John H. Bruning v. Ryusho Hirose
United States Court of Appeals for the Federal Circuit (Fed. Cir).

Precedential Opinion Released November 25, 1998

BACKGROUND
Once again your friendly patent practitioners consult with you regarding a draft patent application. Your patent practitioners indicate that you must disclose the best mode of practicing the invention as claimed. Prior to that, you had the idea that you could use "second-rate" data in the patent application, and keep the "first-rate" data secret. Sort of a combination patent-and- trade-secret approach to protecting the same intellectual property. Do you discuss the first-rate data with your patent practitioners?

EXECUTIVE SUMMARY
In this patent interference case regarding photolithography systems, the Board of Patent Appeals and Interferences (the "Board") was faced with determining whether a patent disclosed the best mode of practicing the invention of certain claims. The Board found that the patented claims were not valid because the best mode had not been disclosed. In particular, the Board found that certain details of one component of the invention were known to the inventors at the time the application was filed but were not disclosed. The Fed. Cir. reversed because the patentee did not have a subjective awareness of the best mode for practicing the invention as claimed and that there was no intent on the part of the inventor to withhold or suppress a known best mode for practicing an invention. The Practice Pointer to be gained from this case is that the best mode requirement attaches to the best mode of carrying out the claimed invention contemplated by the inventor at the time of filing rather than some other person at some other point in time. Also, applications claiming priority to earlier filed applications under 35 U.S.C. section 119 or 120 should be revisited for compliance with the best mode requirement.

THE LAW
Section 112, first paragraph of Title 35 of the United States code provides:
The specification shall contain a written description of the invention... and shall set forth the best mode contemplated by the inventor of carrying out his invention. Compliance with the best mode requirement is evaluated by two questions. The first is whether, at the time the inventor filed the patent application, the inventor knew of a mode of practicing the claimed invention that the inventor considered to be better than any other. If the inventor contemplated such a preferred mode, the second question focuses on whether the inventor concealed the preferred mode from the public. Failure to comply with the best mode requirement can render the entire patent unenforceable if such conduct is intentional.

IMPORTANCE OF THE CASE
This case points out the importance of the state of development of a technology when evaluating what an inventor subjectively believes to be a superior mode of practicing an invention. This summary is provided in a Newsletter format for general information and educational purposes only and is not intended as, and should not be taken as, legal advice. Individuals and entities having intellectual property issues should consult with a patent attorney or patent agent to fully address intellectual property law matters based on an analysis of the particular facts.