On October 13, 2010 the CAFC reversed a district court’s judgment that Solvay’s patent claims were invalid due to prior invention. The Solvay patent covered methods of making a chemical. Honeywell made the chemical in the US before the priority date of the Solvay patent, using a process invented by an entity in Russia with which Honeywell had entered into a research contract. It was undisputed that the process invented by the Russian team corresponded to the Solvay patent. Honeywell asserted the Solvay patent was invalid under 35 U.S.C. §102(g)(2) because Honeywell was a prior inventor in the US. The CAFC concluded that Honeywell could not be “another inventor” for purposes of §102(g)(2) because it only reproduced the Russian team’s work and did not conceive of the invention itself.

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November 2010
Alex ChartovePresented By

2. 2This is MoFo
1. In a process for the preparation of [HFC-245fa]
comprising reaction of [HCC-240fa] with [HF] in
the presence of a hydrofluorination catalyst, the
improvement which comprises carrying out the
reaction at a temperature and under a pressure
at which [HFC-245fa] is gaseous and isolating
and [sic] [HFC-245fa] from the reaction mixture
by drawing off [HFC-245fa] and [HCl] in a
gaseous phase as each of said [HFC-245fa] and
[HCl] is being formed.

3. 3This is MoFo
1994
•RSCAC and alleged infringer enter research contract
•RSCAC conceives and reduces invention to practice in Russia
•RSCAC sends report documenting methods and results to alleged
infringer in US
early 1995
•alleged infringer uses RSCAC information to replicate invention in US
October 1995
•patentee files application (in France)
1996
•alleged infringer files US application for improvement invention

4. 4This is MoFo
A person shall be entitled to a patent unless . . .
(g)(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.

5. 5This is MoFo
•patentee sues
•on SJ, district court holds claims infringed
but invalid under 102(g)(2) because alleged
infringer made invention in US before
October 1995
•patentee appeals to CAFC

6. 6This is MoFo
ALLEGED INFRINGER’S ARGUMENT
•RSCAC performed claimed process in Russia
•RSCAC transmitted to alleged infringer in US complete
instructions for claimed process
•alleged infringer performed claimed process in US before
priority date
•“invention was made in this country” by alleged infringer
before priority date
•alleged infringer is “another inventor” under 102(g)(2)
•purpose of 102(g)(2) is to grant patent to first inventor
•patentee was not first to make invention in US

7. 7This is MoFo
•alleged infringer did not invent claimed
process but derived claimed process from
RSCAC, who invented process in Russia
•alleged infringer is not “another inventor”
under 102(g)(2) because alleged infringer
is not an “inventor”

8. 8This is MoFo
•“the invention was made in this country”
means the act of inventing in the US, not
the act of making in the US
•102(g)(2) prior inventorship is not
established merely by showing that
invention was reduced to practice in the US
by someone other than patentee

9. 9This is MoFo
•the formation, in the mind of the inventor, of a definite and
permanent idea of the complete and operative invention
•conception must be an original idea of the inventor
•conception reproduction or derivation
•102(g)(2) resolves priority disputes between independent,
original inventors
•102(g)(2) does not address derivation
•alleged infringer did not conceive invention and
consequently is not an inventor

10. 10This is MoFo
•alleged infringer’s US patent for improved
process is immaterial
•invention at issue is invention claimed in
patentee’s patent, not invention claimed in
alleged infringer’s patent
•critical point is that alleged infringer did not
conceive invention in patentee’s patent, but
derived it from RSCAC

11. 11This is MoFo
alleged infringer:
•it contradicts purpose of 102(g)(2) to award patent to
patentee for subject matter that patentee was not first to
invent
CAFC:
•issue is not whether patentee was first to invent
•issue is whether alleged infringer established that
invention was conceived and reduced to practice by
“another inventor” in US before patentee
•uncontested facts show alleged infringer failed to
establish 102(g)(2) defense

12. 12This is MoFo
•alleged infringer did not conceive invention at
issue and therefore is not “another inventor”
under 102(g)(2)
CAFC:
•reverses ruling that claims are invalid under
102(g)(2)
•affirms ruling that claims are infringed
•remands case to district court

13. 13This is MoFo
In hindsight, how could alleged infringer win?
•use US research company?
•have one co-inventor in US?
•file promptly in 1994?
•assert invalidity under 102(a)?
Is decision consistent with current globalization
and outsourcing?