Chapter §5.06 Two-Step Analysis
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§5.06 Two-Step Analysis
The Federal Circuit in 1990 outlined a two-step analysis for testing a patent specification's best mode compliance in Chemcast Corp. v. Arco Indus. Corp.41 The patent in suit was directed to a grommet for sealing openings in sheet metal panels. The Chemcast two-step analysis remains controlling Federal Circuit law.42
[A] Step One: Subjective Inquiry
Step 1 of the Chemcast analysis is a subjective inquiry that focuses on the state of the inventor's mind. Step 1 asks whether, as of the filing date, the inventor considered one particular mode of carrying out his invention to be better than all the others. If so, this mode is the "best mode." For example, the inventor in Chemcast considered a certain type of material to be the best mode for making his claimed grommet.43
[1] Best Mode of the Inventor, Not Assignee
Because of Chemcast step 1's focus on the inventor's mindset, it can be said fairly that "the best mode belongs to the inventor."44 The Federal Circuit's controversial decision in Glaxo, Inc. v. Novopharm, Ltd.45 illustrates this adage. Glaxo's patent claimed a specific crystalline form of ranitidine hydrochloride, a chemical compound useful for treating patients suffering from ulcers. Various pharmaceutical compositions and methods of using the compound were also claimed. Unbeknownst to Crookes, the Glaxo scientist who invented the compound, other Glaxo employees subsequently developed a novel azeotroping process that made salts of the compound easier to form into capsules.46 Glaxo employed this process in the commercial manufacture of its antiulcer product, without any knowledge or further involvement by Crookes. Glaxo later sued Novopharm for patent infringement. Novopharm asserted that the patent was invalid for failure to satisfy the best mode obligation because it did not disclose the azeotroping process.
The Federal Circuit majority disagreed, holding that Glaxo's disclosure satisfied the best mode requirement. The appellate court refused to impute Glaxo's corporate knowledge of the azeotroping process to the inventor, Crookes. Congress chose to use the specific term "inventor" in 35 U.S.C. §112, ¶1, the court noted; had Congress intended the best mode obligation to be broader, it would have drafted the statute accordingly:
Congress was aware of the differences between inventors and assignees, see 35 U.S.C. §§100(d) and 152, and it specifically limited the best mode required to that contemplated by the inventor. We have no authority to extend the requirement beyond the limits set by Congress. 47
Dissenting, Circuit Judge Mayer decried the majority's narrow interpretation of the best mode obligation as strictly limited to the inventor. He contended that "the court blesses corporate shell games resulting from organizational gerrymandering and willful ignorance by which one can secure the monopoly of a patent while hiding the best mode of practicing the invention the law expects to be made public in return for its protection."48
[2] Multiple Inventors
When a patent names multiple inventors,49 how does the best mode obligation operate if less than all of the inventors consider a particular mode of carrying out the invention to be the best mode? In other words, must all the named inventors agree that a particular mode is the best mode before the obligation to disclose it is triggered? The Federal Circuit has not clearly answered the question.
Before 1998, most district courts applied a standard requiring consensus among all named inventors. Under this standard, when multiple inventors were listed on a single patent, all of the inventors had to agree before a mode was considered best.50 However, dicta in the Federal Circuit's Pannu v. Iolab Corp.51 decision muddled the apparent standard.
The patent in suit in Pannu disclosed an intraocular plastic lens designed to minimize damage to delicate eye tissue during surgical insertion. The sole named inventor, Dr. Pannu, filed an original patent application disclosing an improved posterior intraocular lens that reduced eye tissue snagging by placing a circular loop at the end of positioning and supporting members. A few months after filing his application, Pannu met with a Dr. Link, the president of a potential licensee, who suggested a method of one-piece construction for the intraocular lens. Dr. Pannu thereafter filed a continuation-in-part (CIP) application claiming an intraocular lens body of one-piece construction. Pannu did not name Link as a coinventor on the CIP application.
When Dr. Pannu subsequently sued Iolab Corp. for infringement of the patent that issued from the CIP, Iolab sought to invalidate it under 35 U.S.C. §102(f) (1994) for failing to name Dr. Link as inventor. A district court disagreed with Iolab and refused to submit the inventorship issue to a jury, instead granting patentee Pannu's motion for JMOL that Iolab would be unable to invalidate the patent for improper inventorship.52 After trial, the jury returned a verdict that Iolab had not established that Pannu's patent was invalid for, inter alia, failure to disclose the best mode.
Overturning the district court's grant of JMOL for Dr. Pannu, the Federal Circuit held that the inventorship question should have gone to the jury. The appellate court believed that sufficient evidence existed from which the jury might find Dr. Link to be a co-inventor. If so, Pannu would be entitled to seek correction of inventorship under 35 U.S.C. §256 and, if successful, preserve the validity of the patent (at least on inventorship grounds).
In a footnote, the Federal Circuit remarked without citation to authority that if Link was determined on remand to be a co-inventor and if Pannu successfully corrected the patent's inventorship to so designate, then validity challenger Iolab could
of course reassert its defense based on the theory that the proper inventive entity failed to disclose its best mode. This is because the jury's finding on the best mode issue was predicated on Pannu being the sole inventor. Best mode issues can arise if any inventor fails to disclose the best mode known to him or her. 53
In other words, the Federal Circuit appeared to suggest, if persons A, B, and C are co-inventors of a patented invention and B alone (for example, Dr. Link) considers a particular mode to be the best mode of carrying out the invention, even if A and C do not share B's view, then the best mode according to B must be disclosed in the patent. The Federal Circuit in Pannu cited no authority for the proposition that the best mode inquiry encompasses what any one of multiple co-inventors would consider to be a best mode, rather than requiring disclosure only of what the joint inventive entity (A + B + C) would agree was the best mode.
After the Federal Circuit's decision in Pannu, some district courts have applied the dicta of Pannu's footnote 5.54 The Federal Circuit has thus far not decided another case presenting the issue.55 The America Invents Act of 2011 appears to validate the Federal Circuit's view in Pannu, however.56
[B] Step Two: Objective Inquiry
[1] Integrating Enablement with Best Mode
The Federal Circuit identifies the second step of the Chemcast best mode inquiry as objective.57 Assuming that a best mode exists, step 2 asks whether the application provides an enabling disclosure of this best mode. The second Chemcast step, which essentially merges the enablement and best mode requirements, addresses the adequacy of the best mode disclosure, rather than its necessity. In contrast with Chemcast step 1, the perspective of the second step is that of the hypothetical person of ordinary skill in the art rather than the inventor himself. In other words, the second Chemcast step asks the question, "is the hypothetical person skilled in the art enabled by the patent application's disclosure to make and use the best mode of the invention without undue experimentation?"
In the Chemcast case, the answer to this question was negative. The Federal Circuit concluded that the patent specification was "manifestly deficient" in light of the specific material that the inventor considered to be the best mode for making his grommet.58 The patent neither explicitly nor implicitly disclosed how to make and use the claimed grommet with a proprietary "R-4467" material that the inventor preferred. Rather, it merely disclosed an open-ended range for the hardness of the material, broadly stating that "[m]aterials having a durometer hardness reading of 70 Shore A or harder are suitable. . . ."59 The actual hardness reading of the inventor's preferred material, however, was 70 Shore D; materials of Shore A and Shore D hardnesses are recognized as different types of materials with different classes of physical properties.
[2] Proprietary Materials
The Federal Circuit in Chemcast also instructed that because the inventor did not know the proprietary formula, composition, or method of manufacture of his preferred material, R-4467, he was obligated to "disclose the specific supplier and trade name" of the material.60 Having failed to do so, the inventor had not complied with the best mode disclosure obligation of 35 U.S.C. §112, ¶1.
Like Chemcast, Green Edge Enterprises, LLC v. Rubber Mulch Etc., LLC61 involved a failure to properly disclose proprietary material. Sufficiently different facts allowed Green Edge to survive a best mode invalidity challenge, however. Green Edge's patent in suit covered synthetic mulch formed from rubber particles mixed with an earth-toned water-based acrylic colorant. In formulating its commercial embodiment Green Edge used a proprietary colorant that it obtained from an outside supplier. The supplier's product code for the colorant was "24009." A few months before filing its patent application, Green Edge received a letter from a vice president of the supplier. The letter identified the 24009 colorant by the trade name "VISICHROME." Green Edge thereafter identified its...
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