"There 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."
On May 21, 2013, in Ateliers de la Haute-Garonne v. Broetje Automation USA Inc., the U.S. Court of Appeals for the Federal Circuit (Newman,* Prost, Reyna) reversed-in-part, affirmed-in-part and remanded the district court's summary judgment that U.S. Patents No. 5,011,339 and No. 5,143,216, which related to dispensing objects such as rivets through a pressurized tube with grooves along its inner surface to provide a rapid and smooth supply of properly positioned rivets for such uses as the assembly of metal parts of aircraft, were invalid for a best mode violation under 35 U.S.C. § 112. The Federal Circuit stated:
35 USC §112 ¶1 requires that the specification "shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention." To establish violation, it must be shown that the inventor possessed a better mode than was described in the patent, and that such better mode was intentionally concealed. "First, the court must determine whether the inventor possessed a best mode of practicing the claimed invention at the time of filing the patent application. This first step is subjective and focuses on the inventor's preference for a best mode of practicing the invention at the time of the application's filing date. The second step is an objective inquiry to determine whether the inventor concealed from the public the best mode of practicing the invention." "If the inventor in fact contemplated such a preferred mode, the second part of the analysis compares what he knew with what he disclosed -- is the disclosure adequate to enable one skilled in the art to practice the best mode or, in other words, has the inventor 'concealed' his preferred mode from the 'public'?" Violation requires intentional concealment; innocent or inadvertent failure of disclosure does not of itself invalidate the patent. . . . "Manifestly, 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 embodiments of their inventions which they have in fact conceived."
The district court erred in law, in stating that concealment occurred although the preferred embodiment was disclosed, and that any omission need not be intentional to invalidate the patent on best mode grounds. The issue here is not of written description or enablement or any other aspect of §112; the sole challenged aspect relates to the disclosure of the best mode, based on inventor Auriol's testimony that an odd number of grooves is better than an even number. At the time the patent application was filed, the inventors primarily used a three-groove tube, as shown in Figure 2 and described as a preferred embodiment. The issue of compliance with the best mode requirement is focused on the inventor's belief at the time of filing the patent application. The best mode requirement is satisfied when the inventor includes the preferred mode in the specification. "There 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."
The three-groove embodiment pictured in Figure 2 is described in the specification as a preferred embodiment. It is not disputed that the three-groove passageway was the best mode then known to the inventors. There was no evidence that they knew of a better mode. No inaccuracy or misleading information is identified. Although Broetje argues that the inventors had different theories of the best mode, it is not disputed that the preferred embodiment when the patent application was filed was the three-groove embodiment that the specification describes as preferred. . . . The inventors testified that after several years of development a five-groove tube was selected for commercial sale. However, it was not disputed that at the time the patent application was filed, the three-groove tube was the preferred embodiment. The issue is whether the inventors knew of and deliberately concealed a better mode than they disclosed. The general statement that an odd number is better than an even number is not a statement of a better mode than the preferred embodiment shown in the specification. There was no evidence of intentional concealment of a better mode than was disclosed. The preferred embodiment's disclosure of a three-groove tube is adequate to enable a person skilled in this art to practice the best mode. The judgment of invalidity on this ground is reversed.