No Best-Mode Violation
July 29, 2004
Last Month at the Federal Circuit - August 2004
Judges: Newman (author), Mayer, and Clevenger
In High Concrete Structures, Inc. v. New Enterprise Stone & Lime Co., No. 03-1477 (Fed. Cir. July 29, 2004), the Federal Circuit reversed and remanded the district court’s grant of SJ that found U.S. Patent No. 5,947,655 (“the ‘655 patent”) invalid for failure to comply with the best-mode requirement.
The ‘655 patent relates to a device for transporting large, heavy cargo, such as preformed concrete structures, by orienting the cargo in a certain manner. When loaded on a truck, such cargo can cause the truck to be considered an “oversized load,” subjecting the truck to special regulation and limiting travel times and routes. The ‘655 patent contains both apparatus and method claims that disclose loading large concrete structures onto an apparatus. The apparatus tilts or rotates, enabling the truck to carry the cargo at an angle and, thus, eliminating the oversized load restriction. Positioning the cargo in such a manner on the apparatus enables the use of gravity to assist in rotating the cargo. The specification of the ‘655 patent teaches that cargo can be rotated manually without heavy equipment, but in a deposition, the inventors explained that for heavy cargo, a crane is typically used.
At the district court, the Defendants moved for SJ of invalidity because High Concrete Structures, Inc. failed to disclose the best mode, the use of a crane, for practicing the invention. The district court agreed but the Federal Circuit did not. The Federal Circuit concluded that the inventors did not deliberately conceal the use of a crane to assist in loading cargo, observing that anyone with experience with heavy loads would know to use a crane to move the load. The Court ruled that known ways of performing a known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information. Accordingly, the Court reversed the SJ of invalidity and remanded.