Loral Corporation and Goodyear Aerospace Corporation,plaintiff/cross-appellant, v. the B.f. Goodrich Company, Defendant-appellant, v. the Goodyear Tire & Rubber Company, Thirdparty-defendant/cross-appellant, 899 F.2d 1228 (Fed. Cir. 1990)

B.F. Goodrich Company (BFG) appeals from the final judgment of the District Court for the Southern District of Ohio, Western Division, Civil Action C-3-86-216, June 8, 1989, holding, inter alia, that claims 4, 22, and 25 of Loral Corporation's United States Patent No. 3,650,357 (the '357 patent)^**  were not invalid for failure to comply with the best mode requirement of 35 U.S.C. § 112 p 1 (1982). We reverse. Cross-appellants' appeal seeking a remand for redetermination of damages is dismissed as moot.

OPINION

The dispositive issue here is whether the inventors failed to disclose the best mode of carrying out the invention. Loral relies on the district court finding "that the '357 patent discloses aircraft carbon disc brakes made from Carbitex-type material with tungsten and boron additives, which was the best mode for practicing the claimed invention known to the inventors," and argues that BFG "failed to establish that this factual finding is clearly erroneous." Before us, Loral does not maintain that the composition of the disc is not part of the required best mode disclosure.

In the parent application, the inventors disclosed that the Carb-i-tex material was used in the discs, manufactured by the Carborundum Corporation and stated that additives for strengthening and antioxidation are "necessary to the basic Carb-i-tex material" to obtain specific characteristics. Additives were to be selected from a group consisting of tungsten metal, di-tungsten-monoboride [W2 B ], silicon carbide, and other high temperature additives"; suggested antioxidant additives were "boron, tungsten, silicon carbide, zirconium, titanium, etc." Carb-i-tex material modified by the addition of a particular amount of W2 B and processed in a particular manner was identified as GY4041. GY4041 was found by Loral and Carborundum, after extensive research and testing, to be the best material to use in the disc. After entering into a confidentiality agreement with Carborundum, Loral filed a continuation in part application (CIP) in which it modified the original disclosure to delete reference to Carb-i-tex and to the additive W2 B as a strengthening agent, and to delete the statement that the additives were "necessary." Arguably Carb-i-tex was identified generically; W2 B was not mentioned at all. The inventors learned (or, per Loral, likely learned) from Carborundum before the CIP was filed that W2 B broke down in processing to tungsten and boron. Because the specification of the CIP continued to disclose those compounds, the district court found that the disclosure was adequate because a brake manufacturer would consult a carbon processor and one skilled in the art of carbon processing could develop a workable carbon disc from the disclosure of Carbitex-type material and the lists of suggested additives for use in the claimed brake without undue experimentation. At best, this conclusion supports satisfaction of enablement, not best mode. In re Gay, 309 F.2d 769, 772, 135 USPQ 311, 315 (CCPA 1962).

Loral does not assert that a better understanding of the chemistry changed the inventors' opinion as to what they contemplated as the best modified carbon product or changed what they used. They argue only that the "new" knowledge allowed them to disclose less. We disagree.

It is at least questionable whether the inventors disclosed their best mode in the parent application; the deletions from the specification in the CIP remove any doubt that the best mode they contemplated (as far as composition) simply is not there. The ingredients boron and tungsten are merely listed along with others with no indication they were preferred or should be used together or should be added in the form of W2 B or in what quantities or even that they were necessary as previously stated. This is not a case where the best mode is disclosed as an example among others and is merely not highlighted as the best mode. Randomex, Inc. v. Scopus Corp., 849 F.2d 585, 589, 7 USPQ2d 1050, 1054 (Fed. Cir. 1988). The facts here are indistinguishable from Dana Corp. v. IPC Limited Partnership, 860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 1988).

Contrary to Loral's argument, the best mode requirement is not satisfied because one skilled in the art could determine the composition of the discs by reverse engineering from the Loral product. The patent owner's product is not the specification. Obviously the best mode requirement is not avoided by the patentee putting out the patented product.

Also, contrary to Loral's argument, the disclosure in the parent application may not be used to supplement the disclosure. The prior specification like the Loral product, is not the specification of the subject patent which under Sec. 112 p 1 must contain therein a description of the best mode contemplated by the inventor.

We need not address the issue of Loral's failure to disclose how the discs were processed.

Costs

Costs are awarded to B.F. Goodrich Company.