Best Mode: Only Mostly Dead

By Jason Rantanen

Ateliers de la Haute-Garonne v. Broetje Automation USA Inc. (Fed. Cir. 2013) Download 12-1038.Opinion.5-17-2013.1
Panel: Newman (author), Prost (dissenting), Reyna

While the America Invents Act eliminated the failure to disclose best mode as a defense in patent infringement suits commenced on or after September 16, 2011, it remained available as a defense for litigation that had already commenced.  In AHG v. Broetje, the Federal Circuit divides over the issue of whether intentional concealment is required for a best mode violation in a split that will likely remain forever unresolved.

AHG is the owner of two patents relating "to the dispensing of objects such as rivets through a pressurized tube with grooves along its inner surface, to provide a rapid and smooth supply of properly positioned rivets for such uses as the assembly of metal parts of aircraft."  Slip Op. at 2. Prior to the enactment of the AIA, AHG filed an infringement suit against Brotje. 

The crux of Brotje's best mode argument turned on whether the inventors' best mode involved three-grooves or an odd number of grooves. At the time of the application, the inventors were mostly using three-groove embodiments.  The patents disclosed a three-groove embodiment (among other examples including a fifty-five groove and two two-groove embodiments).  Brotje argued, however, that at the time of the application the inventors considered an odd number of grooves to be the best mode of carrying out the invention.  Based on Broje's theory, the district court granted summary judgment of invaliditydue to a failure to disclose the best mode of carrying out the invention.  AHG appealed.

Best mode and the issue of intent: In granting summary judgment, the district court stated that "the clear weight of Federal Circuit authority holds that intentional concealment is not required for best mode violations . . . ." and that the "patents-in-suit are 'so objectively inadequate as to effectively conceal the best mode from the public,' such that a reasonable jury could not find in AHG’s favor with respect to Broetje’s ‘odd number’ theory."  Slip Op. at 9, quoting district court (emphasis in original). 

On appeal, the majority disagreed with the district court that this was the correct correct legal standard.  "Violation requires intentional concealment; innocent or inadvertent failure of disclosure does not of itself invalidate the patent."  Slip Op. at 10.  Thus, under the majority's view, a best mode violation requires both that the inventor knew of a better mode and intentionally concealed it.

Judge Prost disagreed that this is the law of best mode.  "The majority holds that a '[v]iolation [of the best mode requirement] requires intentional concealment.'…"  Dissent at 2 (emphasis in quotation).  This decision "is itself based on an error of law.  It is not in accord with our precedent regarding intent in a best mode analysis."  Id. at 1. Rather, "this court has repeatedly acknowledged the error in the Brooktree dicta and recognized that we are bound to follow our earlier precedent that intent is not an element of a best mode violation."  Id. at 3.

In support of their positions, both the majority and dissent cite an array of recent precedents and engage in a series of dueling footnotes.  This disagreement might seem somewhat minor; after all, best mode is being phased out as a defense in patent litigation.  What is interesting here is the way in which the judges express their disagreement: both opinions suggest that not only is the other side wrong, but that its opinion is invalid.  This is particularly apparent in the treatment of recent precedent by the majority and dissent.  Both cite substantial amounts of recent and older opinions that arguably support their positions and conclude that the opposing sets of precedents are invalid; they then cite back to older precedent in a complex dance in which older precedent is better, unless it is too old, unless it is cited in a more recent old opinion (compare majority footnote 3 with dissent footnote 1).

This opinion itself seems likely to fall into that morass when it is cited in the future: some judges may take the view that it is binding for what it says while others take the opposite view.  I'm curious as to whether this reflects an emerging trend in Federal Circuit jurisprudence or whether it no different than other doctrinal disagreements within the court.  My observational sense is that dissents and disagreement within Federal Circuit opinions are have been on a substantial rise but haven't yet put together the data to test that intuition.

Articulating the best mode:  Majority and dissent also disagreed over what needed to be disclosed.  The majority interpreted the best mode requirement as requiring that the best embodiment must be disclosed.  "The general statement that an odd number is better than an even number is not a statement of a better mode than the preferred embodiment shown in the specification. There was no evidence of intentional concealment of a better mode than was disclosed. The preferred embodiment's disclosure of a three-groove tube is adequate to enable a person skilled in this art to practice the best mode." Slip Op. at 14.

The dissent disagreed.  In addition to concluding that it was a disputed question of fact as to whether the three-groove embodiment or the odd-number of grooves was the preferred embodiment, the dissent would have found even the three-groove embodiment to not be adequately disclosed.  "[T]he inventors did not simply reveal their best mode and disclose others; they buried the best mode among other embodiments, also falling under the preferred embodiment heading, that did not include the
'essential' feature that the inventors discovered and knew was necessary to successfully implement their invention. Such disclosure is not the “quid pro quo” demanded by the best mode requirement."  Dissent at 6.

23 thoughts on “Best Mode: Only Mostly Dead

  1. 22

    neuter the very existence of the concept…

    LOL. That’s even sillier than “draconian.”


  2. 20

    As typically the case, Judge Newman is correct. As long as the best mode at time of filing date is disclosed, the best mode is satisfied. It is actually quite simple.

    J. Barrera

  3. 19




    (of laws or their application) Excessively harsh and severe.

    Hmm, neuter the very existence of the concept…

    Yes, ‘draconian’ does seem an apt choice of words.

  4. 18

    Mind you, whenever there is a “Secret Recipe” there are trade secrets and not just Best Mode but also Enablement issues

    This is expressly the opposite point Paul was making MaxDrie.

    Clench your eyes tighter, stick your fingers deeper into your ears and chant louder – I am sure that will make reality actually behave as you think it should.


  5. 17

    Sure it is an unusal and bizarre twist – but you are missing the point that the item has been removed from court action (and your avoidance of this fact is just as – if not more – unusual and bizarre).

  6. 16

    To Paul Morgan: as I understand it, you contemplate prior user rights as a shield against assertions of infringement.

    Such prior user rights have been part of the landscape in Europe at least since the 1973 European Patent Convention. Experience is that they are not a very reliable shield.

    I think the reality is that it is very rare for the serious and effective preparations towards commercialisation of a particular embodiment to begin before the date of the claim that, in time, comes to be asserted. More usually, what you were doing before the date of the claim isn’t quite “on the button” enough to make a reliable shield.

    Mind you, whenever there is a “Secret Recipe” there are trade secrets and not just Best Mode but also Enablement issues. But this is nothing new, for owners of secret recipes.

  7. 15

    Anon, the effect of “judicial disfavor” is not limited to making public statements of public policy. District Court judges who have good reasons to feel that one party in a patent suit has been “gaming the system” or otherwise not wearing a “white hat” have numerous ways of making successful litigation more difficult for that party.
    The fact that the requirement for disclosing the best mode in an application to the PTO was not removed from 112 itself adds an unusual if not bizzare twist to this particular situation.

  8. 14

    P.S. MD a U.S. “best mode” issue should not be confused with an inadequate “enablement” issue [even though some CAFC judges seem to have done so in some panel decisions]. That is, as the above-cited case law that should have been controlling make clear, a “best mode” issue should only properly arise where a sufficient 112 enablement of the claimed subject matter HAS been disclosed in the applicant’s specification, BUT the applicants knew of a significantly better enablement at the time they filed their application and withheld it from their specification.

  9. 13

    likely judicial disfavor of such tactics from a public policy standpoint in any enforcement such patents, should give pause to using them

    Sorry Paul – that’s the point here – the judiciary has been foreclosed from making any such public policy standpoints.

  10. 12

    Nice – completely wrong – but nice.

    Did Malcolm shine your hat this morning for you?

  11. 11

    MD, that is a good observation. That is, if applicants choose to leave out an unovious and commercially superior embodiment from their specifications that they want to keep secret, those applicants may risk someone else independenty re-inventing and getting a later narrow patent on just that improvement, in some cases.
    BUT, if that embodiment is a secret those applicants are using commercially before the later patenting, will they not be protected by the AIA Section 273 expanded protection of trade secrets from such patents?
    Or, protected by the spec-witheld embodiment being obscurely but sufficiently “publicly” [per AIA Section 102] disclosed elewhere?
    P.S. In spite of the AIA precluding any litigation attacks on such tactics, the fact that deliberately not disclosing a known better mode will still violate Section 112, coupled with likely judicial disfavor of such tactics from a public policy standpoint in any enforcement such patents, should give pause to using them.

  12. 10

    Please explain.

    You know the game very well.

    You take a position that flatly contradicts some recent, well-known case. Say, Monsanto or eBay or Bilski.

    You then cite an older case, which you insist is “more on point”. Okay, not “cite” exactly. You vaguely refer to some older case within the past century, and insist that it supports you and controls. Older precedent is better.

    Then, when Ned cites old cases to support his position, you dismiss him as being out of touch with the law, because his precedent is too old.

  13. 9

    In First to File discovery-free civil law territory, the “Best Mode” issue is self-regulating. As the drafter, preparing to draft, you explain to the client the worst case outcome when you a) include it or b) leave it out. The client then commits to the one or the other, and has to live with the consequences, for the next 21 or more years.

    Outside the USA, what are the worst consequences of choosing not to feature the best mode? Why, loss of your own patent for insufficiency of disclosure, together with being dominated by your competitor’s patent, that is based on an application filed even later than yours, but which was filed with a disclosure that did actually enable what later turns out to be the only embodiment of decisive commercial importance.

    You pays your money, folks, and takes your choice.

    Not had time yet to read the Decision. Looking forward to doing that soon, usefully informed by this thread.

  14. 8

    “in a split that will likely remain forever unresolved. ”

    Don’t worry D, when I get to be in congress or in the presidency, I will go ahead and politically bargain the return of the best mode req, and it will come back with a vengence. Perhaps a little jail time for failure to disclose along with provisions to make it really easy to discover violations?

  15. 7

    After briefly reading the case, the technical issue really doesn’t seem like odd or even grooves, but best mode is “three or more” grooves. It seems that two grooves may be the cause of instability and four grooves allegedly avoids the problem. Why do we drift from technical merits to such a false abstract as this case demonstrates? The bobbled testimony just confirms that three is better than two! What’s not to get? What am I missing?

  16. 6

    Isn’t “best mode” going to be important in distinguishing pre-2013 filed patents with favored-status Japanese patents that I understand do not have to disclose best mode, and, also have the advantage of filing/publication prior art priority dates?

    As a shot-at messenger, I don’t wish to practice under the new game rules. Who is going to be left to give an honest opinion?
    The rules are smartly aimed at putting the blame on the patent prosecutor. It is in part the fault of e-filing. Maybe registered patent attorneys should go on strike.

  17. 4

    Because not complying with the best mode requirement amounts to concealing the preferred mode contemplated by the applicant at the time of filing, in order to find that the best mode requirement is not satisfied, it must be shown that the applicant knew of and concealed a better mode than he disclosed.

    Nice circular argument there, Judge Rich. To paraphrase: “‘Best mode’ requires intentional concealment, therefore to show that best mode wasn’t satisfied you need to show intentional concealment.”

  18. 2

    More recent Fed. Cir. panel decisions that failed to follow what should have been controlling prior decisions is precisely why “best mode” law got into its present expanded and unresolved legal mess. A mess which encouraged increased wasteful and expensive litigation discovery and thus directly led to to the strange AIA elimination of best mode as a litigation defense while still retaining in 112.
    Note, for example, the Federal Circuit decision by Judge Rich in 1986 in Hybritech Inc. v. Monoclonal Antibodies, Inc., 231 USPQ 81, 93-94: “Because not complying with the best mode requirement amounts to concealing the preferred mode contemplated by the applicant at the time of filing, in order to find that the best mode requirement is not satisfied, it must be shown that the applicant knew of and concealed a better mode than he disclosed. DeGeorge v. Bernier, 768 F.2d 1318, 1324, 226 USPQ 758, 763 (Fed. Cir. 1985)” (Quoting with approval In re Sherwood, 613 F.2d 769, 135 USPQ 311 (CCPA 1962). Until later Fed. Cir. panels wandered off from that long established principal [and in addition started shooting down patents for not disclosing enablements even for subject matter irrelant to the claims], best mode was not a significant litigation problem that would instigate a draconian legislative “fix.”

  19. 1

    complex dance in which older precedent is better, unless it is too old, unless it is cited in a more recent old opinion

    Please explain.

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