Dow Chemical Co. v. Astro-Valcour, Inc.

A Japanese company held a United States patent (the Miyamoto patent) for a process of producing foam with polyethylene, as opposed to the industry-standard chemical agent, chlorofluorocarbon (CFC). Astro-Valcour, Inc. (AVI) (defendant) sought to achieve a similar result. In March 1984, AVI successfully followed the Miyamoto patent to produce its own non-CFC foam but used isobutane rather than polyethylene. AVI licensed the Miyamoto patent from the Japanese company. In 1985 and 1986, AVI built a new facility for commercial production of isobutane-based foam. AVI’s invention was publicly disclosed by commercialization in the latter half of 1986. Dow Chemical Co. (Dow) (plaintiff) also developed an isobutane-based process for producing foam, which was reduced to practice by September 1984. A patent application for the Dow process was filed in December 1985, resulting in three separate patents. Dow later brought a patent-infringement suit against AVI in federal district court. Although the suit initially concerned unrelated patents, the litigation shifted to encompass Dow’s foam patents, which AVI alleged were invalid. AVI employees testified that, because they saw themselves as following the Miyamoto patent, it did not occur to them that their isobutane formula was a patentable invention. Dow used AVI’s lack of awareness as an argument against AVI’s inventorship. Dow also argued that the more than two years between AVI’s making the foam and publicly disclosing it constituted an abandonment. The court found that AVI was the prior inventor. Dow appealed to the United States Court of Appeals for the Federal Circuit.