By Order, dated September 22, 2011, and Opinion later entered explaining the Court’s reasoning by The Honorable Leonard P. Stark, in Ateliers De La Haute-Garonne, et al. v. Broetje Automation-USA Inc., et al., Civil Action No. 09-598-LPS (D.Del., September 26, 2011, unsealed October 4, 2011), the Court granted the motion of defendants Broetje Automation-USA, Inc. and Bröetje-Automation GMBH (collectively, “Broetje”) for partial summary judgment of invalidity for failure to disclose the best mode as required by 35 U.S.C. § 112 ¶ 1.

A copy of the Court’s Opinion is attached.

In support of its motion, Broetje asserted two best mode defenses. First, Broetje asserted that the patents-in-suit failed to adequately disclose joint inventor Bornes’s subject belief that tubes with “five grooves” or passageways were the best mode of practicing the claimed invention. Id. at 8. Second, Broetje asserted that the patents-in-suit failed to adequately disclose joint inventor Auriol’s subjective belief that tubes with an “odd number” of grooves were the best mode of carrying out the claimed invention. Id.

In opposition to Broetje’s motion, plaintiffs made, among others, two legal arguments to Broetje’s best mode theories. First, plaintiffs contended that, in cases of joint inventorship, the legal standard for best mode requires that all joint inventors reach an agreement or meeting of the minds that there is only a single best mode for practicing the invention and, thus, the discrepancy between the joint inventors’ subjective best modes should defeat Broetje’s motion as a matter of law. Id. Second, plaintiffs contended that a best mode violation requires “intentional” concealment of the best mode. Id.

The Court rejected both of plaintiffs’ legal arguments. Id. at 9-11. In rejecting plaintiffs’ first legal argument, the Court noted that the Federal Circuit, in Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1357, 1361-62, 1364-65 (Fed. Cir. 2011), in affirming summary judgment of best mode invalidity wherein the patents-in-suit listed six inventors, repeatedly indicated that the best mode requirement was violated by the failure of a single inventor to disclose his or her contemplated best mode. Id. at 9-10. In rejecting plaintiffs’ second legal argument, the Court found that, “[a]lthough some Federal Circuit decisions do contain passing references to intentional concealment in connection with the best mode requirement, the clear weight of Federal Circuit authority holds that intentional concealment is not required for best mode violations.” Id. at 10-11 (internal citations omitted).