At the district court, the parties agreed that there did not exist a colorant system sold by Futura Coatings, Inc. ("Futura") under the name "Visichrome." Instead, Green Edge had used a product that Futura sold under the product code "24009." Green Edge asserted, however, that it had believed the colorant system to be called "Visichrome" based on a letter that it had received from Jeffrey Jarboe, Futura's vice president, in July 1997. Best Mode Op., 2008 U.S. Dist. Lexis 23378, at *12. In that letter, Jarboe stated that "[t]he Futura 'Visichrome' colorant system is designed to be a user friendly system. The infinite colors available are packaged as a single component water based acrylic system." J.A. 250. The letter then discussed how the "'Visichrome' colorants" would be used to coat the rubber particles used by Green Edge. Id. However, before the district court, Jarboe could not remember why he used the term "Visichrome" in reference to the colorant system. Best Mode Op., 2008 U.S. Dist. Lexis 23378, at *12.

In March 2008, the district court granted Rubber Mulch and Rubber Resources summary judgment of invalidity of the '514 patent for failure to disclose the best mode of the invention, pursuant to 35 U.S.C. § 112, paragraph 1. Best Mode Op., 2008 U.S. Dist. Lexis 23378. The court found that "Visichrome," the only water-based acrylic colorant disclosed in the specification, did not exist, despite having been referenced in Jarboe's letter. Id. at *11-14. The court further held that Green Edge had concealed the best mode by disclosing "a misleading, non-existent name instead of the number," when no similar product was available on the market. Id. at *14. The court therefore held the '514 patent invalid based on Green Edge's failure to disclose the best mode of coloring the rubber particles.

Green Edge Enterprises v. Rubber Mulch, Rubber Resources, and Groundscape v. International Mulch, and a few gnomes of its own (CAFC 2009-1455, 1479) precedential

On appeal -

Green Edge argues that the district court erred in granting summary judgment of invalidity for failure to describe the best mode. Green Edge asserts that it did not know the composition of the proprietary colorant; all it knew was the name "Visichrome," which it believed to be the product name, plus the product code number. According to Green Edge, there was no evidence that the patentees subjectively intended to conceal anything. Further, according to Green Edge, when it approached another manufacturer about supplying colorants to make the claimed invention, that manufacturer found no undue experimentation necessary to supply colorants. Green Edge also argues that only claim 3 could possibly be invalid for a best mode violation because it is the only claim that recites "Visichrome."

We agree with Green Edge that the district court erred in granting summary judgment of invalidity based on a best mode violation, and that the court did not err in denying summary judgment on the other invalidity grounds; thus, summary judgment of invalidity was improper. Regarding the best mode requirement, 35 U.S.C. § 112, paragraph 1, provides that "the specification . . . shall set forth the best mode contemplated by the inventor of carrying out his invention." Thus, inventors may not receive the benefit of the right to exclude while at the same time concealing from the public preferred embodiments of their inventions. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1330 (Fed. Cir. 2002).

"Compliance with the best mode requirement is a question of fact." Ajinomoto Co. v. Int'l Trade Comm'n, 597 F.3d 1267, 1272 (Fed. Cir. 2010). The sufficiency of the disclosure of the best mode is determined as of the filing date. See Application of Glass, 492 F.2d 1228, 1232 (CCPA 1974).

Determining compliance with the best mode requirement is a two-pronged inquiry. First, the court must determine whether, at the time the patent application was filed, the inventor possessed a best mode of practicing the claimed invention. U.S. Gypsum Co. v. Nat'l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). The first prong is subjective; it focuses on the inventor's personal preferences as of the application's filing date. N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1286 (Fed. Cir. 2000). Second, if the inventor has a subjective preference for one mode over all others, the court must then determine whether the inventor "concealed" the preferred mode from the public. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 928 (Fed. Cir. 1990). The second prong asks whether the inventor has disclosed the best mode and whether the disclosure is adequate to enable one of ordinary skill in the art to practice the best mode of the invention. Id. The second inquiry is objective; it depends upon the scope of the claimed invention and the level of skill in the relevant art. Id.

In this case, the parties do not seriously dispute that the inventors of the '514 patent possessed a best mode of practicing the claimed invention, viz., using Futura's 24009 product as the claimed colorant. Green Edge, however, asserts that it disclosed that mode; it did not conceal it from the public. The question thus relates to the second inquiry, whether Green Edge disclosed its best mode when it disclosed a material by a name that did not exist and failed to identify the material that it actually used in its own work.

We have held that an inventor using a proprietary product in his preferred embodiment must, "at a minimum, . . . provide supplier/trade name information in order to satisfy the best mode requirement." U.S. Gypsum, 74 F.3d at 1214 (citing Chemcast, 913 F.2d at 929). The purpose of the requirement of a supplier and a trade name is to allow the public to practice the inventor's best mode at the time of filing. Thus, in Chemcast, 913 F.2d at 929-30, and U.S. Gypsum, 74 F.3d at 1213-16, we held that the inventor had not disclosed the best mode because the inventor in each of those cases had not provided a description sufficient to allow a skilled artisan to know or carry out the best mode. In those cases, the identity of the material in question was a trade secret of the supplier, and the inventor did not know its identity, so it could not objectively disclose the best mode. In this case, the facts are similar, but there is a genuine issue as to whether the name "Visichrome" was descriptive of a sufficiently specific product so that one seeking to obtain and practice the best mode of the invention, product number 24009, would have succeeded.

The disclosure might have, at the time the application was filed, been specific enough to describe the colorant so as to enable a person of ordinary skill in the art to make the claimed product using Futura's 24009 product.

We therefore agree with Green Edge that there was a genuine issue of material fact relating to whether the best mode was disclosed, precluding summary judgment of invalidity.

Reversed and remanded.