38 F.3d 551 (Fed. Cir. 1994), 93-1431, Transco Products Inc. v. Performance Contracting, Inc.

Docket Nº:93-1431.
Citation:38 F.3d 551
Party Name:32 U.S.P.Q.2d 1077 TRANSCO PRODUCTS INC., Plaintiff-Appellee, v. PERFORMANCE CONTRACTING, INC. and Performance Contracting Group, Inc., Defendants-Appellants.
Case Date:September 14, 1994
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
FREE EXCERPT

Page 551

38 F.3d 551 (Fed. Cir. 1994)

32 U.S.P.Q.2d 1077

TRANSCO PRODUCTS INC., Plaintiff-Appellee,

v.

PERFORMANCE CONTRACTING, INC. and Performance Contracting

Group, Inc., Defendants-Appellants.

No. 93-1431.

United States Court of Appeals, Federal Circuit

September 14, 1994

Page 552

Robert Edward Wagner, Wallenstein, Wagner & Hattis, Ltd., Chicago, IL, argued for plaintiff-appellee. With him on the brief was Roger H. Stein.

Robert A. Vanderhye, Nixon & Vanderhye, P.C., Arlington, VA, argued for defendants-appellants.

Robert A. Armitage, Vinson & Elkins, L.L.P., Washington, DC, was on the brief for

Page 553

amicus curiae, Biotechnology Industry Organization.

John T. Whelan, Chair, Bar Ass'n of the District of Columbia, Patent, Trademark & Copyright Section, Washington, DC, and Anthony W. Shaw, Burns, Doane, Swecker & Mathis, Alexandria, VA, were on the brief for amicus curiae, Bar Ass'n of The District of Columbia.

Before RICH, PLAGER, and SCHALL, Circuit Judges.

RICH, Circuit Judge.

Performance Contracting, Inc. and Performance Contracting Group, Inc. (collectively Performance) appeal the May 18, 1993, decision of the United States District Court for the Northern District of Illinois, Transco Prods. Inc. v. Performance Contracting, Inc., 821 F.Supp. 537, 28 USPQ2d 1739 (N.D.Ill.1993), holding by summary judgment claims 1-4 of U.S. Patent No. 4,009,735 (Pinsky patent) invalid on the basis of three violations of the best mode requirement of 35 U.S.C. Sec. 112. The district court based two of these violations on Pinsky's failure to update his best mode disclosure upon filing a continuation application pursuant to 37 CFR Sec. 1.60 (Rule 60). The district court based the third violation on Pinsky's failure to provide supplier/trade name information for a material recited in the claims and described in the specification.

Because the district court erred as a matter of law in holding that an applicant must update the best mode disclosure upon the filing of a continuing application containing no new matter, the district court's holding regarding the first two violations is reversed. In addition, because the district court improperly resolved a genuine issue of material fact on summary judgment to find the third violation, that part of the district court's holding is vacated and remanded for further proceedings in accordance with our discussion herein.

BACKGROUND

I. The Pinsky Patent

The Pinsky patent issued from a Rule 60 continuation application filed on October 2, 1974, which application claimed priority pursuant to 35 U.S.C. Sec. 120 based on a parent application filed October 24, 1973. The Pinsky patent is directed generally to thermal insulation for vessels and piping within nuclear power plants. Fig. 1 of the Pinsky patent, which illustrates a pipe wrapped with thermal insulation according to the claimed invention, is set forth below together with both Fig. 2, which illustrates the thermal insulation with a portion of the glass fiber cloth facing removed, and Fig. 3, which illustrates the quick release fastener used for the thermal insulation:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Page 554

Claim 1, the only independent claim in the Pinsky patent, reads as follows, with the numerals in brackets referring to elements illustrated in the figures:

Readily removable and replaceable rewettable thermal insulation for use on vessels and piping within reactor containment areas of nuclear power plants comprising high temperature resistant mineral fiber or glass fiber encapsulated within rewettable, high temperature resistant, asbestos free glass cloth held in place with a plurality of spaced quick release and engage fasteners , wherein the glass cloth can withstand repeated wettings from spray systems within the reactor containment areas of nuclear power plants and wherein the fasteners are two woven nylon, hook and loop mating strips [22, 24], wherein the glass cloth has a finish of a leachable, organic silicate carried in a fatty and mineral oil vehicle. 1

II. District Court Proceedings

Transco Products Inc. (Transco) began marketing thermal insulation for nuclear power plant containment areas as early as 1982. Performance notified Transco in three letters, dated February 13, March 8, and September 11, 1989, that Performance believed Transco was infringing the Pinsky patent. Transco, 821 F.Supp. at 541, 28 USPQ2d at 1741. In response, Transco filed suit on October 25, 1989, seeking a declaratory judgment of invalidity, non-infringement, and unenforceability of the Pinsky patent. 2 By counterclaim, Performance asserted the Pinsky patent against Transco, alleging that Transco's sale of insulation for nuclear power plant containment areas infringed claims 1-4.

In the litigation that followed, Transco filed a motion for summary judgment of non-infringement of the Pinsky patent, and Performance filed a cross-motion for summary judgment of infringement. The district court denied both of these motions. Transco Prods. Inc. v. Performance Contracting, Inc., 813 F.Supp. 613 (N.D.Ill.1993). The district court, sua sponte, instructed the parties, however, to brief the issue of whether claims 1-4 of the Pinsky patent should be held invalid by summary judgment on the basis that the Pinsky patent fails to disclose the best mode of practicing the claimed invention. Following briefing, the district court issued the appealed decision holding the Pinsky patent invalid in view of three violations of the best mode requirement. 3

The district court based the first two best mode violations on knowledge Pinsky allegedly had at the time of filing his continuation application, but did not have at the time of filing the corresponding parent application. The district court found that Pinsky knew at the time of filing his continuation application that the use of stainless steel hooks for the fasteners (6), as opposed to the disclosed nylon-type hooks, constituted the best mode for carrying out the claimed invention. The district court also found that Pinsky knew at the time of filing his continuation application that the claimed fasteners should be placed longitudinally on the insulation with respect to the pipe, as opposed to circumferentially.

Of particular relevance to our disposition of this case, the district court found, and Transco does not dispute, that Pinsky did not consider either of the foregoing to be the best mode of practicing the claimed invention as of the filing date of the parent application. The district court stated, however, that the

Page 555

filing date of Pinsky's continuation application controlled, because, according to the district court, an applicant must update the best mode disclosure upon each filing of a continuing application. Transco, 821 F.Supp. at 550, 28 USPQ2d at 1749. Accordingly, the district court held that Pinsky's failure to disclose this information in his continuation application was a violation of the best mode requirement.

Regarding the third violation, the district court found that Pinsky violated the best mode requirement by failing to disclose the commercial designation for a material that he described in the specification for use as the finished glass cloth (14). The district court found that Pinsky's description of the cloth was deficient and that Pinsky should have disclosed that the use of Burlington Industries' commercial 603A finished glass cloth constituted the best mode, since he knew this supplier/trade name information at the time of filing the parent application.

ANALYSIS

I. Summary Judgment

A motion for summary judgment is properly granted only when

the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.

Fed.R.Civ.P. 56(c). All factual inferences are to be resolved in favor of the non-movant, in this case Performance. Lemelson v. TRW, Inc., 760 F.2d 1254, 1260-61, 225 USPQ 697, 701 (Fed.Cir.1985).

In reviewing the district court's grant of summary judgment, we must make an independent determination as to whether the standards of Rule 56(c) have been met. Reversal is required if the district court improperly determined any genuine issue of material fact or erred in holding that Transco was entitled to judgment as a matter of law. McElmurry v. Arkansas Power & Light, 995 F.2d 1576, 1578, 27 USPQ2d 1129, 1131 (Fed.Cir.1993).

II. Continuing Applications and the Best Mode Requirement

A. Continuing Applications

Prior to analyzing the particulars of this issue, we believe it necessary to recognize that there are various types of "continuing" applications that one may file at the PTO. See The Manual of Patent Examining Procedure (MPEP), Secs. 201.03-201.13 (1988); D. Chisum, Patents, Sec. 13 (1985 rev.); P. Rosenberg, Patent Law Fundamentals, Sec. 15.02 (1991). An applicant may file a continuation, divisional, or continuation-in-part (CIP) application of a prior application, all of which the PTO characterizes as "continuing" applications. See MPEP Sec. 201.11. In general, a continuing application is one filed during the pendency of another application which contains at least part of the disclosure of the other application and names at least one inventor in common with that application.

"Continuation" and "divisional" applications are alike in that they are both continuing applications based on the same disclosure as an earlier application. They differ, however, in what they claim. A "continuation" application claims the same invention claimed in an earlier application, although there may...

To continue reading

FREE SIGN UP