Examples of Evidence of Concealment

In determining the adequacy of a best mode disclosure, only evidence of

concealment (accidental or intentional) is to be considered. That evidence must tend to

show that the

quality

of an inventor’s best mode disclosure is so

poor as to effectively result in concealment.

I.

EXAMPLES — BEST MODE REQUIREMENT SATISFIED

In one case, even though the inventor had more information in his

possession concerning the contemplated best mode than was disclosed (a known computer

program) the specification was held to delineate the best mode in a manner sufficient

to require only the application of routine skill to produce a workable digital

computer program.

In re

Sherwood,

613 F.2d 809, 204 USPQ 537 (CCPA 1980).

In another case, the claimed subject matter was a time controlled

thermostat, but the application did not disclose the specific Quartzmatic motor which

was used in a commercial embodiment. The court concluded that failure to disclose the

commercial motor did not amount to concealment since similar clock motors were widely

available and widely advertised. There was no evidence that the specific Quartzmatic

motor was superior except possibly in price.

Honeywell

v.

Diamond,

499 F.Supp 924, 208 USPQ 452 (D.D.C. 1980).

There was held to be no violation of the best mode requirement even

though the inventor did not disclose the only mode of calculating the stretch rate

for plastic rods that he used because that mode would have been employed by those of

ordinary skill in the art at the time the application was filed.

W.L. Gore

& Assoc., Inc.

v. Garlock Inc.,

721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).

There was no best mode violation where the patentee failed to

disclose in the specification “[k]nown ways to perform a known operation” to practice

the claimed invention. “Known ways of performing a known operation cannot be deemed

intentionally concealed absent evidence of intent to deliberately withhold that

information.”

High Concrete Structures Inc. v. New Enter

220 USPQ 303 (Fed. Cir. 1983).

There was no best mode violation where the patentee failed to

disclose in the specification “[k]nown ways to perform a known operation” to practice

the claimed invention. “Known ways of performing a known operation cannot be deemed

intentionally concealed absent evidence of intent to deliberately withhold that

information.”

High Concrete Structures Inc. v. New Enter. Stone & Lime

Co.,

377 F.3d 1379, 1384, 71 USPQ2d 1948, 1951 (Fed. Cir. 2004). The

unintentional failure to disclose in the specification the use of a crane to support

the patented frame in order to carry out the method of loading and tilting the frame

was held not to defeat the best mode requirement because one of ordinary skill in the

art would understand and use a crane to move heavy loads.

Id.

“The

best mode requirement of

[35 U.S.C.] § 112

is not violated

by unintentional omission of information that would be readily known to persons in

the field of the invention.”

Id.

There was no best mode violation where there was no evidence that

the monoclonal antibodies used by the inventors differed from those obtainable

according to the processes described in the specification. It was not disputed that

the inventors obtained the antibodies used in the invention by following the

procedures in the specification, that these were the inventors’ preferred procedures,

and that the data reported in the specification was for the antibody that the

inventors had actually used.

Scripps Clinic and Research Found.

v.

Genentech, Inc.,

927 F.2d 1565, 18 USPQ 2d 1001 (Fed. Cir.

1991).

Where an organism was created by the insertion of genetic material

into a cell obtained from generally available sources, all that was required to

satisfy the best mode requirement was an adequate description of the means for

carrying out the invention, not deposit of the cells

ad actually used.

Scripps Clinic and Research Found.

v.

Genentech, Inc.,

927 F.2d 1565, 18 USPQ 2d 1001 (Fed. Cir.

1991).

Where an organism was created by the insertion of genetic material

into a cell obtained from generally available sources, all that was required to

satisfy the best mode requirement was an adequate description of the means for

carrying out the invention, not deposit of the cells. As to the observation that no

scientist could ever duplicate exactly the cell used by applicants, the court

observed that the issue is whether the disclosure is adequate, not that an exact

duplication is necessary.

Amgen, Inc.

v.

Chugai Pharm. Co.,

927 F.2d 1200, 18 USPQ 2d 1016 (Fed. Cir.

1991).

There was held to be no violation of the best mode requirement where

the Solicitor argued that concealment could be inferred from the disclosure in a

specification that each analog is “surprisingly and unexpectedly more useful than one

of the corresponding prostaglandins . . . for at least one of the pharmacological

purposes.” It was argued that appellant must have had test results to substantiate

this statement and this data should have been disclosed. The court concluded that no

withholding could be inferred from general statements of increased selectivity and

narrower spectrum of potency for these novel analogs, conclusions which could be

drawn from the elementary pharmacological testing of the analogs.

In

re

Bundy,

642 F.2d 430, 435, 209 USPQ 48, 52 (CCPA 1981).

II.

EXAMPLES — BEST MODE REQUIREMENT NOT SATISFIED

The best mode requirement was held to be violated where inventors of

a laser failed to disclose details of their preferred TiCuSil brazing method which

were not contained in the prior art and were contrary to criteria for the use of

TiCuSil as contained in the literature.

Spectra-Physics, Inc.

v.

Coherent, Inc.,

827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.

1987)

S — BEST MODE REQUIREMENT NOT SATISFIED

The best mode requirement was held to be violated where inventors of

a laser failed to disclose details of their preferred TiCuSil brazing method which

were not contained in the prior art and were contrary to criteria for the use of

TiCuSil as contained in the literature.

Spectra-Physics, Inc.

v.

Coherent, Inc.,

827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.

1987).

The best mode requirement was violated because an inventor failed to

disclose whether to use a specific surface treatment that he knew was necessary to

the satisfactory performance of his invention, even though how to perform the

treatment itself was known in the art. The argument that the best mode requirement

may be met solely by reference to what was known in the prior art was rejected as

incorrect.

Dana Corp.

v.

IPC Ltd. P'ship,

860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 1988).

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