Best Mode Violation Requires Intentional Concealment

In Ateliers de la Haute-Garonne v. Broetje Automation USA Inc., Nos. 12-1038, -1077 (Fed. Cir. May 21, 2013), the Federal Circuit reversed the district court's entry of SJ of invalidity on best mode grounds, affirmed that U.S. Patent No. 5,011,339 ("the '339 patent") was not abandoned, and remanded for further infringement proceedings.

Ateliers de la Haute-Garonne and F2C2 Systems S.A.S. (collectively "AHG") sued Broetje Automation USA Inc. and Brötje Automation GmbH (collectively "Broetje"), asserting infringement of the '339 patent and U.S. Patent No. 5,143,216 ("the '216 patent"). Both patents are entitled "Process for Distribution of Pieces such as Rivets, and Apparatus for carrying out the Process." The '339 and '216 patents relate to the dispensing of objects such as rivets through a pressurized tube with grooves along its inner surface, providing a rapid and smooth supply of properly positioned rivets for such uses as the assembly of metal parts of aircraft.

The district court granted Broetje's motion for SJ of invalidity, finding the inventors failed to disclose the best mode of the patented inventions as required under 35 U.S.C. § 112, ¶ 1. The district court rejected Broetje's argument that AHG abandoned the '339 patent by failing to pay the issue fee. AHG appealed the judgment of invalidity, and Broetje cross-appealed the judgment that the '339 patent was not abandoned.

The best mode of each patent regarded the ideal number of longitudinal grooves inscribed along the inner surface of the pressurized tubes. The '339 and '216 patents describe several preferred embodiments of the invention, including designs having both odd and even numbers of grooves. In arguing that the best mode was not disclosed, Broetje relied upon deposition testimony from one of the inventors, who admitted that he knew at the time of filing that an odd number of grooves provided superior functionality, as an even number of grooves led to a higher chance for the apparatus to jam during operation. AHG responded that the three-groove embodiment 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.

The district court concluded that the best mode was not disclosed, since neither patent-in-suit affirmatively identifies an odd number of grooves as being a better design feature than an even number of grooves. As a...