Judge Robinson: Motion for Summary Judgment of Invalidity Under §102(g) DENIED and Motion for Summary Judgment of No Willful Infringement GRANTED
Judge Robinson recently decided Honeywell’s renewed summary judgment motion on invalidity of the patent-in-suit and Honeywell’s summary judgment motion of no willful infringement after the Federal Circuit reversed in part the court’s opinion on invalidity under §102(g). Solvay, S.A. v. Honeywell Specialty Materials LLC, C.A. No. 06-557-SLR (D. Del. Aug. 26, 2011). Judge Robinson denied Honeywell’s motion for summary judgment of invalidity under 102(g). The court found that a Russian group, RSCAC, under research contract with Honeywell, qualified as “another inventor” who conceived the invention and reduced it to practice in this country. Id. at 6. The invention was conceived and reduced to practice in Russia and then RSCAC sent instructions to Honeywell who used the instructions to reduce the invention to practice in the United States. Id. However, Solvay raised a genuine issue of material fact as to whether RSCAC suppressed or concealed the invention because a confidentiality agreement between RSCAC and Honeywell precluded RSCAC from disclosing the invention. Id. at 9.
Judge Robinson granted Honeywell’s motion for summary judgment of no willful infringement, finding that Honeywell presented a credible invalidity defense. Id. at 13. It was irrelevant that the Federal Circuit ultimately rejected Honeywell’s 102(g) defense. Id. Judge Robinson also noted that “Solvay discredited its own contentions regarding the baselessness of Honeywell’s invalidity defenses by failing to move for summary judgment of validity or willfulness[.]” Id. at 13-14.