Week 2 - Best Mode

Purpose of the Best Mode Requirement

Section 112(a) requires inventors to reveal the best known way/preferred embodiment to practice their invention at the time of filing. This rule prevents inventors from securing a patent monopoly while keeping key improvements secret as trade secrets.

Post-Filing Rules and AIA Changes

Inventors have no obligation to update their best mode disclosure after their patent application is submitted. Furthermore, under the America Invents Act, failing to disclose the best mode cannot be used to invalidate a patent in court.

Procedural History of Young Dental v. Q3

Former Young engineer David Kraenzle left the company, designed a competing device, and founded Q3. Q3 then began selling its competing dental device under its own newly issued patent.

Young sued Q3 for patent infringement, leading Q3 to challenge the validity of Young's patents. The jury ruled in Q3's favor, declaring all asserted claims invalid under the best mode rule.

Young Dental appealed a court judgment that invalidated its patents for violating the best mode requirement.

Young Dental Patent Backgorund

History of Disposable Prophy Angles: The patents at issue involve disposable prophy angles, which are hand-held dental instruments used to polish teeth. Early plastic versions were unreliable because they ran roughly, overheated, or broke apart during use.

Bailey's Improved Invention: Young employee Ronald Bailey created an improved disposable prophy angle and assigned the patent rights to Young. His application resulted in the patents that formed the center of the dispute.

Mechanical Structure of the Device: Bailey's device arranges interlocking internal gears inside a plastic shell secured by a protective snap cap. This snap cap covers the assembly aperture and locks the gears and shafts tightly in place.

Relationship Between the Patents: The '547 patent issued first to cover the disposable device and its assembly process. It was later followed by the '679 patent, which was filed as a related divisional based on a c-i-p of the 547.

Appeals Court Standard for Best Mode

The appeals court held that the trial judge should not have sent the best mode issue to the jury. Invalidating a patent for best mode requires clear evidence that the inventor actively knew of and hid a better method.

The Two-Part Best Mode Inquiry

Evaluating best mode involves first asking if the inventor subjectively knew of a superior method when filing. If so, an objective test determines whether the specification gave enough detail for skilled artisans to use it.

Exemption of Routine and Production Details: The best mode requirement does not force inventors to detail commercial production choices or routine technical elements (details apparent to a PHOSITA). Because routine details are already obvious to skilled experts, leaving them out does not violate the law.

Rejection of Q3 Arguments

Gear Ratios as Routine Details: The court rejected Q3's argument that omitting specific gear ratios violated the best mode requirement. The patent provided sufficient drawings and structural descriptions for any expert to select an appropriate ratio.

Plastic Grades as Routine Details: Bailey satisfied the best mode standard by identifying the general plastic types, even without listing exact grade numbers. Selecting specific plastic grades was routine work, as shown by Kraenzle doing the exact same thing in his own patent.

Enforcement of Best Mode at the Patent Office

Evaluating best mode compliance now falls exclusively on the Patent Office rather than trial courts. Rejections remain extremely rare because proving an inventor's subjective personal intent is exceptionally difficult.

Class notes

Best mode is subjective

Two-part test is first figure out what the inventor think was the best mode, then objectively if the phosita is enabled to make the best mode
- just has to disclose the best mode, does not have to identify

Best mode does not need to be updated, against “rule of new matter”

CIP, gets new filing date, no advantage so should just file new patent

Best mode is helps avoid patents becoming trade secrets as well

TRIPS Article 29 allow but does not mandate a best mode

Only 4 countries require best mode

Best mode no longer form the basis of a validity or enforceability challenge in federal court or PGR or IPR

Implications of no more best mode:

• No more delving into a subjective state

If best mode not enclosed, corresponding invetntion may not be covered