Ateliers De La Haute-Garonne v. Broetje Automation Usa Inc. , 717 F.3d 1351 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
ATELIERS DE LA HAUTE-GARONNE
AND F2C2 SYSTEMS SAS,
Plaintiffs-Appellants,
v.
BROETJE AUTOMATION USA INC.
ANDBRÖETJE AUTOMATION GMBH,
Defendants-Cross Appellants.
______________________
2012-1038,-1077
______________________
Appeals from the United States District Court for the
District of Delaware in No. 09-CV-0598, Judge Leonard P.
Stark.
______________________
Decided: May 21, 2013
______________________
SCOTT G. LINDVALL, Kaye Scholer, LLP, of New York,
New York, argued for plaintiffs-appellants. With him on
the brief was SARAH W. SAUNDERS.
PATRICK J. KELLEHER, Drinker Biddle & Reath LLP,
of Chicago, Illinois, argued for defendants-cross appel-
lants. With him on the brief were DARREN S. CAHR, and
CARRIE A. BEYER.
______________________
2 ATELIERS DE LA HAUTE v. BROETJE AUTO
Before NEWMAN, PROST, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge NEWMAN.
Dissenting opinion filed by Circuit Judge PROST.
NEWMAN, Circuit Judge.
Plaintiffs Ateliers de la Haute-Garonne and F2C2
Systems S.A.S. (collectively “AHG”) filed suit against
defendants Broetje Automation USA Inc. and Brötje
Automation GmbH (collectively “Broetje”), asserting
counts of patent infringement, trade dress infringement,
unfair competition, and intentional interference with
prospective economic advantage. Ateliers de la Haute-
Garonne is a French company whose employees include
Jean-Marc Auriol and Philippe Bornes, the inventors of
the patents in suit.
AHG asserted two patents, United States Patent No.
5,011,339 (“the ’339 patent”) issued April 30, 1991, and
No. 5,143,216 (“the ’216 patent”) issued September 1,
1992, both entitled “Process for Distribution of Pieces
such as Rivets, and Apparatus for carrying out the Pro-
cess.” AHG alleged infringement of claims 1, 2, 3, and 6
of the ’339 patent and claims 1, 2, and 6 of the ’216 pa-
tent. The patents claim priority to a French application
filed on December 8, 1988, and relate 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. The invention
“permits dispensing a very great number of pieces without
risk of jamming in the tube and with a precise guiding
permitting maintaining the alignment of the axes of the
pieces.” Abstract, ’339 patent, ’216 patent.
ATELIERS DE LA HAUTE v. BROETJE AUTO 3
On Broetje’s motion for summary judgment, the dis-
trict court ruled, on September 26, 2011, that the claims
in suit are invalid for failure to disclose the best mode of
carrying out the invention, as required by 35 USC §112
¶1. 1 Judgment was entered under Federal Rule 54(b); the
court did not decide the other issues in the complaint,
except for, on October 13, 2011, rejecting Broetje’s argu-
ment that AHG abandoned the ’339 patent by failing to
pay the issue fee. 2
AHG appeals the judgment of invalidity on best mode
grounds. Broetje cross-appeals, stating that the patent
was abandoned. We reverse the judgment of invalidity,
affirm that the patent was not abandoned, and remand
for determination of the remaining issues.
I
THE BEST MODE
A
The specifications of the ’339 and ’216 patents include
several drawings of embodiments of the grooved tube, and
describe the operation of the invention as follows:
According to the present invention, the com-
pressed fluid is admitted into the tube behind the
last piece and is distributed along the length of
1 Ateliers de la Haute-Garonne v. Broetje Automa-
tion-USA Inc., 817 F. Supp. 2d 394 (D. Del. 2011) (“Sept.
Op.”); Ateliers de la Haute-Garonne v. Broetje Automation-
USA Inc., No. 09-598 (D. Del. 2011) (order granting
summary judgment for failure to disclose best mode)
(“Order”).
2 Ateliers de la Haute-Garrone v. Broetje Automa-
tion-USA Inc., 819 F. Supp. 2d 389 (D. Del. 2011) (“Oct.
Op.”).
4 ATELIERS DE LA HAUTE v. BROETJE AUTO
the tube at the interior of at least one longitudinal
passageway provided on the internal surface of
said tube for opening into the hollow core thereof,
such that the fluid pressure is exerted all along
the hollow core in the spaces separating said piec-
es.
’339 patent, col.2 ll.35-42.
Claim 1 of the ’339 patent follows, with numbers and
letters that refer to the drawings, as exemplified in Fig-
ures 1 and 2:
1. A process for dispensing identical pieces having a
symmetry of revolution about an axis, comprising:
providing a tube (2) having a hollow center (2a) and a
shape corresponding to the transverse section of the
greatest diameter of the pieces for assuring a periph-
eral guiding of said pieces at the level of this section,
arranging the pieces one after another in the interior
of the tube (2) with their axes of revolution extending
along the longitudinal axis of said tube and feeding
one end of said tube with a compressed fluid for assur-
ing the transfer of the pieces toward an open dispens-
ing end (2d) of said tube, admitting the compressed
fluid into the one end of the tube behind the piece
closest to said one end of the tube and distributing the
fluid along the length of the tube through at least one
longitudinal passageway (2b) on the internal surface
of said tube and opening into the hollow center (2a)
thereof for exerting the pressure of the fluid along the
hollow center in the spaces (E) between the pieces, to
the piece (1P) closest to the dispensing end on which
said pressure acts for assuring the transfer toward
the dispensing end (2d).
The specification defines “longitudinal passageway” as “a
passageway extending in the direction of the length of the
tube.” ’339 patent, col.5 ll.59-61. The issue of “best mode”
ATELIERS DE LA HAUTE v. BROETJE AUTO 5
relates to the number of such passageways or grooves,
illustrated at 2b in Figures 1 and 2:
A transverse sectional view of the tube is shown in Figure
2, which is described as a Preferred Embodiment:
The specification states:
6 ATELIERS DE LA HAUTE v. BROETJE AUTO
On the internal surface of the tube 2 are arranged
three passageways such as 2b, angularly arranged at
120º, and which extend along the length of the tube.
Each of these passageways opens into the hollow cen-
ter 2a of the tube along the length thereof.
’339 patent, col.4 ll.44-48. The specification also includes
drawings showing two grooves and multiple grooves.
Broetje, by motion for summary judgment, argued
that the patents do not adequately disclose the inventors’
beliefs concerning the best mode, citing the following
deposition testimony of inventor Auriol:
Q. Looking at [Figure] 2, does that also show the
grooves?
A. Yes.
Q. And how many are there?
A. Three. You need an odd number.
Q. Why is that?
A. To avoid that the rivet turns on itself.
Q. Rotates?
A. So as to avoid that the stem of the rivets ro-
tates too easily on itself.
***
Q. The tube that you machined to put grooves in-
to back in 1988, can you remember what con-
figuration or shape the inside of the tube had?
A. We had three grooves, just like this, because
for machining purposes it was easier to have
just three. If we only had two grooves, there
was a chance that the rivet would rotate on it-
self inside the tube because the stem of the
rivet might go inside one of the grooves.
ATELIERS DE LA HAUTE v. BROETJE AUTO 7
Q. Okay. Do you remember when you learned
that you needed an odd number of grooves?
A. We realized that from the very beginning be-
cause it kept -- if you have a groove here and
you have a chance that the rivet might flip
this way, if the rivet is very long, it will never
rotate on itself. There won’t be an issue. But
the problem is that you need to manage that
relatively short rivets will not rotate, and to
that end, of course, you don’t want them -- you
don’t want to give them an opportunity to go
through it. And with an odd number of
grooves, you’re going to have the head of the
rivet that’s going to -- going to carry on to rest
on the two grooves, and therefore, the stem of
the rivet won’t be able to -- won’t be able to go
through in order to make sure that the rivet
won’t rotate.
Auriol Dep. 40-45, July 29, 2011 (translation from
French).
Inventors Auriol and Bornes provided sworn declara-
tions stating that during development of the invention
they tried different numbers of grooves and that “At the
time of the foregoing patent applications . . . we were
mostly using three grooves. Sometimes and depending on
the size of rivets, we used four or five grooves.” Auriol
Decl. Sept. 1, 2011; Bornes Decl. Sept. 1, 2011.
Based on the inventors’ testimony, Broetje moved for
summary judgment of invalidity for failure to disclose the
best mode. Broetje argued that “Mr. Auriol’s testimony
was clear that he considered an odd number of grooves to
be the best mode of carrying out the invention.” Broetje
Summ. J. Br. No. 6 at 9. Broetje also argued: “The pa-
tents-in-suit do not adequately disclose what Mr. Auriol
believed [w]as [t]he best mode. It is indisputable that the
8 ATELIERS DE LA HAUTE v. BROETJE AUTO
patents-in-suit never say that use of an odd number of
tubes is best.” Id. (emphases in original).
AHG responded that three grooves was the best mode
known to the inventors when the application was filed,
and that the three-groove embodiment was specifically
described and thus adequately disclosed in the specifica-
tion’s text and drawings. AHG stated that there was no
concealment of a better mode than the three-groove
embodiment shown in Figure 2, and that nothing in the
inventors’ testimony departed from the description in the
specification. AHG stated that the patents identified a
“preferred embodiment” as having three grooves, that the
patents correctly stated that other numbers of grooves
may be used, and that no better mode was known to the
inventors than was described in the specification.
The district court referred to Mr. Auriol’s testimony
that an odd number of grooves is needed, and observed
that the patent does not state that an odd number of
grooves is better than an even number. The district court
concluded that “inventor Mr. Auriol, possessed a best
mode of practicing the claimed invention (i.e., an odd
number of grooves) and did not adequately disclose this
best mode in the specification.” Order at 2. The court
found that AHG had presented no evidence that a person
of ordinary skill, on reading the specification, would know
that an odd number of grooves is better than an even
number, as inventor Auriol testified. The court stated,
“the mere fact that AHG has disclosed an odd number ‘at
all’ does not mean that the specification ‘adequately’
discloses Mr. Auriol’s odd-number best mode.” Sept. Op.
at 21 (quoting Spectra-Physics, Inc. v. Coherent, Inc., 827
F.2d 1524, 1536 (Fed. Cir. 1987)). The court thus con-
cluded that “AHG’s identification of a lone embodiment
that happens to share a trait in common with the inven-
tor’s best mode is insufficient, without more, to avoid
summary judgment.” Id.
ATELIERS DE LA HAUTE v. BROETJE AUTO 9
In its summary judgment determination the district
court stated that “the clear weight of Federal Circuit
authority holds that intentional concealment is not re-
quired for best mode violations . . . .” Id. at 11 (emphasis
in original). The court concluded 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” and granted the Broetje motion for
summary judgment. Sept. Op. at 23 (quoting U.S. Gyp-
sum Co. v. Nat’l Gypsum Co., 74 F.3d 1209, 1215 (Fed.
Cir. 1996)) (emphasis in original).
B
An issue may be decided by summary judgment when
no question of material fact is in dispute, Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986), or when
the nonmovant cannot prevail as a matter of law, even on
its view of the facts and evidence. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
(1986); Allied Colloids, Inc. v. American Cyanamid Co., 64
F.3d 1570, 1573 (Fed. Cir. 1995). The court must view the
evidence in the light most favorable to the non-moving
party. Anderson, 477 U.S. at 255. On appellate review of
the grant of summary judgment, we apply the same
standard as did the district court. Seal-Flex, Inc. v.
Athletic Track & Court Constr., 98 F.3d 1318, 1321 (Fed.
Cir. 1996). To invalidate a patent on summary judgment,
the moving party must submit such clear and convincing
evidence of invalidity that no reasonable trier of fact could
find otherwise. Eli Lilly & Co. v. Barr Labs, Inc., 251
F.3d 955, 962 (Fed. Cir. 2001).
35 USC §112 ¶1 requires that the specification “shall
set forth the best mode contemplated by the inventor or
joint inventor of carrying out the invention.” To establish
violation, it must be shown that the inventor possessed a
better mode than was described in the patent, and that
10 ATELIERS DE LA HAUTE v. BROETJE AUTO
such better mode was intentionally concealed. “First, the
court must determine whether the inventor possessed a
best mode of practicing the claimed invention at the time
of filing the patent application. This first step is subjec-
tive and focuses on the inventor’s preference for a best
mode of practicing the invention at the time of the appli-
cation’s filing date. The second step is an objective in-
quiry to determine whether the inventor concealed from
the public the best mode of practicing the invention.”
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d
1364, 1373 (Fed. Cir. 2011) (internal citations omitted).
“If the inventor in fact contemplated such a preferred
mode, the second part of the analysis compares what he
knew with what he disclosed—is the disclosure adequate
to enable one skilled in the art to practice the best mode
or, in other words, has the inventor ‘concealed’ his pre-
ferred mode from the ‘public’?” Chemcast Corp. v. Arco
Indus. Corp., 913 F.2d 923, 928 (Fed. Cir. 1990).
Violation requires intentional concealment; innocent
or inadvertent failure of disclosure does not of itself
invalidate the patent. Wellman, Inc. v. Eastman Chem.
Co., 642 F.3d 1355, 1365 (Fed. Cir. 2011) (“Invalidation
based on a best mode violation requires that the inventor
knew of and intentionally concealed a better mode than
was disclosed.”) (quoting High Concrete Structures, Inc. v.
New Enter. Stone & Lime Co., 377 F.3d 1379, 1384 (Fed.
Cir. 2004)); Cardiac Pacemakers, Inc. v. St. Jude Med.,
Inc., 381 F.3d 1371, 1378 (Fed. Cir. 2004) (“The best mode
requirement differs from the enablement requirement, for
failure to enable an invention will produce invalidity
whether or not the omission was deliberate, whereas
invalidity for omission of a better mode than was revealed
requires knowledge of and concealment of that better
mode.”); Brooktree Corp. v. Advanced Micro Devices, 977
F.2d 1555, 1575 (Fed. Cir. 1992) (“[V]iolation of the best
mode requires intentional concealment of a better mode
than was disclosed . . . . That which is included in an
ATELIERS DE LA HAUTE v. BROETJE AUTO 11
issued patent is, ipso facto, not concealed.”); Engel Indus.,
Inc. v. Lockformer Co., 946 F.2d 1528, 1531 (Fed. Cir.
1991) (“Patent invalidity for failure to set forth the best
mode requires that (1) the inventors knew of a better
mode of carrying out the claimed invention than they
disclosed in the specification, and (2) the inventors con-
cealed that better mode.”); Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384-85 (Fed. Cir. 1986)
(“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.”); In re Sherwood, 613 F.2d 809,
816 (CCPA 1980) (“[E]vidence of concealment (accidental
or intentional) is to be considered.”); In re Nelson, 280
F.2d 172, 184 (CCPA 1960) rev’d on other grounds, In re
Kirk, 376 F.2d 936 (CCPA 1967) (“There always exists, on
the part of some people, a selfish desire to obtain patent
protection without making a full disclosure, which the
law, in the public interest, must guard against. Hence . . .
the ‘best mode’ requirement does not permit an inventor
to disclose only what he knows to be his second-best
embodiment, retaining the best for himself.”)
The requirement that a best mode violation requires
intentional concealment was set forth in In re Gay, 309
F.2d 769, 772 (CCPA 1962) where this court’s predecessor
explained, “Manifestly, the sole purpose of [the best mode
requirement] is to restrain inventors from applying for
patents while at the same time concealing from the public
preferred embodiments of their inventions which they
have in fact conceived.” 3
3 Broetje states that these decisions of precedent
have been superseded by conflicting panel decisions. That
is incorrect, for if conflict had arisen, the rule is that the
earlier panel decision controls unless overruled en banc.
12 ATELIERS DE LA HAUTE v. BROETJE AUTO
The district court erred in law, in stating that con-
cealment occurred although the preferred embodiment
was disclosed, and that any omission need not be inten-
tional to invalidate the patent on best mode grounds. The
issue here is not of written description or enablement or
any other aspect of §112; the sole challenged aspect
relates to the disclosure of the best mode, based on inven-
tor Auriol’s testimony that an odd number of grooves is
better than an even number.
At the time the patent application was filed, the in-
ventors primarily used a three-groove tube, as shown in
Figure 2 and described as a preferred embodiment. The
issue of compliance with the best mode requirement is
focused on the inventor’s belief at the time of filing the
patent application. Northern Telecom Ltd. v. Samsung
Elecs. Co., 215 F.3d 1281, 1286 (Fed. Cir. 2000). The best
mode requirement is satisfied when the inventor includes
the preferred mode in the specification. “There is no
requirement in 35 USC 112 that an applicant point out
which of his embodiments he considers his best mode;
that the disclosure includes the best mode contemplated
by the applicant is enough to satisfy the statute.” Ran-
Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed.
Cir. 1988).
Judge Prost in dissent argues that “Sherwood, not In
re Gay, is the precedent we must follow because it is the
latest opinion of the [CCPA].” Dissent at 3 n. 1. However,
In re Gay was cited by the CCPA after Sherwood. See
U.S. Dep’t of Energy v. Daugherty, 687 F.2d 438, 446
(CCPA 1982) (“[A] strict ‘best mode’ issue involves
knowledge of facts peculiarly within the possession and
control of Daugherty, specifically, the state of mind of the
Daugherty patentees at the time they filed their applica-
tion. Were they deliberately concealing something? See
In re Gay, [309 F.2d 769 (CCPA 1962)].”).
ATELIERS DE LA HAUTE v. BROETJE AUTO 13
domex, Inc. v. Scopus Corp., 849 F.2d 585, 589 (Fed. Cir.
1988).
The three-groove embodiment pictured in Figure 2 is
described in the specification as a preferred embodiment.
It is not disputed that the three-groove passageway was
the best mode then known to the inventors. There was no
evidence that they knew of a better mode. No inaccuracy
or misleading information is identified. Although Broetje
argues that the inventors had different theories of the
best mode, it is not disputed that the preferred embodi-
ment when the patent application was filed was the three-
groove embodiment that the specification describes as
preferred.
The inventors’ testimony is in accord with the patents’
disclosure. Mr. Auriol testified that “you need an odd
number” of grooves, pointing to the three grooves in
Figure 2 and explaining that “[i]f we only had two
grooves, there was a chance that the rivet would rotate on
itself inside the tube because the stem of the rivet might
go inside one of the grooves.” Auriol Dep. 44, July 29,
2011. He explained that “if the rivet is very long, it will
never rotate on itself. There won’t be an issue. But the
problem is that you need to manage that relatively short
rivets will not rotate . . . .” Id. Mr. Auriol and Mr. Bornes
testified that “Sometimes and depending on the size of
rivets, we used four or five grooves.” Auriol Decl. Sept. 1,
2011; Bornes Decl. Sept. 1, 2011. The record states that
this experimentation continued for several years after the
patent application was filed.
The inventors testified that after several years of de-
velopment a five-groove tube was selected for commercial
sale. However, it was not disputed that at the time the
patent application was filed, the three-groove tube was
the preferred embodiment. The issue is whether the
inventors knew of and deliberately concealed a better
mode than they disclosed. Wahl Instruments, Inc. v.
14 ATELIERS DE LA HAUTE v. BROETJE AUTO
Acvious, Inc., 950 F.2d 1575, 1579 (Fed. Cir. 1991) (“The
purpose of the best mode requirement is to restrain
inventors from applying for a patent while at the same
time concealing from the public preferred embodiments of
their inventions which they have in fact conceived.”)
(emphasis in original). In Randomex the court reiterated
that “[i]t is concealment of the best mode of practicing the
claimed invention that section 112 ¶ 1 is designed to
prohibit.” 849 F.2d at 588. There was no evidence that
either Mr. Auriol or Mr. Bornes possessed and concealed a
better embodiment than was described in the specifica-
tion.
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 specifica-
tion. There was no evidence of intentional concealment of
a better mode than was disclosed. The preferred embod-
iment’s disclosure of a three-groove tube is adequate to
enable a person skilled in this art to practice the best
mode. The judgment of invalidity on this ground is re-
versed.
II
ABANDONMENT
Broetje on cross-appeal states that the ’339 patent
was abandoned by failure to pay the issue fee. The dis-
trict court rejected this argument, finding that AHG had
“established, by a preponderance of the evidence, that the
issue fee was paid, and, hence, that the ’339 patent was
not abandoned.” Oct. Op. at 391.
Broetje again argues that the issue fee was not paid,
based on the following events: On January 23, 1991,
AHG’s attorney sent a check to the Patent and Trade-
mark Office for “SN 07/447,501 – Issue Fee.” The check
did not clear, for “insufficient funds.” On May 8, 1991, the
PTO notified the attorney of the returned check, and
ATELIERS DE LA HAUTE v. BROETJE AUTO 15
advised that “the Applicant may wish to consider filing a
petition to the Commissioner under 37 CFR 1.316(b) or (c)
requesting the acceptance of delayed payment of the issue
fee.” On May 15, 1991 the attorney wrote to AHG, ex-
plaining the situation and stating that “the matter was
immediately rectified.”
All ensuing events are consistent with payment of the
fee, for the patent was not withdrawn by the PTO, and
the PTO accepted all subsequent maintenance fees.
Broetje’s only argument is that the record does not con-
tain a “petition to revive an abandoned application.”
However, there is no record of an abandoned application.
The district court found that the issue fee was paid and
therefore the ’339 patent was not abandoned. Clear error
has not been shown in this finding and conclusion.
CONCLUSION
The judgment of invalidity on best mode grounds is
reversed. The ruling that the ’339 patent was not aban-
doned is affirmed. The case is remanded for further
proceedings.
REVERSED IN PART, AFFIRMED IN PART, AND
REMANDED
United States Court of Appeals
for the Federal Circuit
______________________
ATELIERS DE LA HAUTE-GARONNE
AND F2C2 SYSTEMS SAS,
Plaintiffs-Appellants,
v.
BROETJE AUTOMATION USA INC.
ANDBROETJE AUTOMATION GMBH,
Defendants-Cross Appellants.
______________________
2012-1038,-1077
______________________
Appeals from the United States District Court for the
District of Delaware in No. 09-CV-0598, Judge Leonard P.
Stark.
______________________
PROST, Circuit Judge, dissenting.
The majority reverses the district court’s summary
judgment because it believes the court committed legal
error by not requiring “intentional concealment” of a best
mode and by ignoring the disclosure of a particular em-
bodiment of the invention. The majority’s decision, how-
ever, is itself based on an error of law. It is not in accord
with our precedent regarding intent in a best mode analy-
sis and misconstrues as legal error the district court’s
reasonable conclusion that the best mode the inventors
possessed—an issue of fact—was not a disclosed embodi-
2 ATELIERS DE LA HAUTE v. BROETJE AUTO
ment. Because I do not see any error of law in the district
court’s opinion and agree with its conclusions on the
relevant factual issues, I respectfully dissent.
A. INTENT
The majority holds that a “[v]iolation [of the best
mode requirement] requires intentional concealment.”
Majority Op. at 10 (emphasis added). It therefore con-
cludes that the district court “erred in law” by finding
intent an unnecessary element of a best mode violation.
Id. at 12. To reach that conclusion, it relies on Brooktree
Corp. v. Advanced Micro Devices as the earliest case that
holds that concealment must be “intentional.” 977 F.2d
1555, 1575 (Fed. Cir. 1992). However, the statement in
Brooktree concerning intentional concealment was dicta
and clearly conflicted with our precedent at the time—
which repeatedly emphasized that “concealment” need not
be intentional. 1 Indeed, even the case cited in Brooktree
1 See, e.g., Spectra-Physics, Inc. v. Coherent, Inc.,
827 F.2d 1524, 1535-36 (Fed. Cir. 1987) (recognizing that
“concealment” can be accidental or intentional and that
an even a deliberate attempt to conform with the best
mode requirement can fail if the “quality of the disclosure
[is] . . . so poor as to effectively result in concealment”);
Dana Corp. v. IPC Ltd. P’ship, 860 F.2d 415, 418 (Fed.
Cir. 1988) (recognizing that “concealment” can be acci-
dental or intentional and also finding best mode violation
without any reference to “intent”); DeGeorge v. Bernier,
768 F.2d 1318, 1324 (Fed. Cir. 1985) (recognizing that
“concealment” can be accidental or intentional); Matter of
Application of Sherwood, 613 F.2d 809, 816 (CCPA 1980)
(holding that “evidence of concealment (accidental or
intentional) is to be considered”).
Oddly, the majority quotes yet wholly ignores the
statement in Sherwood that concealment can be “acci-
dental or intentional.” Sherwood, 613 F.2d at 816 (em-
ATELIERS DE LA HAUTE v. BROETJE AUTO 3
for support, Engel Industries v. Lockformer (also cited by
the majority), does not contain a single statement or
implication that concealment must be “intentional.” See
946 F.2d 1528, 1531 (Fed. Cir. 1991). Moreover, as the
Appellee Broetje submits, this court has repeatedly
acknowledged the error in the Brooktree dicta and recog-
nized that we are bound to follow our earlier precedent
that intent is not an element of a best mode violation. 2
Accordingly, in my view, there is no basis to reverse the
phasis added). Instead, the majority focuses on what
concealment might mean only in light of In re Gay, 309
F.2d 769, 772 (CCPA 1962). However, Sherwood, not In
re Gay, is the precedent we must follow because it is the
latest opinion of the Court of Customs and Patent Appeals
(“CCPA”). In re Gosteli, 872 F.2d 1008, 1011 (Fed. Cir.
1989) (holding that “[t]he CCPA’s later decisions control
because that court always sat en banc”).
2 U.S. Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d
1209, 1215-16 & n.7 (Fed. Cir. 1996) (holding that intent
is not required for a best mode violation and noting that
the discussion of intent in Brooktree was dicta); see also,
e.g., In re Cyclobenzaprine Hydrochloride Extended-
Release Capsule Patent Litig., 676 F.3d 1063, 1085 (Fed.
Cir. 2012) (holding that “the proper inquiry [in a best
mode analysis] focuses on the adequacy of the disclosure
rather than motivation for any nondisclosure”), cert.
denied, 133 S. Ct. 933 (2013); Star Scientific, Inc. v. R.J.
Reynolds Tobacco Co., 655 F.3d 1364, 1373 (Fed. Cir.
2011); Graco, Inc. v. Binks Mfg. Co., 60 F.3d 785, 789-90
(Fed. Cir. 1995) (holding that “specific intent to deceive is
not a required element of a best mode defense”). Indeed,
the majority acknowledges that “earlier panel decision[s]
control[] unless overruled en banc,” but they apparently
believe Brooktree to be first in time. Majority Op. at 11
n.3 (citing Newell Cos. v. Kenny Mfg. Co., 864 F.2d 757,
765 (Fed. Cir. 1988)).
4 ATELIERS DE LA HAUTE v. BROETJE AUTO
district court for properly concluding that a best mode
violation does not require an intent to “conceal.” 3
B. DISCLOSURE OF A PREFERRED EMBODIMENT
The majority also concludes that the district court le-
gally erred because the best mode of the invention was a
tube with three grooves and the inventors disclosed a
three-grooved preferred embodiment in the patents. See
Majority Op. at 12-14. Assuming arguendo that the
majority is correct that a three-grooved tube was the best
mode and was disclosed as an embodiment, 4 the inven-
3 To support its holding that concealment must be
intentional, the majority relies on three of our more
recent opinions, Wellman, Inc. v. Eastman Chemical Co.,
642 F.3d 1355, 1365 (Fed. Cir. 2011), High Concrete
Structures, Inc. v. New Enterprise Stone & Lime Co., 377
F.3d 1379, 1384 (Fed. Cir. 2004), and Cardiac Pacemak-
ers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1378
(Fed. Cir. 2004). But that line of precedent adopts the
intentional concealment requirement from Brooktree that
we already expressly held in U.S. Gypsum to be non-
binding (and erroneous) dicta. In my view, these cases
clearly conflict with earlier precedent, which we are
bound to follow, see Newell, 864 F.2d at 765, and have
already been dispensed with in dozens of our cases that
recognize that the concealment inquiry is objective, see
supra note 2.
4 The majority declares that “[i]t is not disputed
that [a] three groove passageway was the best mode.”
Majority Op. at 13. The majority also claims that “it is
not disputed that the preferred embodiment when the
patent application was filed was the three-groove embod-
iment that the specification describes as preferred.” Id.
The majority cites no support for those conclusions. I do
not believe there is any. The identity of the best mode
and the preference for the embodiments described in the
ATELIERS DE LA HAUTE v. BROETJE AUTO 5
tors’ disclosure in this case does not satisfy the best mode
requirement.
The patents show at least four embodiments of the in-
vention. None of those embodiments are specifically
identified as the best mode of the invention and, except
for falling under a general heading for preferred embodi-
ments, none is specifically identified as preferred. Moreo-
ver, each of them appears to have different types and
numbers of grooves: one has what appears to be fifty-five
grooves, one has three grooves, and two have two grooves.
Thus, the inventors disclosed four embodiments of
their invention, only one of which was a possible best
mode. That fact alone probably would not lead me to find
a best mode violation. But this case, and the inventors’
disclosure, is not so simple. The inventors did not just
disclose their best mode amongst many preferred embod-
iments; they buried it amongst many embodiments that
they knew did not work. The inventors discovered that
constructing their claimed tubing with a certain number
of grooves did not just work better than another number
of grooves but was “essential” to implementing their
invention in order to prevent rivet rotation and jamming.
J.A. 25-27; 101-104. As the district court discussed,
preventing rivet rotation and jamming was allegedly a
“patentably distinct” feature of the invention that was
unsolved by the prior art. J.A. 27. And, as the inventors
knew at the time of filing, a tube with two grooves would
cause short rivets to jam because “the stem of the rivet
might go inside one of the grooves.” Auriol Dep. 44, July
patents are hotly contested questions in this appeal. And
the answer to them formed the basis for the district
court’s decision that the best mode requirement was
violated because the inventors’ best mode was an “odd
number” of grooves and that preference for that mode was
not adequately disclosed in the patents.
6 ATELIERS DE LA HAUTE v. BROETJE AUTO
29, 2011. So the inventors did not simply reveal their
best mode and disclose others; they buried the best mode
among other embodiments, also falling under the pre-
ferred 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. See Eli Lilly &
Co. v. Barr Labs., Inc., 251 F.3d 955, 967 (Fed. Cir. 2001).
The majority arrives at the opposite conclusion by
looking to our divided decision in Randomex, Inc., v.
Scopus Corp., 849 F.2d 585 (Fed. Cir. 1998). That case,
however, supports the district court’s conclusion that
there was a best mode violation here.
In Randomex, we recognized that, under the second
prong of the best mode test, a disclosure can be “so poor as
to effectively result in concealment.” Id. at 589 (quoting
Spectra-Physics, 827 F.2d at 1535-36). We concluded,
however, that the disclosure in that case was adequate to
satisfy the best mode requirement based on the peculiar
facts in the record. Specifically, we considered it im-
portant that the disclosure of the best mode cleaning fluid
was mentioned along with just one other cleaning fluid,
which was known in the prior art and understood by those
of ordinary skill in the art to be “the ‘worst mode,’ not the
‘best,’” because it caused explosions. Id. In short, the
court found that the disclosure in Randomex did not
effectively result in concealment because it was still an
adequate guide for one of ordinary skill in the art to
determine which of the two disclosed embodiments was
the best mode.
The disclosure here, however, is not an adequate
guide that one of ordinary skill in the art could follow to
determine the best mode for the invention. Unlike in
Randomex, one of ordinary skill in the art would have to
build and test three other systems—not just one—to tell
ATELIERS DE LA HAUTE v. BROETJE AUTO 7
which was the best mode. And, in contrast to the well-
known alternative embodiment disclosed in Randomex,
the alternative embodiments disclosed here are not well-
known in the prior art. Those of ordinary skill in the art
had no way of knowing that the embodiments without
three grooves were clearly inferior and should not be used
because they might suffer from rivet rotation and jam-
ming. The inventors knew that fact because they appar-
ently were the first to discover it. Yet the inventors chose
to not mention that “essential” quality of their invention
in their disclosure and buried it amongst several embodi-
ments. In contrast to Randomex, the inventors here not
only left those of ordinary skill in the art without any
guide as to the identity of best mode, the inventors led
them down the wrong path by disclosing multiple other
embodiments that only the inventors knew would not
work well.
C. CONCLUSION
The inventors knew that a certain number of grooves
was the best mode for implementing their invention.
Whether that number was “odd” as the district court
found or “three” as the majority concludes, the inventors
did not adequately disclose it. Accordingly, the district
court was correct to hold that the patents violated the
best mode requirement. 5
I respectfully dissent.
5 Even if the majority disagrees with my analysis of
the facts in this case, I see no basis to reverse the decision
of the district court. Compliance with the best mode
requirement is a question of fact. To reverse the district
court would require holding that no reasonable jury could
find the facts as both the district court and I see them to
be plainly laid out in the record. I do not believe that
conclusion can be fairly reached on the record in this case.