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The U.S. Court of Appeals for the Federal Circuit has ruled that U.S. reproduction of technology conceived overseas doesn’t qualify a U.S. maker as a prior inventor. The court’s unanimous Oct. 13 ruling in Solvay S.A. v. Honeywell International Inc. reversed a District of Delaware judge’s December 2008 grant of summary judgment for Honeywell and remanded the case. The dispute involved Belgium-based Solvay’s patent on a method of manufacturing a chemical compound used in refrigeration and heat storage. According to court records, a Honeywell predecessor company used the technology in the United States before Solvay’s Oct. 23, 1995, U.S. patent priority date. The Honeywell company, however, had “derived” the invention from an overseas research partner, the Russian Scientific Center for Applied Chemistry. The district court found that although Honeywell had infringed several claims, its work meant that the company made the invention of the patent at issue in August 1995. In a ruling written by Senior Judge Alvin Schall, the Federal Circuit concluded that, under U.S. patent law, Honeywell did not conceive the invention. It’s reproduction of the process “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,’ ” Schall wrote. “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,” Schall wrote. “The question before us is whether, under the undisputed facts, Honeywell qualifies as ‘another inventor’ ” under the U.S. Patent Act. “ Because Honeywell did not itself conceive” the invention, “as this court has construed the statute, it is not ‘another inventor’ of the subject matter claimed in the patent.” That Honeywell later improved upon the information from the Russian Scientific Center to create a new process for making the compound and successfully filed another patent “is immaterial for the purposes of assessing Honeywell’s prior invention defense,” he said. Honeywell plans to continue its “vigorous defense of this claim,” said Honeywell Specialty Materials spokesman Peter Dalpe. “We are confident that we will prevail.” The Federal Circuit decision makes it clear that to defend a patent infringement case by claiming prior inventorship, “a party must prove that another conceived the invention in the United States before the patentee,” said Barry Herman, a litigation partner at Alexandria, Va.-based Oblon Spivak McClelland Maier & Neustadt, who argued the case for Solvay. “Otherwise, that party will not qualify as ‘another inventor’ as required by the statute,” Herman said. “We are pleased with the decision of the Federal Circuit on behalf of our client Solvay, and look forward to proceeding at the district court in Delaware.” The federal circuit got the law right, said Steven Moore, an intellectual property litigation partner in the Stamford, Conn., office of New York’s Kelley Drye & Warren, who wasn’t involved in the case. “The fact they brought it into the U.S. from knowledge sitting overseas does not make them a new inventor in the U.S.,” Moore said.

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