SUE L. ROBINSON, District Judge.
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, 591 F.Supp.2d 724 (D.Del.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 that follow, 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.
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
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 a catalyst, (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.
"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."
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);
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.
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 his assignee's United States subsidiary. More specifically, the Federal Circuit held that "the inventor of an invention of foreign origin may rely on the date that the invention was disclosed in the United States, as a conception date for priority purposes." Id. at 1246-47. However, the Court concluded that Scott's written disclosure of the invention did not constitute a reduction to practice in the United States because the subsidiary did not actually perform the process in the United States. Id. As in Scott, the RSCAC invented its process abroad and "conceived" it in the United States by disclosing it in writing to a United States affiliate. Scott is distinguishable from the facts of the instant case, however, because (unlike the United States subsidiary in Scott) Honeywell actually performed the process in the United States based on the information provided by the RSCAC to duplicate the RSCAC's experiments. See Solvay, 622 F.3d at 1371-72.
In Holmwood v. Sugavanam, 948 F.2d 1236, 1238-39 (Fed.Cir.1991), an inventor who conceived and reduced to practice a fungicide abroad was found to have successfully reduced the invention to practice in the United States for purposes of § 102(g) when his assignee sent the fungicide from Germany to a United States affiliate to verify the positive test results. The Federal Circuit held that the fungicide was reduced to practice in the United States as a result of the tests performed here, which showed that the fungicide worked for its intended purpose. Id.; see also Therasense, Inc. v. Becton, Dickinson & Co., 560 F.Supp.2d 835, 865 (N.D.Cal. 2008) (holding that "an initial reduction to practice outside the United States is not fatal to Abbott's attempt to meet its burden of production" where the invention was later successfully performed in the United States). The court concludes that the RSCAC's conception and reduction to practice in Russia, followed by its communication of instructions to Honeywell and Honeywell's performance of the process in the United States based on those instructions, mirror the facts set forth in Holmwood and demonstrate that the RSCAC qualifies as "another inventor" who reduced the invention to practice "in this country" under § 102(g) as a matter of law.
Solvay claims that Holmwood and Scott are inapposite because they address priority of invention in interferences under § 102(g)(1), as opposed to invalidity based on prior invention under § 102(g)(2). Prior to 1999, § 102(g) did not distinguish between invalidity and interferences, stating that a person shall be entitled to a patent unless,
35 U.S.C. § 102(g) (1952 & 1994) (emphasis added). The 1999 amendment to the statute divided the provision into two subsections, with § 102(g)(2) retaining the "made in this country" language for purposes of determining invalidity:
35 U.S.C. § 102(g) (2002) (emphasis added). Solvay cites no authority indicating that the language of § 102(g)(2) should be interpreted differently than the same language had been interpreted before the 1999 amendment.
If a party establishes prior invention under § 102(g) by clear and convincing evidence, then the burden of production shifts to the patentee to produce evidence sufficient to create a genuine issue of material fact as to whether the party alleging prior invention abandoned, suppressed, or concealed the invention. Apotex, 254 F.3d at 1037-38. If the patentee carries this burden of production, then the party alleging prior invention may rebut the evidence of abandonment, suppression or concealment with clear and convincing evidence that affirmative steps were taken to make the invention publicly known. Id.; see also Friction Div. Prods., Inc. v. E.I. Du Pont de Nemours & Co., 658 F.Supp. 998, 1013 (D.Del.1987).
The court concludes that Solvay, as the patentee, has produced evidence "sufficient to create a genuine issue of material fact as to whether the prior inventor had suppressed or concealed the invention." See Apotex, 254 F.3d at 1037-38. More specifically, Solvay has produced evidence of a confidentiality agreement between the RSCAC and Honeywell which precluded the RSCAC from disclosing the invention. (D.I. 253, Ex. 2)
Honeywell rebuts this evidence of concealment with evidence of public disclosure: (1) the Russian patent application filed on May 25, 1994; (2) Honeywell's filing of the 706 patent in July 1996; and (3) the September 1997 Solvay Memorandum, in which the RSCAC openly shared its invention with Solvay. (D.I. 260 at 7-8) Although there is no explicit disclosure requirement in § 102(g),
With respect to the May 1994 Russian patent application, the court concludes that there are genuine issues of material fact as to whether this publication discloses the subject matter of the '817 patent.
The Federal Circuit set forth a two-pronged standard for establishing willfulness in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed.Cir.2007), the first prong of which states:
Id. at 1371 (internal citations omitted). The existence of this objective risk is "determined by the record developed in the infringement proceeding." Id. The objective prong is generally not met when the accused infringer maintains a reasonable defense to infringement, even if the jury ultimately reaches a verdict of infringement. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed.Cir.2010) (holding that objective prong is generally not met "where an accused infringer relies on a reasonable defense to a charge of infringement"); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336 (Fed.Cir. 2009) (concluding that accused infringer presented a substantial question of noninfringement which precluded a finding of objective recklessness despite the jury's ultimate finding of infringement).
If the objective prong is satisfied, the patentee must next establish that "this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." Seagate, 497 F.3d at 1371. This subjective prong hinges on the fact finder's assessments of the credibility of witnesses. LG Elecs. U.S.A., Inc. v. Whirlpool Corp., 798 F.Supp.2d 541, 557-58 (D.Del.2011). "The drawing of inferences, particularly in respect of an intent-implicating question such as willfulness, is peculiarly within the province of the fact finder that observed the witnesses." Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1225 (Fed.Cir.2006).
In support of its motion for summary judgment of no willful infringement, Honeywell contends that it presented credible invalidity defenses which preclude a finding of willfulness. (D.I. 275 at 7-13) Specifically, Honeywell contends that this
Solvay challenges Honeywell's contention of no willfulness only as it pertains to the period following the Federal Circuit's decision on October 13, 2010. (D.I. 285 at 1, 12) ("Solvay's allegation of willful infringement is limited to the time period since the Federal Circuit issued its decision in this case on October 13, 2010.") According to Solvay, Honeywell has no credible non-infringement defenses, and questions remain regarding the credibility of Honeywell's new invalidity defenses. (Id. at 12-13, 15-18) With respect to its failure to seek a preliminary injunction, Solvay contends that the Federal Circuit's decision in Seagate does not require a patentee to request a preliminary injunction in cases where such a request would have been futile despite a likelihood of success on the merits. (Id. at 14) Solvay contends that Honeywell's litigation misconduct further demonstrates Honeywell's willfulness. (Id. at 18-20)
The court concludes that summary judgment of no willfulness is appropriate because Honeywell presented a credible invalidity defense, precluding a finding of objective recklessness despite the Federal Circuit's ultimate rejection of the defense.
Moreover, Solvay discredited its own contentions regarding the baselessness of Honeywell's invalidity defenses by failing to move for summary judgment of validity or willfulness and by presenting arguments which suggest Honeywell's invalidity contentions are "substantial, reasonable, and far from the sort of easily-dismissed claims that an objectively reckless infringer would be forced to rely upon." Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 585 F.Supp.2d 636, 644 (D.Del.2008) (internal quotations omitted); see also Cordance
For the reasons stated, Honeywell's renewed motion for summary judgment of invalidity under § 102(g) is denied, and Honeywell's motion for leave to file its renewed motion for summary judgment is denied as moot. Honeywell's motion for summary judgment of no willfulness is granted. Honeywell's motion for leave to file its motion for summary judgment of invalidity under § 102(e) is denied. Solvay's motion for leave to file a sur-reply brief is denied as moot. An appropriate order shall issue.
At Wilmington this 26th day of August, 2011, consistent with the memorandum opinion issued this same date;
IT IS ORDERED that:
1. Honeywell's renewed motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g) (D.I. 259) is denied.
2. Honeywell's motion for leave to file its renewed motion for summary judgment (D.I. 251) is denied as moot.
3. Honeywell's motion for summary judgment of no willful infringement (D.I. 274) is granted.
4. Honeywell's motion for leave to file a motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(e) (D.I. 282) is denied.
5. 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) is denied as moot.
At Wilmington this 13th day of September, 2011, having considered the issues raised by Solvay, S.A. ("Solvay") and Honeywell International Inc. ("Honeywell") during the September 8, 2011 pretrial conference, and having reviewed the recent submissions by Honeywell (D.I. 317; D.I. 322; D.I. 327);
IT IS ORDERED that:
1. The '839 patent and the '309 application. There are cross motions in limine to exclude certain characterizations of Honeywell's '192 patent made in satellite patent prosecutions. The '192 patent is prior art to Solvay's '817 patent.
a. During prosecution of Honeywell's '839 patent, a patent that is not related to any patent in this case, the prosecuting attorney made statements to the PTO as to what the '192 patent disclosed. The patent issued but, subsequently, Honeywell disclaimed the statements and ceded the patent.
b. During prosecution of Solvay's '309 application, a related application to the '817 patent, the patent examiner rejected claim 19 (substantially identical to claim 1 of the '817) on the basis that the '192 patent disclosed a continuous process. Solvay subsequently abandoned the application.
c. In both instances, the marginal relevance of the evidence is far outweighed by the danger of unfair prejudice, confusion of the issues, misleading the jury and wasting the limited time of the parties explaining
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6. By way of its second motion for reargument (D.I. 327), Honeywell contends that the court relied on Solvay's misapplication of the Federal Circuit's holding in Dow Chemical Co. v. Astro-Valcour, Inc.,
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