Addressing whether a well-known operation can be deemed intentionally concealed, absent evidence of intent, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s grant of summary judgment of patent invalidity that was based on the inventors’ failure to disclose the preferred mode of practicing an invention. High Concrete Structures, Inc., v. New Enterprise Stone and Lime Co., Inc. and Robbins Motor Transportation, Inc., Case No. 03-1477 (Fed. Cir. July 29, 2004).
High Concrete Structures, Inc. (High Concrete) is the owner of U.S. Pat. No. 5,947,665 (the `665 patent). The `665 patent is directed to a device for adjusting the orientation of heavy and bulky cargo loaded on a truck for transport. By adjusting the orientation of large concrete structures to a particular angle, the loaded truck is so wide as to be classified as carrying an oversized load. To adjust the orientation, the `655 patent discloses that the loaded cargo may be rotated manually without heavy equipment, although this is not a requirement.
New Enterprise Stone and Lime Company is a concrete product maker and Robbins Motor Transportation is a long-distance trucking company, both of which are collectively referred to as "New Enterprise."
High Concrete sued New Enterprise, alleging infringement of the `665 patent. New Enterprise moved for summary judgment, arguing that the specification of `655 does not describe using a crane in the preferred mode to orientate the cargo on a truck. The district court granted New Enterprise’s motion and held the `655 patent claims invalid for failing to disclose that the preferred mode of practicing the invention was to use a crane to tilt the cargo when loaded into a truck. High Concrete appealed.
On appeal, the Federal Circuit reversed the summary judgment, holding that the district court incorrectly applied the law of best mode. New Enterprise had conceded that using a crane to assist with heavy loads is well known to persons in the field of loading cargo, and there was no evidence or inference of intent to conceal the use of a crane to assist in loading. Citing Ajinomoto Co., the Court held that "The best mode requirement of 35 U.S.C. §112 is not violated by unintentional omission of information that would be readily known to persons in the field of the invention." Since it was undisputed that anyone having experience with heavy loads would know to use a crane to move a load, using a crane in this known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information.
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