Strong dissent by Judge Newman in Solvay v. Honeywell: The new general rule here adopted contravenes the policy and the letter of patent law
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)
The position of appellee-Honeywell
Here, Honeywell contends that the invention was con- ceived 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.
The priority date for Solvay’s ’817 patent is October 23, 1995. The parties do not dispute that if the Russians conceived the invention and reduced it to practice in this country before that date without abandoning, suppress- ing, or concealing it, claim 1 of Solvay’s ’817 patent is invalid under § 102(g)(2).
The general rule is that “an appellate court does not give consideration to issues not raised below.” Hormel v. Helvering, 312 U.S. 552, 556 (1941); see also Singleton v. Wulff, 428 U.S. 106, 120 (1976). The doctrine of waiver “has been applied to preclude a party from adopting a new claim construction position on appeal.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1346 (Fed. Cir. 2001). A claim construction argument is consid- ered “new” if a party “change[s] the scope of the claim construction” rather than “clarifying or defending the original scope of its claim construction” or “supporting its existing claim construction position with new citations to the specification.” Id.
Assuming that the inurement doctrine governs, inurement does not require that the inventor expressly request or direct the non-inventor to perform reductive work. To be sure, no inurement can arise from a third party’s “unwarranted and hostile use” of another’s inven- tion, Burgess v. Wetmore, 1879 Dec. Comm’r Pat. 237, 240 (no inurement of reduction to practice built by rival applicant), but an express request or direction is not required. (...)
Rather, inurement exists if the inventor authorizes another to reduce his invention to practice. Here, the research agreement between the RSCAC and Honeywell confirms that the RSCAC authorized Honeywell to prac- tice its invention in the United States and contemplated that Honeywell would do so. (...)
We therefore agree with the district court that the process invented by the Russian engineers was made in this country when Honeywell successfully performed the process because the Russians authorized Honeywell personnel to practice the invention and specifically con- templated that they would do so.
Note footnote 11:
The dissent argues that the majority is improperly incorporating concepts from interferences into the in- fringement context, and is allowing “secret prior art” to invalidate a patent. Dissent at 1–3, 8–9. The dissent is incorrect. We have repeatedly held that prior invention by another is a defense to infringement. See, e.g., Checkpoint Sys., Inc. v. U.S. Int’l Trade Comm’n, 54 F.3d 756, 761–62 (Fed. Cir. 1995) (“However, § 102(g) is applicable in other contexts as well, such as when it is asserted as a basis for invalidating a patent in defense to an infringement suit.”)
Judge Newman's dissent begins:
The court today creates a new class of secret prior art, holding that a privately performed experiment, without publication or public knowledge or use or sale or inclusion in a United States patent application, is invalidating “prior art.” Heretofore the role of secret prior art has been carefully circumscribed. The new general rule here adopted contravenes the policy and the letter of patent law, wherein inventors are charged only with knowledge of what is known or knowable as defined by statute, subject to special limited circumstances.
In the prior appeal of this case, Solvay S.A. v. Honey- well Int’l, Inc., 622 F.3d 1367 (Fed. Cir. 2010) (Solvay I), this court confirmed that the Russian invention was conceived and reduced to practice in Russia, and that Honeywell’s repetition of the process in the United States was not an invention made in the United States. Testing the invention of another is not an act of invention by the tester. This aspect was finally resolved in Solvay I, the court describing Honeywell’s work in the United States as a “derivation” of the Russian invention. The matter was finally decided; it is not open for redetermination.
Undaunted, the panel majority now rules that Hon- eywell’s activity was a “reduction to practice” of the Russian process. The private/secret duplication of the prior invention of another does not convert either that prior invention or its duplication into prior art. The issue here is not priority between the Russian invention and the Solvay invention; the issue is prior art against the world.
The Honeywell test of the Russian process was a pri- vate experiment. No United States patent application was filed on the Russian process, not by Honeywell and not by the Russian inventors. A private experiment is not prior art, when it is not published, nor used, sold or otherwise made known, nor included in a United States patent application.
Kimberly–Clark Corp. v. Johnson & Johnson is cited:
Invalidation by secret prior art is disfavored. See OddzOn Prods, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed. Cir. 1997) (“Thus, the patent laws have not generally recognized as prior art that which is not acces- sible to the public.”); Kimberly–Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1446 (Fed. Cir. 1984) (defining § 102 “prior art” as “technology already available to the public,” and stating that “secret prior art” may not be used to invalidate a patent under § 102(g)). The majori- ty’s spin on § 102(g) takes “secret prior art” into unin- tended territory.
The court’s ruling that prior art includes secret information is of far-reaching potential impact.