Use of Foreign-conceived Invention in U.S. Not Sufficient to Support 102(g)(2) Defense
November 24, 2010

Section 102(g)(2) of the Patent Act creates a “prior inventor” defense to patent infringement. In Solvay SA v. Honeywell International, the Federal Circuit considered whether use of an invention by a third party within the United States prior to a patent’s priority date satisfies the prior inventor requirement of 102(g)(2), when the third party did not invent the invention in the United States.

An accused patent infringer had hired a third party located in Russia to develop a process for making a non-ozone-depleting insulating material. The third party developed such a process in Russia, and informed the accused infringer how to perform the process. The accused infringer began testing the process in the United States prior to the critical date of the asserted patent. The accused infringer asserted that the patent was invalid based on use of the invention in the United States prior to the patent’s priority date. The Federal Circuit determined that 102(g)(2) did not apply in this case because the accused infringer did not “invent” the process in the United States.

More details of Solvay SA v. Honeywell International after the jump.

Section 102(g)(2) states that “[a] person shall be entitled to a patent unless . . . before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.”

Solvay owns a patent (U.S. Pat. No. 6,730,817) related to methods for making a non-ozone-depleting blowing agent and insulation material known as HFC-245fa. That patent has a priority date of October 1995. Solvay filed a lawsuit alleging that Honeywell was infringing that patent. Honeywell defended on the grounds that the patent was invalid under § 102(g)(2).

In early 1994 Honeywell contracted with the Russian Scientific Center for Applied Chemistry (“RSCAC”) to perform process development studies for the commercial production of HFC-245fa. All of the work performed by RSCAC on the project occurred outside the United States. In July 1994, RSCAC reported a process corresponding to the claims of the ‘817 patent to Honeywell. By early 1995, based on the reports received from RSCAC, Honeywell duplicated the processes described in RSCAC in the Untied States. Therefore, it is undisputed that Honeywell performed the claimed invention within the United States before the priority date of the ‘817 patent.

The Federal Circuit stated that

[W]hen the statute uses the words "the invention was made in this country" it is referring to the act of inventing in the United States. . . . Therefore, the issue we must decide is whether . . . Honeywell "invented" in the United States the process claimed in the '817 patent. . . . The question thus becomes whether Honeywell conceived of the invention at issue and reduced it to practice in the United States, such that Honeywell is "another inventor"of the process claimed in the '817 patent under § 102(g)(2).

The Federal Circuit found that “conception” is a necessary component of invention. It further determined that originality is an inherent part of conception. Because the process practiced by Honeywell originated with RSCAC in Russia, Honeywell did not conceive of the invention in the United States. Therefore, the invention was not made in the United States within the meaning of § 102(g)(2), and Honeywell is not an inventor within the meaning of § 102(g)(2).

Based on this analysis the Federal Circuit reversed the lower court’s finding that the ‘817 patent was invalid. In a separate section of the opinion, the Federal Circuit also sustained the lower court’s claim construction.

It appears from this case that in order to successfully raise a prior inventor defense, it is necessary for the defending party to show that both conception and reduction to practice of the earlier invention occurred in the United States. The court did not need to reach the issue raised by Solvay of whether Honeywell and RSCAC suppressed or concealed the invention.

To read the full opinion in Solvay S.A. v. Honeywell International, click here .

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