Chemcast Corp. v. Arco Industries Corp.
| Decision Date | 04 September 1990 |
| Docket Number | No. 90-1078,90-1078 |
| Citation | 16 USPQ2d 1033,913 F.2d 923 |
| Parties | CHEMCAST CORPORATION, Plaintiff-Appellant, v. ARCO INDUSTRIES CORPORATION, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Neal A. Waldrop, of Neal A. Waldrop & Associates, Troy, Mich., argued for plaintiff-appellant. With him on the brief was Malcolm R. McKinnon.
Jeanne-Marie Buiteweg, of Reising, Ethington, Barnard, Perry & Milton, Troy, Mich., argued for defendant-appellee. With her on the brief was Owen E. Perry.
Before ARCHER and MAYER, Circuit Judges, and GEORGE, District Judge. *
Chemcast Corporation appeals the judgment of the United States District Court for the Eastern District of Michigan that Claim 6 of United States Patent No. 4,081,879 ('879 patent), the only claim in suit, is invalid because of the inventor's failure to disclose the best mode as required by 35 U.S.C. Sec. 112. See 12 USPQ2d 2005 (1989). We affirm.
The '879 patent claims a sealing member in the form of a grommet or plug button that is designed to seal an opening in, for example, a sheet metal panel. Claim 6, the only claim in suit, depends from Claim 1.
whereby when the grommet is installed in a
panel opening, the locking portion is inserted through the opening to a position on the opposite side of the panel from the base portion locking the grommet in place, and said sealing band surface forms a complete seal continuously around the entire inner periphery of the panel opening.
6. The grommet as defined in claim 1 wherein the material forming said base portion has a durometer hardness reading of less than 60 Shore A and the material forming said locking portion has a durometer hardness reading of more than 70 Shore A. 1
The grommet of Claim 6 is referred to as a dual durometer grommet because it may be composed either of two materials that differ in hardness or of a single material that varies in hardness. In either case, the different hardnesses can be, and for a sufficiently large hardness differential must be, measured with different durometers: Shore A for the softer base portion and Shore D for the harder locking portion. The harder locking portion of the grommet is the focus of this case.
Chemcast and its competitor Arco Industries Corporation are both engaged in the manufacture and sale of sealing members such as grommets, gaskets, and plug buttons. Both sell their products primarily to the automobile industry. Ex-Arco employee Phillip L. Rubright founded Chemcast in 1973 and subsequently conceived of and designed specifically for Oldsmobile, a Chemcast customer, the dual durometer '879 grommet. He filed a patent application together with an assignment of invention to Chemcast in January of 1976; the '879 patent issued in April of 1978.
Chemcast subsequently sued Arco for infringement of Claim 6 of the '879 patent. Arco counterclaimed that the patent was invalid on several grounds, including Rubright's failure to comply with 35 U.S.C. Sec. 112. The district court agreed. It held that, because the '879 patent did not either disclose the best mode contemplated by the inventor of carrying out the invention or particularly point out and distinctly claim the subject matter of the invention, Chemcast could not recover on its claim of infringement. 5 USPQ2d at 1238.
Both parties appealed. We vacated the district court's best mode decision because, in reaching it, the court relied on an incorrect legal standard; reversed the court's holding that Claim 6 did not meet the claim particularity requirements of section 112; and affirmed the judgment on all other issues. Chemcast Corp. v. Arco Indus. Corp., 854 F.2d 1328 (Fed.Cir.1988) (unpublished). We set out the appropriate legal standard for determining compliance with the best mode requirement as follows:
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, [480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792] (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.
Slip op. at 4. Accordingly, we remanded the case to the district court for a redetermination of the best mode issue.
On remand, the court again invalidated the patent for failure to satisfy the best mode requirement. Chemcast Corp. v. Arco Indus. Corp., 12 USPQ2d 2005 (E.D.Mich.1989). It made 47 factual findings detailing both what, at the time of filing the patent application, Rubright considered to be the best mode of practicing his claimed invention and what the specification as filed disclosed to one of ordinary skill in the art. According to the court, the principal shortcomings of the disclosure were its failure to specify (1) the particular type, (2) the hardness, and (3) the supplier and trade name, of the material used to make the locking portion of the grommet. Id. at 2008. Therefore, it held that the application as filed failed adequately to disclose the best mode of practicing the invention contemplated by Rubright. Id. Chemcast appeals.
The first paragraph of 35 U.S.C. Sec. 112 (1982) provides:
The specification [A] shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and [B] shall set forth the best mode contemplated by the inventor of carrying out his invention.
(emphasis added). We long ago drew and often have focused upon the critical distinction between requirement [A], "enablement," and requirement [B], "best mode."
The essence of portion [A] is that a specification shall disclose an invention in such a manner as will enable one skilled in the art to make and utilize it. Separate and distinct from portion [A] is portion [B], the essence of which requires an inventor to disclose the best mode contemplated by him, as of the time he executes the application, of carrying out his invention. Manifestly, the sole purpose of this latter 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.
In re Gay, 50 CCPA 725, 309 F.2d 769, 772, 135 USPQ 311, 315 (1962), quoted in Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1532, 3 USPQ2d 1737, 1742 (Fed.Cir.1987); see Dana Corp. v. IPC Limited Partnership, 860 F.2d 415, 419, 8 USPQ2d 1692, 1696 (Fed.Cir.1988).
The best mode inquiry focuses on the inventor's state of mind as of the time he filed his application--a subjective, factual question. But this focus is not exclusive. Our statements that "there is no objective standard by which to judge the adequacy of a best mode disclosure," and that "only evidence of concealment (accidental or intentional) is to be considered," In re Sherwood, 613 F.2d 809, 816, 204 USPQ 537, 544 (CCPA 1980), quoted in DeGeorge v. Bernier, 768 F.2d 1318, 1324, 226 USPQ 758, 763 (Fed.Cir.1985); see Spectra-Physics, 827 F.2d at 1535, 3 USPQ2d at 1745, assumed that both the level of skill in the art and the scope of the claimed invention were additional, objective metes and bounds of a best mode disclosure.
Of necessity, the disclosure required by section 112 is directed to those skilled in the art. Randomex Inc. v. Scopus Corp., 849 F.2d 585, 587, 7 USPQ2d 1050, 1053 (Fed.Cir.1988) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556 220 USPQ 303, 315 (Fed.Cir.1983)). Therefore, one must consider the level of skill in the relevant art in determining whether a specification discloses the best mode. We have consistently recognized that whether a best mode disclosure is adequate, that is, whether the inventor concealed a better mode of practicing his invention than he disclosed, is a function of not only what the inventor knew but also how one skilled in the art would have understood his disclosure. See, e.g., Dana Corp., 860 F.2d at 418, 8 USPQ2d at 1696 (emphasis added); Spectra-Physics, 827 F.2d at 1536, 3 USPQ2d at 1745 (); W.L. Gore, 721 F.2d at 1556, 220 USPQ at 316...
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