A company’s nine-year delay in commercializing an invention after announcing it at a conference and in a paper doesn’t constitute patent abandonment, the U.S. Court of Appeals for the Federal Circuit has ruled. 

On November 28, a split panel of the appeals court affirmed a holding that two claims in a Fox Group Inc. patent are invalid because defendant Cree Inc. was the prior inventor and it did not abandon the patent. The panel also vacated a judgment that the remaining claims of Fox’s patent are invalid.

Fox is the assignee of a patent for a type of low-defect silicon carbide crystal, a semiconductor material used in high-temperature and high-power electronics.

In June 2010, Fox sued Cree Inc., alleging infringement of two patents. In July 2011, Judge Rebecca Beach Smith of the Eastern District of Virginia entered a judgment of noninfringement for one of the patents, which is not part of the appeal. That August, she granted summary judgment to Cree, finding Fox’s other patent claims invalid.

At a 1995 conference on crystals and related materials, one of Cree’s inventors had discussed the company’s own invention. The company followed with an article in the conference journal in 1996.

Fox claimed on appeal that Cree is not a prior inventor of the invention. Even if it is, Fox claimed that Cree abandoned, suppressed or concealed the invention. Fox also argued that the district court erroneously invalidated the entire patent because only two claims were asserted.

Fox also claimed that Cree didn’t give enough information in its presentation and article to enable someone skilled in the art to make the invention. It further claimed that Cree never proved that it could or duplicate its process for making the wafer.

Judge Evan Wallach wrote the majority opinion in The Fox Group Inc. v. Cree Inc, joined by Judge Pauline Newman. Judge Kathleen O’Malley wrote a concurring-in-part, dissenting-in-part opinion.

Wallach wrote, “Because Cree has produced clear and convincing evidence that it had the low density [silicon carbide] crystal prior to Fox’s date of invention, and Fox has not produced sufficient evidence to show or raise genuine issues that Cree abandoned, suppressed, or concealed the invention, we find [the two asserted] claims invalid.”

O’Malley agreed that Cree reduced its invention to practice before Fox invented the technology. She disagreed with the majority’s conclusion, however, that the record supports a summary judgment that Cree did not abandon, suppress or conceal its invention. There are two types of abandonment, she noted: suppression and concealment. The first is when the inventor deliberately suppresses or conceals the invention. The second can be inferred by an inventor’s “unreasonable delay” in making the invention publicly known.

She wrote that Fox’s case included evidence that Cree deliberately hid its production methods, did not file a patent for the invention and failed commercialize the wafer in a way that it could have been reverse-engineered.

“Despite the majority’s finding to the contrary, simply disclosing the existence of the product, without more, is insufficient to make an invention publicly known. There must be something more,” O’Malley wrote.

She observed that, “Under the majority’s approach, an inventor could publicly announce that it made a product, with no explanation as to how it did so, and then hide it away in a closet indefinitely. As long as the inventor describes a product in general terms, the inventor cannot, according to the majority, be accused of abandoning, suppressing, or concealing the invention.”

Neither Fox nor its lawyer, Christopher Mead, a partner at Washington’s London & Mead, responded to a request for comment.

Cree also did not respond to a request for comment. Cree’s lawyer, David Radulescu, a partner at Quinn Emanuel Urquhart & Sullivan, declined to comment without his client’s approval.

Sheri Qualters can be contacted at squalters@alm.com.