Best Mode Violation Requires Intentional Concealment: Federal Circuit | Practical Law

Best Mode Violation Requires Intentional Concealment: Federal Circuit | Practical Law

In Ateliers de la Haute-Garonne v. Broetje Automation-USA Inc., the US Court of Appeals for the Federal Circuit held that the district court erred by stating that intentional concealment was not required to establish a best mode violation under the Patent Act. Further, the Federal Circuit held that it was an error to state that a concealment occurred even though the preferred embodiment was disclosed in the patent.

Best Mode Violation Requires Intentional Concealment: Federal Circuit

Practical Law Legal Update 9-530-4186 (Approx. 3 pages)

Best Mode Violation Requires Intentional Concealment: Federal Circuit

by PLC Intellectual Property & Technology
Published on 28 May 2013 • USA (National/Federal)
In Ateliers de la Haute-Garonne v. Broetje Automation-USA Inc., the US Court of Appeals for the Federal Circuit held that the district court erred by stating that intentional concealment was not required to establish a best mode violation under the Patent Act. Further, the Federal Circuit held that it was an error to state that a concealment occurred even though the preferred embodiment was disclosed in the patent.
On May 21, 2013, in Ateliers de la Haute-Garonne v. Broetje Automation-USA Inc., the US Court of Appeals for the Federal Circuit issued a split opinion, reversing the district court's judgment of invalidity and holding that the district court erred by ruling that:
  • The patent claims at issue in this patent infringement action were invalid for failure to disclose the best mode of carrying out the invention.
  • Intentional concealment was not required to establish a best mode violation under the Patent Act.
  • A concealment occurred even though the preferred embodiment was disclosed in the patent.
The Federal Circuit therefore reversed the district court's judgment of invalidity and remanded for a determination of the remaining issues.
In this case the plaintiffs, including Ateliers de la Haute-Garrone (AHG), filed suit against the defendants, including Broetje Automation USA Inc., asserting patent infringement concerning two patents which covered a process and apparatus for dispensing metal rivets though a pressurized tube that features grooves on the tube's inner surface. Following Broetje's motion for summary judgment, the district court ruled that the claims in suit were invalid for failure to disclose the best mode of carrying out the invention, as required by Section 112 of the Patent Act. AHG appealed the judgment to the Federal Circuit.
In its May 21, 2013 opinion, the Federal Circuit stated that under Section 112 of the Patent Act, the specification must set forth the best mode of carrying out the invention contemplated by the inventor.. To establish a violation, it must be shown both that:
  • The inventor possessed a better mode than was described in the patent.
  • The better mode was intentionally concealed.
In reaching its conclusion the Federal Circuit explained that:
  • The best mode requirement is satisfied when the inventor includes the preferred mode in the specification.
  • There is no requirement in Section 112 for an applicant to point out which of his embodiments he considers to be his best mode.
  • It is enough if the disclosure simply includes the best mode contemplated by the applicant.
  • There was no evidence that the inventors knew of a better mode than was described in the specification and no inaccurate or misleading information was identified.
  • When the patent application was filed, the three-groove embodiment described in the specification was the preferred embodiment.
In her dissent, Judge Prost argued that the majority decision was inconsistent with Federal Circuit precedent. In her view, the majority:
  • Mistakenly relied on dicta in a prior Federal Circuit decision to conclude that concealment of best mode must be intentional.
  • Mischaracterized as legal error the district court's factual determination of whether the inventors complied with the best mode requirement.
Notably, under the Leahy-Smith America Invents Act (AIA), an inventor must still set out in the patent application the best mode contemplated by the inventor of carrying out the invention. However, the AIA eliminated the failure to disclose the best mode as a basis for a third party to seek invalidation of a claim in the resulting patent. Therefore, this opinion's outcome is applicable only to proceedings filed before the AIA's September 16, 2011 effective date (35 U.S.C. § 282 and AIA § 15 (2011)).
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