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May 23, 2008


John Wong got 5,568,779 for TALtech, claiming a seam for wash-and-wear dress shirts that don't pucker when laundered. Wong didn't disclose all the prior art he knew of, including the prior art that was the inspiration for his invention. The district court found inequitable conduct. The appeals court starches that shirt: "If the material is cumulative to other disclosed material, as a matter of law, the inventor is not obligated to disclose it." And, a lesson on best mode.

TALtech v. Esquel (CAFC 2007-1506)

Wong's weaseling odyssey of invention -

After seeing a seam employing heat-fusible adhesive tapes on a raincoat produced by his employer, Hong-Kong-based TAL Apparel, Wong was inspired to try a similar seam in dress shirts. He obtained various sample adhesive tapes from Vilene and tried them in his seam. After many trials with the various adhesives, he eventually settled on a preference for Vilene SL33 and produced a shirt that did not pucker appreciably after a standard set of washings. Shirts produced with this seam became successful, and on May 17, 1994, Wong filed an application for patent protection for his invention.

After the initial filing but before its first office action, Wong filed an information disclosure statement with the PTO, including another TAL produced raincoat seam incorporating bonding elements and a published German application of Felix Robers that produced a seam similar to the inspirational raincoat seam. He did not however present the seam from this original raincoat to the PTO at any time. Additionally, he never disclosed his then preference for Vilene SL33 as the preferred adhesive.

The battle joined -

Esquel is a competing manufacturer, also based in Hong Kong. In 2001, aware of the '779 Patent, Esquel decided to produce pucker-free wash-and-wear shirts using adhesive in the seams. It purchased adhesives from Bemis, another supplier of adhesive tapes, and subsequently received U.S. Patent No. 7,013,818 for their seam. On April 29, 2004, Esquel sought a declaratory judgment of non-infringement and invalidity of the '779 Patent in the Western District of Washington. The next day, TALtech sued Esquel for infringement of their '779 Patent in the Eastern District of Texas. The two suits were consolidated in the Western District of Washington.

After a bench trial, the district court gave Esquel a walk on non-infringement. Claim 18 of '779 was invalidated for lack of best mode, because Wong failed to disclose Vilene SL33.

And it found that Wong had committed inequitable conduct during the prosecution of the '779 Patent for failing to disclose the inspirational raincoat seam, and that the case was exceptional under 35 U.S.C. § 285 in part because of the inequitable conduct. It awarded attorneys fees to Esquel.

The CAFC case law recital on inequitable conduct -

To support a finding of inequitable conduct, there must be clear and convincing evidence that the applicant made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, intending to deceive the PTO. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007). Information is material if there is a substantial likelihood that a reasonable examiner would have considered the information important in deciding whether to allow the application to issue as a patent. Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 1000 (Fed. Cir. 2007).

The particulars lead the CAFC to vacate the inequitable conduct charge, and attorney fees award, and remand for further development of the record.

In this case, the district court found TAL liable for inequitable conduct because inventor John Wong had not disclosed the raincoat seam that inspired his invention to the PTO. However, an inventor is not required to disclose the object or article that inspired his invention, only material that a reasonable examiner would have considered important. If the material is cumulative to other disclosed material, as a matter of law, the inventor is not obligated to disclose it. TAL argues that the undisclosed raincoat seam was merely cumulative to the German application of Robers, which was disclosed in the initial filing. If the undisclosed raincoat seam was merely cumulative to Robers, then no inequitable conduct lies in its nondisclosure.

On failure to disclose best mode, the CAFC affirms.

The district court found claim 18 invalid because the inventor failed to satisfy the best mode requirement of 35 U.S.C. § 112 by not disclosing in the specification the preferred use of Vilene SL33 as the adhesive when he knew it at the time of filing. We have set out a two-pronged test for determining whether an inventor has met the best mode requirement. "First, the factfinder must determine whether, at the time of filing the application, the inventor possessed a best mode for practicing the invention." Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed. Cir. 2001) (citing Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 927-28 (Fed. Cir. 1990)). This involves a subjective inquiry whereby the factfinder focuses on the inventor's state of mind at the time of filing. Id. "Second, if the inventor possessed a best mode, the factfinder must determine whether the written description disclosed the best mode such that one reasonably skilled in the art could practice it." Id. This involves an objective inquiry focused on the scope of the claimed invention and the level of skill in the art. Id.

[B]ecause the inventor experimented with many adhesives but settled on a preference for one, we find no clear error in the district court's determination that the inventor possessed a best mode at the time of filing.

In satisfaction of the second prong, the district court found that the written description failed to disclose the use of Vilene SL33 as the bonding element. TAL responds that there was no evidence that the Vilene products offered better qualities than other brands, and that the PTO prefers the use of generic names of products. This, however, is not the proper inquiry. The district court correctly determined that the best mode found when analyzing the first prong was not present in the written description. TAL has not explained how the written description teaches one having reasonable skill in the art the way to practice the best mode as found in the analysis of the first prong - the use of Vilene SL33.

Inexplicably, the ruling was non-precedential.

Posted by Patent Hawk at May 23, 2008 1:52 AM | Inequitable Conduct


This is one of those cases where the trial court and CAFC judges ought to be paying some legal costs for their own failure to disclose.

What the courts are failing to disclose is that the 112 standard is not that the inventor disclose "a best mode" or that he disclose any mode used during development or testing. There is no such requirement by 112. The standard is that the inventor disclose "the best mode CONTEMPLATED by the inventor for carrying out his invention."

Here Wong set forth all of the characteristics of the adhesive tape, including composition (polyamide, polyester, or olefinic material), melting range, diameter of the filaments (20-80 micron), and density.

As long as that paragraph discloses the best mode contemplated by Wong, it doesn't matter a blink what the commercial name of the tape was. It doesn't even matter whether the commercial tape meets those characteristics. Wong could have deduced -- i.e. contemplated -- an adhesive tape superior to the commercial tape he actually used. Wong wasn't claiming an adhesive tape.

Just because an inventor has an actual reduction to practice using one mode doesn't mean he can't deduce a better mode and take advantage of his right to constructive reduction to practice.

The Wong disclosure appears to me to be a tight, enabling disclosure that more than adequately places the invention in the inventor's hands. And this decision appears to me to be pi$$ poor.

And while I'm on this rant (the boss isn't in yet). . . the trial judge concluding that an inventor has to disclose his inspiration regardless of whether the inspiration is a best mode contemplated is so far out in left field the judge's salary ought to be docked to pay Wong's lawyers. Another example of how these judges with degrees in art history ought not be deciding patent cases.

The problem with this case is that Newman wasn't on the panel. She would have boxed some ears, even if in dissent. Especially, if in dissent.

Posted by: Babel Boy at May 23, 2008 8:48 AM

Well, what a refreshingly lucid and trenchant comment that was. Three cheers for Hawk and the Babel Boy. Any dissents? Anybody ready to support the CAFC on best mode? Now me, I'm interested in the CAFC opinion that the seam on real raincoats already on the market was no more than cumulative to a German language patent document. Where I come from, patentability is judged from a starting point of the common general knowledge (which doesn't include foreign language pat publns but would include what's notorious in the marketplace). Besides, taped seams are standard in mountaineering garments, no? So, not telling the USPTO about taped garments on the market is dodgy, no?

Posted by: MaxDrei at May 23, 2008 9:34 AM

You know babel boy you're absolutely right. In LOL (Law or Legal) land these decisions make 0 sense what so ever. Now, in reality what we have on display is the courts beginning to return to the desire to have the "flash of genius" disclosed as well as a strong support for the disclosure having to disclose the best way to actually make the item. I personally have to say that I agree on both accounts, but that the DC messed up bad in terms of LOL land standards. Even so, requiring the inventor to tell us just what the best way to practice the invention is hardly world shattering.

Even with that said, your comments about how the spec is enabling may not be so on point as you think. Just because the inventor may think he knows a better way to make a shirt using a mysterious tape that's not even been invented yet doesn't mean he told us the best way to practice the invention that he contemplates. You're getting too far afield in the land of the "constructive reduction to practice".

Posted by: e6k at May 23, 2008 10:23 AM

6K, requiring the inventor to recite the best mode is, in one way, world-shattering. Babel alludes to the universal requirement of any patent law, that the inventor gives the skilled reader enough information to practice the invention over the scope of the claim. If the invention is enabled with VILENE SL33, but no other tape "works", then a specification which fails to name VILENE SL33 is insufficient, and any claim that fails to recite VILENE SL 33 is bad. A requirement for a disclosure sufficient to enable, over the width of the claim, is not only necessary for a fair patent law but also sufficient, and objective to boot. Unlike the Best Mode requirement.

Posted by: MaxDrei at May 23, 2008 1:28 PM

It's an interesting point, Max and #6, but I do not believe that Wong had to disclose or claim "VILENE SL33" under 112 even if it is the only tape presently known to him in the universe that could be used. Personally, I would disclose it, but I still believe that by disclosing all of the relevant characteristics of the tape, Wong's disclosure was sufficient. Leave it to those skilled in the art to determine which tapes meet those characteristics. There might be thousands of them the inventor doesn't know about and by naming just one in lieu of disclosing the characteristics, he later gets accused of inequitable conduct.

I have yet to check it, but I'm not sure in the US one is permitted to limit a claim with a trade name. But even if it's allowed, why would one want to in a case like this where the tape's traits are known? Anyone could produce the same tape by a different name and avoid infringing the claim.

Perhaps I'm being overly liberal here. If a product works and you don't know why or don't know which properties of the product make it work, then I guess you might not have any options but to claim/disclose the product by name. Using Coca Cola for post-coital contraception, for instance.

"A method of avoiding child support comprising the steps of (a) acquiring a bottle containing a quantum of Coca Cola; (b) shaking the bottle so as to agitate the Coca Cola; (c) . . . nevermind.

Posted by: Bable Boy at May 26, 2008 8:11 AM