United States: An Invention Conceived By A Foreign Inventor And Reduced To Practice In The United States Qualifies As Prior Art Under § 102(G)(2)

In Solvay S.A. v. Honeywell International Inc., No. 12-1660 (Fed. Cir. Feb. 12, 2014), the Federal Circuit held that an invention conceived by a foreign inventor and reduced to practice in the United States qualifies as prior art under pre-AIA 35 U.S.C. § 102(g)(2) (2006).

Solvay's patent, U.S. Patent No. 6,730,817 ("the '817 patent"), claims an improvement of a method for making a hydrofluorocarbon and has a priority date of October 23, 1995.  In 1994, before the priority date of the '817 patent, engineers working at the Russian Scientific Center for Applied Chemistry ("RSCAC") under contract with Honeywell conceived of the same method claimed in the '817 patent.  In July 1994, the personnel at RSCAC sent Honeywell a detailed report documenting the method.  Honeywell personnel in the United States then used the RSCAC method to run the same process in this country prior to the '817 patent's priority date.

Solvay sued Honeywell, alleging that the process Honeywell was using infringed the '817 patent.  Honeywell countered that the asserted claims were invalid under § 102(g)(2).  Honeywell's theory was that "its engineers had reduced the invention to practice in the United States and that this made the Honeywell engineers inventors under § 102(g)(2)."  Slip op. at 6.  The district court ruled on SJ that Honeywell's process infringed the '817 patent, but also granted SJ of invalidity of the '817 patent under § 102(g)(2) on the ground that the Honeywell engineers were other inventors who made the invention in this country without abandoning, suppressing, or concealing it.  The case was then appealed to the Federal Circuit where the Court reversed the finding of invalidity, "explaining that Honeywell personnel could not qualify as 'another inventor' because they 'did not conceive the invention . . . but derived it from others.'"  Id. at 7 (quoting Solvay S.A. v. Honeywell Int'l, Inc., 622 F.3d 1367, 1378-79 (Fed. Cir. 2010)).  On remand, Honeywell asserted an alternate theory, arguing that "the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who used the instructions to reduce the invention to practice in this country."  Id.  The district court determined that the Russian inventors should be treated as inventors who made the invention in the United States under § 102(g)(2), and the '817 patent was found to be invalid.  Solvay appealed the holding of invalidity, as well as a claim construction applied by the district court.

"[T]he process invented by the Russian engineers was made in this country when Honeywell successfully performed the process because the Russians authorized Honeywell personnel to practice the invention and specifically contemplated that they would do so."  Slip op. at 17.

On appeal, the Federal Circuit first addressed whether Solvay could raise the issue of claim construction.  According to Solvay, the district court's jury instruction reflected an erroneous interpretation of the claim term "isolating," but the Court noted that Solvay did not raise the issue at trial and did not ask the district court to modify the claim construction or accompanying jury instruction.  The Court held that because "Solvay failed to object to the court's construction . . . with respect to the term 'isolating,' it waived the issue."  Id. at 11-12 (footnote omitted).  Moveover, the Court held that even if Solvay had properly raised the claim construction issue, there was no error in the district court's construction. 

The Court then addressed Solvay's argument that the requirements of § 102(g)(2) were not properly met.  Solvay argued that "(1) the doctrine of inurement, defining when the activities of others inure to the benefit of the inventor, controls the question of whether Honeywell's work can be attributed to the RSCAC engineers, and (2) the undisputed facts do not establish inurement because the RSCAC engineers did not expressly ask the Honeywell researchers to perform the inventive process."  Id. at 14.  The Court noted that while no inurement can arise from a third party's unwarranted and hostile use of another's invention, "an express request or direction is not required," as the request may be implicit.  Id.  Thus, the Court determined that "case law does not support Solvay's contention that an inventor must make an express directive or request to benefit from a third party's reduction to practice."  Id. at 16.  The Court therefore agreed with the district court that "the process invented by the Russian engineers was made in this country when Honeywell successfully performed the process because the Russians authorized Honeywell personnel to practice the invention and specifically contemplated that they would do so."  Id. at 17.  The Court therefore affirmed the district court's judgment that the '817 patent is invalid under § 102(g)(2).

Judge Newman dissented, stating that "[t]he new general rule here adopted contravenes the policy and the letter of patent law, wherein inventors are charged only with knowledge of what is known or knowable as defined by statute, subject to special limited circumstances."  Newman Dissent at 1.  In Judge Newman's view, "the court's ruling that prior art includes secret information is of far-reaching potential impact."  Id. at 8.

This article previously appeared in Last Month at the Federal Circuit, March 2014.

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