By Elise Young – Edited by Geng Chen
Solvay S.A. v. Honeywell Int’l Inc., No. 12-1660 (Fed. Cir. Feb. 12, 2014)
The Federal Circuit affirmed the ruling of the United States District Court for the District of Delaware that one claim in Solvay S.A.’s (“Solvay”) patent was invalid because actions taken by Honeywell International, Inc. (“Honeywell”) qualified as prior art.
The Federal Circuit affirmed the district court’s ruling, despite conception of the invention in Russia, because Honeywell had reduced the invention to practice in the United States. Solvay, slip op. at 2. Under pre-America Invents Act law, foreign invention and reduction to practice would not invalidate a patent as prior art. Id. at 3. However, if the invention was “made in [the United States],” then it could qualify as prior art. Id. In so holding, the court clarified that the inurement doctrine — which, if applied in this case to Honeywell’s activity, would set the timing of prior art to the date that the Russian invention was reduced to practice in the United States — did not require an explicit order to reduce the invention to practice, but rather, could be implicit in an agreement. Id. at 16.
The Patent Law Practice Center provides an overview of the case.
Solvay patented an improvement on the method for making a hydroflourocarbon, HFC-245fa, used primarily in preparing insulation materials. Id. at 4–5. A year before Solvay’s priority date, Honeywell and Russian engineers entered into a research contract for the development of a substantially similar method. Id. at 5. Honeywell personell in the United States ran that process before the priority date. Id. After Solvay sued for infringement, Honeywell argued that, because it had reduced the method to practice in the United States prior to Solvay’s application, Honeywell’s engineers were inventors under § 102(g)(2) (note that § 102(g) was removed via the America Invents Act), and thus independent claim one, the only one at issue on appeal, was invalid. Id. at 5–6.
The key point of contention was whether the activities of Honeywell could inure to the Russian engineers. Id. at 8–9, 14. If inurement did not apply, then Honeywell’s reduction to practice prior to the patent’s priority date could not be attributed to the Russian inventors and Solvay’s patent would be valid. Id. at 8. Significantly, the court determined that the inurement doctrine — “defining when the activities of others inure to the benefit of the inventor” — does not require that the inventor, in this case the Russian engineers, direct the non-inventor to reduce the invention to practice. Id. at 14. The court emphasized that “inurement exists if the inventor authorizes another to reduce this invention to practice.” Id. at 16 (emphasis added). It cited a number of cases where an inventor’s idea was reduced to practice seemingly with his implied authorization but absent any express request, involvement, or at times, even his knowledge. Id. at 14–16. Thus, the court found that the research agreement between Honeywell and the Russian engineers was sufficient to establish inurement, thus cementing reduction to practice prior to Solvay’s application, invalidating the first claim of the patent. Id. at 17.
Judge Newman criticized the holding in his dissent, stating that the court was creating “a new class of secret prior art . . . .” Id. at 1 (Newman, J., dissenting). Newman emphasized that the Russian invention was disclosed in an unpublished application and that Honeywell had only tested the invention. He criticized the majority’s reliance on inurement doctrine, pointing out that inurement is limited to interference contests, where a foreign inventor receives the benefit of a earlier reduction to practice on his behalf in the United States in establishing his priority date. Inurement, however, “has no relation to whether that activity is prior art against the world.” Id. at 6 (emphasis added). Recognizing Honeywell’s activity as prior art “contravenes the policy and the letter of patent law,” id. at 1, and “[i]t is as unnecessary as it is inappropriate to so enlarge the scope of secret prior art,” id. at 8–9.