Wahl Instruments, Inc. v. Acvious, Inc.

• Decision Date: 12 December 1991
• Docket Number: No. 89-1664,89-1664
• Citation: 950 F.2d 1575,21 USPQ2d 1123
• Parties: , 21 U.S.P.Q.2d 1123 WAHL INSTRUMENTS, INC. and Robert Parker, Plaintiffs-Appellants, v. ACVIOUS, INC. and Kenneth J. McMillan, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1575

950 F.2d 1575

60 USLW 2420, 21 U.S.P.Q.2d 1123

WAHL INSTRUMENTS, INC. and Robert Parker, Plaintiffs-Appellants, v. ACVIOUS, INC. and Kenneth J. McMillan, Defendants-Appellees.

No. 89-1664.

United States Court of Appeals Federal Circuit.

Dec. 12, 1991.

Richard F. Carr, Poms, Smith, Lande & Rose, Orange, Cal., argued, Allan Rothenberg, Poms, Smith, Lande & Rose, Irvine, Cal. (Glenn A. Clark, Riker, Danzig, Scherer, Hyland & Perretti, Morristown, N.J., on brief), for plaintiffs-appellants.

George C. Meyers, Jr., Wigman & Cohen, P.C., Arlington, Va., argued (Victor M. Wigman, Ezra D. Rosenberg, Katzenbach, Gildea & Rudner, Lawrenceville, N.J., on brief), for defendants-appellees.

Before NIES, Chief Judge ^*, ARCHER, Circuit Judge, and KELLEHER, District Judge. ^**

NIES, Chief Judge.

Wahl Instruments, Inc., and Robert Parker (Wahl) appeal the grant of summary judgment of the United States District Court for the District of New Jersey, Wahl Instruments, Inc. v. Acvious, Inc., 12 USPQ2d 1143, 1989 WL 136621 (D.N.J.1989), holding claims of U.S. Patent No. 4,137,769 ('769) invalid for failure to disclose the best mode contemplated by the inventor of carrying out his invention as required by 35 U.S.C. § 112 (1988). We reverse-in-part, vacate-in-part, and remand.

Background

In 1975, on a trip to Japan, William Wahl of Wahl Instruments, Inc., a West Coast wholesaler of various products, became familiar with a line of thermochromic and other temperature indicating materials--paints, crayons, labels, tapes and inks--of a Japanese company, Teika, and arranged to be U.S. distributor of the products. Wahl showed the materials to Robert Parker, an independent research engineer who conceived of using such materials in a clear plastic thermal analog of an object, which he perceived would be useful in cooking, canning or sterilization. By placing temperature indicating material in the analog which would change color at a known temperature, the internal temperature of the object being heated at the same time would be indicated.

In or about 1977, Parker made some crude prototypes of several types of devices of different compositions and made calculations from tests involving boiling the device in water as to their suitability as various analogs. One model was a pair of plastic slices of a cylinder bolted together; another was two halves of an egg-shaped device held together with adhesive. However put together, the thermochromic material was thereby sealed in between the two halves of the device. Wahl and Parker made an arrangement for Wahl to develop and market the invention in the form of an egg-timer device. Parker sought out Robert Burton, a well-known West Coast plastics fabricator, who explained various possible ways to make the device, and suggested modifications in angles and shape of Parker's models so that the device could be mass produced by the embedment molding technique. Embedment molding consists of layering plastic into a mold, followed by an adhesive pouring, onto which the thermochromic layer is placed, followed by a third pouring to complete the device. Parker supplied the thermochromic material to be placed in the device in the form of a paint or ink silkscreened on MYLAR, originally supplying a product of Teika which Wahl distributed. To reduce cost, Parker began to make the inserts himself using standard paint or ink produced by Teika or by a U.S. company Tempil. In due course, Burton made various sizes of the device for Parker to test as an egg-timer. Wahl was introduced to Burton and they worked out details of production and costs. Burton Plastics apparently began producing an embedment molded commercial version of the Parker egg-timer for Wahl shortly before the application was filed. The dates are unclear.

In 1977-78, Parker submitted his invention disclosure and a prototype he had made to a patent attorney on the East Coast who filed an application on February In 1981, Kenneth McMillan was hired by Wahl and placed in charge of the project. He testified he visited Burton Plastics once or twice a week to discuss molding and production problems. In 1987, McMillan left Wahl to start a business making a competitive egg-timer. He used Burton Plastics as his fabricator and supplied thermochromic inserts which he ordered from a supplier simply by specifying he needed a red material that would be in paint form that changed color at 70 degrees.

                6, 1978, disclosing and claiming the invention in various shapes, i.e., domed, cylindrical, and square, and with both reversible and nonreversible temperature indicating materials placed in the device.   The prototype was a device in which two sections had been bonded together using a transparent adhesive.   The patent issued on February 6, 1979
                

McMillan and his company Acvious were sued for infringement by Wahl on March 11, 1987. ¹ McMillan defended inter alia on the ground that the patent specification failed to disclose the best mode contemplated by Parker of carrying out his invention as required by 35 U.S.C. § 112. The district court denied a motion for summary judgment on this ground, but after the trial and after the decision of this court in Dana Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 8 USPQ2d 1692 (Fed.Cir.1988), cert. denied, 490 U.S. 1067, 109 S.Ct. 2068, 104 L.Ed.2d 633 (1989), the district court granted McMillan's motion. The district court's opinion states:

The record reflects that Mr. Parker [the inventor] knew at the time of the invention that the best technique for the manufacture of the egg timer was an embedment casting or molding process in which a layer of thermochromic material is embedded in a transparent solid body by pouring a clear hardenable plastic into an open mold containing the layer of thermochromic material. Moreover, Mr. Parker knew at that time that the best transparent plastic material, for use in the embedment molding process for molding or casting the solid transparent body of the egg timer was polyester resin. Parker also admitted that the best technique at the time of the invention for causing the layer of thermochromic material to be embedded in the transparent plastic egg timer was by silk-screening a thermochromic paint or ink onto one side of a thin substrate, such as transparent MYLAR film, and then die-cutting oval-shaped pieces from the substrate for use as inserts in the embedment molding process. It is also undisputed that the best thermochromic paints or inks known to Parker at the time for the silk-screening process were those made by the Japanese company, Tieka, or by the New Jersey company, Tempil.

Wahl, 12 USPQ2d at 1144. The district court ruled that the claims were invalid for failure to disclose the best mode because the patent failed to disclose each of the above specifics of fabrication which Parker had developed, in conjunction with Burton Plastics, for making the commercial version of the egg-timer and which Parker had testified he believed was, in each respect, the best manner or mode of manufacturing at the time his patent application was filed.

Wahl argues, nevertheless, that the best mode requirement was satisfied inasmuch as the techniques used to manufacture the Parker device were old and well known. Wahl points to Parker's testimony that the method of manufacture "would not really matter in terms of the invention because the true invention is in the materials used, in the general shape, and [in] the concept of a mid-plane material, and that the manufacture could be readily performed in any number of ways." Parker further testified:

It was not clear to me in the '79 time period which would be the very best method. A lot of it would depend on the volume. We hadn't even tested the market then.

Issue

Did the district court properly grant summary judgment of invalidity on the grounds of the inventor's failure to disclose

the best mode of his invention within the meaning of 35 U.S.C. § 112?

DISCUSSION

Focus of the Best Mode Inquiry

Under 35 U.S.C. § 112, a patent specification must "set forth the best mode contemplated by the inventor of carrying out his invention." The objective of this section is well established. 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. In re Gay, 309 F.2d 769, 772, 135 USPQ 311, 315 (CCPA 1962), quoted in Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1532, 3 USPQ2d 1737, 1742 (Fed.Cir.), cert. denied, 484 U.S. 954, 108 S.Ct. 346, 98 L.Ed.2d 372 (1987). The words in the statute are not without ambiguity. This case illustrates that the term "mode" and the phrase "carrying out the invention" are not definable with precision.

As originally filed and issued, the patent was to cover reversible and non-reversible temperature indicating devices. The former, being reusable, were useful in timing the cooking of eggs. The latter would be used, per the specification, in autoclaves where a permanent indication was needed that a desired temperature had been attained. Also in the latter, the device could be made releasable so that the temperature indicating layer could be replaced, all of which was disclosed in the specification. Given the difference in performance, which embodiment was the "best mode" in this respect would depend on the use to which a device was put. By virtue of reexamination initiated after this suit was filed, the claims became limited to thermochromic (i.e., reversible) devices. However, the best mode inquiry depends upon all of the circumstances at the time that the application was filed. Spectra-Physics, 827 F.2d at 1535, 3 USPQ2d at 1745. The fact that the application as filed covered several very different embodiments is a relevant consideration. In any event, having disclosed all contemplated variations, Parker clearly satisfied the best mode requirement...