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Section 102(g) Applies Despite Prior Inventor’s Unawareness of Invention’s Patentability

September 28, 2001

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Last Month at the Federal Circuit - October 2001

Judges: Dyk (author), Michel, and Bryson

In Dow Chemical Co. v. Astro-Valcour, Inc., No. 01- 1003 (Fed. Cir. Sept. 28, 2001), the Federal Circuit held that a prior inventor need not be aware of the invention’s patentability in order for that invention to be invalidating prior art under 35 U.S.C. § 102(g). The Court also held that reasonable efforts to commercialize an invention preclude its removal as prior art on the basis of suppression or concealment. With these holdings, the Federal Circuit affirmed a district court’s decision under § 102(g) invalidating certain claims in patents assigned to The Dow Chemical Company (“Dow”).

Dow is the assignee of three U.S. patents (“the Dow patents”) to Dr. Chung Park. These patents include composition-of-matter and method claims covering, among other things, certain plastic foams that are formed using isobutene as a blowing agent. Before Dr. Park conceived his inventions, Astro-Valcour, Inc. (“AVI”) had purchased from Japanese Styrene Paper Company (“JSP”) a license to JSP’s U.S. patent covering a process for producing plastic foam using nonchlorofluorocarbon blowing agents. The licensed patent did not disclose isobutene as a blowing agent, but AVI successfully tested a process using isobutene with the licensed technology. Thus, prior to Dr. Park’s invention, AVI had produced a foam meeting the limitations of the Dow patents’ claims.

AVI moved for SJ that certain claims of the Dow patents were invalid under 35 U.S.C. § 102(g) based upon AVI’s prior invention. In opposition, Dow questioned whether AVI used n-butane rather than isobutene, but failed to create a genuine issue of material fact on this subject. Dow also argued to the lower court that AVI’s foam could not constitute § 102(g) prior art because JSP had previously reduced the invention to practice by filing its patent application. The district court rejected this argument for lack of legal support. Finally, Dow argued to the district court that AVI hadabandoned, suppressed, or concealed its invention. The lower court disagreed, holding that because JSP had disclosed the invention to the public in 1974 by its issued patent, AVI’s conduct after the initial production of its foam in 1984 was irrelevant. Accordingly, the district court granted AVI’s SJ motion.

On appeal, Dow argued that AVI’s foam production did not satisfy § 102(g) because no one at AVI believed anything had been invented, meaning there was no “inventor” as that term is used in the statute. Dow also argued that AVI waited two and one-half years after its initial foam production to market the product, in violation of the § 102(g) prohibition against suppression and concealment.

Regarding Dow’s first argument, the Federal Circuit took note of Congress’s amendment of the statutory language of § 102(g). Prior to the American Inventors Protection Act of 1999 (“AIPA”), § 102(g) stated that a claim was unpatentable if “the invention was made in this country by another.” The new language reads, “the invention was made in this country by another inventor.” Dow argued that AVI’s unawareness that it had conceived an invention when it produced its foam meant that no one in that company was an inventor, as required by the statute. Although the Federal Circuit agreed with Dow that both versions of § 102(g) require an inventor, it held that a person need not appreciate the patentability of an invention to be considered an inventor under § 102(g). An inventor need only appreciate the fact of what he made. According to the Court, AVI’s appreciation of what it had made was sufficient to qualify it as an “inventor” under the statute, even though it was unaware that it had made a patentable invention. Thus, AVI’s foam-production activities qualified as prior art and met the limitations of the disputed claims in the Dow patents.

The Court also rejected Dow’s second argument regarding suppression and concealment. Reiterating that AVI’s activities constituted the prior art, not the JSP patent, the Court stated that the JSP patent was not relevant to the question of suppression and concealment. The Federal Circuit affirmed on another basis, however, by declining Dow’s invitation to create a rule that a particular period of delay establishes or infers suppression or concealment. Instead, the Court found that AVI had made reasonable efforts to commercialize its foam after inventing it, which excused the two and onehalf year delay. The Federal Circuit accordingly affirmed the district court’s holding on SJ that the disputed claims were invalid under § 102(g).