Solvay S.A. v. Honeywell Specialty Materials LLC et al
Filing
390
MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 8/20/2012. (fms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SOLVAY, S.A.,
Plaintiff,
v.
HONEYWELL INTERNATIONAL INC.,
Defendant.
)
)
)
)
) Civ. No. 06-557-SLR
)
)
)
)
)
Richard L. Horwitz & David Ellis Moore of Potter Anderson & Corroon, LLP, Wilmington,
Delaware. Attorneys for Plaintiff. Of Counsel: Barry J. Herman, Jean-Paul Lavalleye,
Richard D. Kelly, Jeffrey B. Mcintyre, Tia D. Fenton & John F. Presper of Obion,
Spivak, McClelland, Maier & Neustadt, PC.
Thomas C. Grimm & Benjamin J. Schladweiler of Morris, Nichols, Arsht & Tunnell, LLP,
Wilmington, Delaware. Attorneys for Defendant. Of Counsel: Laura M. Burson, Guy
Ruttenberg, Gregg F. LoCascio & J. John Lee of Kirkland & Ellis, LLP.
MEMORANDUM OPINION
Dated: August 20, 2012
Wilmington, Delaware
I. INTRODUCTION
Plaintiff Solvay, S.A. ("Solvay") brought suit against defendant Honeywell
Honeywell International Inc. ("Honeywell") asserting, inter alia, infringement of U.S.
Patent No. 6,730,817 ("the '817 patent"). 1 (0.1. 1) The parties cross-moved for
summary judgment on the issues of infringement and validity of the '817 patent. (0.1.
121; D. I. 134) On December 9, 2008, the court granted Honeywell's motion for
summary judgment of invalidity of the '817 patent, finding that Honeywell was the first
inventor pursuant to 35 U.S.C. § 102(g). (0.1. 230) The court also granted Solvay's
motion for summary judgment of infringement of claims 1, 5-7 and 10-11, 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. (0.1. 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 lnt'l, Inc., 622 F.3d
1367, 1370 (Fed. Cir. 201 0). Following appeal, Honeywell filed various additional
summary judgment motions, among which only its motion for summary judgment of no
willful infringement was granted. (D. I. 274)
A jury trial was held from September 21-28, 2011 to determine the validity of
claim 1 of the '817 patent. The jury returned a verdict in favor of Honeywell, finding that
claim 1 of the '817 patent was invalid for being anticipated and obvious. (0.1. 366)
Currently before the court is Solvay's motion for judgment as a matter of law of no
1
0riginal co-defendant "Honeywell Specialty Materials, LLC" was dismissed by
stipulation of the parties on September 17, 2007. (D .I. 81 )
anticipation and no obviousness (0.1. 374) as well as Solvay's motion for a new trial
(0.1. 375).
II. BACKGROUND
The court presumes familiarity with the chemical processes at issue in this case,
as detailed in its prior opinion. (0.1. 229) In short, the '817 patent, which has a priority
date of October 23, 1995, discloses and claims processes for making 1,1, 1,3,3pentafluoropropane ("HFC-245fa") by reacting 1,1, 1,3,3-pentachloropropane ("HCC240fa") with hydrogen fluoride ("HF") in the presence of a hydrofluorination catalyst.
The claimed process for making HFC-245fa involves continuously drawing off gaseous
HFC-245fa and hydrogen chloride ("HCI") from the reaction mixture. Specifically,
independent claim 1 of the '817 patent reads:
In a process for the preparation of [HFC-245fa] comprising reaction
of [HCC-240fa] with [HF] in the presence of a hydrofluorination
catalyst, the improvement which comprises carrying out the reaction
at a temperature and under a pressure at which [HFC-245fa] is
gaseous and isolating said [HFC-245fa] from the reaction mixture by
drawing off [HFC-245fa] and [HCI] in a gaseous phase as each of said
[HFC-245fa] and [HCI] is being formed.
('817 patent at col. 5:36-46)
On July 11, 1994, Honeywell filed a patent application that later issued as U.S.
Patent No. 5,574,192 ("the '192 patent"). The '192 patent claims a process for making
HFC-245fa by reacting HCC-240fa with HF in the presence of a catalyst. (0.1. 286, ex.
3) Solvay amended the '817 patent to claim an improvement over the '192 patent
which relates to withdrawing HFC-245fa from the reactor continuously as it is being
formed. (0.1. 136, ex. 13)
2
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 production of HFC-245fa. 2
(0.1. 264 at 3) In July 1994, the RSCAC sent a report to Honeywell documenting that it
had achieved liquid-phase synthesis of HFC-245fa from HCC-240fa using a continuous
process ("July 1994 report"). (0.1. 136, ex. 5 at 6-7) Honeywell used the report to
duplicate the RSCAC's experiments in the United States, which the court determined
qualified as reduction to practice under§ 102(g) as a matter of law. (0.1. 299 at 8) In
May 1994, prior to sending its report to Honeywell, the RSCAC filed a Russian patent
application, which the jury determined disclosed the RSCAC's invention as claimed by
the '817 patent. (0.1. 366) This patent application ultimately issued as Russian Patent
No. RU 2,065,430 ("the '430 patent").
Ill. STANDARDS
A. Motion for Judgment as a Matter of Law
To prevail on a renewed motion for judgment as a matter of law following a jury
trial, the moving party "'must show that the jury's findings, presumed or express, are not
supported by substantial evidence or, if they were, that the legal conclusions implied
[by] the jury's verdict cannot in law be supported by those findings."' Pannu v. lolab
Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (quoting Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984)). "'Substantial' evidence is
such relevant evidence from the record taken as a whole as might be acceptable by a
2
A detailed description of the facts relevant to the RSCAC's involvement is set
forth in the court's previous opinion. (0.1. 230)
3
reasonable mind as adequate to support the finding under review." Perkin-Elmer Corp.,
732 F.2d at 893. In assessing the sufficiency of the evidence, the court must give the
non-moving party, "as [the] verdict winner, the benefit of all logical inferences that could
be drawn from the evidence presented, resolve all conflicts in the evidence in his favor,
and in general, view the record in the light most favorable to him." Williamson v.
Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir. 1991); Perkin-Elmer Corp., 732 F.2d
at 893. The court may not determine the credibility of the witnesses nor "substitute its
choice for that of the jury between conflicting elements of the evidence." Perkin-Elmer
Corp., 732 F.2d at 893. In summary, the court must determine whether the evidence
reasonably supports the jury's verdict. See Dawn Equip. Co. v. Ky. Farms Inc., 140
F.3d 1009, 1014 (Fed. Cir. 1998).
B. Motion for a New Trial
The decision to grant or deny a new trial is within the sound discretion of the trial
court and, unlike the standard for determining judgment as a matter of law, the court
need not view the evidence in the light most favorable to the verdict winner. See Allied
Chern. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980). Federal Rule of Civil Procedure
59(a) provides, in pertinent part:
A new trial may be granted to all or any of the parties and on all or
part of the issues in an action in which there has been a trial by jury,
for any of the reasons for which new trials have heretofore been
granted in actions at law in the courts of the United States.
New trials are commonly granted in the following situations: (1) where the jury's verdict
is against the clear weight of the evidence, and a new trial must be granted to prevent a
miscarriage of justice; (2) where newly-discovered evidence exists that would likely alter
4
the outcome of the trial; (3) where improper conduct by an attorney or the court unfairly
influenced the verdict; or (4) where the jury's verdict was facially inconsistent. See
Zarow-Smith v. N.J. Transit Rail Operations, 953 F. Supp. 581, 584 (D. N.J. 1997)
(citations omitted). The court, however, must proceed cautiously, and not substitute its
own judgment of the facts and the credibility of the witnesses for the jury's independent
evaluation. Nevertheless,
[w]here a trial is long and complicated and deals with a subject matter
not lying within the ordinary knowledge of jurors a verdict should be
scrutinized more closely by the trial judge than is necessary where the
litigation deals with material which is familiar and simple, the evidence
relating to ordinary commercial practices. An example of subject
matter unfamiliar to a layman would be a case requiring a jury to pass
upon the nature of an alleged newly discovered organic compound in
an infringement action.
Lind. v. Schenley Indus. Inc., 278 F.2d 79, 90-91 (3d Cir. 1960).
IV. DISCUSSION
A. Renewed Motion for Judgment as a Matter of Law
Solvay moves for judgment as a matter of law on the issue of validity of claim 1
of the '817 patent, arguing that the jury erred in finding that: (1) claim 1 of the '817
patent is invalid as anticipated by the '192 patent; (2) the RSCAC disclosed its invention
in its May 1994 Russian patent application; and (3) claim 1 of the '817 patent is invalid
as obvious. (D. I. 366)
1. Anticipation
a. Standard
A patent is presumed valid and the burden of proving invalidity rests with the
challenger. See 35 U.S.C. § 282. In order to overcome this presumption, the party
5
challenging validity bears the burden of proving, by clear and convincing evidence, that
the invention fails to meet the requirements of patentability. See Hewlett-Packard Co.
v. Bausch & Lomb, 909 F.2d 1464, 1467 (Fed. Cir. 1990). Clear and convincing
evidence is evidence that "could place in the ultimate factfinder an abiding conviction
that the truth of [the] factual contentions [is] 'highly probable."' Colorado v. New
Mexico, 467 U.S. 310, 316 (1984).
An anticipation inquiry involves two steps. First, the court must construe the
claims of the patent in suit as a matter of law. See Key Pharms. v. Hereon Labs. Corp.,
161 F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the
construed claims against the prior art. /d.
Proving a patent invalid by anticipation "requires that the four corners of a single,
prior art document describe every element of the claimed invention, either expressly or
inherently, such that a person of ordinary skill in the art could practice the invention
without undue experimentation." Advanced Display Sys. Inc. v. Kent State Univ., 212
F.3d 1272, 1282 (Fed. Cir. 2000) (citations omitted). The Federal Circuit has stated
that "[t]here must be no difference between the claimed invention and the referenced
disclosure, as viewed by a person of ordinary skill in the field of the invention." Scripps
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991).
The elements of the prior art must be arranged or combined in the same manner as in
the claim at issue, but the reference need not satisfy an ipsissimis verbis test. In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citations omitted). "In determining
whether a patented invention is [explicitly] anticipated, the claims are read in the context
6
of the patent specification in which they arise and in which the invention is described."
Glaverbed Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554
(Fed. Cir. 1995).
b. Discussion
The jury found claim 1 of Solvay's '817 patent invalid as being anticipated in view
of the '192 patent. (D.I. 366) The crux of Solvay's argument is that the '192 patent
does not anticipate because it does not disclose a continuous process for venting HFC245fa and HCI, a critical limitation of the '817 patent. (D.I. 381 at 4) Solvay presents
several arguments in support of this assertion. First, Solvay contends that example 3 of
the '192 patent shows periodic rather than continuous venting, as admitted by various
witnesses including Dr. Michael Doherty ("Doherty"), Honeywell's technical expert, and
Dr. Michael VanDerPuy ("VanDerPuy"), the inventor of the '192 patent. (/d.; Tr.
1014:12-17; Tr. 590:10-19) Second, Solvay argues that two sections of the
specification of the '192 patent which contain the word "continuous" do not, when read
in context, disclose a continuous process. (D. I. 381 at 6) Finally, Solvay contends that
not only did VanDerPuy not have the equipment necessary to make the process
continuous at the time the patent was written, but Honeywell later approached the
RSCAC with the intent of obtaining its help in making the process continuous. (/d. at 8)
Substantial evidence supports the jury's verdict of anticipation. With respect to
Solvay's first contention, Honeywell concedes that example 3 discloses periodic rather
than continuous venting. (D. I. 385 at 6) Honeywell contends, however, that other
sections of the patent do disclose continuous operation. (/d.) As proposed by
7
Honeywell, disclosure of continuous operation occurs instead in the two sections of the
specification that contain the word "continuous." (ld. at 3-4) The first of these sections
reads:
It may be advantageous to periodically regenerate the catalyst due to
the dissociation of the pentavalent catalyst over time. This may be
accomplished by any means well known in the art. The catalyst may
be regenerated, for example, by adding chlorine ... The chlorine,
which is continuously added to the process of this invention when
operating in a continuous mode (and periodically added when
operating in a batch mode), oxidizes the catalyst from the trivalent to
the pentavalent state.
('192 patent at col. 3:22-38) (emphasis added) The second section reads:
HFC-245fa may be recovered from the mixture of unreacted starting
materials, by-products, and catalyst by any means known in the art,
such as distillation and extraction. As illustrated in Example 3, at the
end of the heating period, i.e. the amount of time for complete
reaction in batch mode operations, the fluorination reaction product
and remaining HF may be vented ... Alternatively, unreacted HF and
organics may be vented and condensed, and the HF layer recycled
to the reactor ... This isolation procedure is particularly useful for a
continuous fluorination process.
(/d. at col. 3:55-col. 4:1) (emphasis added) VanDerPuy and Doherty testified that both
sections disclose continuous embodiments of the invention. (Tr. 586:23-589:15; Tr.
1017:14-1018:14) Solvay argues that this testimony is conclusory and takes the word
"continuous" out of context. (D. I. 381 at 6) Solvay cites the testimony of its expert, Dr.
William Dolbier ("Dolbier"), in which Dol bier claims the second section of the
specification does not refer to the isolation of HFC-245fa and HCI, but rather addresses
a means for recycling under-fluorinated products. (Tr. 1331 :12-1332:3)
Despite this conflicting testimony, the court will not disrupt the jury's verdict
because it is up to the jury "to determine the experts' credibility and weigh the evidence
8
appropriately." Belden Technologies Inc. v. Superior Essex Communications LP, 802
F. Supp. 2d 555, 563 (D. Del. 2011 ); see a/so ArcelorMittal France v. AK Steel Corp.,
811 F. Supp. 2d 960, 967 (D. Del. 2011) ("[T]he jury was free to give whatever weight it
felt appropriate to the testimony of the various experts and fact witnesses.").
The parties also dispute Solvay's third contention that VanDerPuy did not have
the capability to run the reaction continuously and that Honeywell approached the
RSCAC in order to obtain help in making the process continuous. Honeywell argues
that it approached the RSCAC "because resources were tied up on other projects, not
because of any technical incapability to run the '192 patent process continuously." (D. I.
385 at 7) Regardless of the true motivation for approaching the RSCAC, the dispute
does not affect the ultimate determination of anticipation because the jury found that
the '192 patent constitutes constructive reduction to practice of the invention, thus
negating a need to find actual reduction to practice. See In re Donohue, 766 F.2d 531,
533 (Fed. Cir. 1985) ("It is not ... necessary that an invention disclosed in a publication
shall have actually been made in order to satisfy the enablement requirement.").
Because the court affirms the jury's verdict as to anticipation, it need not further
consider the dispute over actual reduction to practice.
2. Disclosure under 102(g)
a. Standard
Patent protection is denied under § 102(g) if "before the applicant's invention
thereof the invention was made in this country by another who had not abandoned,
suppressed, or concealed it." 35 U.S.C. § 102(g). The date of invention for purposes
9
of§ 102(g) is the date that claimed invention is "reduced to practice" 3 D. Chisum,
Patents§ 10.03[1), at 10-21 (1993). Reduction to practice occurs when the inventor
knows that the product will"actually work []for its intended purpose." Newkirk v.
Lu/ejian, 825 F.2d 1581, 1582 (Fed. Cir. 1987). Even if a similar invention is reduced to
practice before the patented device, it will not be found to "anticipate" that device under
§ 102(g) unless it "meet[s] every element of the claimed invention[.]" Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1379 (Fed. Cir. 1986).
b. Discussion
Prior to trial, the court found that "as a matter of law, the RSCAC qualifies as
'another inventor' who reduced the invention to practice 'in this country."' (0.1. 299 at 6)
The sole issue presented to the jury was whether the RSCAC disclosed its invention in
its May 1994 patent application, thus invalidating the '817 patent. (0.1. 366) In support
of its contention that the RSCAC work was not disclosed, Solvay identifies numerous
differences in the equipment, results and reaction conditions between the RSCAC's
July 1994 report to Honeywell and the '430 patent. (D. I. 381 at 9-10) Solvay is
particularly concerned with the lack of disclosure in the '430 patent of a "liquid line," or
means of collecting the liquid HFC-245fa product as it leaves the condenser. (/d. at 1011) Solvay also contends that the '430 patent does not disclose the continuous
drawing off of HFC-245fa and HCI gas. (/d. at 11-12)
Honeywell responds that the discrepancies cited by Solvay are largely irrelevant
because they are not part of the invention as claimed in the '817 patent. (0.1. 385 at
10) The primary point of confusion, therefore, is that Solvay understands the invention
10
to be every aspect of the synthesis as disclosed in the RSCAC July 1994 report and
Honeywell understands the invention to be limited to how it is claimed in the '817
patent. The court agrees with Honeywell that the invention at issue necessarily relates
to the disputed '817 patent, and failure to disclose unclaimed elements is irrelevant to
the 102(g) inquiry. See Sandt Technology, Ltc. v. Resco Metal and Plastics Corp., 264
F.3d 1344, 1350 (Fed. Cir. 2001) ("A prior art device can anticipate a claimed invention
under §1 02(g)(2) if it was conceived and reduced to practice prior to the filing date of
the patent.") (emphasis added). This is consistent with the court's previous articulation
of the nature of the 102(g) dispute as being over whether the RSCAC's May 1994
patent application "discloses the subject matter of the '817 patent." (D.I. 299 at 10) For
this reason, the court does not consider Solvay's arguments relating to various
unclaimed elements, including the "liquid line." 3
Of greater relevance is Solvay's contention that the '430 patent does not disclose
continuous drawing off of gaseous product. (D.I. 381 at 11-12) Solvay seeks to
discredit Doherty's testimony that example 84 of the '430 patent discloses "a continuous
3
The court is similarly disinclined to consider arguments relating to the "liquid
line" in the context of Solvay's objection to the jury instructions on inherent disclosure in
its motion for a new trial. (D.I. 379 at 15-16). See McKesson Automation, Inc. v
Swisslog ltalia S.p.A., 840 F. Supp. 2d 801, 812 (D. Del. 2012) ("Because the first issue
was argued and addressed in the context of plaintiff's Oudgment as a matter of law]
motion, the court will address it no further" in the context of the motion for a new trial).
4
Solvay argues that example 1 of the '430 patent also fails to disclose a
continuous process. (D.I. 387 at 5) Honeywell responds that Doherty testified that "a
person of ordinary skill" would reach the opposite conclusion. (Tr. 1059:8-9)
"[E]vidence [of anticipation] must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill." Continental Can Co. USA, Inc. v. Monsanto
Co., 948 F.2d 1264, 1267-68 (Fed. Cir. 1991) (citing In re Oelrich, 666 F.2d 578, 581
11
process with continuous feeds, continuous gaseous separation and withdrawal, drawing
off, of the reaction products HCI and [HFC-245fa]." (Tr. 1026:20-23) Solvay claims
that, not only is there is no evidentiary basis for Doherty's statement, but its own expert
Dol bier testified that "one assumes that ... one isolates the product in the same
manner [for each example], at the end of the reaction." (Tr. 1336:3-5) Honeywell
responds by citing additional testimony from Doherty in which he explains the scientific
basis for his conclusion (Tr. 1033:13-24) and references corroborating scientific
testimony from Dr. Vincent Wilmet, a named inventor on the '817 patent (Tr. 1027:921 ). Honeywell also cites testimony from Dolbier in which he concedes that HFC-245fa
leaves the reaction mixture during the reaction, albeit temporarily. (Tr. 1372:3-18)
Ultimately, the jury was free to weigh Doherty's testimony against that of Dolbier, and
the court will not alter the verdict. See ArcelorMittal France, 811 F. Supp. 2d at 967.
3. Obviousness
a. Standard
"A patent may not be obtained ... if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having
ordinary skill in the art." 35 U.S.C. § 103(a). Obviousness is a question of law, which
depends on underlying factual inquiries.
(C. C.P.A. 1981 ). Doherty's testimony fulfills its role of "educat[ing] the decision-maker
to what the reference meant to persons of ordinary skill in the field of the invention" and,
in conjunction with his testimony concerning example 8, properly supports the jury's
verdict. Scripps Clinic & Research Found., 927 F.2d 1565, 1576 (Fed. Cir. 1991 ).
12
Under§ 103, the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art resolved. Against this
background the obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial success, long felt
but unsolved needs, failure of others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.
KSR tnt'/ Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966)).
"[A] patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the prior art."
KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a
combination of references has the burden to show that a person of ordinary skill in the
relevant field had a reason to combine the elements in the manner claimed. /d. at 41819. The Supreme Court has emphasized the need for courts to value "common sense"
over "rigid preventative rules" in determining whether a motivation to combine existed.
/d. at 419-20. "[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining the
elements in the manner claimed." /d. at 420. In addition to showing that a person of
ordinary skill in the art would have had reason to attempt to make the composition or
device, or carry out the claimed process, a defendant must also demonstrate that "such
a person would have had a reasonable expectation of success in doing so."
PharmaStem Therapeutics, Inc. v. ViaCe/1, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
A combination of prior art elements may have been "obvious to try" where there
existed "a design need or market pressure to solve a problem and there [were] a finite
13
number of identified, predictable solutions" to it, and the pursuit of the "known options
within [a person of ordinary skill in the art's] technical grasp" leads to the anticipated
success. /d. at 421. In this circumstance, "the fact that a combination was obvious to
try might show that it was obvious under§ 103." /d. Federal Circuit precedent has also
established that "[s]tructural relationships may provide the requisite motivation or
suggestion to modify known compounds to obtain new compounds," and that particular
types of structural similarity can give rise to a case of prima facie obviousness.
Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1312
(Fed. Cir. 2011) (citing In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995)).
A court is required to consider secondary considerations, or objective indicia of
nonobviousness, before reaching an obviousness determination, as a "check against
hindsight bias." See In re Cyc/obenzaprine Hydrochloride Extended-Release Capsule
Patent Litig., 676 F.3d 1063, 1079 (Fed. Cir. Apr. 16, 2012). "Such secondary
considerations as commercial success, long felt but unsolved needs, failure of others,
etc., might be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17-18 (1966).
"Because patents are presumed to be valid, see 35 U.S.C. § 282, an alleged
infringer seeking to invalidate a patent on obviousness grounds must establish its
obviousness by facts supported by clear and convincing evidence." Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006) (citation omitted). In conjunction
with this burden, the Federal Circuit has explained that,
14
[w]hen no prior art other than that which was considered by the PTO examiner is
relied on by the attacker, he has the added burden of overcoming the deference
that is due to a qualified government agency presumed to have properly done its
job, which includes one or more examiners who are assumed to have some
expertise in interpreting the references and to be familiar from their work with the
level of skill in the art and whose duty it is to issue only valid patents.
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting
Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984)).
b. Discussion
The jury found that claim 1 of the '817 patent was invalid for being obvious to a
person of ordinary skill in the art at the time of the claimed invention in view of the prior
art. (D. I. 366) During trial, Honeywell relied on two pieces of prior art for its
obviousness arguments: (1) the '192 patent; and (2) U.S. Patent No. 5,202,509 ("the
'509 patent"), entitled "Catalysts for Liquid Phase Fluorination" (DTX 330). Solvay
argues that these two pieces of prior art are not properly combined to support a finding
of obviousness and, even if they were, Honeywell did not meet its burden of proof at
trial by simply repeating the obviousness rejection that was before the United States
Patent and Trademark Office ("PT0"). 5 (0.1. 381 at 13-20)
The '509 patent discloses a fluorination process in which HCI and a fluorinated
product are "extract[ed] continuously [in] a gaseous phase." ('509 patent at col. 3:585
Solvay's argument that the '192 patent was before the examiner in the form of
the preamble to claim 1 and that the '509 patent was "cumulative to the art" considered
by the examiner is unpersuasive. (D. I. 387 at 6-7) Even if both patents had been
considered by the examiner, the court is "never bound by an examiner's finding in an ex
parte patent application proceeding." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359
(Fed. Cir. 2007). Indeed, "[t]o treat the presumption as irrebuttable would be to oust the
courts of their jurisdiction to consider a challenge to the validity of patents before them."
Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 780 (Fed. Cir. 1983).
15
61) Both parties agree that the '509 patent mentions continuous extraction of
fluorinated products in a gaseous phase, but Solvay asserts that it fails to disclose
continuous fluorination of a terminal dichloromethyl group as in the '817 patent. (D. I.
385 at 13; D. I. 387 at 8) Solvay further argues that the '509 patent demonstrates the
difficulty of performing fluorination of a terminal dichloromethyl group and that the
patent, therefore, is improperly considered for guidance on how to convert the '192
process, which discloses this technically difficult reaction, into a continuous process.
(D. I. 387 at 7-8) Honeywell responds that a person of ordinary skill would reasonably
be expected to apply the known technique of continuous fluorination disclosed in the
'509 patent to the known chemical reaction disclosed in the '192 patent. (D.I. 385 at
15)
The jury heard testimony from Doherty that combining the prior art elements
would be obvious and would be expected to be successful. (Tr. 1023:1 0-14) ("[W]hen
you combine the '192 patent which specifically tells us the chemistry ... together with
the '509, in my judgment, a person of ordinary skill in the art would know exactly what to
do.") The jury heard additional testimony that similar chlorocarbons had been
fluorinated via a continuous process prior to the invention of the '817 patent. (Tr.
1210:17-1211 :4; 1293:11-1294:12) The jury also heard testimony that continuous
processes provide various benefits such as allowing reaction products to be readily
separated from the raw materials (Tr. 481 :5-482:17) and facilitating large-scale
commercial production (Tr. 1367:8-16; 584:18-22; 595:15-596:15). Solvay responds
that the expectation of success was low given the difficulty of the chemistry but does
not rebut the testimony concerning the motivation to combine the prior art. (D. I. 387 at
16
7) Substantial evidence supports the jury's verdict, and it was up to the jury to
determine the experts' credibility and weigh the evidence appropriately.
B. Motion for a New Trial
1. Claim construction
a. Changes to claim construction during trial
In its December 9, 2008 Markman order, the court interpreted the reaction in
claim 1 as occurring "at a temperature and under a pressure whereby HFC-245fa and
HCI are produced in gaseous form and separated from the reaction mixture in a gas
stream[.]" (D. I. 228 at 4) In the final jury instructions, the court construed the same
portion of claim 1 to read, "the improvement which comprises carrying out the reaction
at a temperature and under a pressure whereby HFC-245fa and HCI are produced in
gaseous form and continuously separated or drawn off from the reaction mixture in a
gas stream[.]" (D.I. 365 at 18) (emphasis added) The new construction added the
words "continuously'' and "or drawn off," as emphasized above. (D. I. 228 at 4) Solvay
is concerned that the inclusion of "or drawn off' led to an interpretation that HFC-245fa
need only leave the reactor, whereas the proper interpretation is that HFC-245fa must
also leave the distillation column and condenser assembly. 6 (D. I. 379 at 4) Solvay
cites the following documents as evidence that adding "or drawn off' is inconsistent with
how the court and the parties originally construed claim 1: (1) Honeywell's opening
6
Solvay's argument that Honeywell incorrectly claimed that isolation of HFC245fa may occur entirely within the reactor (D.I. 379 at 5) is unsupported by evidence.
Rather, the transcript shows that Honeywell took the position that HFC-245fa must
leave the reactor, arguing that "the language of the claim construction is clear that by
'gas stream' ... it means it's going out of the reactor." (Tr. 946:16-18)
17
brief to the Federal Circuit (D.I. 380, ex. A at 11 ); (2) the portion of the court's
December 9, 2008 Markman order distinguishing the '817 patent from the '192 patent
(D.I. 228 at 6); and (3) the '817 and '192 patent specifications (D.I. 379 at 5-1 0). Solvay
argues that the amended jury instructions resulted in multiple interpretations of claim 1
being presented to the jury. (D. I. 379 at 13-14)
The threshold issue is whether Solvay properly objected to the change in
instructions, thereby preserving its right to raise the instruction as grounds for a new
trial. "A party seeking to set aside a judgment based on erroneous jury instructions
must establish that '(1) it made a proper and timely objection to the jury instructions, (2)
those instructions were legally erroneous, (3) the errors had prejudicial effect, and (4) it
requested alternative instructions that would have remedied the error.'" Seachange
Intern., Inc. v. C-COR, Inc., 413 F.3d 1361, 1381 (Fed. Cir. 2005); see a/so Abbott
Laboratories v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1352 (Fed. Cir. 2003)
(holding that patentee waived his right to challenge the correctness of claim
construction contained in jury instructions "by agreeing to that portion of the adopted
construction").
Solvay did object to the jury instructions, but only with respect to the exclusion of
the wording "as each of said [HFC-245fa] and [HCI] is being formed" and not with
respect to the inclusion of "continuously'' or "or drawn off." (D.I. 355) Solvay did not
object to the addition of these two elements to the claim construction in its notice of
objections to the final jury instruction (D.I. 360), and it did not raise any objection before
the instructions were read to the jury. (Tr. 1390:7-14) Indeed, Solvay conceded that
the version of the claim construction including the words "continuously" and "or drawn
18
off' was consistent with the court's previous construction. (Tr. 945: 11-17) When there
is no objection, "the question devolves into whether an error occurred in the conduct of
the trial that was so grievous as to have rendered the trial unfair." Eo/as Technologies
Inc. v. Microsoft Corp., 399 F.3d 1325, 1338 (Fed. Cir. 2005). The court detects no
grievous unfairness and finds that the instructions "properly guided the jury." /d.
b. The "comprising" instruction
Solvay disputes the following jury instruction on the meaning of the term
"comprising" in claim 1 of the '817 patent:
Claim 1 of the '817 patent uses the transitional term 'comprises.'
'Comprises' is interpreted the same as 'includes' or 'contains.' In a
patent claim, comprises means that the claim is open-ended, that is,
the claim is not limited to a process that includes only what is in the
claim and nothing else. If you find that the prior art includes all of the
limitations of claim 1, the fact that it may also include additional
elements is irrelevant. The presence of additional elements or steps
that may occur after the steps in the claim does not mean that the
prior art does not invalidate claim 1.
(D. I. 365 at 19) Solvay contends that this instruction "conveyed to the jury that [c]laim 1
covers situations in which [HFC-245fa] temporarily leaves the reactor and returns." (D.I.
379at12)
The court's instruction is consistent with the "well understood" definition of
comprising as "including but not limited to." Exergen Corp. v. Wai-Mart Stores, Inc.,
575 F.3d 1312, 1319 (Fed. Cir. 2009); see a/so Glaxo Group L TO v. Teva
Pharmaceuticals USA, Inc., 2009 WL 122054, at *2 (D. Del. Apr. 30, 2009) (adopting
standard jury instructions on the definition of comprising, holding that comprising "is a
term of art used in claim language which means that the named elements are essential,
19
but other elements may be added and still form a construct within the scope of the
claim) (internal quotations omitted)). Solvay's attempts to argue that the instruction
allowed Honeywell to abrogate claim limitations is contrary to the Federal Circuit's
position that "[i]t is neither a 'shortcoming' nor a 'weaseling' to use 'comprising' to
recognize that inventions may be practiced with steps in addition to those listed in the
claims." Smith & Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304, 1311 (Fed. Cir. 2001).
Therefore, the court discerns no error in submitting its instruction.
2. Prior invention under § 102(g)
a. Jury instructions, verdict sheet and opening statements
Solvay argues that the jury instructions "improperly conveyed to the jury that the
'430 [patent] is prior art that can anticipate [c]laim 1[.]" (0.1. 379 at 15) Solvay cites,
inter alia, a section of the instructions that reads, "Honeywell contends that claim 1 of
the '817 patent is not new as anticipated by ... the RSCAC's May 1994 patent
application." (0.1. 365 at 24) However, the only question actually presented to the jury
for adjudication was whether "claim 1 of the '817 patent is invalid as being anticipated in
view of [the '192 patent]" (0.1. 366}, and the jury was given no opportunity to find
anticipation based on the '430 patent application alone or in conjunction with the '192
patent. A proper jury verdict should not be disturbed for harmless error, here, the
inadvertent inclusion of a theory in the "background" section of the instructions, where
"it is highly probable that the error did not affect the outcome of the case." Forrest v.
Beloit Corp., 424 F.3d 344, 349 (3d Cir. 2005); see also Siemens Med. Solutions USA,
Inc. v. Saint-Bogain Ceramics & Plastics, Inc., 637 F.3d 1269, 1278 (Fed. Cir. 2011)
20
("[A] jury verdict will be set aside, based on erroneous jury instructions, if the movant
can establish that those instructions were legally erroneous and that the errors had
prejudicial effect."). When considered as a whole, the court finds that the jury
instructions did not have a prejudicial effect on the outcome of the trial given that the
jury was not permitted to find anticipation based on the '430 patent application.
Solvay argues that another section of the jury instructions improperly "conveyed
that Honeywell could rebut Solvay's showing of suppression or concealment by merely
showing that the RSCAC work was disclosed in the RSCAC's [July] 1994 report to
Honeywell." (0.1. 379 at 16-17) However, the instructions clearly state that "Honeywell
relies on the RSCAC's May 1994 patent application to support the assertion that the
RSCAC disclosed its prior invention in such application[.]" (0.1. 365 at 26) This
language directly contradicts Solvay's assertion that the instructions improperly convey
that the July 1994 report (rather than the May 1994 patent application) can fulfill the§
102(g) disclosure requirement.
A plain reading of the relevant text also diminishes Solvay's next argument that
the verdict sheet "suggest[ed] that because the RSCAC filed the '430 [patent], it
necessarily disclosed an invention it made in the '430 [patent]." (0.1. 379 at 17) The
verdict sheet asks whether "the RSCAC disclosed its invention in its May 1994 patent
application" and does not otherwise imply that the act of filing the patent application
constitutes disclosure. (0.1. 366) Accordingly, the court finds no prejudicial error that
would justify a new trial.
Finally, Solvay contends that Honeywell's opening statements misled the jury
into evaluating Honeywell's duplication of the RSCAC's invention under §1 02(g) despite
21
the fact that the Federal Circuit determined that Honeywell does not qualify as "another
inventor." See Solvay, 622 F.3d at 1379 (Fed. Cir. 201 0). Solvay specifically takes
issue with Honeywell's statement that the "RSCAC did [the invention] first, Honeywell
did it second, and the latest, and Solvay was third." (Tr. 157:1-3; see also Tr. 156:2025) The court finds that Honeywell's statements are factually accurate, as it is
undisputed that "Honeywell used the information that RSCAC had provided to duplicate
RSCAC's experiments." Solvay, 622 F.3d at 1371-72 (Fed. Cir. 2010). Furthermore,
the jury was clearly instructed that "the lawyer's statements and arguments are not
evidence" and that they are to make a decision "based only on the evidence ... and
nothing else." (D.I. 365 at 3) Therefore, Honeywell's statements do not justify a new
trial.
b. Exclusion of evidence
Solvay claims prejudicial error in the court's decision to grant Honeywell's motion
in limine to exclude statements made by an attorney during the prosecution of U.S.
Patent No. 7,214,839 ("the '839 patent"). The court previously determined that the '839
patent "is not related to any patent in this case." (D.I. 329 at 1) Despite Solvay's
protestation that the attorney's statements are relevant because they are "directly
contrary to Honeywell's litigation positions" (D.I. 379 at 20), the court maintains that "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 the satellite patent prosecutions." (D.I. 329 at 2) In its initial determination to
exclude the evidence, the court properly used its "broad discretion" under Federal Rule
22
of Evidence 403 to "balance between the relevance and prejudice" of the evidence, and
the court is not presently persuaded that this decision was improperly made. United
States v. Long, 574 F.2d 761, 770 (3d Cir. 1978).
V. CONCLUSION
For the foregoing reasons, the court denies plaintiff's renewed motion for
judgment as a matter of law (0.1. 374) and motion for a new trial (0.1. 375). An
appropriate order shall issue.
23
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?