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.