An Inventor is Not Required to Disclose The Inspiration of the Invention

Taltech Limited v. Esquel Apparel, Inc., [2007-1506] (May 22, 2008)[MAYER, BRYSON and GAJARSA] NON-PRECEDENTIAL The Federal Circuit vacated the finding of inequitable conduct and exceptional case because there was no finding on whether the withheld art was merely cumulative, and affirmed invalidity of claim 18, and the finding of non-infringement of claims 18, 25 and 26.
SIGNIFICANCE: Failure to disclose cumulative information is not inequitable conduct. Best Mode Disclosure can include details, such as the particular adhesive. Order of steps not usually important unless logic or grammar indicates otherwise.
BRIEF: The district court found TAL liable for inequitable conduct because inventor John Wong had not disclosed the raincoat seam that inspired his invention of a seam for a permanent press shirt 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.
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 adhesive when he knew it at the time of filing. There is a two-pronged test for determining whether an inventor has met the best mode requirement. First, the fact finder must determine whether, at the time of filing the application, the inventor possessed a best mode for practicing the invention. This involves a subjective inquiry whereby the fact finder focuses on the inventor’s state of mind at the time of filing. Second, if the inventor possessed a best mode, the fact finder must determine whether the written description disclosed the best mode such that one reasonably skilled in the art could practice it. This involves an objective inquiry focused on the scope of the claimed invention and the level of skill in the art. The Federal Circuit said that because 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. On the question of infringement, the Federal Circuit Generally, there is no presumption of order of steps in a method claim, so a claim with many steps can be infringed by an accused process performing the claimed steps in any order. However, order is important where when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires such order. The Federal Circuit agreed with the district court that logic and grammar required that the steps be performed in a particular order.