Federal Circuit holds that Honeywell’s duplication of a previously-invented process does not qualify the company as “another inventor” under 35 U.S.C. § 102(g)(2)
By Abby Lauer – Edited by Janet Freilich
Solvay S.A. v. Honeywell Int’l, Inc., No. 2009-1161 (Fed. Cir. Oct. 13, 2010)
The Federal Circuit affirmed-in-part, reversed-in-part, and remanded the U.S. District Court for the District of Delaware, which had invalidated plaintiff Solvay’s patent on a process for making non-ozone-depleting refrigerant gas based on a finding that defendant Honeywell had previously invented the process addressed in five of the patent’s claims. The district court also found that Honeywell had not infringed the patent’s other claims.
In reversing, the Federal Circuit held that Honeywell did not qualify as an “inventor” of the patented process under 35 U.S.C. § 102(g)(2) because the company had merely copied the work of a Russian agency that it had hired to develop the process. The court agreed with Solvay’s argument that Honeywell could not be an “inventor” of the gas manufacturing process because it did not itself invent the subject matter of the process. Writing for the unanimous three-judge panel, Judge Schall emphasized that the originality provision of 35 U.S.C. § 102(f) requires that “the conception of an invention be an original idea of the inventor.” Because Honeywell did not itself conceive of the gas manufacturing process, Honeywell was not a prior inventor of the process and Solvay’s patent on the process is valid.
In 1994, Honeywell (at that time, AlliedSignal, Inc.) entered into a research contract with the Russian Scientific Center for Applied Chemistry (RSCAC). RSCAC developed a method for manufacturing a non-ozone-depleting form of penta-flouro-propane, a refrigerant gas that is primarily used in spray-foam insulation products. In early 1995, Honeywell used information provided by RSCAC pursuant to the contract to duplicate the gas manufacturing process at a plant in the United States. Later that year, Solvay filed a patent on the same manufacturing process that had been invented by RSCAC and duplicated by Honeywell. Solvay does not dispute that Honeywell performed the process in the United States previous to Solvay’s patent priority date of October 23, 1995.
After Solvay sued Honeywell for patent infringement, the district court construed 35 U.S.C. § 102(g)(2) to hold that Honeywell qualified as “another inventor” under the meaning of the statute. By the court’s reasoning, the “originality” requirement of Section 102(f) should not be read into Section 102(g)(2), and therefore the statute only requires that a prior user “appreciate” an invention in order to qualify as an original inventor. Because Honeywell had “appreciated” the invention before Solvay filed its patent, the district court granted summary judgment for Honeywell and invalidated claims 1, 5, 7, 10, and 11 of the patent.
The Federal Circuit rejected the district court’s reasoning and reversed the decision with regard to the invalidity of Solvay’s patent claims. The court held that Section 102(g)(2) creates a prior inventor defense, not a prior user defense. Honeywell was a prior user of the gas manufacturing process, but the company could not qualify as a prior inventor of the process because it was invented by RSCAC and merely duplicated by Honeywell. Moreover, the statute’s requirement that a prior invention be made in the U.S. was not satisfied with regard to the gas manufacturing process because the process was invented in Russia. Finally, the Federal Circuit held that Section 102(a) does not invalidate Solvay’s patent: the patented process was not “known or used by others” before the patent priority date because Honeywell had kept its domestic use of the process confidential and out of the public domain.
Honeywell made a strong policy argument that Solvay did not deserve a patent on the gas manufacturing process because it clearly was not the first inventor of the process. The Federal Circuit acknowledged that its holding might ignore “the realities of globalization and outsourcing by modern-day research companies,” but the court argued that it was bound by Section 102(g)(2) to hold that Honeywell did not qualify as “another inventor” under the statute.
PatentlyO notes that, with the holding in this case, the Federal Circuit has added some detail to the common definition of “conception” for purposes of identifying an original inventor of new technology. It is now clear that a party is only an original inventor if the definite and permanent ideas behind the invention are the party’s own ideas.
Abby Lauer is a 2L at the Harvard Law School.