The doctrine of inurement, defining when the activities of others inure to the benefit of an inventor, does not require that the prior inventor under § 102(g)(2) expressly request or direct a non-inventor reducing the invention to practice to perform the reductive work. “Rather, inurement exists if the inventor authorizes another to reduce his invention to practice.”
Background / Facts: The patent being asserted here is directed to an improvement in making a particular hydrofluorocarbon (“HFC”) known as HFC-245fa, which belongs to a class of HFCs that do not deplete the ozone layer, and, for that reason, have been legislatively mandated to replace ozone-depleting alternatives. It is undisputed that the accused infringer Honeywell first reduced the claimed invention to practice in the United States, before the patent’s priority date. However, Honeywell did not itself conceive of the invention, which was instead done by engineers working abroad at the Russian Scientific Center for Applied Chemistry (“RSCAC”). The parties do not dispute that if the Russians conceived the invention and reduced it to practice in this country before the priority date without abandoning, suppressing, or concealing it, claim 1 is invalid under § 102(g)(2). It is also not disputed that Honeywell fully performed in accordance with a joint research agreement the RSCAC’s process for making HFC-245fa in the United States before the priority date.
Issue(s): Whether the doctrine of inurement, defining when the activities of others inure to the benefit of an inventor, requires that the prior inventor under § 102(g)(2) expressly request or direct a non-inventor reducing the invention to practice to perform reductive work.
Holding(s): No. “[O]ur case law does not support [the] contention that an inventor must make an express directive or request to benefit from a third party’s reduction to practice. 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 practice its invention in the United States and contemplated that Honeywell would do so … under the companies’ joint research agreement aimed at developing commercial processes for the production of HFC-245fa.”