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October 13, 2010

The Invention Zone

6,730,817 claims a process for making a refrigerant gas that won't deplete atmospheric ozone and turn Earth into more of a baking oven than humans are busy otherwise doing. Owner Solvay sued Honeywell for infringing '817. For their pains, Solvay had some asserted claims found infringed, but "invalid under 35 U.S.C. § 102(g)(2) because Honeywell was a prior inventor." Appeal got the invalidity ozone depleted from district court summary judgment.

Solvay v. Honeywell International (CAFC 2009-1161) precedential

Solvay's '817 patent has a priority date of October 23, 1995.

Claims 1, 5, 7, 10, and 11 of the '817 patent were found infringed, while claims 12-18, 21, and 22 were not infringed. The CAFC left that finding undisturbed.

Honeywell produces HFC-245fa [the result of the patented process] in its plant located in Geismar, Louisiana, by reacting HCC-240fa and HF in the presence of a hydrofluorination catalyst ("the Geismar process").

Invention

Honeywell contracted with the Russians to figure out a process similar to that claimed by Solvay's '817. No telling whether Sarah Palin could watch the work from her backyard in Alaska.

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 HFC245fa. See Invalidity Ruling, 591 F. Supp. 2d at 732.

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.

Disgusting to the concept that a patent is deserved only for novelty, American law yields little respect for foreign inventions, so the Russians work doesn't count as prior art. Replication in the U.S. is a different thing.

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").

So there, Solvay.

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.

§ 102(g)(2) goes to interference, another uniquely American peculiarity in patent law. Also, § 102(g)(2) requires that "the invention was made in this country." The district court thought that "appreciating" an invention was good enough.

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 Honeywell had to "demonstrate that it 'conceived' the invention at issue," to qualify as an inventor under § 102(g)(2), so that "only ordinary skill in the art would be necessary [thereafter] to reduce the invention to practice." Id. at 738. The court did not agree, however, that reproduction of an invention cannot satisfy § 102(g), or that, under § 102(g)(2), conception must first occur in the United States. The court found "no authority" that barred Honeywell from being an "inventor" for purposes of § 102(g)(2) merely because it derived the invention from RSCAC as "the original inventor." In that regard, the court declined "to read the 'originality' requirement of § 102(f) into § 102(g),"2 reasoning that "[s]ection 102(g) . . . contemplates multiple conceptions, as long as each inventor 'appreciates' his invention." Id. at 739.

2 Section 102(f) states that "[a] person shall be entitled to a patent unless . . . he did not himself invent the subject matter sought to be patented . . . ."

The district court concluded that "Honeywell conceived the invention at issue in the United States upon receipt of RSCAC's instructions, because it was at this point that Honeywell possessed a definite and permanent idea of the complete and operative invention, such that it appreciated the fact of its invention." Id. at 738. The court also concluded that "Honeywell has demonstrated conception by clear and convincing evidence as it is undisputed that its receipt of RSCAC's instructions facilitated Honeywell's actual reduction to practice of the invention." Id. The court determined, therefore, that Honeywell was the first inventor of the subject matter claimed in the '817 patent, unless it abandoned, suppressed or concealed its invention. Id. at 739, citing 35 U.S.C. § 102(g)(2). The court reasoned that, in that regard, the relevant inquiry concerned intentional suppression, based on the period of delay between when Honeywell received RSCAC's instructions and when it filed its own application that issued as the '706 patent. Id. The court found that "Honeywell was moving towards public disclosure," that Solvay had failed to show that "Honeywell withheld its invention from the public 'designedly,'" and that, consequently, Honeywell had not intentionally abandoned, suppressed, or concealed the invention described in the '706 patent. Id. at 742-43.

Solvay stuck to the old-fashioned concept of invention. As every inventor knows, the old ways are the best. (?!)

Solvay argues that Honeywell could not be "another inventor" under 35 U.S.C. § 102(g)(2) because it is undisputed that it did not invent the claimed process for preparing HFC-245fa but, rather, derived it from RSCAC, whose engineers invented it in Russia. Solvay maintains that the court's conclusion that Honeywell was an inventor of the Russian invention is contrary to 35 U.S.C. § 102(f), which provides that a person shall be entitled to a patent unless "he did not himself invent the subject matter sought to be patented." Honeywell could not be an "inventor" of the Russian invention, Solvay reasons, because it did not itself invent the subject matter of the invention. See Appellant's Br. at 17. According to Solvay, the district court erred when it "decline[d] to read the 'originality' requirement of § 102(f) into § 102(g)." See Invalidity Ruling, 591 F. Supp. 2d at 739. Solvay thus urges us to reject the district court's determination that "Honeywell . . . demonstrated conception by clear and convincing evidence as it is undisputed that its receipt of RSCAC's instructions facilitated Honeywell's actual reduction to practice of the invention." Id. at 738.

Solvay argued, in the alternative, that if Honeywell did qualify under § 102(g)(2), "Honeywell suppressed and concealed both the Russian invention and the invention claimed in its own '706 patent."

The CAFC litany on 35 U.S.C. § 102(g)(2) -

A person is not entitled to a patent if "before the applicant'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).3

3 Before enactment of the American Inventors Protection Act of 1999, Pub. L. No. 106-113, 113 Stat. 1501A552, on November 29, 1999, § 102(g)(2) prohibited an applicant from receiving a patent if, prior to the applicant's invention, "the invention was made in this country by another . . . ." 35 U.S.C. § 102(g)(2) (1994) (emphasis added). In Dow Chemical, we held that, under both the pre-1999 version of § 102(g)(2) and the current version of the statute, which reads "the invention was made in this country by another inventor . . ." (emphasis added), it must be shown that an "inventor" made the claimed invention in order to establish a first-inventor defense. 267 F.3d at 1340. In this opinion, we refer to the current version of § 102(g)(2).

The CAFC too thinks of invention old-school: "inventing in the United States." God bless America (and America alone, you special little plot of turf).

Section 102(g)(2) "relates to prior inventorship by another in this country" and "retains the rules governing the determination of priority of invention." Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1444 (Fed. Cir. 1984), quoting P.J. Federico, Commentary on the New Patent Act, 35 USCA page 1, at 19 (1954). In other words, when the statute uses the words "the invention was made in this country," it is referring to the act of inventing in the United States. See Mycogen, 243 F.3d at 1331 ("[a]t trial, Monsanto presented evidence that Monsanto scientists Drs. Fischoff and Perlak were prior inventors, i.e., that they invented the subject matter of the '600 and '862 patents before Mycogen."); Apotex, 254 F.3d at 1036 ("[t]he plain language of § 102(g) clearly requires that the prior invention be made 'in this country.'"). Therefore, the issue we must decide is whether, under the facts of this case, Honeywell "invented" in the United States the process claimed in the '817 patent, as required by § 102(g)(2). For the following reasons, we hold that it did not.

As just seen, in Kimberly-Clark, we stated that § 102(g)(2) "relates to prior inventorship by another in this country" and "retains the rules governing the determination of priority of invention." 745 F.2d at 1444. Those rules are well known. Section 102(g) states that, 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 first to conceive and last to reduce to practice, from a time prior to conception by the other." 35 U.S.C. § 102(g)(2). Conception is the "formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention, as it is hereafter to be applied in practice." Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986), quoting 1 Robinson on Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985); see also Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994) ("Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation."). Actual reduction to practice requires that the claimed invention work for its intended purpose, Hybritech, 802 F.2d at 1376, while constructive reduction to practice occurs when a patent application on the claimed invention is filed. Id.; Frazer v. Schlegel, 498 F.3d 1283, 1288 (Fed. Cir. 2007); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998).

We have regularly applied "the rules governing the determination of priority of invention" in cases involving the question of prior inventorship under § 102(g)(2). See, e.g., Mycogen, 243 F.3d at 1332 ("Monsanto has two ways to prove that it was the prior inventor: (1) it reduced its invention first . . ., or (2) it was the first party to conceive of the invention and then exercised reasonable diligence in reducing that invention to practice."); Dow Chemical, 267 F.3d at 1339-41 (considering conception and reduction to practice in a § 102(g)(2) case). The question thus becomes whether Honeywell conceived of the invention at issue and reduced it to practice in the United States, such that Honeywell is "another inventor" of the process claimed in the '817 patent under § 102(g)(2).

Honeywell is not "another inventor" under § 102(g)(2).

The district court's contemplation that "§ 102(g) exists to determine which of several concept occurred first and thus contemplates multiple concept so long as each inventor 'appreciates' his invention," is legal hogwash.

Conception is "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d at 1228 (quoting Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d at 1376. The test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention. Burroughs Wellcome, 40 F.3d at 1228. In this case, Honeywell did not have, or formulate, a definite and permanent "idea" of its own capable of being reduced to practice. Rather, it reproduced the invention previously conceived and reduced to practice by RSCAC in Russia. Such reproduction cannot be conception because, if it were, the result would be that one who simply followed another inventor's instructions to reproduce that person's prior conceived invention would, by so doing, also become an "inventor." Although the district court declined to read the "originality" requirement of 35 U.S.C. § 102(f) into § 102(g), originality is, nevertheless, inherent to the notion of conception.4 The definition and test of conception employed in Burroughs Wellcome, which speaks to the formation of an idea in the mind of the inventor, necessitates that the conception of an invention be an original idea of the inventor.5 Since it is undisputed that Honeywell did not originate the invention, but reproduced it in the United States by following RSCAC's instructions, Honeywell cannot be said to have conceived of the invention and cannot, consequently, be an inventor for purposes of § 102(g)(2). The district court erred...

4 Webster's Third New International Dictionary defines "conception," relevantly, as "the originating of something (as an idea or plan) in the mind. syn see IDEA." (emphasis added). WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY 469-470 (3d ed. 1986).

5 This does not negate the district court's observation that § 102(g) is directed to the determination of which invention was first conceived. Inventors, acting independently of each other, can conceive the same invention, and § 102(g) guides the resolution of who receives priority.

Infringement

"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) (citations omitted), aff'd, 517 U.S. 370 (1996). Claim construction is a question of law, which we review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).

There was a claim construction dispute on the construed meaning of "isolating" as "separating," and hence, infringement.

In its infringement ruling, the district court held that the Geismar process infringed claim 1 because it draws off a gas stream from the reaction mixture and thereby isolates, or separates, HFC-245fa from the mixture. See Non-infringement Ruling, 591 F. Supp. 2d at 727.

Honeywell wanted a narrowed construction, where "isolating" meant total isolation. The CAFC panel found that the "patent specification uses the terms "isolating," "separating," and "drawing off" interchangeably, as the district court noted. At the same time, we do not think any of the statements made during prosecution call for a construction of claim 1 that requires only "residual amounts" of other components in the gas stream."

Honeywell pointed to expert testimony, which is spare change to the folding money of the specification.

See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (extrinsic evidence such as expert testimony is "less significant than the intrinsic record in determining the legally operative meaning of claim language") (internal citations omitted); Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) ("extrinsic sources like expert testimony cannot overcome more persuasive intrinsic evidence."); Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1347 (Fed. Cir. 2009) (district court erroneously relied on expert testimony and a dictionary definition to the exclusion of the intrinsic evidence of the specification language).

Infringement of claims 1, 5, 7, 10, and 11 affirmed, as was non-infringement of 12-18, 21, and 22.

Non-infringement also hinged on claim construction. Solvay, naturally, wanted a broad construction.

In our view, the limitation "to keep in the reactor in the liquid state" means that the reactants must stay in the reactor in the liquid state until they leave as a gas and cannot return after being re-processed. It is true that the disclosure in the specification is broad enough to include unconverted and partially converted reactants that return to the reactor for further use in the process, because the "or" in the phrase "to keep in, or return to, the reactor the unconverted reactants" suggests an alternative description of the process rather than either/or, in the disjunctive sense. However, the prosecution history should also be considered, and here we think the issue is decided. See, e.g., Phillips, 415 F.3d at 1317 ("the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.").

During prosecution, the inventors distinguished the prior art '192 patent from their invention on the ground that, in their invention, the reactants are not recycled and returned to the reactor, but rather have the advantage of remaining in the reactor vessel in the liquid state. The statements made during prosecution reflect a distinction between, on the one hand, the claimed invention having reactants remain in the reactor in liquid form and, on the other hand, the prior art having unconverted and partially converted reactants leave and then return to the reactor for re-processing. The claim 12 limitation excludes the step of having reactants return to the reactor. It is undisputed that, under this construction, the term "keep in the reactor in the liquid state" is not met by the Geismar process. See Non-infringement Ruling, 591 F. Supp. 2d at 726.

Affirmed-in-part (infringement/non-infringement), reversed-in-part (invention under § 102(g)(2)), and remanded.

Solvay gets to keep its patent on a technology invented in Russia and developed in the U.S. beforehand.

Posted by Patent Hawk at October 13, 2010 2:14 PM | Prior Art

Comments

Rut-Ro, Ready-made Reexam on Ruskie wRitings...

Right?

Posted by: Pedantic Pete at October 13, 2010 6:36 PM

"Honeywell pointed to expert testimony, which is spare change to the folding money of the specification."

!!

This line alone was worth the time to read the post. Can't wait to use it in an appeal brief -- w/ attribution to PH, of course.

Posted by: Babel Boy at October 14, 2010 8:22 AM