To establish a failure to set forth the best mode of carrying out the invention under 35 U.S.C. § 112, ¶ 1, it must be shown that the inventor possessed a better mode than what was described in the patent, and that the better mode was intentionally concealed.

Ateliers de la Haute-Garone v. Broetje Automation USA Inc., et al., No. 2012-1-38-1077 (Fed. Cir. May 21, 2013).

Plaintiff Ateliers de la Haute-Garonne, a French company, sued defendant Broetje Automation USA Inc., in the United States District Court for the District of Delaware, asserting patent infringement, trade dress infringement, and unfair competition. The plaintiff asserted two U.S. patents directed to the dispensing of rivets through a pressurized, grooved tube, claiming priority to a French patent application filed in 1988. The plaintiff did disclose an embodiment with three grooves among other numbers of grooves, but the defendant asserted that the plaintiff’s invention required an odd number of grooves and that the best mode was not satisfied due to the plaintiff’s omission of disclosing that an odd number of grooves is needed. On the defendants’ motion for summary judgment, the district court found that the asserted claims were invalid for failure to disclose the best mode of carrying out the invention, namely the failure to disclose an odd number of grooves. The plaintiff appealed.

On appeal, the Federal Circuit reversed the district court’s judgment of invalidity, and remanded for determination on remaining issues. The Federal Circuit held that to establish a failure to set forth the best mode of carrying out the invention, it must be shown that the inventor possessed a better mode than what was described in the patent, and that the better mode was intentionally concealed. Whether the inventor preferred a best mode of practicing the invention at the time of the application is a subjective inquiry, but whether the inventor concealed the best mode of practicing the invention from the public is an objective inquiry.

The Federal Circuit made clear that violation of 35 U.S.C. § 112, ¶ 1 requires intentional concealment of the best mode for practicing the invention. They found that the inventor’s disclosure of three grooves represented the best mode. Referring back to In re Gay, 309 F.2d 769 (CCPA 1962), the Federal Circuit reaffirmed that “the sole purpose of [the best mode requirement] is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiment of their inventions which they have in fact conceived.” Thus, the Federal Circuit found that the district court erred in law when it held that any omission of a best mode embodiment need not be intentional to invalidate the patent. Accordingly, the Federal Circuit reversed the district court’s finding that the asserted claims were invalid, and found that the inventors had not intentionally concealed the best mode for practicing the invention. The court also reiterated that “[t]here is no requirement . . . that an applicant point out which of his embodiments he considers his best mode . . . .” Thus, the inventor’s disclosure of three grooves satisfied the best mode requirement despite that other numbers of grooves were also disclosed.

A copy of the opinion can be found here.