The following post comes from Scott Daniels, partner at Westerman,Hattori, Daniels & Adrian, LLP and Practice Center Contributor.
This Wednesday the CAFC held in Solvay v. Honeywell that Honeywell’s activities in the United States did not constitute prior art under 35 U.S.C. § 102(g)(2) against Solvay’s U.S. Patent No. 6,730,817. The CAFC therefore reversed the trial court’s summary judgment that the patent was rendered invalid by Honeywell’s activities. Solvay’s ‘817 patent claims a method for making hydrofluorocarbons (HFCs) that are used in refrigeration and aerosol systems, as environmentally-friendly alternatives to chlorofluorocarbons (CFCs).
Paragraph (g) is the so-called “interference provision” of Section 102, but it also defines prior art that may be used in infringement actions, as in the present Solvay case. Section 102(g)(2) provides in relevant part that a person is entitled to a patent if “before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it” (emphasis added). The issue for the CAFC was whether Honeywell was “another inventor,” i.e., had it invented the claimed process. The CAFC said no.
Thankfully, the facts were not in dispute. In 1994, before the priority date of the ‘817 patent, Honeywell received a report from a business partner in Russia containing instructions for making HFCs. Those instructions defined a process including each of the limitations recited in the ‘817 claims. Honeywell then replicated that disclosed process in the United States to make HFCs.
The trial judge found that Honeywell was “another inventor” because it had conceived the claimed process: “Honeywell possessed a definite and permanent idea of the complete and operative invention, such that it appreciated the fact of the invention.” Accordingly, she held that Honeywell’s activities invalidated the ‘817 claims. Section 102(g)(2), the trial judge explained, “contemplates multiple conceptions, as long as each inventor ‘appreciates’ his invention.”
On appeal the CAFC framed the question as whether “Honeywell conceived of the invention at issue and reduced it to practice in the United States, such that Honeywell is ‘another inventor’ of the process claimed in the ‘817 patent under § 102(g)(2).” The CAFC found that “conception” requires, not merely possession of the idea of the invention, but creation of that idea. The definition of conception refers to the formation of an idea in the mind of an inventor, and thereby “necessitates that the conception of an invention be an original idea of the inventor” (emphasis added).
Here, “Honeywell did not have, or formulate, a definite and permanent ‘idea’ of its own capable of being reduced to practice.” Rather, it derived the idea of the claimed process from its Russian partner because it “simply followed another’s instructions to reproduce [another] person’s prior conceived invention” and thus could not be an “inventor.”
We of course appreciate the CAFC’s clarification of what “inventorship” means. But quite frankly, we are surprised that clarification was needed.
Incidentally, we reported Wednesday that another HFC patent (USP 7,524,805) is the subject of Inter partes Reexamination 95/000,574. That patent is owned by Honeywell.