Anvik Corp. v. Nikon Precision, Inc.

A reasonable finder of fact could have found that an inventor did not have a preferred method for practicing the invention based on extrinsic evidence, thus the best mode requirement was improperly determined by summary judgment.

Opinion (BRYSON): Anvik sued several electronics manufacturers and merchants, alleging that their use of Nikon scanners infringed three of its patents. The district court granted summary judgment for the defendants, finding that the patents failed to disclose the best mode for practicing the invention claimed in the patents, even though that method was contained in another patent issued to the same inventor. Anvik appealed, arguing that summary judgment was improper because there were sufficient questions of fact about the best mode requirement. The best mode requirement is determined by (1) whether the inventor subjectively believed there was a best mode for practicing the invention, and (2) whether the inventor objectively concealed that preference from the public. The issue on appeal was whether a reasonable finder of fact could have found that the inventor did not have a preferred method for practicing the invention. Upon reviewing the record, the Federal Circuit found that there was sufficient evidence, which, if credited by a fact finder, could have supported Anvik's arguments. Explanations sent by the inventor to the defendants following his deposition, and declarations by an expert that similar systems to the alleged best mode were well known before the patents in suit were issued, could have been credited to support the conclusion that the inventor did not subjectively believe the non-disclosed method was the best mode for practicing the invention. Because the evidence required credibility determinations beyond what was appropriate for a court to determine on a motion for summary judgment, the Federal Circuit REVERSED and remanded the case.

Note: The America Invents Act eliminated failure to disclose the best mode of practice as a ground for invalidating a patent. Because the statute is not retroactive, however, the best mode requirement was applicable to this case.