practiced the best mode from the disclosures made.
Harsco asserts that Chemcast is on all fours with this case but, significantly, the Federal Circuit did not end its analysis in Chemcast where Harsco insists it should have, after finding no explicit mention of the material hardness, the material itself or the supplier of the material. Instead, the court went on to determine if there had been an implicit disclosure.
We can put aside United States Gypsum Co. for the same reason. That case dealt with the validity of a patent for a light-weight joint compound used to seal joints in wallboard. The best mode used a silicone treated expanded perlite called Sil-42. However, the patent referred only to "expanded perlite . . . treated with a silicone compound . . ." 74 F.2d at 1211. The Federal Circuit concluded that this did not reveal the best mode because Sil-42 was a qualitatively different material than the various other compounds generally known as silicone treated expanded perlite. Specifically, Sil-42 did not have to be screened before use, resisted breakdown under vacuum treatment, and yielded a lightweight compound that was easy to sand. Id. Thus, because the patent did not "disclose the chemical composition of Sil-42 perlite, its method of manufacture, or supplier trade/name information," id. at 1213, the patent was invalid.
We can easily contrast United States Gypsum Co. with this case. Unlike in that case, the patents here do reveal the materials that composed the wire. Of course, as the plaintiff readily points out, they do not reveal the best ratio of carbon and aluminum to use in the wire. But, unlike in United States Gypsum Co., there is evidence in this case that the optimum ratio was easily determined by one with skill in the art. Indeed, the patent examiner objected to granting the patents on the ground that "routine experimentation" would reveal the "optimum ratio" "depending upon the end results desired" and thus "it would be obvious to the practitioner practicing in this art to obtain the optimum ratio of materials utilized." The plaintiff protests that this comment goes to obviousness rather than to the best mode. Nonetheless, it is still relevant here in light of the Federal Circuit's best mode standard which leaves some play in the second part of the best mode requirement by looking to whether the disclosure was "so objectively inadequate" that it "effectively conceal[s] the best mode." United States Gypsum Co., supra, 74 F.2d at 1215 (brackets added).
Two other cases the plaintiff cites can be similarly distinguished. In Dana Corp. v. IPC Limited Partnership, 860 F.2d 415 (Fed. Cir. 1988), the court dealt with the validity of a patent on a valve stem seal sold to the automobile industry. The patent totally failed to disclose a fluoride treatment necessary for satisfactory performance of the seal. The Federal Circuit rejected the patent holder's argument that the best mode had been disclosed because fluoride treatments were well known to those with skill in the art, reasoning that the best mode requirement is not met by a mere reference to the prior art but by what is disclosed in the patent. In our case, there was no total lack of disclosure.
Finally, in Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524 (Fed. Cir. 1987), the court dealt with two patents, one on a laser and the other on a method for constructing a gas laser. The patents revealed that a process known as "TiCuSil brazing" was necessary but did not reveal the essential details of that process as used in the patents. Without those details, the best mode of the invention could not be practiced, even if the person attempting to use the invention knew what TiCuSil brazing was. Again, in our case, because the best mode could be practiced despite the deficiencies in the disclosure, there was no best mode violation.
We are buttressed in our conclusion by the trial court's denial of IKG's motion for new trial. It could have granted that motion despite its denial of the JMOL motion on procedural grounds but declined to do so because it concluded that the verdict was not against the great weight of the evidence. That conclusion means that the trial court believed there was sufficient evidence for a reasonable jury to find for the Company on IKG's best mode defense.
We are also not impressed by Harsco's reliance on the Federal Circuit's statement on appeal that IKG had "strong" evidence of a best mode violation. Strong evidence of a best mode violation can be met with equally strong evidence of no violation, and the Federal Circuit's statement certainly does not indicate that it agrees with Harsco that the Company had no evidence to defeat IKG's best mode defense.
We reject the defendant's remaining defenses. Contrary to the defendant's arguments, Molnar did not disclose what he contemplated to be the best mode. He thought the best mode was represented by Cor-Met 1362FC, not the ratios in the patents. Additionally, the wire composition was not a mere production detail that did not have to be included in the patent. It was an essential part of it. Finally, the jury instructions were not erroneous.
The plaintiff cannot prevail on an essential element of its legal malpractice claim because it cannot show that the individual defendants' procedural error was the proximate cause of the verdict against it in the underlying patent litigation. This failure is fatal to its claim. Thus, we will enter judgment in favor of the defendant law firm and against plaintiff on the negligence claim.
William W. Caldwell
United States District Judge
Date: May 21, 1997
AND NOW, this 21st day of May, 1997, upon consideration of the cross-motions for partial summary judgment filed by the plaintiff and the defendant law firm on the issue of proximate cause in the negligence claim, it is ordered that:
1. The plaintiff's motion (doc. 11) is denied.