Chemcast Corp. v. Arco Industries Corp., s. 87-1537

• Decision Date: 22 July 1988
• Docket Number: Nos. 87-1537,87-1538,s. 87-1537
• Citation: 854 F.2d 1328
• Parties: Unpublished Disposition NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. CHEMCAST CORPORATION, Plaintiff/Appellant, v. ARCO INDUSTRIES CORPORATION, Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1328

854 F.2d 1328

Unpublished Disposition

NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

CHEMCAST CORPORATION, Plaintiff/Appellant, v. ARCO INDUSTRIES CORPORATION, Defendant/Cross-Appellant.

Nos. 87-1537, 87-1538.

United States Court of Appeals, Federal Circuit.

July 22, 1988.

E.D.Mich.

AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART AND REMANDED.

Before EDWARD S. SMITH, BISSELL and ARCHER, Circuit Judges.

EDWARD S. SMITH, Circuit Judge.

DECISION

Chemcast Corporation (Chemcast) appeals that portion of the judgment of the United States District Court for the Eastern District of Michigan in Chemcast Corp. v. Arco Industries, Civil Action No. 82-70902 (E.D.Mich. July 30, 1987) (Freeman, J.), providing that claim 6 of United States patent No. 4,081,879 (the '879 patent) is invalid under 35 U.S.C. Sec. 112 and, on that basis, that Chemcast is not entitled to recover on its claim of infringement of claim 6. Arco Industries (Arco) cross-appeals paragraphs 1, and 3-7 of that judgment. We affirm in part, reverse in part, vacate in part, and remand.

OPINION

The district court determined that, if valid, claim 6 of the '879 patent is infringed by Arco's grommet. However, because the district court concluded that claim 6 of the '879 patent is "invalid for failure to disclose the best mode contemplated by the inventor of carrying out his invention and for failure to particularly point out and distinctly claim the subject matter of the invention" disclosed by the '879 patent, Chemcast is not entitled to recover on its claim for infringement. In addition, the district court adjudicated numerous other counterclaims raised by Arco and reached the following conclusions: (1) the '879 patent is not invalid under either the written description requirement or the enablement requirements of section 112, first paragraph; (2) claim 6 is not invalid as obvious under section 103; (3) claim 6 is not invalid under section 132 for failure to comply with the prohibition against the introduction of new matter, by amendment, to the disclosure of the invention; and (4) if valid, the '879 patent is not unenforceable on the grounds of inequitable conduct. After a careful review of the record, and in view of the arguments presented to us by the parties, (1) we reverse the district court's decision under section 112, second paragraph, on the issue of claim particularity, (2) we vacate the district court's decision under section 112, first paragraph, on the best mode issue, and (3) we affirm all other issues contested by the parties on appeal. In view of our disposition of the best mode issue, we remand this proceeding to the district court for further action on that issue not inconsistent with this opinion.

A. Best Mode: Section 112, First Paragraph

The district court based its best mode determination on its finding that the making and using of the grommet claimed by the '879 patent involves the use of products claimed as trade secrets by the producer of those products, Renosol. Because the district court found that Renosol is a custom formulator and does not reveal the composition of the products it sells and because the district court found that there were "at least eight other" producers who could have formulated satisfactory products, the district court concluded that the '879 patent must be found invalid for failure to meet the best mode requirement. We vacate the district court's decision on this issue because that court erred by failing to apply the proper legal standard for best mode.

Failure to comply with the best mode requirement amounts to concealing the preferred mode contemplated by the applicant at the time of filing. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384-85, 231 USPQ 81, 94 (Fed.Cir.1986), cert. denied, 107 S.Ct. 1606 (1987). In order for a district court to conclude that the best mode requirement is not satisfied, the focus must be, and the district court must determine, that the inventor knew of, i.e., "contemplated," and concealed a better mode than he disclosed. Id., 231 USPQ at 94. The focus for a best mode analysis is not simply on whether the patent discloses the most suitable material for carrying out the claimed invention.

Here, the district court did focus its best mode analysis on whether the '879 patent disclosed "the most suitable material" available at the time the application was filed. There is no requirement that the inventor know the most suitable material for carrying out his invention; rather, the only requirement of the best mode test is that the specification "set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. Sec. 112 (emphasis supplied). Because compliance with the best mode requirement is a question of fact, we vacate the district court's decision and remand the proceeding to the district court to make this factual determination using the correct legal standard.

B. Enablement: Section 112, First Paragraph

Arco argues to us that the district court erred in reaching its decision on enablement in view of the district court's conclusions supporting its decision on claim particularity under section 112, second paragraph. Arco contends that the district court's conclusions underlying its decision on claim particularity necessarily support a conclusion that the '879 patent is invalid for failing to meet the enablement requirement of section 112, first paragraph. We disagree.

Enablement under section 112, first paragraph, and claim particularity under section 112, second paragraph, are separate requirements for patent validity even though both are contained in section 112. See Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452, 227 USPQ 293, 296 (Fed.Cir.1985). Enablement goes to the adequacy of the language of the specification whereas particularity goes to the adequacy of the claim language. A conclusion supporting a determination that the specification is enabling under section 112, first paragraph, may not support a determination that a claim meets the particularity requirement under section 112, second...