Federal Circuit No. 2012-1038, -1077
In Ateliers De La Haute v. Broetje Auto, the Federal Circuit addressed whether the best mode requirement is satisfied when the inventor does not identify a better mode but merely includes as a preferred mode in the specification.
The patents relate to the dispensing of 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. The invention “permits dispensing a very great number of pieces without risk of jamming in the tube and with a precise guiding permitting maintaining the alignment of the axes of the pieces.” AHG sued Brötje, asserting patent infringement. The district court ruled that the claims are invalid for failure to disclose the best mode of carrying out the invention, as required by 35 U.S.C. 112.
The Federal Circuit clarified that violation of the best mode requirement under 35 USC 112 requires i) possession by the inventor a better mode than was described in the patent, and ii) intentionally concealment of such better mode. In finding that intentional concealment is required, the Federal Circuit relied on Brooktree Corp. v. Advanced Micro Devices, 977 F.2d 1555, 1575 (Fed. Cir. 1992) which hold that concealment must be "intentional." The majority of the Federal Circuit panel held that "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."
In her dissent, Judge Prost noted that the inventors discovered that constructing their claimed tubing with a certain number of grooves was "essential" to implementing their invention in order to prevent rivet rotation and jamming, which was allegedly a "patentably distinct" feature of the invention that was unsolved by the prior art. In view of this, Judge Prost held that the inventors buried the best mode among other embodiments, also falling under the preferred embodiment heading, which did not include the "essential" feature to their invention.