Chemcast Corporation v. Arco Industries Corporation

913 F.2d 923 (1990)

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Nature of the Case

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Facts

The '879 patent claims a sealing member in the form of a grommet or plug button that is designed to seal an opening in a sheet metal panel. P and Arco (D) are both engaged in the manufacture and sale of sealing members such as grommets, gaskets, and plug buttons. Ex-D employee Rubright founded P in 1973 and subsequently conceived of and designed specifically for Oldsmobile the dual durometer '879 grommet. The '879 patent issued in April of 1978. P sued D for infringement. D counterclaimed that the patent was invalid on several grounds, including failure to comply with §112. The district court held that, because the '879 patent did not either disclose the best mode contemplated by the inventor of carrying out the invention or particularly point out and distinctly claim the subject matter of the invention, P could not recover on its claim of infringement. Both parties appealed. The decision was vacated because the district court relied on an incorrect legal standard. The appeals court set out the appropriate legal standard for determining compliance with the best mode requirement: the focus must be, and the district court must determine, that the inventor knew of, i.e., 'contemplated,' and concealed a better mode than he disclosed. The focus for the best mode analysis is not simply on whether the patent discloses the most suitable material for carrying out the claimed invention. The case was remanded. The district court again invalidated the patent for failure to satisfy the best mode requirement. The shortcomings of the disclosure were its failure to specify (1) the particular type, (2) the hardness, and (3) the supplier and trade name, of the material used to make the locking portion of the grommet. P appealed.