SDNY reversed by CAFC in best mode case
While Dr. Jain did his cause no favors with his testimony,
we are persuaded based on no favors with his testimony, we are persuaded based on
the record as a whole that there remain disputed issues of
material fact bearing on the best mode question, and we
therefore reverse the grant of summary judgment and
remand the case for further proceedings.
Of best mode:
Whether the best mode requirement has been satisfied
is a question of fact. Bayer AG v. Schein Pharms.,
Inc., 301 F.3d 1306, 1312 (Fed. Cir. 2002). In order to
determine whether there has been a violation of the best
mode requirement, two factual questions must be answered.
The first is whether, at the time of filing the
patent application, the inventor had a best mode of practicing
the claimed invention—a subjective question. The
second is whether, assuming the inventor had a preference
for one mode over all others, the inventor objectively
concealed his preferred mode from the public. See Wellman,
Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1360
(Fed. Cir. 2011).
Patents are presumed valid, and the opposing party
must prove invalidity by clear and convincing evidence.
See High Concrete Structures, Inc. v. New Enter. Stone &
Lime Co., Inc., 377 F.3d 1379, 1382 (Fed. Cir. 2004). On
summary judgment in this case, the issue before the
district court was whether a reasonable finder of fact
could reach no conclusion other than that Dr. Jain considered
his patented illumination source system to be the
best mode for practicing the inventions and concealed it.
On the other hand, the Second Circuit has made clear
that this principle does not apply “if the deposition and
the later sworn statement are not actually contradictory.”
Palazzo ex rel. Delmage v. Corio, 232 F.3d 38, 43 (2d Cir.
The district court should also have considered Dr.
Smith’s expert declaration in connection with the summary
judgment motion. The fact that better alternatives
for practicing the invention may be found in the prior art
cannot establish that an inventor lacked a subjective best
mode. See Bayer, 301 F.3d at 1314. However, Dr. Smith’s
declaration at a minimum served to support Dr. Jain’s
assertion that other, equally effective illumination sources
were quite well known and therefore that he would have
had no reason to focus on a best mode of practicing the
illumination source limitations of the ’257 patent. Both
parties agree that Dr. Jain is more than qualified to be
considered a person of ordinary skill in the art. Thus,
accepting all reasonable inferences in Anvik’s favor, a
finder of fact could conclude that Dr. Jain testified truthfully
when he claimed that, at the time of the invention,
he was aware of other, equally useful modes of practicing
his invention, even though he was unable to recall them
during his deposition.