United States: Best Mode Violation Requires Intentional Concealment

In Ateliers de la Haute-Garonne v. Broetje Automation USA Inc., Nos. 12-1038, -1077 (Fed. Cir. May 21, 2013), the Federal Circuit reversed the district court's entry of SJ of invalidity on best mode grounds, affirmed that U.S. Patent No. 5,011,339 ("the '339 patent") was not abandoned, and remanded for further infringement proceedings.

Ateliers de la Haute-Garonne and F2C2 Systems S.A.S. (collectively "AHG") sued Broetje Automation USA Inc. and Brötje Automation GmbH (collectively "Broetje"), asserting infringement of the '339 patent and U.S. Patent No. 5,143,216 ("the '216 patent").  Both patents are entitled "Process for Distribution of Pieces such as Rivets, and Apparatus for carrying out the Process."  The '339 and '216 patents relate to the dispensing of objects such as rivets through a pressurized tube with grooves along its inner surface, providing a rapid and smooth supply of properly positioned rivets for such uses as the assembly of metal parts of aircraft.

The district court granted Broetje's motion for SJ of invalidity, finding the inventors failed to disclose the best mode of the patented inventions as required under 35 U.S.C. § 112, ¶ 1.  The district court rejected Broetje's argument that AHG abandoned the '339 patent by failing to pay the issue fee.  AHG appealed the judgment of invalidity, and Broetje cross-appealed the judgment that the '339 patent was not abandoned.

The best mode of each patent regarded the ideal number of longitudinal grooves inscribed along the inner surface of the pressurized tubes.  The '339 and '216 patents describe several preferred embodiments of the invention, including designs having both odd and even numbers of grooves.  In arguing that the best mode was not disclosed, Broetje relied upon deposition testimony from one of the inventors, who admitted that he knew at the time of filing that an odd number of grooves provided superior functionality, as an even number of grooves led to a higher chance for the apparatus to jam during operation.  AHG responded that the three-groove embodiment was the best mode known to the inventors when the application was filed, and that the three-groove embodiment was specifically described and thus adequately disclosed in the specification's text and drawings.

The district court concluded that the best mode was not disclosed, since neither patent-in-suit affirmatively identifies an odd number of grooves as being a better design feature than an even number of grooves.  As a result, the district court found that the '339 and '216 patents violated the § 112 best mode requirement.  The district court interpreted Federal Circuit precedent to not require that a patentee intentionally conceal the best mode; instead, under the district court's interpretation, a violating patent must merely be so objectively inadequate as to effectively conceal the best mode from the public.

"Violation [of best mode] requires intentional concealment; innocent or inadvertent failure of disclosure does not of itself invalidate the patent."  
Slip op. at 10 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1365 (Fed. Cir. 2011)).

On appeal, the Federal Circuit reversed the district court's invalidity judgment.  The Court explained that the two-part rule for a best mode violation requires that an inventor "possessed a better mode than was described in the patent, and that such better mode was intentionally concealed."  Slip op. at 9-10.  The Court held the district court erred in concluding that intentional omission was not necessary to invalidate a patent on best mode grounds, relying on In re Gay, 309 F.2d 769, 772 (CCPA 1962), for the proposition that best mode violations require intentional concealment.  The Court further stated, "[T]here is no requirement in 35 USC 112 that an applicant point out which of his embodiments he considers his best mode; that the disclosure includes the best mode contemplated by the applicant is enough to satisfy the statute."  Slip op. at 12-13 (quoting Randomex, Inc. v. Scopus Corp., 849 F.2d 585, 589 (Fed. Cir. 1988)). 

The Court reasoned that, because both patents-in-suit describe the three-groove apparatus as a preferred embodiment, and because there was no dispute that the three-groove embodiment was the best mode at the time of filing, the best mode requirement was satisfied.  While the '339 and '216 patents' preferred embodiments also include designs with even numbers of grooves, the Court held the best mode was nevertheless disclosed, as designs with odd numbers of grooves were adequately described.  The Court noted that the issue is whether the inventors knew of and deliberately concealed a better mode than they described, but "[t]here was no evidence of intentional concealment of a better mode than was disclosed."  Id. at 14.

The Court also rejected Broetje's argument that the '339 patent was abandoned due to AHG's failure to pay the issuance fee.  While the Court noted that AHG's initial payment check was rejected due to insufficient funds, the record indicated the PTO later accepted the payment and all subsequent maintenance fees.  Broetje argued that the '339 patent was invalid because the file record did not contain a petition to revive an abandoned application, but the Court disagreed, holding the '339 patent was never abandoned. 

Judge Prost dissented, stating that under Federal Circuit precedent, "a best mode violation does not require an intent to 'conceal.'"  Prost Dissent at 3-4.  Judge Prost further opined that, because the preferred embodiments include designs with an even number of grooves, the inventors "buried [the best mode] amongst many embodiments that they knew did not work."  Id. at 5.  As a result, Judge Prost reasoned that the "disclosure here . . . is not an adequate guide that one of ordinary skill in the art could follow to determine the best mode for the invention."  Id. at 6.

This article previously appeared in Last Month at the Federal Circuit, June 2013

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