On November 28, 2012, the US Court of Appeals for the Federal Circuit issued an opinion in Fox Group, Inc. v. Cree, Inc., affirming in part and reversing in part the US District Court for the Eastern District of Virginia's grant of summary judgment that certain claims of Fox Group, Inc's US Patent No. 6,562,130 (the '130 patent) are invalid under Section 102(g) of the Patent Act. Specifically, the Federal Circuit held that:

Fox is the assignee of the '130 patent, which claims a silicon carbide crystal, which is a semiconductor material. To be viable as a semiconductor, the crystal must be relatively low in defects. In 2010, Fox sued Cree, Inc. for infringement of claims 1 and 19 of the '130 patent and another of Fox's patents not at issue on appeal. Cree counterclaimed seeking a declaration that the patents are not infringed, invalid and unenforceable and then filed a motion for summary judgment of invalidity. In 2011, the district court granted Cree's motion for summary judgment of the '130 patent's invalidity, and dismissed or denied the other claims and counterclaims.

On appeal, a key issue was whether Cree's prior published document concerning a low defect silicon carbide material must be enabling to invalidate the patent claims under Section 102(g). Fox argued that Cree abandoned, suppressed or concealed its invention because, while Cree publicly disclosed the low defect silicon carbide material, that disclosure was not enabling. According to Fox, Cree did not prove that it did or could duplicate the process used to make the low defect silicon carbide material. However, the Federal Circuit noted that Cree had reduced the claimed invention to practice, even if it could not do so repeatedly, which is not a requirement. The court distinguished its own precedent, cited by Fox to support the proposition that Section 102(g) requires an enabling disclosure, by noting that those cases involved process patents whereas in this case the claimed invention is a particular silicon carbide material.

Contrary to Fox's assertion, the Federal Circuit noted that Cree had promptly made its invention known to the public because it had promptly and publicly disclosed its findings concerning the low defect properties of its silicon carbide material in a 1995 conference presentation and a published paper. Because Cree produced clear and convincing evidence that it had the low density silicon carbide crystal before Fox's invention date, and Fox failed to produce sufficient evidence to raise a genuine issue that Cree abandoned, suppressed or concealed the invention, the Federal Circuit concluded that claims 1 and 19 of the '130 patent are invalid under Section 102(g)(2) and affirmed the district court's invalidity decision for those claims.

This decision is notable for providing patent litigants with guidance on whether a public disclosure concerning a patented product must be enabling to permit one skilled in the art to make the invention. In particular, the decision is significant for holding that a public disclosure that merely describes the innovative nature of the product may be sufficient to establish first inventor status.