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If a patentee's invention has been made by another, prior inventor who has not abandoned, suppressed, or concealed the invention, 35 U.S.C.S. § 102(g) will invalidate that patent.
Plaintiff Dow Chemical Company sued defendant Astro-Valcour, Inc., alleging that the defendant’s foam product infringed certain claim of plaintiff’s patents. Defendant counterclaimed for declaratory judgments, arguing that the claims were invalid as it had made the foam prior to the plaintiff’s conception and reduction to practice of the invention. The district court granted summary judgment to defendant. Plaintiff appealed.
Were the plaintiff’s claims invalid, thereby warranting the grant of summary judgment in favor of defendant?
The appeals court affirmed the district court’s judgment, holding that the plaintiff did not show that the making of the foam did not meet the claims' limitations. The court held that the defendant’s employees were aware the foam was made with polyethylene. Thus, the defendant recognized and appreciated the existence of its new process and product. According to the court, whether the defendant understood that it had produced a legally patentable invention was immaterial. It was enough that the defendant’s employees appreciated the fact of their invention. Since there was no genuine issue of material fact, and the defendant had produced clear and convincing evidence that it made the invention prior to the plaintiff’s date of invention and the plaintiff did not produce evidence that the defendant abandoned, suppressed, or concealed the invention, the claims-at-issue of the plaintiff’s patents were invalid under 35 U.S.C.S. § 102(g)(2).