Transco Products Inc., v. Performance Contracting, Inc.

38 F.3d 551 (1994)

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Nature of the Case

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Facts

The '735 patent, invented by Pinsky, issued from a Rule 60 continuation application filed on October 2, 1974, which application claimed priority pursuant to 35 U.S.C. §120 based on a parent application filed on October 24, 1973. The patent involved thermal insulation for vessels and piping within nuclear power plants. Transco (P) began marketing thermal insulation for nuclear power plant containment areas as early as 1982. D notified P in three letters, dated February 13, March 8, and September 11, 1989, that it was infringing the '735 patent. P filed suit on October 25, 1989, seeking a declaratory judgment of invalidity, non-infringement, and unenforceability of the patent. D counterclaimed for infringement. The district court, sua sponte, instructed the parties to brief the issue of whether claims 1-4 of the patent should be held invalid by summary judgment on the basis that they fail to disclose the best mode of practicing the claimed invention. The district court held the patent invalid in view of three violations of the best mode requirement. The court based the first two violations on knowledge Pinsky allegedly had at the time of filing his continuation application but did not have at the time of filing the corresponding parent application. The district court found that Pinsky knew at the time of filing his continuation application that the use of stainless steel hooks for the fasteners (6), as opposed to the disclosed nylon-type hooks, constituted the best mode for carrying out the claimed invention. The district court also found that Pinsky knew at the time of filing his continuation application that the claimed fasteners should be placed longitudinally on the insulation with respect to the pipe, as opposed to circumferentially. Pinsky did not consider either of the foregoing to be the best mode of practicing the claimed invention as of the filing date of the parent application. The district court held that the filing date of Pinsky's continuation application controlled, because, according to the district court, an applicant must update the best mode disclosure upon each filing of a continuing application. On the third violation, the court found that Pinsky violated the best mode requirement by failing to disclose the commercial designation for a material that he described in the specification for use as the finished glass cloth (14). D appealed.