Inurement for 102(g)(2) Does Not Require the Inventor to Expressly Direct Another to Reduce His Invention to Practice

Solvay, S.A. v. Honeywell Int'l, Inc., ___ F.3d ___ (Fed. Cir. Feb. 12, 2014) (DYK, Rader, Newman (dissenting)) (D. Del.: Robinson) (2 of 5 stars)

Fed Cir affirms the denial of Solvay's motion for judgment as matter of law of no anticipation and no obviousness. An overseas inventor of the invalidating prior art reference entered into a research agreement with Honeywell in the U.S. authorizing Honeywell to practice the prior art in the United States. Solvay argued that an invention conceived overseas and reduced to practice in the United States does not qualify as prior art under 102(g)(2) unless the inventor expressly directed or requested the reduction to practice in the U.S. Based on existing case law, the Fed Cir held that the reduction to practice of another inures to the inventor if the inventor authorized, even if it is implicit, the reduction to practice; "an express request or direction is not required." Slip op. at 14. The Fed Cir also held that based on existing case law, the reduction to practice by a third party inures to the benefit of the inventor even when the third party independently benefits from its activities. The Fed Cir specifically noted that "the mere filing of a related patent application [by the third party] does not preclude inurement." Id. at 17. As part of the opinion, the Fed Cir affirmed the district court's claim construction and further held Appellant waived its right to argue claim construction because it never requested the district court to modify its claim construction or accompanying jury instructions.

In dissent, Judge Newman argued that the U.S. activities should be considered testing activities and not reduction to practice because the inventor of the prior art did not file a U.S. Patent Application, and the prior art was separately conceived and reduced to practice overseas.