La Haute-Garonne v. Broetje Automation U.S. Inc.

• Decision Date: 09 August 2013
• Docket Number: Nos. 2012–1038,2012–1077.,s. 2012–1038
• Citation: 717 F.3d 1351
• Parties: ATELIERS DE LA HAUTE–GARONNE and F2C2 Systems SAS, Plaintiffs–Appellants, v. BROETJE AUTOMATION USA INC. and Bröetje Automation GmbH, Defendants–Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

717 F.3d 1351

ATELIERS DE LA HAUTE–GARONNE and F2C2 Systems SAS, Plaintiffs–Appellants,

v.BROETJE AUTOMATION USA INC. and Bröetje Automation GmbH, Defendants–Cross Appellants.

Nos. 2012–1038, 2012–1077.

United States Court of Appeals, Federal Circuit.

May 21, 2013.

Rehearing and Rehearing En Banc Denied Aug. 9, 2013.

Scott G. Lindvall, Kaye Scholer, LLP, of New York, NY, argued for plaintiffs-appellants. With him on the brief was Sarah W. Saunders.

Patrick J. Kelleher, Drinker Biddle & Reath LLP, of Chicago, IL, argued for defendants-cross appellants. With him on the brief were Darren S. Cahr, and Carrie A. Beyer.

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 Bröetje 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 Process.” AHG alleged infringement of claims 1, 2, 3, and 6 of the '339 patent and claims 1, 2, and 6 of the '216 patent. 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.

On Broetje's motion for summary judgment, the district 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 argument 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.

IThe 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 compressed fluid is admitted into the tube behind the last piece and is distributed along the length of 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 pieces.

'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 Figures 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 peripheral 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 assuring the transfer of the pieces toward an open dispensing 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” relates to the number of such passageways or grooves, illustrated at 2b in Figures 1 and 2:

IMAGE

A transverse sectional view of the tube is shown in Figure 2, which is described as a Preferred Embodiment:

IMAGE

The specification states:

On the internal surface of the tube are arranged three passageways such as 2b, angularly arranged at 120°, and which extend along the length of the tube. Each of these passageways opens into the hollow center 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 rotates too easily on itself.

* * *

Q. The tube that you machined to put grooves into back in 1988, can you remember what configuration 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 itself inside the tube because the stem of the rivet might go inside one of the grooves.

Q. Okay. Do you remember when you learned that you needed an odd number of grooves?

A. We realized that from the very beginning because 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 declarations 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 patents-in-suit do not adequately disclose what Mr. Auriol believed [w]as [t]he best mode. It is indisputable that the 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 specification'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 concluded that “AHG's identification of...