Patent Law

Puckered

By Gary Odom and Jordan Kuhn

John Wong got 5,568,779 for TALtech, claiming a seam for wash-and-wear dress shirts that don't pucker when laundered. Wong didn't disclose all the prior art he knew of, including the prior art that was the inspiration for his invention. The district court found inequitable conduct. The appeals court starches that shirt: "If the material is cumulative to other disclosed material, as a matter of law, the inventor is not obligated to disclose it." And, a lesson on best mode.

TALtech v. Esquel (CAFC 2007-1506)

Wong's weaseling odyssey of invention -

After seeing a seam employing heat-fusible adhesive tapes on a raincoat produced by his employer, Hong-Kong-based TAL Apparel, Wong was inspired to try a similar seam in dress shirts. He obtained various sample adhesive tapes from Vilene and tried them in his seam. After many trials with the various adhesives, he eventually settled on a preference for Vilene SL33 and produced a shirt that did not pucker appreciably after a standard set of washings. Shirts produced with this seam became successful, and on May 17, 1994, Wong filed an application for patent protection for his invention.

After the initial filing but before its first office action, Wong filed an information disclosure statement with the PTO, including another TAL produced raincoat seam incorporating bonding elements and a published German application of Felix Robers that produced a seam similar to the inspirational raincoat seam. He did not however present the seam from this original raincoat to the PTO at any time. Additionally, he never disclosed his then preference for Vilene SL33 as the preferred adhesive.

The battle joined -

Esquel is a competing manufacturer, also based in Hong Kong. In 2001, aware of the '779 Patent, Esquel decided to produce pucker-free wash-and-wear shirts using adhesive in the seams. It purchased adhesives from Bemis, another supplier of adhesive tapes, and subsequently received U.S. Patent No. 7,013,818 for their seam. On April 29, 2004, Esquel sought a declaratory judgment of non-infringement and invalidity of the '779 Patent in the Western District of Washington. The next day, TALtech sued Esquel for infringement of their '779 Patent in the Eastern District of Texas. The two suits were consolidated in the Western District of Washington.

After a bench trial, the district court gave Esquel a walk on non-infringement. Claim 18 of '779 was invalidated for lack of best mode, because Wong failed to disclose Vilene SL33.

And it found that Wong had committed inequitable conduct during the prosecution of the '779 Patent for failing to disclose the inspirational raincoat seam, and that the case was exceptional under 35 U.S.C. § 285 in part because of the inequitable conduct. It awarded attorneys fees to Esquel.

The CAFC case law recital on inequitable conduct -

To support a finding of inequitable conduct, there must be clear and convincing evidence that the applicant made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, intending to deceive the PTO. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007). Information is material if there is a substantial likelihood that a reasonable examiner would have considered the information important in deciding whether to allow the application to issue as a patent. Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 1000 (Fed. Cir. 2007).

The particulars lead the CAFC to vacate the inequitable conduct charge, and attorney fees award, and remand for further development of the record.

In this case, the district court found TAL liable for inequitable conduct because inventor John Wong had not disclosed the raincoat seam that inspired his invention 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. TAL argues that the undisclosed raincoat seam was merely cumulative to the German application of Robers, which was disclosed in the initial filing. If the undisclosed raincoat seam was merely cumulative to Robers, then no inequitable conduct lies in its nondisclosure.

On failure to disclose best mode, the CAFC affirms.

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 use of Vilene SL33 as the adhesive when he knew it at the time of filing. We have set out a two-pronged test for determining whether an inventor has met the best mode requirement. "First, the factfinder must determine whether, at the time of filing the application, the inventor possessed a best mode for practicing the invention." Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed. Cir. 2001) (citing Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 927-28 (Fed. Cir. 1990)). This involves a subjective inquiry whereby the factfinder focuses on the inventor's state of mind at the time of filing. Id. "Second, if the inventor possessed a best mode, the factfinder must determine whether the written description disclosed the best mode such that one reasonably skilled in the art could practice it." Id. This involves an objective inquiry focused on the scope of the claimed invention and the level of skill in the art. Id.

[B]ecause 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.

In satisfaction of the second prong, the district court found that the written description failed to disclose the use of Vilene SL33 as the bonding element. TAL responds that there was no evidence that the Vilene products offered better qualities than other brands, and that the PTO prefers the use of generic names of products. This, however, is not the proper inquiry. The district court correctly determined that the best mode found when analyzing the first prong was not present in the written description. TAL has not explained how the written description teaches one having reasonable skill in the art the way to practice the best mode as found in the analysis of the first prong - the use of Vilene SL33.

Inexplicably, the ruling was non-precedential.

Full post as published by The Patent Prospector on May 23, 2008 (boomark / email).