Solvay, S.A. v. Honeywell Int'l Inc., Civ. No. 06–557–SLR.

886 F.Supp.2d 396

SOLVAY, S.A., Plaintiff,

v.HONEYWELL INTERNATIONAL INC., Defendant.

Civ. No. 06–557–SLR.

United States District Court, D. Delaware.

Aug. 20, 2012.

Richard L. Horwitz & David Ellis Moore of Potter Anderson & Corroon, LLP, Wilmington, DE. Attorneys for Plaintiff. Of Counsel: Barry J. Herman, Jean–Paul Lavalleye, Richard D. Kelly, Jeffrey B. McIntyre, Tia D. Fenton & John F. Presper of Oblon, Spivak, McClelland, Maier & Neustadt, PC.

Thomas C. Grimm & Benjamin J. Schladweiler of Morris, Nichols, Arsht & Tunnell, LLP, Wilmington, DE. Attorneys for Defendant. Of Counsel: Laura M. Burson, Guy Ruttenberg, Gregg F. LoCascio & J. John Lee of Kirkland & Ellis, LLP.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

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 (D.I. 1) The parties cross-moved for summary judgment on the issues of infringement and validity of the ' 817 patent. (D.I. 121; D.I. 134) On December 9, 2008, 591 F.Supp.2d 724 (D.Del.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). (D.I. 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. (D.I. 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 Int'l, Inc., 622 F.3d 1367, 1370 (Fed.Cir.2010). 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. (D.I. 366) Currently before the court is Solvay's motion for judgment as a matter of law of no anticipation and no obviousness (D.I. 374) as well as Solvay's motion for a new trial (D.I. 375).

II. BACKGROUND

The court presumes familiarity with the chemical processes at issue in this case, as detailed in its prior opinion. (D.I. 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, 3–pentafluoropropane (“HFC–245fa”) by reacting 1, 1, 1, 3, 3–pentachloropropane (“HCC–240fa”) 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. (D.I. 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. (D.I. 136, ex. 13)

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 (D.I. 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”). (D.I. 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. (D.I. 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. (D.I. 366) This patent application ultimately issued as Russian Patent No. RU 2,065,430 (“the '430 patent”).

III. STANDARDSA. 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. Iolab 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 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 Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (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 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. DISCUSSIONA. 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. See35 U.S.C. § 282. In order to overcome this presumption, the party 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, 104 S.Ct. 2433, 81 L.Ed.2d 247 (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. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed.Cir.1998). Second, the finder of fact must compare the construed...