The U.S. Court of Appeals for the Federal Circuit held that to qualify as “another inventor” under 35 U.S.C. §102(g)(2), one must independently and originally conceive of the invention within the United States. Solvay S.A. v. Honeywell International, Inc., Case No. 09-1161 (Fed. Cir., Oct. 13, 2010) (Schall, J.).
Under §102(g)(2), a person is not entitled to a patent if “the invention was made in [the United States] by another inventor” before the patentee’s invention. Solvay sued Honeywell for infringement of a patent directed to methods for making the compound 1,1,1,3,3-pentafluoropropane (HFC-245fa). Honeywell had contracted with an agency in Russia to produce HFC-245fa. It was undisputed that the Russian agency, in Russia, conceived of and reduced to practice the invention claimed in the patent prior to Solvay’s priority date. It was further undisputed that the Russian agency thereafter sent instructions for producing HFC-245fa to Honeywell in the United States and that prior to Solvay’s priority date Honeywell used those instructions to independently reduce the claimed invention to practice.
In the district court, Honeywell moved for summary judgment of invalidity of certain claims on the ground that those claims were the work of a prior inventor under 35 U.S.C. §102(g)(2). Because Honeywell was the first to reduce the invention to practice in the United States, Honeywell insisted that §102(g)(2) necessitated a finding of invalidity. Solvay cross-moved for summary judgment of no invalidity on the ground that Honeywell did not qualify as “another inventor” under §102(g)(2)—Solvay argued that under §102(g)(2) an “inventor” must be involved in the conception of the invention inside the United States, and Honeywell was not.
The district court granted summary judgment to Honeywell, concluding that “Honeywell conceived the invention at issue in the United States upon receipt of [the Russian agency’s] instructions, because it was at [that] point that Honeywell possessed a definite and permanent idea of the complete and operative invention.” The district court declined to read the “originality” requirement of §102(f) into §102(g), reasoning that §102(g) “contemplates multiple conceptions, as long as each inventor ‘appreciates’ his invention.” Solvay appealed.
The Federal Circuit reversed, confirming its practice of applying conception and reduction to practice principles in the context of prior inventorship questions under §102(g)(2). The Court explained that while §102(g)(2) does not contain the explicit “originality” provision of §102(f), “originality is, nevertheless, inherent to the notion of conception.” As such, the Court concluded that Honeywell could not be “another inventor” under §102(g)(2) because the Russian agency—not Honeywell—conceived of the invention at issue and did so outside the United States. Honeywell simply “reproduced the invention originally conceived and reduced to practice by [the Russian agency] in Russia.” Such reproduction cannot qualify as conception, the Court reasoned, because then anyone who used a first inventor’s instructions to reproduce the invention would necessarily become an inventor themselves.
Practice Note: Under Solvay, if one entity conceives of an invention outside the United States and sends instructions to make that invention to an entity inside the Unites States, the second entity does not qualify as an “inventor” under §102(g)(2) simply by using the instructions to reproduce the invention.