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Federal Circuit Rules for Solvay Against Honeywell in Patent Infringement Lawsuit

Wednesday, October 13, 2010

Precedential decision clarifies area of law involving §102(g)(2)

Alexandria, Va. – The U.S. Court of Appeals for the Federal Circuit issued a precedential decision on October 13, 2010 in Solvay S.A. v. Honeywell International, Inc. (2009-1161). In an unanimous opinion, the court reversed the ruling by the U.S. District Court for the District of Delaware that claims 1, 5, 7, 10, and 11 of Solvay's U.S. Patent No. 6,730,817 (the ‘817 patent) were invalid under 35 U.S.C. § 102(g)(2), and affirmed the district court's decision that those claims were infringed by Honeywell. The Federal Circuit remanded the case to the district court for further proceedings.

Barry Herman, a partner at Oblon, Spivak who argued the case before the Federal Circuit on behalf of Solvay, said, “The Federal Circuit decision makes clear that to establish a 35 U.S.C. §102(g)(2) defense, a party must prove that another conceived the invention in the United States before the patentee. Otherwise, that party will not qualify as ‘another inventor’ as required by the statute. We are pleased with the decision of the Federal Circuit on behalf of our client Solvay, and look forward to proceeding at the district court in Delaware.”

With respect to invalidity, Solvay challenged the district court’s ruling that claims 1, 5, 7, 10, and 11 of the ‘817 patent were invalid because Honeywell could not be “another inventor” under 35 U.S.C. § 102(g)(2) since it derived the invention from the Russian Scientific Center for Applied Chemistry (“RSCAC”), whose engineers invented it in Russia. The Federal Circuit agreed with Solvay that Honeywell could not be considered an inventor for purposes of § 102(g)(2) because Honeywell merely followed RSCAC’s instructions and thus did not conceive of the process, stating: “The district court erred by not applying the requirement that Honeywell be an original inventor of the process disclosed in claims 1, 5, 7, 10, and 11 of the '817 patent.”

With respect to infringement, the Federal Circuit affirmed the district court’s grant of summary judgment that Honeywell infringed claims 1, 5, 7, 10, and 11 of the ‘817 patent.

Solvay is represented by Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. Honeywell is represented by Kirkland & Ellis, LLP.

Assisting clients for 40 years, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. is one of the largest intellectual property specialty firms in the United States. The firm provides a full range of intellectual property services, including litigation matters in all courts, as well as trademark, copyright and patent interference services.

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