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Failure to Disclose Customer Details for One Implementation Does Not Violate Best Mode Requirement

June 21, 2002

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Last Month at the Federal Circuit - July 2002

Judges: Linn (author), Rader, and Gajarsa

In Teleflex, Inc. v. Ficosa North America Corp., No. 01-1372 (Fed. Cir. June 21, 2002), the Federal Circuit affirmed the district court’s judgment in favor of Teleflex, Inc. (“Teleflex”) following a jury’s verdict that Ficosa North America Corporation, Fico Cables, S.A., and Ficosa North America S.A. de C.V. (collectively “Ficosa”) infringed Teleflex’s U.S. Patent No. 5,632,182 (“the ’182 patent”) and that Teleflex’s U.S. Patent No. 4,581,953 (“the ‘953 patent”) and the ‘182 patent were not invalid.

The ‘182 patent is directed to a component of a two-piece shift cable installed by General Motors (“GM”) in certain sport utility vehicles. The two-piece shift cable connects the shift knob with the automatic transmission of the sport utility vehicle so that when a driver moves the shift knob, the transmission is engaged. The two-piece cable allows GM to wait until an advanced stage of the manufacturing process before putting the two pieces together and permits the cable to be taken apart later for servicing.

Both Teleflex and Ficosa manufactured shift cables for automobiles. In 1997, Teleflex learned of Ficosa’s efforts to supply GM with cables for the GMT-800 program. On August 3, 1998, after exchanging letters concerning possible infringement, Teleflex sued Ficosa for infringement of four patents, including the ‘182 and ‘953 patents. Ficosa counterclaimed for DJ of noninfringement and invalidity of all of the asserted patents.

The parties filed cross-motions for SJ concerning violation of the best mode requirement in the ‘182 patent. Ficosa argued that the inventor had admitted during his deposition that he knew of a best mode for practicing the claimed invention that involved specific details of a “clip.” Teleflex responded that the inventor clarified in his deposition that the details he referred to were included to satisfy GM’s specific requirements, but the invention would work without these customer-specific details. The district court granted Teleflex’s motion, finding no violation of the best mode requirement. Concerning claim construction, the district court construed the term “clip” to be limited to “a single pair of legs,” based on the embodiment described in the specification. A jury, however, decided the ultimate issue of infringement of the ‘182 patent in favor of Teleflex. The jury also found claim 1 of the ‘182 patent and claims 1 and 6 of the ‘953 patent not invalid.

On appeal, Teleflex contended that the term “clip” should be construed to mean any device, or any shape, that holds two things together and also performs the functions of being manually insertable into and manually removable from a locked position. The Federal Circuit found that nothing in the intrinsic evidence indicates that “clip” should be limited to “a single pair of legs,” and that the language of asserted claim 1 does not support limiting the claim to a “single pair of legs” because neither “single” nor “pair of legs” appears in claim 1. The Court stated that the district court had erred by importing the “single pair of legs” limitation from the specification into the claim and construed the term “clip” too narrowly. The Court then construed the term “clip” to mean a structure that provides the dual functions of disposing the clip around and holding the female member through the slots in the female member and extending through the slots into the groove in the male member to lock the members together.

The Federal Circuit also concluded that substantial evidence appears in the record to support the jury’s verdict of infringement. The Court reasoned that if a jury could have found literal infringement under a more narrow reading of claim 1, then the same jury could not have avoided finding literal infringement under the correct, broader construction of the claim.

Moreover, Ficosa challenged the decision of the district court granting SJ of no best mode violation in the ‘182 patent. Ficosa argued that the inventor of the ‘182 patent testified that he knew of a “best way” of practicing the invention, including providing the clip with a particular thickness and matching the hardness of the clip and the male member. Teleflex contended that the inventor explained, however, that in the absence of GM’s specific requirements, the invention of the ‘182 patent would work with any particular thickness or hardness. Teleflex argued that the thickness and hardness of the materials of the clip are specific to the particular commercial embodiment of GM’s GMT-800 program and, thus, not the best mode of the invention of the ‘182 patent.

The Federal Circuit concluded that the district court had correctly granted SJ of no best mode violation because the alleged best mode information in this case involves unclaimed subject matter relating to production details dictated by customer requirements.