Summary: CAFC finds waiver due to failure to object to district court’s claim construction and jury instruction. CAFC also applies the doctrine of inurement, finding that reduction to practice by a third party in the U.S. was sufficient to establish that a foreign-conceived invention was made in the U.S. for prior art purposes under 35 U.S.C. § 102(g)(2).

Case: Solvay S.A. v Honeywell Int’l Inc., No. 2012-1660 (Fed. Cir. Feb. 12, 2014) (precedential). On appeal from D. Del. Before Rader, Newman and Dyk.

Procedural Posture: Plaintiff Solvay appealed the district court’s ruling, in which the patent claim asserted by Solvay against Defendant Honeywell was found invalid under 35 U.S.C. § 102(g)(2) because the claimed invention was conceived at the Russian Scientific Center for Applied Chemistry (RSCAC) before being reduced to practice in the U.S. by Honeywell pursuant to RSCAC’s instructions. CAFC affirmed.

  • Waiver: Solvay argued that RSCAC’s Russian patent application did not disclose the claimed invention under Solvay’s proposed claim construction. Although the district court was made aware of Solvay’s construction during trial, Solvay failed to object to the court’s construction or jury instruction with respect to the claim limitation at issue. Therefore, the CAFC ruled that Solvay had waived its right to argue the alternative construction. As such, the Russian application sufficiently disclosed the claimed invention.
  • Prior Art Invalidity (Prior Inventorship): Citing Federal Circuit and CCPA case law, the CAFC noted that under the doctrine of inurement, a third party’s reduction to practice can inure to the benefit of the inventor without the inventor’s express request to the third party to perform the reduction, because such a request may be implicit. Inurement exists so long as the inventor authorizes reduction to practice. In this instance, RSCAC gave authorization via a research agreement that granted Honeywell title and rights to the invention, while giving RSCAC rights to make, use and sell the invention in Russia. In response to Solvay’s argument that Honeywell’s own patent application prevented inurement, the CAFC relied on CCPA case law in support of the principle that mere filing of a related patent application does not preclude inurement.

Newman, dissenting:

  • Prior Art Invalidity (Prior Inventorship): Honeywell’s work in the U.S. was a private experiment that did not convert either the Russian process (as described in the unpublished Russian patent application) or Honeywell’s activities into prior art. The cases relied on by the majority are distinguishable because they relate to interference contests. In this instance, RSCAC had no U.S. counterpart application that could benefit from inurement. Therefore, the majority’s ruling creates a new class of secret prior art.