Young Dental Manufacturing Company, Inc. v. Q

3 SPECIAL PRODUCTS, INC. 112 F.3d 1137 (1997)

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Nature of the Case

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Facts

P's patents, '547 and '679, disclose an improved disposable prophy angle (DPA). A prophy angle is the small hand-held device used by dentists to polish teeth. It holds a rubber cup, known as a prophy cup, which the dentist dips into an abrasive paste and then holds against the patient's teeth as the cup rotates. Early prophy angles were not disposable. In the 1970s, plastic DPAs were introduced but did not replace metal DPAs, because they often ran roughly, fell apart, and overheated. Bailey, an employee of P filed a patent application for an improved DPA and assigned the application to P. The '547 patent claims the DPA and a method for assembling the DPA. The '679 patent was based on a continuation-in-part application of the '547 patent. Bailey copied the claims in the application for the '679 patent from an application for defendant Kraenzle's later-issued '859 patent in an effort to provoke an interference between the two applications. The Patent Office refused to declare the interference after Kraenzle surrendered certain claims and amended others to make them patentably distinct from Bailey's claims. Kraenzle worked as an engineer with P from December 1990 until his resignation in March 1992. In April 1992, he designed the device accused of infringing and in July 1992 filed the patent application that matured into the '859 patent. Kraenzle formed Q3 (D) in July 1992 with Chris Carron, another former P employee, and began selling the device in July 1993, the same month in which the '859 patent issued. D's DPA includes a sleeve and neck, with a head-mounted at the neck's end. The drive gear and driven gear are meshed at the end of the neck and a cap 9 rotates upward and snaps shut to hold the gears in place. The dispute centers on whether cap 9 is part of the head when the cap is closed. P sued Ds alleging infringement of the '547 patent, misappropriation of trade secrets, constructive fraud, and breach of a confidentiality agreement. P added a count for infringement of the '679 patent. Ds counterclaimed for a declaration of noninfringement and invalidity. The court granted D's motion for summary judgment of no literal infringement. At trial, P objected to the submission of any jury instruction related to best mode on the ground that there was 'no evidence to support the submission of a best mode defense.' The jury returned a verdict in favor of D. The jury found noninfringement under the doctrine of equivalents for all asserted claims and invalidity for obviousness and for failure to comply with the best mode requirement for all asserted claims. P appealed. P asserts, in part, that the district court should not have submitted the best mode issue to the jury.