Transco Products Inc. v. Performance Contracting, Inc.
38 F.3d 551 (1994)
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Rule of Law:
The best mode requirement for a patent application is assessed as of the filing date of the earliest application to which the claims are entitled priority under 35 U.S.C. § 120. An inventor is not required to update the best mode disclosure when filing a continuing application, such as a continuation or divisional, that adds no new matter.
Facts:
- Pinsky invented a type of thermal insulation for use in nuclear power plants.
- On October 24, 1973, Pinsky filed his original (parent) patent application.
- At the time of filing the parent application, Pinsky believed the best glass cloth for the invention was a product with the trade name 'Burlington Industries’ 603A,' but he described it using generic chemical and performance characteristics in the application.
- After filing the parent application, Pinsky learned that using stainless steel hooks instead of nylon, and placing fasteners longitudinally instead of circumferentially, were superior methods for his invention.
- On October 2, 1974, Pinsky filed a 'continuation' application, which contained no new subject matter and did not disclose the newly discovered superior methods or the specific trade name for the glass cloth.
- The U.S. patent office issued the Pinsky patent based on the continuation application.
- Performance Contracting acquired the rights to the Pinsky patent.
- Transco Products Inc. began manufacturing and marketing a similar thermal insulation product.
Procedural Posture:
- Performance notified Transco in a series of letters that it believed Transco was infringing the Pinsky patent.
- Transco filed a declaratory judgment action against Performance in the U.S. District Court for the Northern District of Illinois, seeking a judgment that the Pinsky patent was invalid and not infringed.
- Performance filed a counterclaim against Transco, alleging patent infringement.
- The district court, acting on its own initiative (sua sponte), instructed the parties to brief the issue of whether the patent was invalid for failing to meet the best mode requirement.
- The district court granted summary judgment in favor of Transco, holding claims 1-4 of the Pinsky patent invalid for three distinct violations of the best mode requirement.
- Performance, the appellant, appealed the district court's summary judgment decision to the U.S. Court of Appeals for the Federal Circuit, where Transco was the appellee.
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Issue:
Does the best mode requirement of 35 U.S.C. § 112 compel an inventor to update the disclosure of the best mode when filing a continuing patent application that claims priority to an earlier application and contains no new matter?
Opinions:
Majority - Rich, J.
No. The best mode requirement of 35 U.S.C. § 112 does not compel an inventor to update the disclosure when filing a continuing patent application that contains no new matter. Section 120 of the Patent Act dictates that a continuing application 'shall have the same effect' as if filed on the date of the parent application for any common subject matter. This provision applies to all requirements of Section 112's first paragraph, including the best mode disclosure. Therefore, the date for assessing compliance with the best mode requirement is the filing date of the parent application, not the later continuation. To require an update would subvert the goal of encouraging early disclosure, create unreasonable administrative burdens, and penalize inventors for improving their inventions after filing. Adding such later-developed information would constitute 'new matter,' which would cause the claims to lose the benefit of the earlier filing date. The district court's invalidation of the patent on this basis is therefore reversed. Regarding the failure to disclose the cloth's trade name, a genuine issue of material fact exists as to whether the generic description was sufficient for a person skilled in the art to practice the best mode, making summary judgment on that issue improper.
Analysis:
This decision provides critical certainty to patent applicants by establishing that the best mode disclosure is fixed at the time of the earliest effective filing date for subject matter carried over into continuing applications. It protects inventors from an ongoing duty to update their applications with improvements made during the patent prosecution process, thereby encouraging early filing and continued innovation. This ruling solidifies the procedural benefits of continuing application practice under 35 U.S.C. § 120, ensuring that routine procedural filings do not trigger new substantive disclosure obligations. Future cases will rely on this precedent to anchor the best mode analysis to the priority date, preventing invalidity challenges based on post-filing developments.
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