Friday, November 09, 2012

CAFC reverses "best mode" invalidity decision

In JOY v Cincinnati Mine, the CAFC tackled "invalidity through failure to satisfy best mode," a soon-to-be extinct provision of US patent law.

As to best mode, the CAFC noted:

To establish that claim 2 fails the best mode requirement, CMM must by prove by clear and convincing evidence that the ’932 Inventor concealed a best mode of practicing his claimed invention from the public. See Ajinomoto Co. v. Int’l Trade Comm’n, 597 F.3d 1267, 1273 (Fed. Cir. 2010); Young Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d 1137, 1144 (Fed. Cir. 1997). Whether an inventor “concealed” the best mode of his invention from the public turns on whether “the inven- tor’s disclosure is adequate to enable one of ordinary skill in the art to practice the best mode of the invention.” Id. (citation omitted). Press-fitting, which CMM asserts was concealed as the best mode for the drive pin retaining means, was a well-known substitute for welding to those of ordinary skill in the art at the time of the invention. There is no genuine dispute of the parties’ experts on that point. Thus, there is no genuine dispute that one of ordinary skill in the art had the requisite knowledge necessary to use press-fitting as the drive pin retaining means of claim 2. Accordingly, CMM cannot point to any clear and convincing evidence upon which a reasonable jury could rely to find that the omission of press-fitting from the written description of the ’932 patent “concealed” its use as a drive pin retaining means from the public. We therefore reverse the district court’s grant of summary judgment to CMM that claim 2 is invalid for failing the best mode requirement and remand to the district court to enter summary judgment in favor of Joy on that issue.2

Footnote 2 states:

Whether or not the relevant claim element (here, “means for retaining”) is written in means-plus-function form is immaterial to our conclusion. At its heart, the best mode requirement is concerned with preventing inventors from concealing the best mode of their inven- tions while being rewarded with the right to exclude others from making or using it. See, e.g., Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1330 (Fed. Cir. 2002). An inventor does not conceal the best mode of an invention by disclosing only one of many modes for enabling a claim element when all of the other non-disclosed modes are already well-known substitutes in the art. One of ordinary skill in the art would not need to be reminded of those substitutes to practice the best mode of the inven- tion.


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