Foreign Invention Sneaks In Under § 102(g)(2)

Posted on | March 10, 2009 | No Comments

2009-1161 Solvay v. Honeywell
D/DE 06-557
Judge Sue Robinson

Plaintiff Solvay appeals from the grant of summary judgment of Judge Sue Robinson finding Solvay's 6,730,817 invalid under § 102(g)(2).  The court found that Honeywell–working with Russian scientists–had invented the process for manufacturing 1,1,1,3,3-pentaflouropropane (HFC-245fa, a blowing agent for rigid insulating foams) before Solvay.   The court concurrently found that Honeywell infringed claim 1 of the '817, although that summary judgment ruling has no immediate impact due to the invalidity.

Honeywell hired Russian engineers (referred to as RSCAC) to work on flourine product technologies research, and RSCAC developed a way to manufacture HFC-245fa from another product in a continuous process.  Per the terms of the research contract, they reported the results and method to Honeywell in July 1994 and, by August 1995, Honeywell had reduced the Russian instructions to practice.  This all occurred prior to Solvay's priority date in the '817 patent.  Honeywell then filed for a US patent (5,763,706), a date nearly a year after Solvay's priority date.

Section 102(g)(2) provides that a person is entitled to a patent unless:

Solvay essentially argued that Honeywell's patent and activities cannot qualify under 102(g)(2) because Honeywell did not "invent" anything in the United States–rather, the Russians invented it in Russia.

The court found that Honeywell "conceived" of the invention in the US when it received the instructions from RSCAC and that originality was not a requirement of 102(g).  For purposes of 102(g) Honeywell was an "inventor"–although the court went on to say that this did not mean that Honeywell was entitled to a patent (the Russians are apparently not listed as the inventors).

The court also considered but rejected Solvay's argument that Honeywell concealed the invention because there was some delay between the completion of an internal invention disclosure form and the filing of the patent.  Honeywell allegedly had a policy to suppress inventions and delay patent filing where the commercial value was unknown or the market not yet ripe.

More reading:

Counsel:

Solvay: Potter Anerson Corroon (Wilmington, DE); Oblan Spivak McClelland Maier Neustadt (Alexandria, VA)
Honeywell: Morris Nichols Arsht & Tunnell (Wilmington, DE); Kirkland & Ellis (Los Angeles)

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