United States Department of Energy v. Daugherty

NIES, Judge,

dissenting.

The majority erroneously equate appellants’ “lack-of-enablement attack” with appellants’ best mode attack. In effect, the majority conclude that if the specification sets forth only one working example which is attacked as not being enabling, no separate challenge to best mode may be made. Such is plainly not the law. 1

Here, appellants (Fenstermacher) have presented two different theories upon which they predicate their argument that appellees (Daugherty) may not rely on their patent as a constructive reduction to practice, neither of which subsumes the other. Appellants’ enablement argument is premised, in part, on the theory that in the only working example, given at a pressure of 30 torr, Daugherty failed to provide many of the parameters needed to set up the device to meet the count, e.g., sustainer field strength, E-beam current, and predetermined electron temperature. Thus, appellants argue, one of skill in the art is not given sufficient information to practice the invention.

The best mode challenge, on the other hand, is directed to failure by Daugherty to set forth, in addition to the SO torr example, an example at the higher pressure to which the invention is directed. Daugherty counters by arguing that 30 torr is “higher pressure,” and that the patent specification indicates that 1-10 torr is low pressure. It was not until Daugherty presented its case that appellants learned that, in February of 1970, coinventors Daugherty and Patrick considered low pressure to be anywhere in the range of 30-100 torr, as set forth in a proposal for a Government contract.

In view of the above, it is clear to me that the thrust of Fenstermacher’s best mode challenge is not failure to disclose any mode. Rather, it is that Daugherty failed to disclose an example of what they knew to be their best mode, i.e., it was concealed (whether intentionally or not) in view of the poor quality of the disclosure. In re Sherwood, 613 F.2d 809, 816 , 204 USPQ 537, 544 (Cust. & Pat.App.1980), cert. denied, 450 U.S. 994 , 101 S.Ct. 1694 , 68 L.Ed.2d 193 (1981). 2

Finally, because the facts were not developed until Daugherty’s testimony period, unlike the challenge to enablement, the attack on Daugherty’s failure to disclose best mode is not untimely. The only limitation to raising the issue before the board is that the party under attack be on notice of the charge so as to avoid surprise. P. A. B. Produits et Appareils de Beaute v. Santinine Societa, 570 F.2d 328, 332-33 , 196 USPQ 801, 804-05 (Cust. & Pat.App.1978).

*448 Inasmuch as Daugherty took testimony during surrebuttal to counter Fenstermacher’s rebuttal testimony directed to the best mode issue and the issue was briefed by both parties, the issue was properly before the board. Moreover, the board did consider the best mode issue and concluded that it was not an issue ancillary to priority. Thus, I do not agree with the majority that the issue need not be separately treated. Finally, for reasons set forth herein, I conclude that the issue is ancillary to priority and would remand because of the board’s failure to consider the best mode issue in making its priority award.

The board, concluding that Weil v. Fritz, 572 F.2d 856 , 196 USPQ 600 (Cust. & Pat.App.1978), did not overrule Thompson v. Dunn, 35 CCPA 957, 166 F.2d 443 , 77 USPQ 49 (1948), to the extent that best mode “is not ancillary [to priority] insofar as the issue concerns [an] involved application,” held that best mode is also not ancillary to priority with regard to Daugherty’s patent. Subsequently, this court rendered its decision in Tofe v. Winchell, 645 F.2d 58 , 209 USPQ 379 (Cust. & Pat.App.1981), which undermines the board’s rationale.

There can no longer be any question that best mode is ancillary to priority when raised against a party’s application whether that application is the subject of the interference, Tofe v. Winchell, supra, or is a prior application relied on for a priority date. Weil v. Fritz, supra. While both cases held best mode ancillary to priority, they did so for different reasons.

Because both parties to an interference must be involved by way of a patent or a valid application, see Squires v. Corbett, 560 F.2d 424, 432-33 , 194 USPQ 513, 519 (Cust. & Pat.App.1977), we concluded in Tofe, supra, that a party in the interference whose application failed to satisfy the disclosure requirements of § 112 lacked standing to be in the proceeding. Thus, we held best mode ancillary to priority in Tofe because that issue raised a question going to the jurisdictional prerequisite of the board’s authority to reach the issue of priority. See also Nitz v. Ehrenreich, 537 F.2d 539 , 190 USPQ 413 (Cust. & Pat.App.1976) (no interference in fact is jurisdictional issue which is ancillary to priority). Our decision in Tofe thus required separate holdings to be made by the board, (1) one jurisdictional — i.e., whether best mode was satisfied by the applicant, and (2) one factual issue — i.e., priority “but for” the issue of best mode. Each issue would be reviewed by this court on appeal, the award of priority bringing both issues to us for affirmance or reversal of the priority award or for vacating the award altogether if it were found that the board lacked jurisdiction.

In Weil v. Fritz, supra, the junior party attacked the senior party’s right to rely on an earlier filed application for a constructive reduction to practice alleging that the earlier application failed to disclose best mode. This court agreed that failure to disclose best mode would preclude reliance on the earlier application’s filing date as a constructive reduction to practice. Because the junior party could prevail if the senior party could not rely on its prior application for a constructive reduction to practice, resolution of the best mode issue could have been determinative of priority and, hence, was, in this sense, ancillary to priority. See also Langer v. Kaufman, 59 CCPA 1261, 1264, 465 F.2d 915, 918 , 175 USPQ 172 , 174 (1972) (enablement is ancillary to priority as it affects constructive reduction to practice). Accord, Kawai v. Metlesics, 480 F.2d 880, 886 , 178 USPQ 158 , 163 (Cust. & Pat. App.1973) (constructive reduction to practice requires compliance with the how-to-make and how-to-use requirements of 35 U.S.C. § 112 ). Thus, best mode is ancillary to priority in connection with an application in an interference in one of two ways. 3 A *449 challenge to best mode can raise an issue which is jurisdictional in nature, Tofe, supra, or it can affect a party’s priority date by depriving him of the filing date of an application on which he seeks to rely as his date of constructive reduction to practice. Weil v. Fritz, supra.

With respect to a patent in interference, the jurisdictional issue cannot be raised inasmuch as the patent must be presumed valid. 35 U.S.C. § 282 . However, with respect to determining who is the prior inventor, in my view the rationale of Weil v. Fritz, supra, applies.

A constructive reduction to practice is nothing more than a presumption that the invention was made, Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288, 293-94 (CA 1 1909), which may be overcome by showing that a party is not entitled to rely on its filing date for one of a number of reasons. 4 Failure to disclose best mode is clearly one such reason. Weil v. Fritz, supra. That the showing is directed to an application that resulted in a patent I deem of no consequence. It would be manifestly unfair for one party, an applicant, to be subject to such a challenge while in the same proceeding a patentee would be screened from such attack.

Where priority is awarded in reliance on the date of an application as a constructive reduction to practice, the issue of whether that party failed to comply with the disclosure requirements of § 112, including his best mode, must be addressed and must be resolved in his favor.

Alternatively, the board may not have to reach the issue of Daugherty’s compliance with best mode should it consider Daugherty’s proofs of an actual reduction to practice sufficient. 5 . Lindstrom v. Ames, 37 App.D.C. 365 , 1911 C.D. 384 (1911) (proof of actual reduction to practice negates having to rely on one’s filing date for constructive reduction to practice). See also Starr v. Farmer, 1883 C.D. 34, 23 O.G. 2325 (Sec’y Int. 1883), wherein it was held that actual reduction to practice may be better evidence of invention than an application but that “until that evidence [the application] is overthrown,” id. at 38, the applicant need do no more than rely on his' application filing date.

In any event, I would remand for determination of Daugherty’s right to rely on the date of their application as their priority date or for a determination of priority based on the evidence of Daugherty’s actual reduction to practice.

. “Satisfaction of the best mode requirement of § 112 is a question separate and distinct from the question of the sufficiency of the disclosure to comply with the enablement provision.” In re Bundy, 642 F.2d 430, 435 , 209 USPQ 48, 52 (Cust. & Pat.App.1981), citing In re Gay, 50 CCPA 725, 309 F.2d 769 , 135 USPQ 311 (1962).

. In re Gay, supra, which the majority cites as requiring an intentional concealment of best mode was modified sub silentio by In re Sherwood, 613 F.2d 809, 816 , 204 USPQ 537, 544 (Cust. & Pat.App.1980), cert. denied, 450 U.S. 994 , 101 S.Ct. 1694 , 68 L.Ed.2d 193 (1981). In any event, if Fenstermacher’s best mode attack is directed to intentional concealment, such an attack amounts to an allegation of fraud which is ancillary to priority and should, therefore, have been considered. Langer v. Kaufman, 59 CCPA 1261, 465 F.2d 915 , 175 USPQ 172 (1972).

. It should be evident that the court no longer confines ancillary to priority to its “classic” definition. See C. Rivise & A. Caeser, Interference Law and Practice, Vol. II, § 251, p. 1009 (1943) (“[A]n ancillary question may be defined as a question which, if decided in favor of the party raising the question, would necessarily result in a judgment against his opponent.”) Rather, a matter which is ancillary to priority, while not necessarily conclusive thereof, may be determinative of priority but is, in any event, logically related thereto. Nitz v. Ehrenreich, *449 537 F.2d 539, 543 , 190 USPQ 413, 416 (Cust. & Pat.App.1976). Thus, in Weil v. Fritz, 572 F.2d 856, 867 , 196 USPQ 600, 609 (Cust. & Pat.App. 1978), the court remanded for the board’s consideration of both best mode and other priority proofs. As also noted in Myers v. Feigelman, 455 F.2d 596, 600 , 172 USPQ 580 , 584 n.9 (Cust. & Pat.App.1972), questions which address the shifting of the burden of proof, while ancillary to priority, are not determinative of priority in and of themselves.

. See Kawai v. Metlesics, 480 F.2d 880, 886 , 178 USPQ 158 , 163 (Cust. & Pat.App.1973) (how-to-make and how-to-use); Langer v. Kaufman, 59 CCPA 1261, 1264, 465 F.2d 915, 918 , 175 USPQ 172 , 174 (Cust. & Pat.App.1972) (enablement).

. As noted in Tofe v. Winchell, supra at 61 , 209 USPQ at 382 n.10, only abandonment, suppression or concealment of the invention are grounds under § 102(g) for awarding priority de jure to the party who is not the first inventor de factor. Thus, I disapprove of the view expressed by the board in Magdo v. Peltzer, 212 USPQ 838 , 845 (BOPI 1981) (on Petition for Rehearing):

a party to an interference who has not complied with the “best mode” requirement of the statute has “no right to make” his claims corresponding to the counts and, therefore, is not entitled to an award of priority, irrespective of testimony as to inventive acts ....

See also n.3, supra.