In Solvay, S.A. v. Honeywell International Inc., Appeal No. 12-1660, the Federal Circuit affirmed a district court’s finding that reduction to practice of an invention conceived abroad qualifies as prior art under pre-AIA 35 U.S.C. § 102(g)(2).
Solvay sued Honeywell for patent infringement. Honeywell countered that Solvay’s claim was invalid because the claimed subject matter had been conceived in Russia by the Russian inventor, disclosed in an unpublished Russian patent application by the Russian inventor, and practiced by Honeywell in the United States prior to Solvay’s priority date. In a previous decision, the Federal Circuit had reversed the district court’s finding of invalidity under pre-AIA 35 U.S.C. § 102(g)(2), holding that Honeywell was not “another inventor” under the statute because Honeywell had not conceived the invention. On remand, Solvay’s asserted claim was again found to be anticipated under § 102(g)(2), now under Honeywell’s alternative theory that the Russian inventor had made the invention within the United States by sending to Honeywell the instructions that were used in reducing the invention to practice. The jury returned a verdict that the Russian inventor’s own unpublished Russian patent application on the subject matter constituted disclosure under § 102(g)(2) such that the inventor did not abandon, suppress, or conceal the invention.
Solvay appealed the finding of invalidity. At issue was whether a reduction to practice in the United States that took place outside of the direction or request of the Russian inventor may inure to the inventor’s benefit such that the invention conceived abroad and practiced in the United States was an invention “made in this country by another inventor.” The inventor and Honeywell had been operating under a collaboration agreement.
The Federal Circuit held that Honeywell’s practice of the invention in the United States satisfied the language of the statute. Evaluating the inurement doctrine, the Federal Circuit held that an inventor receives the benefit of third party reduction to practice of an invention provided that the third party’s actions are not an “unwarranted and hostile use” of the invention.
Judge Newman dissented, asserting that the holding allows “private secret activity”—confidential evaluation in the United States of international inventions that are filed but not published with a foreign patent office— to anticipate a claim under 102(g)(2) even if the same activity is unavailable in an interference under the same statute.