Overkill of the Best Mode

By Dennis Crouch

Joy Mining Machinery v. Cincinnati Mine Machinery (Fed. Cir. 2012) (nonprecedential)

In what may well be its final decision on the best mode requirement of 35 U.S.C. §112(1), the Federal Circuit has reversed a district court judgment invalidating claim 2 of Joy MM's asserted Patent No. 6,662,932. However, the decision will provide additional legal foundation for patent applicants to keep important or sensitive information regarding their invention as a trade secret rather than including that information as part of the patent disclosure.

Here, the court confirms that the best mode requirement does not require actual disclosure of the best mode, but rather only adequate disclosure to enable one of skill in the art to practice the best mode without undue experimentation. Citing See Ajinomoto Co. v. Int'l Trade Comm'n, 597 F.3d 1267 (Fed. Cir. 2010); and Young Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d 1137 (Fed. Cir. 1997).

In this case, the inventors had apparently decided that the best mechanism for its claimed drive-pin retainer was a press-fitting. However, the applicant failed to identify that particular mechanism in the specification and instead suggested welding. At the time, a press-fitting mechanism was already known to those of skill in the art as one way to construct a drive-pin retainer. As such, the federal circuit found that the failure to disclose that best mode did not qualify as an actionable concealment.

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.

It is unclear to this author how "concealment" can be read into the statute. Rather, Section 112 affirmatively requires that the applicant "set forth the best mode" not simply avoid concealment. The America Invents Act of 2011 (AIA) substantially alters best mode jurisprudence. Although the statutory change leaves the requirement in place without amendment, the new law prevents any post grant action (either in court or the PTO) that would challenge a patent as invalid or unenforceable based upon failure to disclose the best mode.

In reality, this decision will not have much impact beyond putting another hole in a doctrine whose obituary has already been read.

Notes:

110812_1633_Overkilloft2

11 thoughts on “Overkill of the Best Mode

  1. 11

    Since the main aspect of invention suited for best mode was concealed then doctorine of equivalent should not be applicable to one who uses the concealed aspect and scope should be limited to disclosed aspect only. Eventhough patent was withheld but scope for such patents should also be limited without further widening the scope of doctorine of equivalent

  2. 10

    I am not an expert on non-US patent law, but I have been told that ‘preferred’ embodiments are given special significance in EPO patent practices, for example: perhaps we should not think only about US law when drafting a patent application.

  3. 9

    For another good reason not to morn the death of litigation attacks on 112 best mode, try justifying this CAFC decision [which makes sense, IF this is just an UN-claimed alternative known manufacturing detail] over the prior and supposedly stare decisis extreme CAFC best mode decisions in Dana Corp. v. IPC Limited Partnership, 860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 1988); Chemcast Corp. v. Arco Industries Corp.,16 USPQ2d 1033,(Fed. Cir. 1990); Dana and Spectra-Physics, Inc. v. Coherent Inc., 827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir. 1987), and others. Compare that to earlier
    CAFC best mode case law that did NOT cause best mode litigation problems. If those later CAFC panels had not made such a mess of this law, encouraging so much costly discovery, there would not have been so much pressure to get rid of it in the AIA.

  4. 8

    I agree completely. If there is any doubt about whether a claim covers a particular embodiment in the description then there’s a problem with the claim, not with a lack of magic words in the specification.

  5. 7

    Why the federal circuit so often simply ignores the language of 112 I will never be able to fathom. What on earth is it that they have against 112?

  6. 6

    does it mean that with the AIA2011 in force we can use a more normal wording such as “according to an embodiment blah blah blah, in another embodiment blah blah blah, and according to another embodiment blah blah blah” ?

    Many applicants have been using such language for years.

    If I understand, I can use “according to an embodiment randomly selected …., in another embodiment not necessarily interesting

    There is no rule against using such language (and there never has been) but, generally speaking, it’s silly to use unnecessary adjectives/adverbs in a patent application.

  7. 5

    Thank you. I’m not afraid to state that now I’m so glad and happy.

    If I understand, I can use “according to an embodiment randomly selected …., in another embodiment not necessarily interesting …., and according to another embodiment which is not particularly good …” without consequence (except maybe some questions from my client)

  8. 4

    A “preferred” embodiment is thought to be better than just an “embodiment” because of the claim construction canon suggesting that claims should be interpreted to encompass the preferred embodiment.

    I’m not anywhere of any practitioner who thinks it is “better” to add the term “preferred” in the context presented upthread (or any application drafting context). Trying to use the “canon” referred to above as a guide to application drafting is really just eleventy dimensional chess that is as likely to lead to disaster as it is to unimaginable wealth.

  9. 3

    Sorry, no, the linguistic nightmare will continue because the AIA does nothing to promote more clarity in drafting patent applications (or claims).  In your particular example, applicants are looking to avoid using the word "invention" for fear that use of that word to describe the invention will be used to limit claim scope to only cover the invention.  A "preferred" embodiment is thought to be better than just an "embodiment" because of the claim construction canon suggesting that claims should be interpreted to encompass the preferred embodiment. 

  10. 2

    Is the Best Mode requirement the source of this kind of strange wording usually found in patents: “according to a preferred embodiment blah blah blah, in a more prefered embodiment blah blah blah, in a far most prefered embodiment blah blah blah” ?

    If yes, does it mean that with the AIA2011 in force we can use a more normal wording such as “according to an embodiment blah blah blah, in another embodiment blah blah blah, and according to another embodiment blah blah blah” ?

    Or even “according to an embodiment randomly selected blah blah blah, in another embodiment not necessarily interesting blah blah blah, and according to another embodiment which is not particularly good blah blah blah” ?

    Do you see any issue with such wordings?
    You cannot imagine how glad and happy I would be to read at least one interesting answer.

  11. 1

    Perhaps a little troubling was that the Court not only reversed the SJ of best mode violation, but also instructed the trial court to enter SJ against the defendant. In that the defendant won and probably would not want to pursue BM invalidity later on, but jurisprudentially, if the patentee loses on BM at trial on SJ, then isn’t the appeals court only to decide if genuine issues of fact exist and simply reverse the BM verdict and remand for trial? Here the CAFC not just reversed but ordered the BM inquiry over.
    I havent’ read the briefs, but i can only see the actual order happening if the patentee not only requested reversal but also the order that no way can BM be proved later on.

Comments are closed.