v. Honeywell Int'l, Inc., 622 F.3d 1367, 1370 (Fed. Cir. 2010).

Presently before the court are: (1) Honeywell's renewed motion for summary judgment of invalidity of the '817 patent under 35 U.S.C. § 102(g) (D.I. 259) and its motion for leave to file same (D.I. 251); (2) Honeywell's motion for summary judgment of no willful infringement (D.I. 274); (3) Honeywell's motion for leave to file a motion for summary judgment of invalidity of the '817 patent under 35 U.S.C. § 102(e) (D.I, 282); and (4) Solvay's motion for leave to file a sur-reply brief in opposition to Honeywell's motion for summary judgment of no willful infringement (D.I. 298). For the reasons thatfollow, Honeywell's renewed motion for summary judgment of invalidity under § 102(g) (D.I. 259) is denied, and its motion for leave to file its renewed motion for summary judgment (D.I. 251) is denied as moot. Honeywell's motion for summary judgment of no willful infringement (D.I. 274) is granted. Honeywell's motion for leave to file its motion for summary judgment of invalidity under § 102(e), which was not contemplated by the court's April 29, 2011 scheduling order, is denied. (D.I. 282) Solvay's motion for leave to file a sur-reply brief (D.I. 298) is denied as moot.

II. BACKGROUND¹

Solvay's '817 patent, which has a priority date of October 23, 1995, discloses and claims processes for making 1,1,1,3,3-pentafluoropropane ("HFC-245fa") by reacting 1,1,1,3,3-pentachloropropane ("HCC-240fa") with hydrogen fluoride ("HF") in the presence of a hydrofluorination catalyst. The HFC-245fa product formed by the processes of the '817 patent is one of a group of non-ozone depleting hydrofluorocarbons ("HFC") that were legislatively mandated to replace ozone-depleting chlorofluorocarbons ("CFC") and hydrochlorofluorocarbons ("HCFC"). The claims of the '817 patent relate to processes for making HFC-245fa that include continuously drawing off gaseous HFC-245fa and hydrogen chloride ("HCI") from the reaction mixture.

On July 11, 1994, Honeywell filed a patent application that later issued as United States Patent No. 5,574,192 ("the '192 patent"). Honeywell's '192 patent claims a process for making 245fa by reacting 240fa with hydrogen fluoride in the presence of acatalyst. (D.I. 286, Ex. 3) Solvay amended the claims of the '817 patent to claim an improvement over the '192 patent which relates to withdrawing 245fa from the reactor continuously as it is being formed. (D.I. 136, Ex. 13)

In early 1994, Honeywell entered into a research contract with the Russian Scientific Center for Applied Chemistry ("RSCAC"), pursuant to which the RSCAC performed process development studies in Russia for the commercial production of HFC-245fa.² (D.I. 264 at 3) The RSCAC sent a report detailing the results of its studies to Honeywell in July 1994. (D.I. 260 at 3) Prior to Solvay's October 1995 priority date, Honeywell used RSCAC's report to duplicate RSCAC's experiments in the United States.³ (D.I. 264 at 4) Honeywell then continued working to develop and perfect its process for the preparation of HFC-245fa throughout the summer of 1995, ultimately filing an application to patent the process in July 1996, which resulted in U.S. Patent No. 5,763,706 ("the '706 patent"). (Id.)

III. STANDARD OF REVIEW

"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law."⁴ Fed. R. Civ. P. 56(a). The moving party bears the burden of provingthat no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10 (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 (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 (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 (1986).

IV. DISCUSSION

A. Section 102(g)

1. Prior invention

Pursuant to § 102(g), an applicant may not receive a patent if "before such person's invention thereof the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it," 35 U.S.C. § 102(g)(2);⁵ see also Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1035 (Fed. Cir. 2001). According to the Federal Circuit, 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 may establish that he was the first to invent by showing that he was either: (1) the first to reduce the invention to practice; or (2) the first to conceive the invention⁶ and to then exercise 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. See Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1189 (Fed. Cir. 2002). The Federal Circuit has explained that

[a] principal purpose of § 102(g) is to ensure that a patent is awarded to a first inventor. However, it also encourages prompt public disclosure of an invention by penalizing the unexcused delay or failure of a first inventor to share the "benefit of the knowledge of [the] invention" with the public after the invention has been completed.

Checkpoint Sys v. U.S. Int'l Trade Comm'n, 54 F.3d 756, 761 (Fed. Cir. 1995) (citing Paulik v. Rizkalla, 760 F.2d 1270, 1280 (Fed. Cir. 1985)).

The court concludes that, as a matter of law, the RSCAC qualifies as "another inventor" who reduced the invention to practice "in this country." It is undisputed that the RSCAC conceived the invention and reduced it to practice in Russia. See Solvay, 622 F.3d at 1371-72. The Federal Circuit also determined that the RSCAC sent instructions to Honeywell on how to perform the process, and that Honeywell used those instructions to duplicate the RSCAC's experiments in the United States. Id. According to Solvay, Honeywell's duplication of the RSCAC's process is insufficient for the RSCAC to qualify as "another inventor" under the statute because the Federal Circuit determined that the RSCAC performed the act of inventing in Russia, as opposed to inventing the process in this country. (D.I. 264 at 5-8) However, the Federal Circuit made no determination about whether the RSCAC reduced the invention to practice in the United States. See Solvay, 622 F.3d at 1376.

Federal Circuit precedent indicates that the RSCAC's actions are sufficient to establish its conception in this country for purposes of § 102(g)(2), regardless of its activities in Russia. In Scott v. Koyama, 281 F.3d 1243 (Fed. Cir. 2002), the Federal Circuit found that Scott conceived an invention in the United States by sending a written disclosure of the process to...