An Invention Conceived By A Foreign Inventor And Reduced To Practice In The United States Qualifies As Prior Art Under § 102(G)(2)

In Solvay S.A. v. Honeywell International Inc., No. 12-1660 (Fed. Cir. Feb. 12, 2014), the Federal Circuit held that an invention conceived by a foreign inventor and reduced to practice in the United States qualifies as prior art under pre-AIA 35 U.S.C. § 102(g)(2) (2006).

Solvay's patent, U.S. Patent No. 6,730,817 ("the '817 patent"), claims an improvement of a method for making a hydrofluorocarbon and has a priority date of October 23, 1995. In 1994, before the priority date of the '817 patent, engineers working at the Russian Scientific Center for Applied Chemistry ("RSCAC") under contract with Honeywell conceived of the same method claimed in the '817 patent. In July 1994, the personnel at RSCAC sent Honeywell a detailed report documenting the method. Honeywell personnel in the United States then used the RSCAC method to run the same process in this country prior to the '817 patent's priority date.

Solvay sued Honeywell, alleging that the process Honeywell was using infringed the '817 patent. Honeywell countered that the asserted claims were invalid under § 102(g)(2). Honeywell's theory was that "its engineers had reduced the invention to practice in the United States and that this made the Honeywell engineers inventors under § 102(g)(2)." Slip op. at 6. The district court ruled on SJ that Honeywell's process infringed the '817 patent, but also granted SJ of invalidity of the '817 patent under § 102(g)(2) on the ground that the Honeywell engineers were other inventors who made the invention in this country without abandoning, suppressing, or concealing it. The case was then appealed to the Federal Circuit where the Court reversed the finding of invalidity, "explaining that Honeywell personnel could not qualify as 'another inventor' because they 'did not conceive the invention . . . but derived it from others.'" Id. at 7 (quoting Solvay S.A. v. Honeywell Int'l, Inc., 622 F.3d 1367, 1378-79 (Fed. Cir. 2010)). On remand, Honeywell asserted an alternate theory, arguing that "the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who used the instructions to reduce the invention to practice in this country." Id. The district court determined that the Russian inventors should be treated as inventors who made the invention in the United States under § 102(g)(2), and the '817 patent was found to be invalid. Solvay appealed the holding of invalidity, as well as a claim construction applied by the...