Russian scientists come up with a way to make an ozone-friendly agent that helps prepare materials useful in making units that store hot or cold. They tell the American company that hired them about the results of their study. And the U.S. firm starts using the process that their Russian colleagues discovered.
Does the U.S. outfit qualify as an "inventor"?
No, the Federal Circuit held today.
The context involved Company A (Solvay) accusing Company B (Honeywell) of patent infringement. Honeywell defended on the ground, among others, that it, by virtue of its Russian connection, qualified as "another inventor" who "made" the invention "in this country" before Solvay did. See 35 U.S.C. 102(g)(2) (providing 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").
Despite its role in receiving and adapting the Russian scientists' conception, the court noted, "Honeywell did not have, or formulate, a definite and permanent 'idea' of its own capable of being reduced to practice. Rather, it reproduced the invention previously conceived and reduced to practice by RSCAC in Russia. Such reproduction cannot be conception because, if it were, the result would be that one who simply followed another inventor's instructions to reproduce that person's prior conceived invention would, by so doing, also become an 'inventor.'" Solvay S.A. v. Honeywell Int'l, Inc., No. 09-1161, slip op. at 17 (Fed. Cir. Oct. 13, 2010).
Honeywell did not conceive of the invention in the U.S. but rather depended on Russian colleagues. It therefore didn't count under section102(g)(2) as "another inventor" that could defeat Solvay's infringement claim by virtue of co-inventor status.