United States: Federal Circuit Finds Solvay HFC Patent Invalid Under 102(g)

In Solvay S.A. v. Honeywell International Inc., the Federal Circuit upheld the district court's finding that Solavay's HFC patent was invalid under 35 USC § 102(g). Although the impact of this case may be muted by the first-inventor-to-file provisions of the America Invents Act (AIA), the "secret prior art" provisions of § 102(g) will remain relevant for most patents with a priority date earlier than March 16, 2013.

The Patent at Issue

The patent at issue was Solvay's U.S. Patent 6,730,817, directed to an improved method for making hydrofluorocarbon HFC-245fa, which is a non-ozone-depleting hydrofluorocarbon (HFC). Claim 1 was the only claim at issue on appeal:

1. In a process for the preparation of 1,1,1,3,3-pentafluoropropane comprising reaction of 1,1,1,3,3-pentachloropropane with hydrogen fluoride in the presence of a hydrofluorination catalyst, the improvement which comprises carrying out the reaction at a temperature and under a pressure at which 1,1,1,3,3-pentafluoropropane is gaseous and isolating and 1,1,1,3,3-pentafluoropropane from the reaction mixture by drawing off 1,1,1,3,3-pentafluoropropane and hydrogen chloride in a gaseous phase as each of said 1,1,1,3,3-pentafluoropropane and hydrogen chloride is being formed.

The patent was granted May 4, 2004, and claims priority to a French application filed October 23, 1995.

The Secret Prior Art

The Federal Circuit decision describes the secret prior art as arising from work done in Russia by the Russian Scientific Center for Applied Chemistry (RSCAC) and reduced to practice in the U.S. by Honeywell before Solvay's October 1995 priority date.

As summarized in the Federal Circuit opinion, the RSCAC entered into a research agreement in 1994, pursuant to which the "RSCAC engineers, working in Russia, conducted process development studies for the commercial production of HFC-45fa." In July of 1994, the RSCAC sent a report to Honeywell "documenting the development of a continuous process capable of producing high yields of HFC-245fa by reacting HCC-240fa4 with hydrogen fluoride in the presence of a catalyst," and "Honeywell personnel in the United States used the RSCAC's report to run the same process in this country in 1995, before the '817 patent's October priority date."

Previous Proceedings

In the first round of litigation, the district court determined that the Solvay patent was invalid under § 102(g) because "the Honeywell engineers were other inventors who made the invention in this country without abandoning, suppressing, or concealing it." On appeal, the Federal Circuit reversed that finding because the Honeywell engineers "could not qualify as 'another inventor' because they 'did not conceive the invention ... but derived it from' ... the RSCAC engineers."

On the remand that led to this appeal, Honeywell argued that "the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who used the instructions to reduce the invention to practice in this country." A jury agreed, and the district court again entered judgment against the '817 patent under the different § 102(g) theory.

The Federal Circuit Decision

The latest Federal Circuit decision is authored by Judge Dyk and joined by Chief Judge Rader. Judge Newman filed a dissenting opinion.

Section 102(g) provides in relevant part:

A person shall be entitled to a patent unless . . . before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

According to the Federal Circuit decision, Solvay did "not dispute that the Russians were first to conceive the invention recited in claim 1 or that Honeywell reduced it to practice in this country before Solvay's October 23, 1995, priority date, but challenges (1) the jury's finding of nonsuppression, and (2) the district court's ruling that the Russians made the invention in this country."

The finding of nonsuppression was based on a finding that the RSCAC had filed a Russian patent application directed to the process claimed in the '817 patent. Solvay challenged the claim construction that supported these findings, but the Federal Circuit determined that either Solvay had waived that argument or that the claim construction at issue was correct.

The finding that the Russians had made the invention in the U.S. was based on a finding that Honeywell's activities in the U.S. inured to the benefit of the RSCAC engineers. Solvay challenged this finding because "the RSCAC engineers did not expressly ask the Honeywell researchers to perform the inventive process."

The majority rejected Solvay's position:

[O]ur case law does not support Solvay's contention that an inventor must make an express directive or request to benefit from a third party's reduction to practice. Rather, inurement exists if the inventor authorizes another to reduce his invention to practice. Here, the research agreement between the RSCAC and Honeywell confirms that the RSCAC authorized Honeywell to practice its invention in the United States and contemplated that Honeywell would do so. .... The undisputed facts show that the RSCAC authorized Honeywell to practice its invention and specifically contemplated that it would do so under the companies' joint research agreement aimed at developing commercial processes for the production of HFC-245fa. The RSCAC engineers gave Honeywell personnel the information they needed to perform the inventive process in this country in July 1994, and Honeywell relied on that information in so doing.

The Federal Circuit concluded:

We therefore agree with the district court that the process invented by the Russian engineers was made in this country when Honeywell successfully performed the process because the Russians authorized Honeywell personnel to practice the invention and specifically contemplated that they would do so.

Thus, the court held the Solvay HFC patent invalid under 102(g).

Judge Newman's Dissent

Judge Newman filed a dissenting opinion charging the majority with "creat[ing] a new class of secret prior art, holding that a privately performed experiment, without publication or public knowledge or use or sale or inclusion in a United States patent application, is invalidating 'prior art.'"

In particular, Judge Newman criticizes the majority for applying the doctrine of "inurement" outside of the interference context, and for being inconsistent with the previous decision in this case, where the Federal Circuit held "that the Russian invention was conceived and reduced to practice in Russia, and that Honeywell's repetition of the process in the United States was not an invention made in the United States."

The Problem of Secret Prior Art

This case underscores the problem of secret prior art, and highlights why many welcomed the AIA changes to 35 USC § 102 that eliminated § 102(g) and focused the definition of prior art on what was "known to the public." In this case, neither Solvay, nor the Patent Office, nor anyone else other than the RSCAC and Honeywell could have known that Solvay was not the first to invent the subject matter at issue.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.