US Patent Law Provides Prior-Inventor Rights, NOT Prior-User Rights

Solvay v. Honeywell (Fed. Cir. 2010)< ?xml:namespace prefix ="" o />

This case presents a nice fact pattern for a law school examination question on the operation of the novelty rules of 35 U.S.C. § 102.  Solvay’s patent covers a method for manufacturing a non-ozone-depleting form of penta-flouro-propane (HFC-245fa) that is primarily used in spray-foam insulation products. Honeywell manufactures and sells over 1,000,000 pounds of the compound each year.

Prior-User Facts: Honeywell (at that time, AlliedSignal), the accused infringer, was in possession of a working model of the invention in the United States (US) prior to Solvay’s invention date. However, Honeywell was not the original inventor. Rather, Honeywell had copied its working model from one created by a Russian agency (in Russia, but under contract with Honeywell).  Honeywell engineers continued to work on the project as they moved toward commercialization. However, by the time that Honeywell began to commercially use or publicize the invention, Solvay had already independently invented the method and filed for patent protection.

The question on appeal is whether any of the novelty provisions of Section 102 render Solvay’s patent claims invalid.  The two primary statutory candidates are 35 U.S.C. § 102(a) and § 102(g)(2). 

A patent claim is invalid under Section 102(a)  if the invention was “known or used by others” in the US prior to the patentee’s date of invention.  If the statute is construed according to the plain meaning of its terms, then Honeywell wins and the patent is invalid.  Several US-based individuals at Honeywell knew of the invention prior to Solvay’s invention date – seemingly satisfying the “known or used by others” in the US requirement of the statute. Unfortunately for Honeywell, courts require that the prior knowledge or use of the invention be somehow public.  In this case, Honeywell had kept its work in the US confidential.  Therefore, Honeywell’s prior knowledge and use of the invention is insufficient to invalidate the asserted claims under Section 102(a).  Many accused infringers (and others) have argued that the law should provide a prior-user defense for situations such as this one.  That defense does not exist except for the limited (now severely limited) case of business method patents.

Section 102(g)(2) creates a prior-inventor defense that can also render a patent claim invalid. However, that defense has a number of important limitations. Under Section 102(g)(2), a claim will be held invalid if, before the patentee’s invention date, the claimed invention “was made in [the US] by another inventor who had not abandoned, suppressed, or concealed it.”  Section 102(g) ends with the statement that the question of invention priority will consider “not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

As I mentioned, Section 102(g)(2) creates a prior-inventor defense, not a prior-user defense.  The original inventor was the Russian agency operating in Russia.  That invention cannot satisfy the elements of the statute because Section 102(g)(2) requires that the prior invention be made in the US. For its part, Honeywell is not a prior inventor because it simply copied the work of the Russian agency. Thus, the patent skates-by Section 102(g)(2) as well.

* * * * *

More Information: The district court held the patent invalid based on Section 102(g)(2). In reaching that conclusion, the district court decided that the made by “another inventor” element of the provision did not actually require that the prior-user be an original-inventor.  Rather, the district court held that for the purposes of Section 102(g), all that is required is that the prior-user “appreciate” the invention.  In coming to that conclusion, the court distinguished the language of  Section 102(f), which does require that the applicant “he … himself invent.”  On appeal, the Federal Circuit rejected that argument — holding that “when the statute uses the words ‘the invention was made in this country,’ it is referring to the act of inventing in the United States” because “originality is . . .  inherent to the notion of conception.”  In its analysis, the Federal Circuit appears to have added some detail to the common definition of conception which should now read: “the formation in the mind of the inventor, of [the inventor’s own] definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.”

Not the First Inventor: Honeywell argued strongly that it does not make sense for Solvay to have a patent since it was clearly not the first inventor and, if you follow the chain of title, the prior invention had never been abandoned, suppressed, or concealed.  Although seemingly sympathetic to Honeywell’s policy argument, the appellate court decided that it was bound by the statute.

Whether this holding ignores the realities of globalization and outsourcing by modern-day research companies, as Honeywell contended at oral argument, is not the question before us. The question before us is whether, under the undisputed facts, Honeywell qualifies as “another inventor” under 35 U.S.C. § 102(g)(2). Because Honeywell did not itself conceive the RSCAC process of making HFC-245fa, under 35 U.S.C. § 102(g)(2), as this court has construed the statute, it is not “another inventor” of the subject matter claimed in the ‘817 patent.

Although perhaps only shorthand, it is interesting that the court focuses on the question of whether the corporate entity –  Honeywell –  was the inventor.  Although some proposed amendments to the Patent Act would lead toward corporate inventorship, the current law is that all inventors must be real persons.
 

112 thoughts on “US Patent Law Provides Prior-Inventor Rights, NOT Prior-User Rights

  1. 110

    I’m away from home, to get to know some of your new friend so honored. You like a beacon, shine through me in this lonely soul, my life has added so many light.
    Albert Einstein said: “world best things the mind and heart than a few solemn friends are honest … …”
    Acquaintance is the edge of knowing each other is sincere. I feel you are such a friend!

  2. 108

    This one bothers me to the point of wanting to find another way.

    OK, “invention” requires originality, but what is “originality?” We don’t normally think of a copy as being original, but isn’t it still original, at least in this 102(g)(2) context of “invention made in this country by another” ?

    I see ABC and I conceive of the notion to copy ABC, and then I make ABC — isn’t that still invention even though it’s not novel? It’s still original in the sense that I originated the concept to copy ABC.

    Well, maybe that would throw too much of a curve into derivation, but darn it all.

  3. 106

    Good discussion – thanks all

    From the link provided by Malcolm at [*15]:

    Dow contends, however, that the statute was always understood to apply only to inventors, since § 102(g) deals with interference disputes between inventors with competing claims to an invention.

  4. 105

    But, Ned, it does matter whose RTP it is, because it has to be the RTP of an inventor (according to this case).
    Posted by: Courtenay Brinckerhoff | Oct 29, 2010 at 11:29 AM

    The point I was trying to make to ping and to you was this: if the invention was made in the United States by another prior to the date of invention of the inventors of the patent dispute, the patent is invalid. Every member of the public benefits from this. Invalidity is not a personal defense.

    Honeywell could have prevailed if it showed that it that anyone else, other than the inventors of the patent in dispute, “made” the invention in the United States prior to the date of invention of the Solvay patent. Honeywell did not have to prove that Honeywell itself was a prior inventor.

    Now this is where the case gets confusing. The statue was changed a few years ago to add “inventor” to modify “another.” The statue was changed without comment by Congress as to reason for the change. If Congress intended to make a substantive change in the law by adding the word “inventor” to the statute, one would think that someone would have said so. I think the best conclusion is this: Congress did not intend to make any substantive change in section 102G when it moved the existing statutory language into subsection 2 and added “inventor.”

    Now the reason there are interferences in the first place is that it has been the law of the land from the very beginning that the prior invention of another renders a patent invalid. The procedural laws involving priority developed during interferences, it is true. But traditionally, all one had to do to invalidate a patent is show that it was invented first by another in the US (see 1836 codification, or it was known by another or it was used by another – originally throughout the world, but after 1870, only in United States. See, e.g., History of the Patent Law, link to ladas.com, particularly at notes 16 and 21; and Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)(Shimadzu is remarkably similar to the present case. It holding that proof of prior reduction to practice in Japan was OK good to prove prior priority over invalidating art was legislatively overruled. However, the court noted the date of invention of the Japanese applicant was the date the invention was communicated or described to someone in the US, not the date of filing.) link to supreme.justia.com
    This is why the statute for example made “prior use” or “prior knowledge” of another prior art without specifically stating that the prior use or knowledge had to be public. However, the law developed in interferences that if one abandoned his experiment, or suppressed or concealed it, he was not entitled to a patent, nor was his invention prior art. Thus it was necessary to read into “prior use” and “prior knowledge” that the use or knowledge had to be public.

    Returning to this case, the holding of this case essentially is this: the Russian inventors were not entitled to a patent as a matter of law as against Solvay had the Russian inventors been named in a patent application on their invention and relied on the reduction to practice by Honeywell as demonstrating priority. But this seems quite contrary the precedent that the inventors themselves do not need to actually have to perform acts that constitute the reduction to practice provided that the reduction to practice is of the invention they conceived.

    If they were entitled to a patent had they applied based on their prior invention, the date their report was communicated to Honeywell, and based on Honeywell’s reduction to practice of their invention, their invention is prior art, regardless of whether a patent application was filed. That is the holding of Kimberly-Clark, In re Clemens and In re Bass (principle opinion).

  5. 104

    anonymous, I’m not aware of case law that directly addresses the issue you raise, but I suspect it was at least researched by others in the past who were faced by 102(g)(2) challenges during litigation.

    The bottom line is that plenty of Fed Cir cases including the Honeywell case, above, shows that the evocation of 102(g)(2) is not limited to the interference context. See, e.g., DOW CHEMICAL COMPANY v. ASTRO-VALCOUR,INC (Fed Cir 2001) and others…

    link to lexisone.com

    By the way, I agree with Ned that it does seem rather difficult to resolve the holding in this case with the holding (and dicta) in Dow.

  6. 103

    Anyway, you still have to contend with the glaring fact that one explicitly mentions interferences and the other does not.

    Not to mention that when you read the whole subsection, the two parts define incongruent tests – both cannot apply to interferences. In an interference (g(1)), activity in a WTO country counts. Outside the interference context (g(2)), it does not. The last sentence applies to both parts.

  7. 102

    If indeed, the two thoughts were self-contained, they would be in separate sentences.

    Not necessarily. Though that’s a better argument than your previous post that they are both related to interferences because they use the same pronouns.

    Look at section 282, and you’ll see another example of unrelated and self-contained concepts in the same sentence. “(1) Noninfringement, absence of liability for infringement, or unenforceability”.

    Anyway, you still have to contend with the glaring fact that one explicitly mentions interferences and the other does not.

  8. 101

    That would be incorrect. If indeed, the two thoughts were self-contained, they would be in separate sentences.

  9. 100

    The use of such language as “such” and “thereof” indicates a continuation of thought,

    The reason both (1) and (2) use similar language is because they both discuss the concept of prior inventorship by another person. The “such person” refers to the “A person” in the preamble of 102, and “thereof” refers to the term “the invention” that immediately follows it. Thus, each of (1) and (2) is self-contained and has nothing to do with the other.

    The most obvious linguistic difference between the two, incidentally, is that (2) doesn’t say “during the course of an interference”, which is pretty significant.

  10. 99

    I would fully disagree that “102(g)(2) is not an explicit interference rule.”

    (g) is a single rule that has one explicit purpose. The use of such language as “such” and “thereof” indicates a continuation of thought, as well the fact that the “or” between (1) and (2) is contained within one sentence with only a comma used as a separator. Further the “under this subsection” is in the next sentence and fully describes the entire previous sentence.

    If the legislative action wanted separate rules, a (g) and an (h) would have been introduced. As it is, only one rule was introduced.

  11. 98

    102(g) is explicitly an interference rule

    With respect to 102(g)(1), you are correct.

    102(g)(2) is not an explicit interference rule and reads as follows:

    before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

  12. 97

    The pronouncement that the “Same reasoning applies to 102(g)” from the OddzOn Products case (122 F.3d 1396) may be a bit premature, or at a minimum, a bit constrained.

    102(g) is explicitly an interference rule where the two items under consideration are both purported to be patent applications, rather than a single patent application (or patent) in comparison to a non-patent application (or patent) event.

  13. 95

    ping, let’s look at the statute. Please identify the part about “priority.” Now consider, what does the other part mean? Which part denies the right to a patent — the part about priority or the part about the invention being made by another?

    ” (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

    In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

  14. 94

    Courtney, in interferences, it is about priority. But, when it is about prior art, it makes no difference whose reduction to practice it is.

    All that is required is that there be conception and reduction to practice by another.

    The “not abandoned suppressed or concealed” is, I believe, a defense. One does no have to prove it.

  15. 92

    Non-lazy or non-busy? ;-)

    Ned, the C + RTP issues come up in interferences cases, and I just recall language to the effect that Bs RTP can inure to the benefit of A only under certain circumstances. No time to give you a cite.

    Even if H could show invention in the US by Rs invention they might have more trouble with a/s/c since R never published or patented its method.

  16. 91

    Courtney, I think most of us here would like to know more about why Honeywell did not rely on the report as a conception document of the Ruskies, coupled with the actual reduction to practice in the US to establish a basis for “prior invention” by another inventor in this country. The facts are all there.

    Ned – how are the “facts are all there” when we just got done showin that there was no inventor in the US?

    The fact that Honeywell or its employees were not the inventors is completely and totally irrelevant.

    Ned – it’s not “completely” irrelevant, cause the words of the statute make it relevant. Now in IMHO-Ned Law land, where ya can ignore whatever ya what to ignore, ya might have a point.

    Also, if ya wanna quote a different section of 102 and apply the facts, go for it (-a- bein the obvious choice).

    So why not throw the Russian work out there? Just a wild guess, but perhaps the Russian work would do more than just eviscerate the competitor’s patent, perhaps. Let’s not forget that Honeywell has an improvement patent in the ring. Might be worthwhile for some non-lazy person to look at the actual Russian stuff and see how far down the rabbit hole it goes.

  17. 90

    Courtney, are you aware of any cases that actually held that the reduction to practice (make and testing) had to be by the inventors or at their behest? I have never heard of such a requirement. But, such a case just might exist.

    But, I think the facts in this case were that the Ruskies had already reduced the invention to practice and had communicated to the Americans a complete invention that would work.

    What now?

  18. 89

    Answering off the top of my head, for Bs RTP to complete As conception, B has to be carrying out the work on behalf of A. I assume that the relationship between Honeywell and Russia just didn’t support that type of arrangement.

    By this decision, there was no prior inventor in the US. Not the Russians b/c they weren’t in the US and not Honeywell because they weren’t inventors (no original conception by Honeywell).

    If the Russians had asked Honeywell to carry out the method maybe the outcome would have been different.

  19. 88

    Courtney, I think most of us here would like to know more about why Honeywell did not rely on the report as a conception document of the Ruskies, coupled with the actual reduction to practice in the US to establish a basis for “prior invention” by another inventor in this country. The facts are all there.

    What happened in this case doesn’t make any sense whatsoever. The fact that Honeywell or its employees were not the inventors is completely and totally irrelevant. Prior art is not a personal defense. It invalidates the patent, making the defense good for the entire public.

  20. 86

    Thanks for the beating on 102(g). I’ll take my 20 lashes, but still think there is a difference conceptually as compared to published prior art. And that Honeywell wouldn’t have had an argument to make in a first-to-file country. But please, let me know if you disagree on that point too.

    Here is what the Fed. Cir. said about Avi’s work:

    The district court found that it was not disputed that AVI had “manufactured a physical embodiment of the Miyamoto invention, meeting the limitations of the Park patents, as early as March 3, 1984, and in any event no later than August 22, 1984.” Id. at 106 (footnote omitted). The court also found that AVI used isobutane as a blowing agent and a GMS stability control agent on both dates. Id. at 107. Although Dow questioned whether AVI used normal butane (n-butane) rather than isobutane during the March 3, 1984, production, the district court found that, as he testified, an AVI employee had ordered and installed a tank of isobutane for use as the blowing agent in the testing, that test records showed that AVI had used isobutane as a blowing agent, and that AVI employees witnessed the production of isobutane-blown foam. The court therefore found that no genuine issue of material fact existed regarding whether AVI used isobutane in March and August 1984. Id. The district court additionally found that AVI had produced isobutane-blown foam using a GMS stability control agent that met the limitations of the Park patents prior to Dow’s reduction to practice on September 13-14, 1984. Id. at 108.

    Claim 1 of one the Dow patents recites:

    1. A process for preparing a substantially closed cell olefin polymer foam having dimensional stability comprising the steps of:
    (a) heat plastifying an olefin polymer resin selected from the group consisting of homopolymers of ethylene and copolymers of ethylene and a copolymerizable monomer,
    (b) admixing said heat plastified resin with (1) a stability control agent selected from the group consisting of partial esters of long chain fatty acids with polyols, higher alkyl amines, fatty acid amides, olefinically unsaturated carboxylic acid copolymers, and polystyrene and (2) a blowing agent selected from the group consisting of (i) isobutane, (ii) a mixture of from 5%-95% isobutane on a molar basis with from 95%-5% of a physical blowing agent selected from the group consisting of chlorofluorocarbons and fluorocarbons having from 1 to 4 carbon atoms, boiling points between -50.degree. and 50.degree. C., and a permeation rate through said olefin polymer resin modified with said stability control agent or less than about 1.2 times the permeation rate of air, and (iii) a mixture of at least 70% isobutane with a physical blowing agent selected from the group consisting of hydrocarbons, chlorocarbons, and chlorofluorocarbons having from 1 to 5 carbon atoms, boiling points between -50.degree. C. and 50.degree. C., and a permeation rate through said olefin polymer resin modified with said stability control agent of greater than about 1.2 times the permeation rate of air, and
    (c) activating said blowing agent to expand said admixture to a substantially closed-cell olefin polymer foam.

    The Fed. Cir. opinion states that the isobutane and GMS stability control agents were important to the Dow invention. As I understood it, in order to practice the JP patent, AVI had to choose to use those ingredients, thereby conceiving and RTP-ing the Dow invention.

  21. 85

    Courtney said, “In the Dow case, the invention at issue was an improvement of the JP patent. When practicing the JP patent in the US, the AVI inventor invented the improvement–the method claimed in the Dow patent that was invalidated. AVI didn’t just follow the “directions” in the JP patent. ”

    Was this the Feds making it up on their way to a decision it liked? The DC held that the US “inventors” simply followed the teachings of the US patent. The DC never held, as far as I know, and the Feds did not cite anything, that the US “inventors” did anything not commanded by the patent.

    So, I asked earlier in this thread, just what it was that the US “inventors” did that was not described in the patent. I received no answer. There is nothing in the case that I can tell that describes what was different.

  22. 84

    Malcolm, it might also be beneficial for Courtney to read Kimberly Clark v. Johnson and Johnson which relies on In re Clemens and In re Bass, CCPA decisions, and therefor, en banc, to uphold a 102(g)/103 invalidity holding that the prior work of Champaigne was prior art, regarless of prior knowledge by the inventor of the prior work.

    link to ftp.resource.org

    745 F.2d 1437 (Fed. Cir. 1984)(Rich, J.)

  23. 83

    Really vision this 1 3/4″ by 3 3/4″ That’s my HO SCALE HOHOHO. And it was even repeated when it was returned. So taking the front page of my Diarywas just plain STUUUPID.

  24. 82

    IANAE It’s prior art in the sense that it will invalidate a claim if it’s the same as the claim.

    It’s also prior art for 103(a) purposes, as I’ve been trying to get folks to appreciate for some time now. From OddzOn Fed. Cir. (1997) decision:

    The statutory language provides a clear statement that subject matter that qualifies as prior art under subsection (f) or (g) cannot be combined with other prior art to render a claimed invention obvious and hence unpatentable when the relevant prior art is commonly owned with the claimed invention at the time the invention was made.   While the statute does not expressly state in so many words that § 102(f) creates a type of prior art for purposes of § 103, nonetheless that conclusion is inescapable;  the language that states that § 102(f) subject matter is not prior art under limited circumstances clearly implies that it is prior art otherwise.   That is what Congress wrote into law in 1984 and that is the way we must read the statute.

    Same reasoning applies to 102(g). I don’t believe the CREATE act or any subsequent decision or legislation has overruled this aspect of the OddzOn decision.

  25. 81

    you are dead wrong about 102(g)(2) not being prior art!!

    It’s prior art in the sense that it will invalidate a claim if it’s the same as the claim. However, it’s not prior art in the perhaps more colloquial sense that it was not known to a notional person of ordinary skill in the art at the relevant date.

  26. 78

    I am working on my own article on this case and trying to understand your concerns. While I think its an interesting case, I just am not bothered by this decision.

    For many of the comments raised here, the devil is in the details.

    Sticking with the issue at hand (102(g)(2) and not 102(a), for example):

    102(g)(2) is not “prior art” but a way to defeat a patent with prior invention. In a first-to-file country, Honeywell wouldn’t have had any argument, because there was no publication or application before Solvay’s filing date.

    In the Dow case, the invention at issue was an improvement of the JP patent. When practicing the JP patent in the US, the AVI inventor invented the improvement–the method claimed in the Dow patent that was invalidated. AVI didn’t just follow the “directions” in the JP patent.

    The relationship between Honeywell and the Russians probably prevented other arguments that were suggested here. Honeywell’s RTP could inure to the benefit of the Russians only if it was carried out on their behalf. If Honeywell was acting independently (or on its own behalf) its work cannot be an RTP for the Russians. Since the Russians never filed an application to their method, they also might get knocked out on the “abandoned, suppressed or concealed” test.

    Honey(well), I don’t understand your comment because there doesn’t seem to have ever been an application filed to the Russian invention naming the Russian inventors.

  27. 77

    “For its part, Honeywell is not a prior inventor because it simply copied the work of the Russian agency. ”

    This makes no sense in context. Under US law, Honeywell is never “the inventor” anyway. At most, it may be the assignee an inventor’s rights, such as an inventor-employee working at Honeywell’s corporate instruction.

    So why is the RU agency, working at Honeywell’s bidding (and apparently assigning the fruits of the work – the invention – to Honeywell) any different than if it had been Honeywell’s employees (a.k.a., I guess, “Honeywell”) who had invented it?

  28. 76

    “Although some proposed amendments to the Patent Act would lead toward corporate inventorship, the current law is that all inventors must be real persons.”

    Hey, i thought most inventors are ‘unreal’?
    Like, dude you are an inventor?
    Yes i am
    Wow, dude you are unreal!! lol

  29. 74

    ping, assume for the sake of argument that the 1999 change in the 102(g), done for no apparently reason and without prior comment by anyone it appears, fundamentally changed US law on prior invention as prior art.

    Now, could Congress had really intended that?

    Obviously not, so we need emergency legislation to restore the statute to its prior state.

    But, I daresay, it is not only Congress that has a screw loose. There seems a consensus here that the Feds got this case wrong if the issue on appeal was as broadly stated as it was. But, harken back to our discussion of In re Giacomini. Virtually everyone there was flabbergasted that the Rader actually said that the patent defeating effect of the provisional was limited to the invention claimed in the issued patent, not to the subject matter disclosed.

    As I said at the time, if this nonsense were to spread to Section 120 and 121, the whole system of patent disclosures being as prior art as of their earliest effective filing date would collapse. Never before has the effective prior art dates been determined by whether the subject matter was also claimed. The Supreme Court held exactly the opposite in Milburn.

    The vice here is that Rader and his crew are deciding cases adverse to Supreme Court precedent. They can only do that for so long before they are once again slapped down. But they do it anyway, whick is the mark of narcissism.

  30. 71

    Damm those Feds, one would think they were created with a mandate to coalesce the disparate patent law out there.

    Oh wait… They were.

  31. 70

    THIS is the SECOND time this year the Feds have seemingly conflated priority and prior art. The other case is In re Giacomini.

    Most here on this forum refused to believe it then. But now THIS?

    Are the Feds off the reservation once again? One can think they just made a mistake here. But the other view is more chilling.

  32. 69

    Alas, somethings linger on and on. Like Maxie’s posts, long after he is asked to cease and desist. Pray tell why? Iza (za za za) don’t know why.

  33. 68

    Back in the days of yesteryear, and of the British Empire, English patent law included the concept (ridiculous in this day and age) of the “Communication Invention”. An intrepid Englishman, exploring the African or Asian hinterland, alights upon a patentable invention (say with the local Medicine Man is busy using an active principle in the bark of the Chinchinoba tree to enhance his tribal Chief’s performance in the marital bed). He would then “communicate” his invention to his equally intrepid patent attorney in Chancery Lane, whereupon that attorney would promptly secure for his client a valid UK patent, legitimately naming himself as inventor.

    The public policy objective of Communication Inventions is unremarkable. It is the fundamental one of any properly functioning patent system in a particular jurisdiction, namely the encouragement of dissemination to the public in that jurisdiction of enabling descriptions of valuable contributions to the useful arts.

    But, as we all know, the days of empire are a thing of the past.

  34. 67

    OK guys, quit trying to classy up the place with substantive discussions of law. You’re crowding out the regulars.

    (btw – nice job)

  35. 65

    See Breuer v. DeMarinis, 558 F.2d 22, 194 USPQ 308 (CCPA 1977). The compound was conceived abroad by the inventors and then tested for antibacterial activity in the U.S. by other employees of the assignee.

  36. 64

    I know of nothing that says that the reduction to practice has to be by the inventors. The inventor could hire someone else to build and test their invention, for example. I have not researched the point, but if the Honeywell repeated the experiment communicated to them by the Russians, that experiment evidences in the US that the invention has been reduced to practice.

  37. 63

    I think those experiments exhibited actual reduction in the United States of the invention of the Russians.

    If this is so, doesn’t this make the outcome in the present case correct? You can’t invent by reducing someone else’s conception to practice. The Russians did not reduce to practice in the US, so they did not invent in the US. Honeywell reduced the Russian’s foreign-made invention to practice in the United States, but they did not invent it. Am I still missing something?

  38. 61

    Sarah McPherson,
    Pay attention to where you’re typing, eh? Several of your completely-unrelated comments are showing up in this blog.

  39. 60

    Cy, the date of invention for all purposes and for everyone in the world is the date of actual or constructive reduction to practice. Foreign activities cannot be relied on for actual reduction to practice if outside of the US or (since Jan. 1, 1996) outside of a WTO country. Priority can be extended prior to the reduction to practice only in the case of a person who was first to conceive and last to reduce to practice by showing diligence from the opponent’s conception date to your date of reduction to practice.

    In the case in question, the Russians sent a report of the conception to Honeywell, establishing conception of the Russians’ invention and Honeywell repeated the experiments (not a working model). I think those experiments exhibited actual reduction in the United States of the invention of the Russians.

  40. 57

    Roger, my apoplogies – on review it appears that I’ve gotten off track.

    However, my understanding now is that for there to be invention in the United States, there must be reduction to practice. Disclosure to a patent attorney wouldn’t cut it. However, a foreign inventor who ultimately reduces his invention to practice in the US (either actually, or constructively) can rely on a date of disclosure in the US as a conception date, for the purposes of a priority contest. This makes the priority date and effective date for prior art different, doesn’t it?

    Back to the real case, the summary above says that there was a working model in the US, which suggests, as you said, that the Russians “invented” it in the US. I suppose the question then should have been whether they abandoned, suppressed, or concealed it, right?

  41. 56

    Mooney wrote: One would almost expect [102(g)(2)] to be a backup defense de rigeur.

    Besides being more complicated to explain and prove (showing conception, diligence, reduction to practice), I can’t think of another reason why it wouldn’t appear more often as the backup in litigation. It goes against litigators’ natural tendencies to turn down another opportunity to go digging.

  42. 55

    Wrong, Cy. 102(g) counts for priority and patentability. The effective dates are the same. That is why Chisum referred to “priority and patentability.”

  43. 54

    …he may rely upon the date of introduction as his date of invention for priority and patentability purposes.

    Nobody’s arguing otherwise. But Chisum is not talking about effective dates for prior art purposes. He’s talking about a right to priority. That’s a different thing.

    If the Russians had diligently pursued patent protection in the US, they would have been entitled (at least) to a priority date as of the date of introduction. If the Russians are allowed to join WTO, then this changes.

    The point is that provisions establishing priority dates do not mirror the provisions establishing effective dates for prior art.

    THAT’s hornbook law.

  44. 52

    the facts developed in this case show that the Solvay patent is invalid. Anyone else wanting to invalidate the patent could simply rely on the record of this case to invalidate it simply by stating the correct legal theory.

    Don’t hold your breath, Ned. ;)

  45. 51

    Ned, you may be right as to why Honeywell did not present the winning arguments. If they did it could have invalidated their own patent. Too bad. Bad facts make bad law.

  46. 50

    Roger, the Fed. Cir. has a obligation to affirm a case even if the legal theory presented by the applicant is misplaced. I haven’t investigated the entire case, but if Honeywell got into a problem here, it had to do with 102(f) and not disclosing the prior invention of the Russians to the PTO during the prosecution of its own patent applicaton. Cf, Oddz-On Products.

    Be that as it may, the facts developed in this case show that the Solvay patent is invalid. Anyone else wanting to invalidate the patent could simply rely on the record of this case to invalidate it simply by stating the correct legal theory.

    The Feds really need to rehear this case and get the result right.

  47. 49

    Ned, your reading of the case goes much too far, IMHO. It only says that if you didn’t invent it, you cannot have conceived it. That is fine. There must be originality to be an inventor. I think that if Honeywell had argued that the Russians were the first inventor, with a date of their conception in the US being the date of introduction, they would have won. In subsequent cases with similar subject matter, perhaps the correct arguments will be made.

  48. 48

    See Chisum, Section 10.03[3][c]”Domestic Introduction” and the cases cited therein:

    If a foreign inventor introduces the subject matter of his invention into the United States by an appropriate disclosure, such as a disclosure to a patent attorney, 33 or the sending of a disclosure, sample or embodiment for testing by a person in the United States, 34 he may rely upon the date of introduction as his date of invention for priority and patentability purposes. 35

    Hornbook law.

  49. 47

    Here is what you may want to take away from Solvay v. Honeywell:

    ======================
    Case issue:
    ======================
    Issue: 102(g)(2) prior inventorship to invalidate patent claims

    ======================
    Case proposition:
    ======================

    The CAFC held that the 102(g)(2) phrase “the invention was made in this country” to mean the act of inventing in the United States. The phrase “the invention was made in this country” does not mean the act of making the product/process of the invention in the United States and does not mean the act of possessing plus appreciating the invention in the United States. Also, the CAFC held that reproduction is not conception, and originality is inherent in conception. Since RSCAC invented in Russia, Honeywell merely reproduced the Russia-based invention in the United States rather than originate the invention, Honeywell did not conceive the invention and was not a 102(g)(2) prior inventor.

    ======================
    Case background facts
    ======================

    Solvay v. Honeywell, 2009-1161 (Fed. Cir. October 13, 2010)

    Solvays patent, having an October 23, 1995 priority, essentially was directed to a method to make non-ozone-depleting plastic blowing and insulation agents HFC-245fa used in refrigeration and heating storage systems by drawing off gases from the reaction mixture. Honeywell makes/made HFC-245fa in Geismar, Louisiana and claimed to be a 102(g)(2) prior inventor to invalidate Solvays patent. Honeywell claimed to be a 102(g)(2) prior inventor through July 1994 connections to and activities of AlliedSignal and the Russian Scientific Center for Applied Chemistry (RSCAC) and Honeywell’s own August 1995 (pre- October 23, 1995) activities. RSCAC’s HFC-245fa inventive activities were in Russia and Honeywell later duplicated those activities in the U.S. in August 1995.

  50. 46

    Do any of you geniuses gotta a day job?

    Look, it’s at least refreshing the poli-sci majors on the CAFC didn’t feel the need to try this sucker de novo. So what if they’ve screwed up again: more fuzziness, more billable hours….

    Is this is really a spy case: From Russia With What?

  51. 45

    Cy Nical, the report, the patent application, the inventor.

    I think it is self-evident that if an invention is reduced to practice in United States by another that there is prior invention in United States by another and it makes no difference where the original conception was made so long as it was communicated to Americans and the Americans reduced it to the practice.

    This case seems to try to assert that prior invention is a “personal defense” of the prior inventor. What this essentially means is that prior invention of another is not prior art. However this manifestly is ridiculous. Not only is prior invention prior art, and has been so since the founding of the Republic. The CCPA has further held that prior invention is not only prior art, the can be used in obviousness rejections.

    Simply put, the facts developed in this case demonstrate beyond a reasonable doubt that the invention was made in the United States prior to the priority date of the patent. Trying to determine “who” the inventor is, is chasing a red herring. The defense is available to all because the patent is invalid. It is not a personal defense available only to the inventor who files a patent application and engages in a priority contest.

  52. 44

    …it would throw into a cocked hat the whole theory that a patent application filed the United States by a foreign inventor is an effective date of invention in the United States.

    Perhaps because the theory is without merit? I’m sorry, Ned, I still don’t see where this comes from. Section 102 clearly comprehends a difference between filing an application and making an invention.

  53. 42

    Cy-Nical, I do not contend the READER is the inventor. I contend the WRITER or the person who told the writer is the inventor

  54. 41

    Cy Nical, quick, find me a case that says a patent application is not only a constructive reduction to practice but also evidence of conception of the invention. I think they exist.

    Fine, but that’s not the point. A patent application may be evidence of conception, but the preparing of the application is not the conception itself (even while it may be a constructive reduction to practice).

    If I properly understood your original comment, you are suggesting that if I read a description of your (foreign-made) invention then I have conceived of the invention. I’m more than a bit skeptical of that proposition. I’m also skeptical of Roger’s suggestion that your importation of this description into the US is conception in the US, by you.

    Quick, find me a case that supports either of those propositions.

  55. 40

    Actually if this Federal circuit case that any merit whatsoever, it would throw into a cocked hat the whole theory that a patent application filed the United States by a foreign inventor is an effective date of invention in the United States. The courts would say, henceforth, that while the filing of a patent application would be constructive reduction to practice, it is not evidence of conception of the invention in the United States – as the inventor himself invented outside United States.

    Obviously this is not correct.

    Also see In re Costello,717 F.2d 1346 (Fed. Cir. 1983) (an abandoned application is evidence of conception)

  56. 39

    Geesh, not only has Ned stopped doing his homework himself, he is acting very ping-like and asking others to do case citing that he would normally do.

    Ned, you must be getting full eating your words to me and just not have the stomach to case cite yourself.

  57. 38

    Cy Nical, quick, find me a case that says a patent application is not only a constructive reduction to practice but also evidence of conception of the invention. I think they exist.

  58. 36

    The directions themselves are the inventor’s conception in the US.

    … the date of [the Russians’] conception in the U.S. was the date that the Russians introduced their report into the United States.

    Is it just me, or do these strike others as odd conceptions of “conception”?

  59. 35

    I do not understand why Honeywell did not take the position that the prior invention was that of the Russians and that the date of their conception in the U.S. was the date that the Russians introduced their report into the United States. Honeywell’s repetition of the experiments were an actual reduction to practice in the United States of the Russians’ invention. There are many cases establishing conception in the United States of an invention made by foreigners abroad. If this were my law school examination question I would have suggested that Honeywell try to prove that Solvay were not the first inventors because the Russians were the first inventors and they introduced their invention into the United States before the critical date for Solvay.

  60. 34

    The CAFC opinion is absolutely consistent with the public policy behind the patent law: in return for disclosing an invention to the public, i.e., filing a patent application, if the patent issues, the patentee is entitled to exclude others. This is a classic trade-off between trade secrets and patents. The risk in keeping trade secrets is exactly as here: someone else will independetly invent and get a patent and then have the right to exclude the trade secret practitioner.

  61. 33

    So if I was going to sign the Foreign License Form the second time? Was that because they knew OED knew how much I was charged, and they were trying to make it half right? That I can not tell, but I think I am correct in my theory. But on October 20th the Mind Set is very easy to understand.
    Why else would they try to get me to sign it again. Maybe if you dig deep into the Notes and Files you may find this. FOIA won’t give me the time of day.

  62. 31

    Are we forgetting the Oath I signed. And was then told to tear up the sheet with my address and date, telling me it was a 250,000.00 Foreign Insurance form I surely couldn’t afford, and that he had amde a mistake. And hiring a Law Firm was the reason I believed what he told me. and did as he instructed. Isn’t that Fraud, Mens Rea, Malpratice etc.? And then come the following April DT tells me he needs me to sign the same thing I was told to tear up. and that is after umpteen Red flags. Oops, there go those Red Flags.

  63. 30

    Billy James,

    You will need more than that to contest your grade.

    Sure, I was being a bit colloquial when I said “same,” but clearly, anticipation is the “same” in the pertinent parts, is it not?

    You also fail to address the timing issue at all.

    The facts I supplied are hardly irrelevant, as they conform to your supposed answer. I guess that makes your answer equally irrelevant, does it not?

    Lastly, saying that “Perhaps anon said it better” is a clear indication that you did not say it well. Anon will undoubtedly get a better grade. Your grade remains D+. You are dismissed.

  64. 29

    Do the Russians not believe in writing anything down? Why did counsel not produce a written document (with appropriate translation, from anywhere in the world) from the earlier Russian work to defeat the Solvay patent?

  65. 27

    I didn’t read the case but what could Honeywell have done to avoid
    litigation other than what they did? Specifically, their problems could
    have been prevented had the Russians applied for patent protection
    in the U.S. or otherwise made their invention public. However,
    if Honeywell lacked
    power to force the Russians to apply for a patent or publicly disclose
    the invention, what could they have done to avoid litigation.
    The apparent choices seem to be to not use the invention at all, or to use the invention in secret as they did. I guess that based on this ruling
    one would advise them to not use the invention at all.

    Given that the purpose of the patent laws is to entice disclosure, one might argue that this ruling enforces the laws as they were intended. Namely, the inventors were rewarded for disclosing their invention.

  66. 26

    Eureka, You will also find in reading DOW no cited authority for the proposition that a prior reduction to practice by another in the US is not prior art if that other is following directions from an inventor located outside the US. The directions themselves are the inventor’s conception in the US.

  67. 25

    Eureka, yes indeed Dow Chemical is discussed, but it is not clear exactly what the AVI engineers did that was the so-called “improvement.” The district court, in Dow, had found that what the AVI engineers actually did was to follow the teachings of the Miyamoto patent. There was no discussion in the lower court of any improvement and it was never made clear in the Federal Circuit opinion exactly what the improvement was. There was a great deal discussion of the re-examination of the Dow patent over Miyamoto. The patent was confirmed, implying that the Dow patent was not anticipated by Miyamoto. But the lower court made no findings to that effect. Indeed it is entirely unclear exactly what it is the AVI engineers did that was not taught by the Miyamoto process. What seems to have influenced the Federal Circuit the most was the accusation of infringement by Dow of a process reduced to practice prior to the invention date of the Dow patent. The Court there stated that that-which-infringes, if earlier, anticipates. Everything else it said in that opinion seems to be based upon manufactured facts not found by the District Court.

    So Eureka, please feel free to read the Dow Chemical case and tell me exactly what it was that the AVI engineers did that was not taught by the Miyamoto patent.

  68. 24

    anon For sure, Malcolm.

    I think the hesitancy to wade into the pool is that 102(g)(2) is not exactly an easy thing to explain to juries, or judges for that matter. So you typically only see it when a defendant hasn’t found a publication-based 102/103 theory and is desperate for something to use.

    It requires more digging than the typical 102/103 publication strategy to make it sing. But in a fair amount of cases the prior art *is* domestic in origin and it seems that 102(g)(2) art should therefore exist implicitly. One would almost expect it to be a backup defense de rigeur.

  69. 23

    “Supreme Court decisions from last term”

    trick, in fairness, if you go back a couple more terms, the Court found corporations lacked the same capacity for intent intent as humans (Ledbetter). But yeah, just as their fecund corporate minds deserve unmitigated free speech, they can surely invent.

  70. 22

    Ned: the opinion discusses Dow Chemical at great lengths, and distinguishes Dow factually (same corporate inventor in Dow, different corporate inventor / infringer here). Based on your comments, I would have guessed that you unearthed an overlooked case with no identified factual distinctions. But reading the opinion here, I think Dennis already did a good job teasing out the corporate remaining identity issue in this case. Am I missing some other subtle brilliant point?

  71. 21

    or talk

    billy G, you may want to review the Supreme Court decisions from last term.

  72. 20

    the patent law should NEVER allow a corporate entity to be the inventor but only the owner/holder/beneficiary of a patent.

    how does a fictional legal entity which does not think, sleep, drink, walk or talk invent things?? -_-

  73. 19

    Ned:

    Sounds like you have a good topic for a short article, comparing the Dow Chemical case with the present Solvay case.

  74. 18

    Ugh! The Feds have done it again. This case seems all fours with Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001), but the holding there was the opposite.

    There the US company made the process according to a US patent of a Japanese Company. That process was held to be effective 102(g) prior art despite the fact that all the US inventors were doing was following the instructions in the patent. They invented nothing.

    BTW, this is he case which allegedly decided that “another” == “another inventor.” It did so without citation to authority, but merely on the representation that “everybody knew” that “another” had to mean “another inventor.”

    Wow! Such i d i o c y. OMFG.

  75. 17

    Prof,

    I didn’t say it was the same, I said it was different… but still anticipating. That is, including each and every element of Solvay’s claims. Honeywell’s activities after the priority date (including inventing something else and filing an app) are irrelevant.

    Perhaps anon said it better, Honeywell invented A-B-C-D before the priority date of Solvay’s patent. Isn’t this 102(g) art for A-B-C? If not, explain why not.

  76. 16

    This is why I’m glad to see litigants wading into the 102(g)(2) pool. There’s a lot of room for fun to be had.

    For sure, Malcolm.

    I think the hesitancy to wade into the pool is that 102(g)(2) is not exactly an easy thing to explain to juries, or judges for that matter. So you typically only see it when a defendant hasn’t found a publication-based 102/103 theory and is desperate for something to use.

  77. 15

    Still unfortunate 102(a) can’t kill this with the “the invention was known or used by others in this country” language.

  78. 14

    Clerk, no.

    I think that if the invention was “made” by another in the context of prior art and not in a contest of rival applicants for a patent it is entirely irrelevant if the other was an inventor or not.

    The effect of adding “inventor” to “another” obviously was intended to substantively change the law so that prior users who derived the invention from someone else could not set up their prior use as prior invention under 102(g).

    But this amendment only had an effect going forward. The prior statute still applied to inventions made prior to the effective date of the 1999 Act (May 29, 2000).

  79. 13

    This is why I’m glad to see litigants wading into the 102(g)(2) pool. There’s a lot of room for fun to be had.

  80. 12

    Ned, don’t you think the words “the invention was made by another” can be fairly interpreted as “the thing was invented by another inventor”? That is, doesn’t the statute before 1999 still potentially require “another inventor”? The pre-1999 statute could easily have instead said “the invented article or method was made or practice by another” to cover this situation.

  81. 11

    Just checked, the provision amending 102(g) is 706. It did not state an effective date, as did most other sections. Therefore it has no retroactive effect.

    I recall a Supreme Court case that used a prior reduction to practice by another as prior art. I daresay, since a patent was not involved there, the issue of whether the other was entitled to a patent was completely irrelevant.

    It is obvious to me that the present case was wrongly decided and in conflict with controlling Supreme Court authority if my memory is correct.

  82. 10

    I thought the same thing as BillyJames. So what if, before the asserted patent’s inventors invented their invention, Honeywell actually conceived a species/improvement over what was claimed in the asserted patent (e.g., they invented A-B-C-D and the asserted patent claimed A-B-C) and Honeywell diligently reduced the species/improvement to practice?

    Couldn’t it be an anticipating species under 102(g)(2)?

  83. 9

    …but if my inventor discloses to a potential investor without at least an implied NDA in place, that counts as 102(a)art, no matter how well the potential investor keeps the secret.

    Are you sure?

  84. 8

    If Honeywell is not an inventor, then why does Honeywell’s knowledge and use of the invention not count as knowledge or use by others? I know that Courts require that it be public, but if my inventor discloses to a potential investor without at least an implied NDA in place, that counts as 102(a)art, no matter how well the potential investor keeps the secret. Was Honeywell’s knowledge subject to an NDA?

  85. 7

    The statute used to read “another,” not “another inventor.” The change was made in 1999. The Feds said they construed the two terms to have the same meaning, but I am not so sure if this was right.

    But it does go to show just how meddling with a statute can have unforeseen consequences. “Another inventor” requires the reducer to practice to be an inventor, which implies originality and conception. Thus the result in this case.

    But the patent was filed under the former law and was arguably invalid under that law as statutes normally have no retroactive effect. I don’t know if the amendment to 102(g) had a retroactive effect.

    My two cents, fix 102(g) by removing “inventor” from “another inventor.” FUBAR. Down with do gooders who gratuitously amend statutes to “clarify” them. That should never have been done in this case.

  86. 6

    This ruling, based on ridiculous past interpretations of –known by others– to mean publicly known by others, is just as ridiculous as the Bilski ruling, which is itself based on ridiculous earlier rulings that the word process means something narrower than the plane meaning of the word process.

  87. 5

    I’ve always wondered if this protectionist feature of US patent law was constitutional since the constitution only purports to “secure” for “Inventors” exclusive rights. I doubt that there is any ordinary definition of inventors that would exclude FOREIGN inventors.

  88. 4

    Glad to see some more discussion of 102(g)(2) by the Federal Circuit.

    Still waiting for a juicy case that gets into the details of how 102(g)(2) “art” can be used in the context of a validity challenge under 103. For example, let’s say the Russian inventor had conceived of 4 out of 5 elements of the invention in the US, but had returned to Russia to conceive and reduce the final bit (all before the subsequent conception by the patentee). My understanding of the case law is that you could use the 4/5 bit in an obviousness challenge. Weird, ain’t it?

  89. 3

    I would have thought 102(f) might apply here. Although the MPEP discusses derivation, which does not appear to be relevant to the facts here.

    Interesting how this patent can be attributed to the “unless” phrase of 102.

  90. 2

    BillyJames,

    Honeywell did in fact invent an improvement of the method, filed an application, and received a separate patent.

    However, you assumed both that the improvement patent would be the same as the asserted patent (not true), and that the date of the invention of the improvement patent would be prior art to the asserted patent (not true). – honeywell filed an application on July 3, 1996, which eventually issued as U.S. Patent No. 5,763,706.

    Careless assumptions earn you a grade of D+.

  91. 1

    Were this a law exam… I’d’ve argued that Honeywell’s scientists did not invent the method of Solvay’s patent, but rather, an improvement or varient, say, the method of Solvay’s patent characterized by using the Acme Defluorinator 3000. This is now 102(g) art, which anticipates the method without using the Acme Defluorinator 3000. Problem solved.

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