Material dispute on concealment of prior invention preclude invalidity finding
Solvay, S.A. v. Honeywell Specialty Materials LLC, et al., Civ. No. 06-557-SLR, August 26, 2011.
Robinson, J. Renewed motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g) is denied, and related motion to leave to file is denied as moot. Motion for summary judgment of no willful infringement is granted. Motion for leave to file motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(e) is denied.
The patented process relates to non-ozone depleting hydrofluorocarbons. Following remand, Honeywell renewed its motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g)(2). The motion was denied. Conception and reduction to practice outside this country followed by communication of the invention to and performance of the process in the U.S. qualified as prior invention. However, genuine issues of material fact exist as to whether the prior invention was “concealed.” Honeywell’s motion for summary judgment of no willfulness is granted. “Honeywell presented a credible invalidity defense, precluding a finding of objective recklessness despite the Federal Circuit’s ultimate rejection of the defense.”
