Docket No. 2012-1660
RADER, NEWMAN, DYK
February 12, 2014
Brief Summary: Honeywell determined to have reduced to practice invention, conceived of in Russia, on behalf of Russian inventors, thereby creating § 102(g)(2) prior art. Dissent argued the opinion “creates a new class of secret prior art”.
Summary: Solvay appealed DC holding that “asserted claim 1 of Solvay’s U.S. Pat. No. 6,730,817 was invalid under 35 U.S.C. § 102(g)(2) (2006)” because “engineers at the Russian Center for Applied Chemistry (‘RSCAC’) first conceived of the invention which was reduced to practive in this country by Honeywell personnel pursuant to RSCAC’s instructions, and did not abandon, suppress, or conceal it” (citing Hybritech, FC 1986 (conception is “definite and permanent idea” while “reduction to practice ‘requires that the claimed invention work for its intended purpose”) and Apotex, FC 2001 (invention cannot have been suppressed, abandoned, or concealed)) (FN1: The activities at issue occurred before the enactment of the [AIA], after which § 102 no longer includes subsection (g).”) The opinion explains that to qualify as prior art under § 102(g)(2), the invention must have been made “in this country”. However, it also explains that “the inventors may reside in a foreign country and conceive the invention abroad” as long as “the work constituting the reduction to practice [was] performed in the United States by or on behalf of the inventor” (citing In re DeBaun, CCPA 1982 and Chisum § 10.06). This is the second appeal of this case. In the first instance, the FC affirmed the DC ruling on SJ that the claims were invalid under § 102(g)(2) on the ground that Honeywell’s engineers were inventors, which was reversed on appeal. On remand, Honeywell advanced their alternative theory that the Russian inventors sent instructions to the Honeywell engineers who used those to reduce the invention to practice in the US. The DC held for Honeywell, the jury finding “that, as required by § 102(g)(2), the RSCAC did disclose the invention of claim 1 in [a] 1994 Russian patent application such that they did not abandon, suppress, or conceal it” (jury finding on reduction practice issue not discussed). In this appeal, Solvay argued that the “doctrine of inurement” (defining when the activities of others inure to the benefit of the inventor) controls whether Honeywell’s work can be attributed to RSCAC engineers and that “the undisputed facts do not establish inurement because the RSCAC engineers did not expressly ask the Honeywell researchers to perform the inventive process.” The opinion explained that “an express request or direction is not required” and “may be ‘implicit’” (citing Cooper (FC 1998), Learned (CCPA 1951), and Kendall (CCPA 1949)) (“inurement exists if the inventor authorizes another to reduce his invention to practice”). This authorization, the FC panel concluded, was provided by a collaborative research agreement between RSCAC and Honeywell. Thus, Honeywell “practice[ed] the invention in the United States before the ‘817 patent’s priority date”, thereby creating § 102(g)(2) prior art. Judge Newman’s dissent argued that “[t]he court today creates a new class of secret prior art, holding that a privately performed experiment, without publication or public knowledge or use or sale or inclusion in a United States patent application, is invalidating ‘prior art’” against the world (noting that Honeywell might have a “personal defense against the Solvay patent”).