Appeal from the United States District Court for the District of Delaware in No. 06-CV-0557, Judge Sue L. Robinson.
ADAM L. PERLMAN, Williams & Connolly LLP, of Washington, DC, argued for plaintiff-appellant. On the brief were GLENN J. PFADENHAUER, STANLEY E. FISHER, KRISTIN A. FEELEY, and CHRISTOPHER C. KENNEDY.
GREGG F. LOCASCIO, Kirkland & Ellis LLP, of Washington, DC, argued for defendant-appellee. With him on the brief were J. JOHN LEE, WILLIAM H. BURGESS and ANDERS P. FJELLSTEDT. Of counsel was LAURA BURSON, of Los Angeles, California.
Before RADER, Chief Judge, NEWMAN, and DYK, Circuit Judges. OPINION filed by Circuit Judge DYK. Dissenting opinion filed by Circuit Judge NEWMAN.
Dyk, Circuit Judge.
Plaintiff Solvay S.A. (" Solvay" ) appeals from a judgment of the United States District Court for the District of Delaware in favor of defendant Honeywell International (" Honeywell" ). The district court held that asserted claim 1 of Solvay's U.S. Patent No. 6,730,817 (" the '817 patent" ) was invalid under 35 U.S.C. § 102(g)(2) (2006). This was so because engineers working at the Russian Scientific Center for Applied Chemistry (" RSCAC" ) first conceived the invention, which was reduced to practice in this country by Honeywell personnel pursuant to the RSCAC's instructions, and did not abandon, suppress, or conceal it.
The question at the heart of this appeal is when an invention conceived by a foreign inventor and reduced to practice in the United States qualifies as prior art
under § 102(g)(2). That section provides, " [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." 35 U.S.C. § 102(g)(2). Although section 102(g) initially was designed for determining priority of invention in interference proceedings, it is settled that the section has " independent significance as a basis for prior art outside of the interference context." Thomson, S.A. v. Quixote Corp., 166 F.3d 1172, 1175 n.3 (Fed. Cir. 1999); see also Solvay v. Honeywell (" Solvay I" ), 622 F.3d 1367, 1375-76 (Fed Cir. 2010). A patent is invalid under that section if the claimed invention was made in this country by another inventor before the patent's priority date. See, e.g., Solvay I, 622 F.3d at 1375 n.3 (describing 1999 amendments to § 102(g)). Making the invention requires conception and reduction to practice. While conception is the " formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention," reduction to practice " requires that the claimed invention work for its intended purpose." Id. at 1376 (citing Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986)). It is also necessary that the invention not be suppressed, abandoned, or concealed. See, e.g., Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1036 (Fed. Cir. 2001).
Our prior cases have illuminated what is meant by " made in this country." See, e.g., Solvay I, 622 F.3d at 1376 (citing Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1331 (Fed. Cir. 2001); Apotex, 254 F.3d at 1036). Although the inventors may reside in a foreign country and conceive the invention abroad, a reduction to practice made outside the United States is beyond the scope of § 102(g)(2) prior art. In other words, § 102(g)(2) allows conception to occur in another country, but in such circumstances requires the work constituting the reduction to practice to be performed in the United States by or on behalf of the inventor. However, " there is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf" in the United States. In re De Baun, 687 F.2d 459, 463 (CCPA 1982) (citing Litchfield v. Eigen, 535 F.2d 72, 76 (CCPA 1976)). Consistent with that principle, " [a]cts by others working explicitly or implicitly at the inventor's request will inure to his benefit." 3A Donald S. Chisum, Chisum on Patents § 10.06.
Here, Honeywell contends that the invention was conceived by Russian inventors outside the United States and reduced to practice in the United States by Honeywell
personnel following the Russian inventors' instructions before the '817 patent's priority date. It follows, argues Honeywell, that the invention qualifies as § 102(g)(2) prior art.
Solvay's '817 patent claims an improvement to a method of making a hydrofluorocarbon (" HFC" ) known as HFC-245fa. '817 patent col. 1 ll. 4-5. HFC-245fa belongs to a group of HFCs that do not deplete the ozone layer and for that reason, are legislatively mandated to replace ozone-depleting alternatives. HFC-245fa is especially useful in preparing polymeric materials commonly used for insulation in refrigeration and heat storage systems. The '817 patent has a priority date of October 23, 1995.
In 1994, before Solvay's priority date, Honeywell and RSCAC personnel entered into a research contract. Pursuant to that agreement, RSCAC engineers, working in Russia, conducted process development studies for the commercial production of HFC-245fa. In July 1994, the RSCAC sent Honeywell a report documenting the development of a continuous process capable of producing high yields of HFC-245fa by reacting HCC-240fa with hydrogen fluoride in the presence of a catalyst. Honeywell personnel in the United States used the RSCAC's report to run the same process in this country in 1995, before the '817 patent's October priority date.
Solvay sued Honeywell in the District of Delaware, alleging that the process Honeywell was using to manufacture HFC-245fa infringed certain claims of the '817 patent. Independent claim 1, the only claim at issue on appeal, reads:
In a process for the preparation of [HFC-245fa] comprising reaction of [HCC-240fa] with hydrogen fluoride 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... [HFC-245fa] from the reaction mixture by drawing off [HFC-245fa] and hydrogen chloride [HCl] in a gaseous phase as each of said [HFC-245fa] and [HCl] is being formed.
'817 patent, col. 5 ll. 36-46.
Honeywell defended, inter alia, on the ground that independent claim 1 and dependent claims 5, 7, 10, and 11 of the '817 patent were invalid under § 102(g)(2). Honeywell's initial theory was that its engineers had reduced the invention to practice in the United States and that this made the Honeywell engineers inventors under § 102(g)(2).
In 2008, the district court construed the " isolating" limitation in claim 1 to read:
The process for making HFC-245fa includes a reaction at a temperature and under a pressure whereby HFC-245fa and HCl are produced in gaseous form and separated from the reaction mixture in a gas stream that can include other compounds, such as unconverted reactants and chlorofluoropropanes possibly formed by incomplete fluorination of HCC-240fa.
J.A. 4 (emphasis added). The district court thus construed " isolating" to require " separating" HFC-245fa and HCl from the reaction mixture. Id. It did not require separating only those components from the reactor. Id. Based on that claim construction, the district court ruled on summary judgment that Honeywell's process infringed claims 1, 5-7, 10, and 11. However, the district court granted summary judgment of invalidity as to claims 1, 5, 7, 10, and 11 under § 102(g)(2) on the ground that the Honeywell engineers were other inventors who made the invention in this country without abandoning, suppressing, or concealing it.
The district court's judgment was appealed to this court. On appeal, we agreed with the district court's claim construction of the term " isolating" in claim 1, explaining that " claim 1 is not limited to 'isolating' only HFC-245fa and HCl and residual amounts of other compounds." Solvay I, 622 F.3d at 1382. We affirmed the district court's ruling on summary judgment that claims 1, 5, 7, 10, and 11 were infringed. However, we reversed the finding that claims 1, 5, 7, 10, and 11 were invalid under § 102(g)(2), explaining that Honeywell personnel could not qualify as " another inventor" because they " did not conceive the invention of the '817 patent, but derived it from others," specifically, the RSCAC engineers who " first conceived the invention in Russia." Id. at 1378-79.
On remand, Honeywell asserted an alternative theory as to why § 102(g)(2) applied, arguing that the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who used the instructions to reduce the invention to practice in this country. The parties did not dispute the fact that, under the district court's claim construction, the RSCAC process corresponded to the invention recited in claim 1 of the '817 patent or that the RSCAC engineers first conceived the invention and reduced it to practice in Russia. But the parties disputed whether (1) the Honeywell reduction to practice should be attributed to the Russian inventors and (2) whether the Russian inventors had disclosed the invention rather than abandoning, suppressing, or concealing it. Although the district court held that, as a matter of law, the RSCAC engineers should be treated as inventors who made the invention in the United States under § 102(g)(2), it denied summary judgment on the invalidity of claim 1 because of genuine issues of material fact as to whether the RSCAC engineers disclosed their invention in a 1994 Russian patent application rather than abandoning, suppressing, or concealing it.
Eventually, a jury determined that, as required by § 102(g)(2), the RSCAC did disclose the invention of claim 1 in the 1994 Russian patent application such that they did not abandon, suppress, or conceal it. Based on the jury verdict, the district court entered judgment for Honeywell, finding asserted claim 1 invalid under § 102(g)(2). Solvay appealed. We have
jurisdiction pursuant to 28 U.S.C. § ...