First Invented in a Foreign Country and Later “Invented” Again “in this Country:” Solvay v. Honeywell on 35 U.S.C. 102(g)(2)

In the recent Solvay v. Honeywell (PDF) decision, the Federal Circuit dealt with the issue of who qualifies as a prior inventor for the purpose of 35 U.S.C. § 102(g)(2).  In particular, this case concerns an invention that was invented in Russia but later duplicated in the United States (“U.S.”).  One key invalidity inquiry here is whether an invention first invented in a foreign country and then later duplicated in the U.S. qualifies as § 102(g)(2) prior art on the date of duplication (or re-invention) in the United States.

Fact Summary

Solvay sued Honeywell for infringement of Solvay’s U.S. Patent No. 6,730,817 (“the ’817 patent”).  The patent claims methods of making non-ozone depleting fluorinated hydrocarbons.  Compounds derived from the claimed methods are used as blowing agents for polymers such as expanded foam insulation.  These compounds are valuable because the Montreal Protocol (PDF) on alleviating the ozone-hole problem required phase-out of all ozone depleting chloro-fluoro-hydrocarbons (CFCs) from the marketplace.

Leaving aside the infringement arguments in this discussion, Honeywell argued that some of the asserted claims in the ’817 patent are invalid for anticipation under 35 U.S.C. § 102(g)(2).  Priority date of Solvay’s ’817 patent is October 23, 1995.  According to Honeywell, Allied Signal (Honeywell’s predecessor) made the claimed invention before Solvay’s priority date.  The controversy over Allied Signal’s alleged invention date stems from Honeywell’s assertion that the invention was first made in Russia in 1994 under a research contract, and later duplicated in the U.S. in 1995 by Allied Signal.

35 U.S.C. § 102(g)(2) states that

[a] person shall be entitled to a patent unless . . . 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]

Discussion

Solvay argued at the district court that “mere reproduction” of a foreign invention does not make the U.S. reproducer the inventor in the U.S.  The district court refused to read an “originality” requirement into § 102(g)(2).[1] Therefore, the court ruled that Allied Signal became the U.S. inventor at the moment it received sufficient instructions from the Russian inventors to reproduce the invention in the U.S.

The Federal Circuit reversed, holding that reproduction of a previously conceived invention does not qualify as invention.  Without reading the originality requirement of 35 U.S.C. § 102(f) into § 102(g)(2), Judge Schall wrote that “originality is, nevertheless, inherent to the notion of conception.”  And presumably, conception is an integral part of every invention.  Therefore because Allied Signal merely reproduced what the Russians invented, allied Signal did not invent “in this country,” and so Allied Signal’s activities in early-mid 1995 in the U.S. do not qualify as 102(g)(2) prior art.

This decision in Solvay seems contrary to the Federal Circuit’s prior decision in Dow Chemical v. Astro-Valcour, 267 F.3d 1334 (Fed. Cir. 2001).  In Dow, the defendant Astro-Valcour licensed a Japanese invention and reproduced it in the U.S.  Astro-Valcour argued that Dow’s patent was invalid because Astro-Valcour’s reproduction of and improvement to the Japanese invention constituted an “invention” event in the U.S.  The Federal Circuit agreed, holding that Astro-Valcour “recognized and appreciated” the imported Japanese invention by putting it into practice, and therefore the Astro-Valcour engineers qualified as prior inventors under § 102(g)(2).

If one substitutes Russia for Japan, and Honeywell for Astro-Valcour, the two cases seem eerily similar on the § 102(g)(2) issue.  In both cases, the U.S. reproducers of foreign inventions are defendants, claiming that they should qualify as U.S. inventors.  But just how much “inventing” in this country is necessary to qualify as an “invention in this country” under § 102(g)(2)?  The Federal Circuit leaves this question unanswered.

But the Federal Circuit emphasized that Dow is still good law and distinguished Solvay from Dow on the basis that Dow merely “held that . . .  an individual can have conceived the invention, and be an inventor, even though he did not appreciate what he had invented.”  Based on this holding, the Federal Circuit distinguished the facts in Dow from Solvay, and found that in Dow, the defendant Astro-Valcour indeed “conceived” the pertinent invention in the U.S. where as in Solvay, the defendant Honeywell did not “conceive the invention.”

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[1] Solvay’s originality requirement argument comes from 35 U.S.C. 102(f), which provides that a person shall be entitled to a patent unless he did not invent the subject matter sought to be patented.” [emphasis added]

Cite as: Robert Yeh, First Invented in a Foreign Country and Later “Invented” Again “in this Country:” Solvay v. Honeywell on 35 U.S.C. 102(g)(2), Berkeley Tech. L.J. Bolt (November 12, 2010), http://btlj.org/?p=483.
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