Despite patentee’s failure to identify the accurate trade name or product code of a preferred product, a genuine issue of material fact exists regarding failure to satisfy best mode if one of ordinary skill in the art could have discovered the preferred product.

Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC, No. 2009-1455, -1479 (Fed. Cir. Sept. 7, 2010).

The district court granted summary judgment of invalidity for violation of the best mode requirement under 35 U.S.C. § 112(1), but denied summary judgment on other invalidity grounds. The Federal Circuit reversed and remanded.

The patent-in-suit claimed a synthetic mulch that is treated with a colorant to imitate natural mulch. According to the specification, “[t]he most preferred colorants are . . . systems such as . . . ‘VISICHROME.’” No product existed under the trade name “Visichrome,” though the patentee believed it did at the time it filed its patent application. The product code number of the preferred product did not appear in the patent-in-suit.

The patentee argued that it lacked intent to conceal its preferred embodiment, and that no undue experimentation was necessary for another manufacturer to supply the colorant. The accused infringers responded that subjective intent to conceal was irrelevant and that because the product code number of the preferred product was not disclosed, the patentee failed to satisfy best mode.

The Federal Circuit held that summary judgment was improper. An inventor using a proprietary product in his preferred embodiment must, “at a minimum, . . . provide supplier/trade name information in order to satisfy the best mode requirement.” Here, the patentee’s disclosure may have been specific enough to enable one of ordinary skill in the art to contact the manufacturer and obtain the preferred product at the time of filing. Therefore, a genuine issue of material fact existed as to whether the best mode was disclosed.

The court also held that the record was insufficient to grant summary judgment of invalidity based on other grounds, and therefore it could not affirm the district court’s grant of summary judgment.

A copy of the opinion can be found here.