Federal Circuit’s Lesson on Qualifying as a § 102(g)(2) Prior Inventor

Solvay S.A. v. Honeywell International, Inc.

by David Elliott Sosnowski[1]

BACKGROUND

            This paper examines the Federal Circuit decision Solvay S.A. v. Honeywell International, Inc., 622 F.3d 1367 (Fed. Cir. 2010), a patent infringement case involving what it means to qualify as another prior inventor under 35 U.S.C. § 102(g)(2) which provides:

A person shall be entitled to a patent unless … (g)(2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, 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). While perhaps less popular in litigation than other subparts of the section, § 102(g)(2) carries with it the same potentially weighty consequences for litigants. In the same manner as the more popular sections, namely §§ 102(a), (b), and (e), § 102(g)(2) art may also fFor orm the basis for a rejection. This section, however, differs from §§ 102(a), (b), and (e) in several important ways. First, it provides an exception for the situation in which the first inventor “abandoned, suppressed, or concealed” his invention. In that situation, § 102(g)(2) will not operate as a bar and the second inventor may be entitled to a patent.

Another distinguishing feature of § 102(g)(2) is that it is based upon the invention being “made.” Section 102(g)(2) does not operate based upon the existence of a patent, a printed publication, or an application for patent. As discussed, “made” refers to the act of invention, the two steps of which are conception and reduction to practice.

The more popular sections, §§ 102(a), (b), and (e), are often easier to use as a defense in litigation because, in general, pinpointing (and arguing) the time of invention is more difficult than identifying the date of a patent or isolating the date of a printed publication. Finally, it is important to note that § 102(g)(2) is geographically limited. For the defense to be successful, the invention must have been made in the United States by another inventor.

THE CASE AND THE HOLDINGS

Solvay S.A. (“Solvay”) brought suit against both Honeywell Specialty Materials LLC and Honeywell International, Inc. (“Honeywell”) in the United States District Court for the District of Delaware alleging infringement of Solvay’s patent, U.S. Patent No. 6,730,817 (“the ‘817” patent). Solvay, S.A. v. Honeywell Specialty Materials, 591 F. Supp. 2d 729 (D. Del. 2008). Solvay appealed the trial court’s grant of summary judgment in favor of Honeywell with respect to invalidity and infringement. The patent, entitled “Method for preparing 1,1,1,3,3-pentafluoropropane,” also known as HFC-245fa, has a priority date of October 23, 1995. HFC-245fa is a chemical compound “commonly used in refrigeration and heat storage systems.” Solvay, 622 F.3d at 1370 (citing to the ‘817 patent).

The facts upon which the case turned involve Honeywell’s contract with the Russian Scientific Center for Applied Chemistry (“RSCAC”).  Honeywell contracted with the RSCAC to develop the process at issue. Id. at 1371. RSCAC, pursuant to the contract, developed and practiced the process in Russia, thereafter proceeding to send Honeywell documentation as to RSCAC’s research and results. Id. Utilizing RSCAC’s documentation, Honeywell replicated, practiced, and refined the process in the United States, all before Solvay’s priority date. Id. at 1371-72. Relying upon the above timeline, Honeywell invoked § 102(g)(2) as a defense. The district court ruled in Honeywell’s favor and Solvay appealed. Id. at 1369.

For the reasons discussed herein, and resulting in potentially profound implications for companies that outsource their research to others located abroad, the Federal Circuit ruled in favor of Solvay and against Honeywell, finding that Honeywell did not qualify as “another inventor” under 35 U.S.C. § 102(g)(2). Id. at 1379.[2]

Procedural Posture: Summary Judgment in Favor of Defendants Honeywell

Solvay S.A. brought suit against Honeywell Specialty Materials LLC and Honeywell International, Inc. in the District of Delaware. Solvay, 622 F.3d at 1369-70. Solvay alleged that Honeywell infringed the ‘817 patent. District Judge Sue L. Robinson entered judgment on December 9, 2008 in favor of Honeywell dismissing the suit on summary judgment as to invalidity and infringement. Solvay then appealed to the United States Court of Appeals for the Federal Circuit.[3] The case was brought before Justices Dyk, Mayer, and Schall. Judge Shall authored the opinion. The case was decided on October 13, 2010 and rehearing denied December 22, 2010. The Federal Circuit affirmed in part, reversed in part, and remanded for further proceedings consistent with its opinion. Id. at 1386.

The Facts: Honeywell’s Contract with RSCAC to Develop the “Geismar Process”

As with all cases, not every fact relevant to the case as a whole is relevant to disposition of a particular issue. Here, we are mainly concerned with the Federal Circuit’s decision as to whether Honeywell qualified as “another inventor” under 35 U.S.C. § 102(g)(2).

The patent has a priority date of October 23, 1995 and is directed to a method of making a chemical compound known as HFC-245fa. Solvay’s patent “claims processes for making HFC-245fa that include continuously drawing off gaseous HFC-245fa and hydrogen chloride (‘HCl’) from the reaction mixture.” Solvay, 622 F.3d at 1370. Honeywell—at its plant in Geismar, Louisiana—produced HFC-245fa via a process referred to as “the Geismar process.” Id. at 1371. In the Delaware suit, Solvay alleged that the Honeywell Geismar process infringed claims 1, 5, 7, 10-18, 21, and 22 of the ‘817 patent. Id.

  1. For purposes of summary judgment as to invalidity at the district court level, the parties stipulated to certain facts, including the following. For purposes of this discussion, the facts cited below are all that are necessary for proper understanding of the § 102(g)(2)  issue in this case.[4]
  2. In early 1994, Honeywell (then AlliedSignal, Inc.) entered into a research contract with the Russian Scientific Center for Applied Chemistry (“RSCAC”) and, pursuant to the contract, RSCAC engineers performed process development studies for the commercial production of HFC-245fa. Id. at 1371 (citing Solvay, 591 F. Supp. 2d at 732).
  3. In July of 1994, RSCAC sent a report to Honeywell stating that it had succeeded in carrying out synthesis of HFC-245fa using a continuous process between certain temperatures and pressures. Id.
  4. The report also documented the resulting product yield and contained a diagram of the equipment that RSCAC had used to carry out the process. Id.
  5. Honeywell did not dispute that the process the RSCAC engineers performed and reported in July 1994 corresponded to the invention claimed in the ‘817 patent and RSCAC engineers both conceived the invention and reduced it to practice in Russia. Id.
  6. In early 1995, Honeywell used the information that RSCAC provided to duplicate RSCAC’s experiments, with similar conditions and equipment. See Solvay, 591 F. Supp. 2d at 736 (noting that Honeywell did not dispute that it replicated or reproduced the work of the RSCAC engineers, such that it ‘derived’ the invention from RSCAC).
  7. It is undisputed that Honeywell performed this work in the United States prior to Solvay’s priority date of October 23, 1995. Solvay, 622 F.3d at 1371-72.
  8. Summer of 1995, Honeywell continued working to develop and perfect its process for the preparation of HFC-245fa. Id. at 1372 (citing Solvay, 591 F. Supp. 2d at 733).
  9. Honeywell’s Geismar plant, which practiced the allegedly infringing process, was in successful operation by February 1996. Id.
  10. In March 1996, Honeywell began drafting a patent application on an improvement process for making HFC-245fa. The application, filed on July 3, 1996 and issued as U.S. Patent No. 5,763,706 (“the ‘706 patent”), discloses a process for continuous preparation of HFC-245fa using optimal conditions for downstream purification. Id. (citing to the ‘706 patent, col.1 l.60-col.2 l.25; col.4 ll.40-42).

The Proceedings Below – At the District Court Level

The district court made two summary judgment rulings upon which it based its dismissal of Solvay’s suit. The first summary judgment ruling was as to the issue of invalidity and the second was as to the issue of infringement. The district court ruled in favor of Honeywell on both issues. Solvay, 622 F.3d at 1369. The district court granted Honeywell’s motion for summary judgment of invalidity regarding claims 1, 5, 7, 10, and 11 of the ‘817 patent and denied Solvay’s motion for summary judgment. Id. at 1372 (citing Solvay, 591 F. Supp. 2d at 743). Specifically, the district court found Honeywell qualified as a prior inventor under 35 U.S.C. § 102(g)(2). Id.

Solvay’s argument “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,” failed to gain favor with the district court and was rejected. Id. The district court further disagreed with Solvay “that reproduction of an invention cannot satisfy § 102(g), or that, under § 102(g)(2), conception must first occur in the United States.” Id.

Regarding conception, the district court concluded that: (1) “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,” and (2) “Honeywell [had] 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 1372-73 (citing Solvay, 591 F. Supp. 2d at 738). In addition, the district court found that Honeywell had not abandoned, suppressed, or concealed its invention because it “was moving towards public disclosure” by filing the application that eventually issued as the ‘706 patent. Id. Therefore, the district court concluded, ruling in Honeywell’s favor, that Honeywell qualified as “another inventor” under 35 U.S.C. § 102(g)(2). Id.

Having lost at the district court level on both the invalidity and infringement issues, and following the dismissal of its suit, Solvay appealed to the Federal Circuit.

The Federal Circuit’s Decision on the Issue of Invalidity under § 102(g)(2)

Pursuant to its jurisdiction under 28 U.S.C. § 1295(a)(1) the Federal Circuit reviewed the district court’s grant of summary judgment de novo. Solvay, 622 F.3d at 1373. The infringement aspect of the opinion is fairly standard material. Id. at 1367.[5] As mentioned previously, this case is remarkable only for its 35 U.S.C. ­­§ 102(g)(2) analysis.

The Federal Circuit engaged in a relatively brief analysis, only a few pages in length, of the invalidity issue. The Court’s brevity, however, should not mislead the reader. The invalidity analysis is, without question, the most important part of the opinion wherein the Court ultimately reversed the district court and held that Honeywell did not qualify as “another inventor” under § 102(g)(2). Id. at 1379. Therefore, Honeywell’s prior invention defense failed and claims 1, 5, 7, 10, and 11 of Solvay’s ‘817 patent were found not invalid. Id.

On appeal, Solvay argued that the district court erred in holding under § 102(g)(2), that claims 1, 5, 7, 10, and 11 of the ‘817 patent were invalid because Honeywell was a prior inventor who had not abandoned, suppressed, or concealed its invention. Id. at 1373.

Solvay’s first invalidity argument was that Honeywell did not qualify as an “inventor” under § 102(g)(2) because conception took place in Russia when the RSCAC, not Honeywell, invented the claimed process at issue. Id. at 1374. Specifically, Solvay argued that the district court’s holding that Honeywell demonstrated conception by receiving RSCAC’s report and reducing the invention to practice in the United States is contrary to 35 U.S.C. § 102(f), a subpart of § 102 setting forth that “a person shall be entitled to a patent unless … (f) he did not himself invent the subject matter sought to be patented. Id. at 1374. Solvay maintained that the district court erred by not reading § 102(f)’s originality requirement into § 102(g). Id.

Second, Solvay argued that even if Honeywell qualified as “another inventor” under § 102(g)(2) claims 1, 5, 7, 10, and 11 were nevertheless not invalid because Honeywell suppressed and concealed both the Russian invention and the invention claimed in its own ‘706 patent. Id.

On appeal, Honeywell argued that the district court did not err in holding that claims 1, 5, 7, 10, and 11 of the ‘817 patent were invalid under § 102(g)(2) because Honeywell qualified as a prior inventor under § 102(g)(2) and because Honeywell had not abandoned, suppressed, or concealed its invention. Id.

Honeywell’s first of five arguments was that it qualified as “another inventor” under § 102(g)(2) “because it reduced the claimed invention to practice in the United States before the October 1995 priority date of Solvay’s ‘817 patent.” Id. The thrust of this argument by Honeywell was that “a showing that the claimed invention was previously reduced to practice in the United States by someone other than the patentee is sufficient to establish a prior invention defense under § 102(g)(2).” Id. at 1375.[6]

Second, Honeywell argued that § 102(f) was inapplicable because there was no Honeywell patent at issue. Id. Honeywell contended that whether it was legally entitled to a patent in light of § 102(f) had no bearing on its status as “another inventor” under § 102(g)(2). Id.

Third, Honeywell argued that the Federal Circuit already “rejected the contention that ‘another inventor’ under § 102(g)(2) can only be the first original inventor.” Id. (citing Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001)). Specifically, Honeywell argued that someone qualifies as a prior inventor under § 102(g)(2) if the person made the invention in the United States and appreciated the fact of what he made. Id. (citing Dow Chemical, 267 F.3d at 1341). Fourth, Honeywell argued that “[i]t would contradict the purpose of § 102(g) to grant Solvay a patent covering subject matter that Solvay was, as a matter of law, not the first to invent.” Id. (citing Checkpoint Sys., Inc. v. ITC, 54 F.3d 756, 761 (Fed. Cir. 1995).

Fifth and finally, Honeywell argued that Solvay failed to carry its burden, to the extent that “once [Honeywell had] established that the claimed invention was made in the United States by ‘another inventor’ before the ‘817 patent’s priority date, Solvay bore the burden of producing ‘evidence sufficient to create a genuine issue of material fact as to whether the prior inventor abandoned, suppressed, or concealed the invention.’” Id. (internal citations omitted).

DECISION AND ANALYSIS

Part I: Federal Circuit’s “Original Inventor” § 102(g)(2) Analysis

The first part of the court’s invalidity analysis is probably best described as the original inventor analysis section.  Here, the Federal Circuit began its invalidity discussion by quoting the exact language of the first sentence of the statute at issue, § 102(g)(2):  “A person is not entitled to 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).

The court pointed out, in a footnote, that the present language of the statute, but not the meaning, differs from the language found just a decade ago:

Before enactment of the American Inventors Protection Act of 1999, Pub. L. No. 106-113, 113 Stat. 1501A-552, 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. In this opinion, we refer to the current version of § 102(g)(2).

Solvay, 622 F.3d at 1376 (internal citations omitted). The court initially framed the issue as whether, given the facts of this case, Honeywell “invented” the ‘817 patent’s claimed process in the United States, as required by § 102(g)(2). Id. By examining the language of § 102(g)(2) and by citing to its own prior cases, the court was able to narrow the issue. Essentially, the Court applied the rules governing priority of invention determinations to the § 102(g)(2) issue before it. Id.[7] The court first stated that the § 102(g)(2) language “made in this country” refers to the occurrence in the United States of the inventive act. Id.[8] The Court then quoted the second part of § 102(g)(2) governing priority determinations:

In determining priority of invention under this subsection, 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). At this point the Federal Circuit focused its invalidity discussion on conception and reduction to practice, defining conception as 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.” Solvay, 622 F.3d at 1376.[9]

The issue thus narrowed became whether Honeywell conceived of the invention at issue and reduced it to practice in the United States, such that Honeywell was “another inventor” of the process claimed in the ‘817 patent under § 102(g)(2). Id. at 1376-77.

The Federal Circuit found, contrary to the district court, that Honeywell did not qualify as “another inventor” under § 102(g)(2) and held that “[t]he 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.” Id. at 1377-78. After restating the definition of conception, the court confirmed that “[t]he 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” id. at 1377 (citing Burroughs Wellcome, 40 F.3d at 1228) and that this test “necessitates that the conception of an invention be an original idea of the inventor.” Id. at 1378. The court declared that “[a]lthough 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.” Id. at 1377 (citing Webster’s Third New International Dictionary 469-470 (3d ed. 1986)). This holding rejected Honeywell’s second argument—that § 102(f) was not applicable.

The court utilized the following facts to support its finding that Honeywell did not qualify as “another inventor” under § 102(g)(2). Id.

  1. That the Russian engineers at RSCAC conceived of the process at issue while working pursuant to the Honeywell-RSCAC research contract;
  2. That the RSCAC engineers manufactured HFC-245fa from HCC-240fa using the process at issue in the present case;
  3. That the RSCAC sent a report to Honeywell, which detailed the work performed by the RSCAC’s engineers—namely that they had successfully carried out, within certain temperature and pressure ranges, the chemical reaction at issue; and
  4. Honeywell then reproduced the invention, in the United States, that the RSCAC engineers had previously conceived and reduced to practice in Russia.[10]

Taking the facts and applying the precedent to them, the court concluded that “[s]ince 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).” Id. at 1378.

Part II: Federal Circuit Distinguishes Mycogen, Henkel, and Dow Chemical

Having concluded that Honeywell did not qualify as another inventor under § 102(g)(2), in the second part of its invalidity analysis, the court addressed and rejected the first and third of Honeywell’s arguments. Honeywell’s second argument—that § 102(f) was not applicable—had already been rejected. Honeywell’s fourth and fifth arguments, regarding the purpose of § 102(g) and Solvay’s alleged failure to carry its burden respectively, were addressed separately.

The court began this part of its analysis by addressing Honeywell’s first argument—the proposition that under Mycogen “prior inventorship under 102(g)(2) may be established by showing that the claimed invention was previously reduced to practice in the United States by someone other than the patentee.” Solvay, 622 F.3d at 1378. In Mycogen, the court held that “substantial evidence supported patent invalidity under § 102(g)(2), based on ‘prior inventors’ having been diligent during the required time period up to the patentee’s reduction to practice date.” Id. (citing Mycogen, 243 F.3d at 1370). The court distinguished Mycogen by pointing out that in the present case, unlike the defendant in Mycogen, Honeywell “did not independently, on its own, conceive of the invention at issue … in the United States.” Id. The court distinguished Henkel, a case stemming from an interference decision, in the same manner, stating that “Henkel did not involve the situation presented here: an accused infringer claiming to be ‘another inventor’ under § 102(g)(2) when it did not conceive the invention at issue.” Id.

Honeywell’s third argument, namely that “someone qualifies as a prior inventor under § 102(g)(2) if the person made the invention in the United States and ‘appreciated the fact of what he made,’” met the same fate as its second argument. Id. The court distinguished Dow Chemical, the case upon which Honeywell had based its argument, by stating the following:

Similarly unhelpful to Honeywell is its reliance on Dow ChemicalDow Chemical simply held that, outside the priority context, an individual can have conceived the invention, and be an inventor, even though he did not appreciate what he had invented. The fact that Honeywell later improved upon RSCAC’s instructions to create a new process of making HFC-245fa and claimed that process in its ‘706 patent is immaterial for the purposes of assessing Honeywell’s prior invention defense under § 102(g)(2). The invention at issue is the invention claimed in Solvay’s ‘817 patent, not the one claimed in Honeywell’s ‘706 patent. The critical point is that Honeywell did not conceive the invention of the ‘817 patent, but derived it from others.

Id. at 1379.

Part III: Whether Patent Owner was First to Invent in § 102(g)(2) Analysis

In the final section of its invalidity analysis, the Federal Circuit addressed Honeywell’s fourth argument regarding the underlying policy of § 102(g)(2) in stating “it would contradict the purpose of § 102(g)(2) to allow Solvay to have a patent covering subject matter that Solvay was not the first to invent.” Solvay, 622 F.3d at 1379. The court appears to have been sympathetic to Honeywell’s argument, but nonetheless rejected it for misstating the issue:

The issue before us is not whether Solvay was the first to invent the subject matter of the ‘817 patent. Rather, the issue is whether Honeywell established its defense that the invention claimed in the ‘817 patent was conceived and reduced to practice by it, as ‘another inventor’ in the United States, before Solvay.  The uncontested facts make it clear that Honeywell did not establish its § 102(g)(2) defense … Whether this holding ignores the realities of globalization and outsourcing by modern-day research companies, as Honeywell contended at oral argument, is not the question before us … Because Honeywell did not itself conceive the RSCAC process of making HFC-245fa, under 35 U.S.C. § 102(g)(2), as this court has construed the statute, it is not ‘another inventor’ of the subject matter claimed in the ‘817 patent. Id.

At this juncture, the reader should pause as a key and notable point in the decision has been reached. Even though the issue of whether Solvay was the first to invent the subject matter of the ‘817 patent was not before the Federal Circuit, it is an important question for practitioners to consider. The Federal Circuit’s decision in this case, in not addressing the issue directly, addresses the issue nonetheless. It is now known that in performing a § 102(g)(2) analysis, the courts either may not or should not consider whether the patent owner was the first to invent.

Regarding Honeywell’s fifth argument, the Court noted in footnote 6 that it did not find it necessary to reach the issue “[b]ecause Honeywell does not qualify as ‘another inventor’ under § 102(g)(2), it is not necessary for us to reach the question of whether Honeywell abandoned, suppressed, or concealed the invention claimed in the ‘817 patent.” Id. at 1379, n.6.

Having addressed each of Honeywell’s five arguments, the court concluded its invalidity analysis as follows: “In sum, because Honeywell does not qualify as ‘another inventor’ under 35 U.S.C. § 102(g)(2), we hold that the district court erred in ruling claims 1, 5, 7, 10, and 11 of Solvay’s ‘817 patent invalid by reason of prior inventorship.” Id. at 1379.

CONCLUSION

It is still too soon to tell whether Solvay v. Honeywell has had a dramatic effect in the realm of § 102(g)(2) case law. Of the three citing references as of April 17, 2011, none cite to Solvay v. Honeywell for support in deciding a § 102(g)(2) issue. Nonetheless, for at least one company, and for potentially many more, the sting of the Federal Circuit’s § 102(g)(2) lesson will change, and may already have changed, their course of business.

As a practical matter, practitioners with clients that outsource research to others located outside of the United States should consider the implications of this case with due care. It may be appropriate for practitioners to advise such clients to reevaluate their outsourcing arrangements. If the product of outsourced research may be worth or entitled to patent protection, or that the product of the research may be used to protect the client from a competitor, it would be safest for the client to take all necessary steps to ensure that conception occurs in the United States.

Alternatively, practitioners may advise their clients to publish their research and or apply for a patent as soon as practicable. The client could either publish the research itself or the entity with which the client contracted could. These steps would offer significant advantages—e.g., the client would be able to use §§ 102(a), (b), and (e) as defenses. Counsel should advise the client, as early as possible, of the risks as well as the benefits of any action. For example, publication starts the clock for filing an application for patent. The client must be made aware of that fact.

Finally, practitioners may wish to advise their clients to consider trade secret protection as an alternative to filing for a patent. While trade secret protection will not be workable in all situations or for all businesses, it is certainly something worth considering. There are great risks involved with proceeding down the trade secrets path and the client must be made aware of these risks, but trade secrets law is a subject which is beyond the scope of this paper.


[1] David Elliott Sosnowski is presently employed as a patent examiner at the United States Patent and Trademark Office. The views expressed in this paper do not necessarily represent the views of the United States Patent and Trademark Office or the United States.

[2] Throughout the Federal Circuit’s opinion, Solvay and Honeywell are referred to as inventors. For purposes of clarity, the author will refer to them in the same way.

[3] Both at the trial court and appellate court levels, Solvay was represented by Oblon, Spivak, McClelland, Maier & Neustadt, P.C. and Honeywell was represented by Kirkland and Ellis LLP.

[4] For those readers who may be interested in the infringement related facts, reference should be made to Solvay, 622 F.3d at 1370-74 of the Federal Circuit’s opinion.

[5] Regarding the infringement issue, the Federal Circuit construed the claims at issue, reviewed the construction, and affirmed the district court’s ruling. For details, refer to Solvay, 622 F.3d at 1379-86.

[6] In support of this argument, Honeywell cited Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001), and Henkel Corp. v. Procter & Gamble Co., 560 F.3d 1286, 1289 (Fed. Cir. 2009).

[7] Citing Mycogen, 243 F.3d at 1332 and Dow Chemical, 267 F.3d at 1339-41.

[8] Citing Mycogen, 243 F.3d at 1331 and Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1036 (Fed. Cir. 2001).

[9] Citing Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986), quoting Robinson on Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985); and Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).

[10] It is important to note that the following statement, buried in the opinion and given no special prominence, appears to state an underlying rationale for the court’s decision: “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.’” Solvay, 622 F.3d at 1377.