TALtech v. Esquel Apparel (Fed. Cir. 2008) (nonprecedential)
Summary: (1) An applicant need not disclose its own prior work or inspiration for invention if merely cumulative of other references cited; (2) Failing to identify the brand of adhesive tape used in the invention was a best mode violation — resulting in claim invalidation; (3) There is no presumptive order of the steps in a process claim – unless the claim language “requires an ordering of steps” either implicitly or explicitly.
One of TAL’s employees – John Wong – was inspired by TAL’s use of heat-fusible adhesive tape in manufacture raincoats. Over a long process of trial and error, Wong figured out how to use a particular variety of adhesive tape to create a dress shirt that does not pucker after washing.
After receiving a US utility patent, TAL became embroiled an patent litigation with another Hong-Kong based manufacturer – Esquel Apparel. In that litigation, the district court found TAL’s patent unenforceable due to inequitable conduct during prosecution and invalid for failing to submit fulfill the “best mode” requirement of 35 U.S.C. 112 (inter alia). Based on the inequitable conduct, the court also awarded attorney fees to Esquel.
Inequitable Conduct: “In this case, the district court found TAL liable for inequitable conduct because inventor John Wong had not disclosed the raincoat seam that inspired his invention to the PTO.” On appeal, the CAFC first dispelled any notion that a patent applicant is required to disclose the inspiration for the invention. Although not stated by the court, 35 U.S.C. 103(a) arguably indicates that the inspiration is not relevant to the patentability inquiry: “Patentability shall not be negatived by the manner in which the invention was made.”
Here, the CAFC noted that TAL’s raincoat may well have been “merely cumulative” to a German patent application that was submitted during prosecution. “If the undisclosed raincoat seam was merely cumulative to [the German application], then no inequitable conduct lies in its nondisclosure.”
Best Mode: At the time of filing, Wong had settled upon a particular type of adhesive tape – known as Vilene SL33 – as the best way to form the seams. The patent application did not, however, disclose Vilene SL33. A patent may be invalidated for failing to submit a “best mode” if (1) the inventor possessed a best mode at the time of filing; and (2) the written description fails to disclose the best mode in a way to allow one reasonably skilled in the art to practice that mode.
Possession of the Best Mode: The evidence clearly showed that Wong “experimented with many adhesives but settled on a preference for one.” Thus, the court agreed that the first prong was met — the inventor did possess a best mode at the time of filing – i.e., Vilene SL33.On the second prong the CAFC disregarded the applicant’s argument that the PTO “prefers the use of generic names of products” and that there is no evidence that the Vilene brand products are actually better quality than other brands. Instead, the court honed-in on the result of the first prong – that Vilene SL33 was the best mode known to the inventor – and agreed that the best mode had not been disclosed. “TAL has not explained how the written description teaches one having reasonable skill in the art the way to practice the best mode as found in the analysis of the first prong – the use of Vilene SL33.”
Process Order: “Generally, there is no presumption of order, and so a claim with many steps can be infringed by an accused process performing the claimed steps in any order. However, we will find that the claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires such a narrow construction.”
In this case, the claimed process implicitly requires a particular ordering. In particular, the bonding adhesive must be presented before a folding step because the folding step requires that the garment abut the bonding element.
Conclusion: The asserted claims were found invalid and not infringed. The remand appears only necessary to determine inequitable conduct and consequently potential attorney fees.
Automotive manufacturers and suppliers are among tesa’s most important industrial customers internationally. tesa offers professional solutions for protection during transportation, protection of delicate surfaces,permanent fixing and noise insulation.
Automotive manufacturers and suppliers are among tesa’s most important industrial customers internationally. tesa offers professional solutions for protection during transportation, protection of delicate surfaces,permanent fixing and noise insulation.
Dear oiwuerotiu, good to see you are still there, as I have always wanted some elucidating dialogue on this issue. My question is is there a DUTY to disclose a better mode discovered between priority foreign filing and the US filing? Most of my clients would elect not to spend the money to update the best mode if there is no duty to do so. Does describing the invention, including the best mode, at the time of foreign filing fulfill the 112 best mode requirement, EVEN THOUGH a better mode was discovered between foreign filing and US filing? If the answer is yes, then the client of course would elect not to spend the money to update the best mode in the US filing. On the other hand, if the foreign filing description does not fulfill the 112 best mode requirement (i.e. the best mode requirement is evaluated at the time of US filing), then it would behoove the client to update the US filing description with the better mode. This brings me back to my original question: is there a DUTY to disclose a better mode that is discovered between foreign filing and US filing?
conf. scotus: I confess that I don’t see the problem. In your hypo, you haven’t laid out any substantial reason _not_ to disclose the better mode. Thus, given the alleged climate of uncertainty, and all of the possible pitfalls of not disclosing the better mode, why wouldn’t you?
The only pertinent question in your hypo, to me, is the first one: is it just a better mode, or a new invention? Or, more to the point: do you claim it or just disclose it? If it’s just a better mode, you can disclose it in the con without claiming it, still get the priority date on the claimed subject matter, and avoid the validity problem. If it’s a new invention, then you claim it as con-in-part and get priority on claimed original subject matter but not the new stuff. But, I’m sure you knew all of that already, so again, I don’t see where the problem is.
Jed raises a number of issues with this case which are worth addressing.
First of all, there is no indication that the attorney was at fault. Most likely the client wanted a patent but did not want to disclose the best mode and deliberately withheld information about the experiments that he had carried out. A common situation on both sides of the Pond!
Secondly, although not covered in the decision, there may be a significant argument that the claim is invalid for covering non-operable embodiments. The evidence is that Mr Wong found a workable tape by a long process of trial and error in relation to the combination of a particular seam structure and a particular adhesive tape. His main claim recites “a bonding element having at least a thermal adhesive component”. Claim 2 recites a thermoplastic material and claim 3 specifies that the thermoplastic is selected from the group consisting of polyamide, polyester, olefinic, polyurethane and ethylene vinylacrylate copolymer materials, and claim 11 specifies adhesive filaments of diameter 20-80 microns, giving a wide field of coverage but being totally devoid of particularity. It seems inescapable that experimentation would find embodiments covered by the claims that do not give the desired washable non-puckering seam.
Thirdly the patent disobeys a basic rule of drafting which is to disclose at least one fully workable embodiment in detail. The questions naturally arise: What fabric did you bond? What was the fabric construction and weight? What fibres in the fabric? What was the adhesive you used? How did you test the resulting seam? What results did you obtain? What other embodiments did you make? It was foreseeable that a real-world practical embodiment of the adhesive needed to be disclosed since the whole point of novelty was the adhesive.
The difficulty is, of course, that the patentee was experimenting with third party proprietary materials whose composition and nature he was not in a position to know. Always difficult or a small inventor – but in such a situation it is prudent to state the name of the manufacturer and all the product details you can find. Odds are that the manufacturer has a patent on the material which explains its nature and provides general definitions which can profitably be used, and finding the patent should not be too much of a problem since the product data sheet will give good information for a key-word search.
If we adopt a bottom-up rather than a top-down style of drafting and start from real-world workable embodiments insofar as the inventor(s) can create them we should be able to avoid troubles of the present kind.
Dear oiwuerotiu,
Your very example explains why there could potentially be a problem. Your earlier post states:
“So, if you filed a con including A+B(Y), _should_ you get the priority date for A+B(X)?”
The answer, of course, is no, because Y in your hypo is a separate invention. You can only claim priority to what you previously disclosed, and Y was not previously disclosed.
I will attempt to highlight the problem though regarding better mode. Your client makes A+B (X) in your hypo and discloses and claims A+B(X) in a priority application. After your priority application, competitor makes an improvement over X, and claims it as A+B(Y), obviously taking the position that A+B(Y) is patentable over A+B(X). Your client is aware that the competitor is attempting design-arounds of A+B(X). Your client likewise makes an improvement over X, but your client is not sure if the improvement is a better mode or the improvement rises to the level of being patentable over the existing disclosed mode X. Assuming your client is not sure exactly what the competitor has filed, you, in turn, advise your client what???? File a continuation, claiming A+B(Y), and risk a later filing date than your competitor’s filing date of A+B(Y)? Or file a regular application, describing the improvement as a better mode of A+B(X), i.e. updating the best mode, and taking the position the improvement of A+B(X) is merely just that, i.e. an improved mode? These questions should highlight to you why there could be a problem. Do you disclose this as a “better mode” in the interim period or not? Do you perceive this as a problem, or just ignore it? More importantly, even if your client is not aware of competitor activity, and you and the client perceive the improvement as merely a better mode, what do you advise your client? Disclose the better mode, or not? If you advise your client to not disclose the better mode, do you jeopardize the validity of the patent? If the better mode is not disclosed, and later the competitor practices your client’s claimed invention using the better mode to make A+B(X), the competitor could argue and your client could have to spend some coin defending, that your client failed to disclose the better mode that was developed in the interim between your client’s priority application and your client’s regular application. And you say to your client, “hmmm, sorry client, guess we should have disclosed the better mode.” This problem, of course, vanishes if there is no duty to update the best mode during the interim period, which, of course, gets you back to my original question which you never squarely answered but instead labeled as “no problem.” Is there a duty to update the best mode when a better mode is developed between priority application and regular application? Or not?
Dear Leo,
Having thought it through, I sit corrected – I see now that you are right. My guess is that my old friend was also right way back when, and that it was I who misunderstood his advice.
Thanks to your taking the time to help me understand. I now see that an Inventor can lose the right to practice his invention if he does not publish even if he is the first-to-invent the invention.
I had only ever thought of the Constitution’s Patent Clause as offering a “carrot” to an Inventor to promote progress by encouraging publishing to secure a patent. I now understand that the Patent Clause also contains a “stick” if you don’t publish. Whether one likes it or not, whether it is fair or not, this is another consequence of “the exclusive Right.”
It makes me wonder if this is part of the price the Framers had in mind for progress. In my comment in this link,
link to patentlyo.com
I wrote:
Who can doubt that
Our Founding Fathers
meant us to have a strong patent system,
or none at all,
Be all that as it may, you live and learn, especially when someone takes the time and effort to teach. This also helps explain reason behind IBM’s logic for publishing thousands of technical papers over the years even without applying for a patent to these Discoveries.
Professor Crouch’s efforts, your efforts and the efforts of other Patently-O commenters provide a most valuable resource to the IP community at large, and especially to this ordinary inventor.
The reason I raised the issue of claiming a new invention is that, if you’re at the point where you’re worrying about getting the priority date, how significant of an advance is that best mode? Further, best mode is disclosed, not claimed (and if it’s significant enough to claim, I submit that you have no business getting the priority date to begin with), so provided that your new _claims_ are still fully supported by the original disclosure, I fail to see where the problem is.
oiwuerotiu,
I intentionally left out discussion of claiming a new invention, as that does not squarely address the issue of whether to update the best mode between foreign filing and US filing. Obviously, if the better mode rises to the level of a new invention (in your hypo, Y), then a US application should be filed, as you say, claiming that new invention (Y). Such US application can still claim priority to the foreign application, just the new invention (Y in your hypo) won’t be entitled to the earlier date. But my question is different. If a better mode (i.e. a better way of making X, in your hypo) is discovered between foreign filing and US filing, do you have to update your description to include that better mode? Note that oftentimes it is critical to keep that foreign filing date. If the better mode is merely a better way of making the claimed invention (better material, better process, etc. but nonetheless well-known), does that better mode need to be disclosed in the US application?
Hi Leo,
A) My toddies are mostly comprised of two parts Early Times bourbon to one part Boissiere sweet vermouth and two dashes of Angostura, the perfect-for-me Manhattan taken at least twice before supper on a plethora of rocks.
B) The sophisticated “quo for the quid” pondering point is well taken; so well, in fact, it is better taken after much t’inken.
By the way, you raise the question of whether the law in this regard has changed in the wrong direction. I submit that it has, but for perhaps a reason that differs from your concerns. In my view, the patent statutes are not designed to reward inventors, but to reward inventors who share their technologies with the public. A scheme that discourages trade secrets and rewards the first to disclose is completely consistent with this goal. The exception in Section 273 undermines this scheme, based on an exaggerated concern about business method patents.
An inventor can choose between trade secret protection and patent protection. If he chooses the former, however, it can come back to bite him. That’s OK with me (the public), as he didn’t provide the quo for the quid.
“Is it possible my old friend was right some time ago?, but that contour has changed and today you are right and not he?”
Although the business method defense Section 273 is new, I don’t think the basic law (prior use is no defense) has changed. So no, I don’t think that your old friend and I could both be right. Of course, I could be wrong, but (as Monk would say) I don’t think so.
You are correct that Section 273 is a mess. Studying it in detail won’t directly answer your question. You have to look at it this way: the prior use defense in Section 273 was enacted relatively recently to ADD a (narrow) defense for infringement based on prior use. The fact that this was deemed necessary is a strong hint that the background law does NOT provide for such a defense. In fact, Section 271 defines infringement in terms of certain acts performed by WHOEVER. As far as I’m aware, no prior use defenses other than Section 273 appear in the statutes. And I’m pretty certain that the courts haven’t (and couldn’t) create any such defenses.
Enjoy your toddy, or whatever it is you’re having.
Oh, Lord have Mercy me — In Bermuda it is already past that happy time of day.
So, I’ll pour me a drink while you give it a “tink,” but I suggest we all pour a drink first and give thanks for the blessing, nay, the miracle, of living in America yet another day.
Dear Leo,
Thank you for your teaching. I like all your answers, even if I am constrained to disagree. I don’t doubt your word, but here, I don’t know enough to agree or disagree. I had been told maybe about 30 years ago (long before business method patents exploded onto the scene*) that practicing, e.g., weggying, in trade secret mode could not be stopped by a subsequent weggying patent, and I am now looking for a more thorough understanding. Thanks for pointing me in the right direction, 35 USC 273.
However, I took a look at 35 USC 273 and I have to tell you, for an ordinary inventor, it is quite complicated, certainly not a quick read. It is too late in the day for me to study it in detail.
I know how you disapprove of doublethink—I too think doublethink is an insidious tool of the establishment. Here, I am conflicted between my old well-meaning friend’s advice and my new well-meaning friend’s advice. Both cannot be right simultaneously, so I’m thinking the devil is somewhere in the detail. So as my busy blogging schedule may permit, I will study 273. If I have further questions after my “273 weggy” study, may I call upon you for further help?
However, two questions occur to me off the top of my head:
Is it possible my old friend was right some time ago?, but that contour has changed and today you are right and not he? If the answers to these two questions are “yes,” “yes,” then that to me is bothersome (but at least it would not be insidious doublethink), because offhand it seems to me to be a step in the wrong direction.
* FYI:
link to businessweek.com
‘I have been trying to find the answer to my question, i.e.,
“The question then is, can “you” practice A+B(Y) if “you” independently did A+B(Y)?’
I answered this question for you weeks ago; apparently you didn’t like the answer. However, neither the law nor the answer has changed in those weeks.
Except for a narrow business method exception (see 35 U.S.C. s.273), prior (secret) invention is not a defense to an infringement allegation. Further, even for that narrow business method exception, this defense is NOT transferable. So, for your “weggy” example, unless “weggying” is a commercial application of a business method, then A cannot weggy without infringing B’s weggy patent. In any event, if A sells his business to X, X may not weggy without infringing. As far as I know, the contours of the business method exception in section 273 have not been tested in court.
Dear oiwuerotiu,
My comment responded only to the question you posed in your comment directly above my first response. I haven’t been following this thread. I hope I didn’t confuse the issue.
I have been trying to find the answer to my question, i.e.,
“The question then is, can “you” practice A+B(Y) if “you” independently did A+B(Y)?”
Someone cast doubt on my opinion about this question.
Let me clarify my question.
Entity A, a business, invents “weggy” but practices weggying in trade secret mode.
Mr. B later independently invents weggy and gets a patent to which he is entitled even though A’ weggied first.
I believe A can continue to weggy despite B’s patent but A cannot allow anyone else to weggy.
Another question, if entity A sells his business to X, can X weggy?
@JAOI: well, that’s my point. The hypotheticals above are worrying about whether they have to disclose newly-discovered best modes in continuations, and whether those continuations would get the benefits of the prior-filed applications. I raise a few points: 1) where’s the line between simply a ‘best mode’ and another invention? 2) what happens if you disclose the best mode but don’t claim it (clearly, the claims would retain priority to the original application then, since the new best mode isn’t claimed) and 3) if you actually claimed your new best mode, why should you be entitled to the priority date?
These are largely rhetorical questions, of course – just things to consider.
Dear oiwuerotiu,
However, I think there’s more to it. I assumed you originally disclosed Y because you said “con” which I interpreted to mean Continuation. Is that correct? (In which case “they” may not get a NOA (Notice of Allowance) for their claim A+B(Y). If an examiner rejected, would it be a 102?, (since the disclosure is in one document) or a 103?, since it is combining A+B and Y).
If you meant c-i-p then that is a different colored horse.
Dear oiwuerotiu,
My guess is no, no priority for “you” — if “they” did A+B(Y)before “‘you’…find that A+B(Y) is better than A+B(X).”
The question then is, can “you” practice A+B(Y) if “you” independantly did A+B(Y)?
Just a note on those ‘best mode’ hypotheticals with regard to priority date and whatnot: if you’re worried about not getting the continuation date on the newly discovered material, then there would have to be a pretty fine line between simply a ‘best mode’ and an actual new invention. Also, how does the problem change if the best mode is disclosed but not claimed?
Consider this situation:
– You invent A+B, wherein B is specifically disclosed to be X.
– Then, someone else invents A+B, wherein B is specifically Y, which has particular improvements over A+B(X). They specifically claim A+B(Y), since they can’t get the broader A+B over your original A+B application.
– Then, you (independantly, let’s say) find that A+B(Y) is better than A+B(X).
So, if you filed a con including A+B(Y), _should_ you get the priority date for A+B(X)?
What about filing a provisional, develop new best mode, and file utility? Should that be different that file foreign, develop new best mode, and file utility?
priority application filing time, I believe is the answer, but please anyone correct me if I am wrong
Thanks curious and Max. That was too easy. How about a foreign client that first files in his foreign country and then one year later files in the U.S. under the Paris convention, but in the interim a better mode of practicing the invention was developed. Do we need to disclose that “better” mode in the U.S. application? Is there a risk of invalidity for not disclosing the “better” mode? If the better mode is disclosed, don’t you see a potential problem with the “better” mode portion of the description possibly not being entitled to the Paris convention priority date? Is best mode assessed at time of priority application filing or U.S. application filing?
Well, curious, on the law as it stands, I bet you are 100% right. But Confused’s niggling doubts make sense. Suppose the inventor in the interim period before the continuation comes to be filed perfects a mode that is twice as good as his previous “best” mode. Common sense (intuition) suggests that it is a fraud on the public, knowingly to file for that invention a patent application (any patent application) at a later date, without telling the public in it about the double good mode. Mind you, common sense doesn’t get you a long way, when it comes to patent law, eh? Incidentally, both “Best Mode” and “Continuations” are special to US patent law. Is ROW any the poorer, for lacking those institutions?
Dear Mr. Confused:
I agree; the answer is “no”.
Wow, it’s been a long time since a patent has been declared invalid for lack of disclosing the best mode. This case is too simple though to rely on for more complex issues, and moreover is tainted with that non-prec stamp. Usually best mode questions from clients are a bit more thorny than the one presented in this case. For example, if we file a continuation three years later, but in the interim a better mode of practicing the invention was developed, do we need to disclose that better mode in the continuation? In other words, is there a duty to update the best mode? I think the answer is no, because the duty to disclose the best mode is at the time the original (parent) case was filed, no?
I was referring to In re Katz, 592 F.2d 1169. This is not legislative history, just an interpretation of “patentability shall not be negatived…”. Sorry about the confusion. Still, the admonishon that under this statutory provision no weight should be given to the method of finding the invention should apply.
Nonprecedential opinions are a curse. The CAFC does not often find best mode violations outside of the classic unpredictable arts, and this case is a useful example. The discussion of the sequencing of steps is also interesting, and a little different than one might think from the headnote. (There are some possible implications for claim drafting when one does not want to be limited to an implied sequence.) The “per curiam” authorship warns us that there is not any startling new law, but it can be useful to cite the CAFC’s working-out of an example.
Thanks John Roethel. I could not have invented a clearer illustration of the difference between a common law jurisdiction and those parts of the world (Europe, Asia) not on the English law standard. It would be absurd that the European Patent Convention would suffer an amendment, simply because of a string of three words “flash of genius” in one solitary court decision. I used to think that the absence of “Binding Precedent” everywhere in the world, apart from the English law bit, was a hindrance to legal certainty. No longer.
I thought that “shall not be negatived” was added into the 1952 Act to overrule Cuno Engineering that required a “flash of genius” showing to get a patent. Just working off memory here.
No problem, Ms. C. Do you have a name for the “strawberry case”?
Leopold, sorry about the Scalia/torture card, the analogy was mildly stretched. I just hope that whoever briefs CAFC on Kubin will play the strawberry/shall not be negatived card.
Coming in here without the knowledge needed to comment academically but: I always thought that the “shall not be negatived” was just a valiant attempt to prevent obviousness being determined subjectively. Here in Europe, the EPO makes great efforts to decide obviousness objectively, and for that reason is dismissive of any evidence concerning “the manner in which the invention was made”. Reminds me of the English judge who opined a hundred years ago that the inventor is the last person on earth that you need in the witness box, when one is aiming to try obviousness fairly, in a common law, equitable jurisdiction.
Well, since you’ve played the Scalia/torture card, then I give up. You win.
Leopold, I guess if you think hard enough, you can square any paradoxical concepts. Justice Scalia thinks torture is not punishment. But, what bothers me is not only that “obvious to try” makes the language of section 103 “patentability shall not be negatived …” meaningless in just about every case, but also that it goes against the legislative history of that sentence. If I recall correctly, it was enacted to overrule the strawberry flavor component case. That was precisely an “obvious to try case”, where the motivation and means of doing it were in the prior art, but the result was not.
The courts find inequitable conduct too easy. Makes it not worth it to go into prosecution. You just do your job, and 5 years later your whole career is in question. I bet more than half the bar of prosecutors has committed inequitable conduct at one time or another, the way it is thrown around. I’ll switch to litigation so I can be the accusor rather than the accused.
‘…”obvious to try” as an obviousness standard is incompatible with “[p]atentability shall not be negatived by the manner in which the invention was made”.’
Are you sure? It seems to me that ‘obvious to try’ (and the obviousness standard in general) is directed to the PHOSITA – i.e., whether this mythical being would find it obvious to try a finite number of variations that include the claimed invention. ‘Patentablity shall not be negatived …’ seems to be focused instead on the actual circumstances of the invention. The fact that an inventor simply tried a finite number of variations does not mean that it was obvious to try.
“Anybody would have tried that, if faced with the same problem” is quite different than “Look at that guy – he’s no genius.”
The point I was trying to make is that “obvious to try” as an obviousness standard is incompatible with “[p]atentability shall not be negatived by the manner in which the invention was made”. BPAI chose as authority a dictum contradictory to statute.
Ms. Culpability wrote: In re Kubin, page 8, bottom verse: “Under KSR, it’s now apparent “obvious to try” may be an appropriate test in more situations than we previously contemplated.”
I wouldn’t call that a holding, simply an analysis contrasting the approach to ‘obvious to try’ in KSR vs. the appoach of ‘obvious to try’ followed by the Federal Circuit prior to KSR.
KSR changed the law on obviousness. One of its changes included changing the law on ‘obvious to try.’
“Could you please quote the holding from In re Kubin that you are referring to?”
In re Kubin, page 8, bottom verse: “Under KSR, it’s now apparent “obvious to try” may be an
appropriate test in more situations than we previously contemplated.”
Nonprecedential opinions? I thought there was a movement afoot to get rid of nonprec designations. Haven’t some circuits or some state courts outlawed this practice? If an opinion represents the reasons for a court’s decision, shouldn’t one be allowed to cite to that opinion? Nonprecs are Alice in Wonderland law.
“Actually, In re Kubin holds otherwise, and this is why it should be reversed. Am I wrong?”
Could you please quote the holding from In re Kubin that you are referring to?
“Patentability shall not be negatived by the manner in which the invention was made”
Actually, In re Kubin holds otherwise, and this is why it should be reversed. Am I wrong?
Help me, Point. What reason? To hasten the demise of the requirement for disclosure of “Best Mode” perhaps? Patent Hawk has a developing thread on this case too, with a sharp comment from the Babel Boy.
That’s a long write-up for a non-prec opinion. They issued it that way for a reason.
homed in
Dennis,
Great cautionary tale on best mode.
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