supports the conclusion that Nomex (R) is substantially equivalent to high temperature resistant nylon.
Although Transco further asserts that its constructions use stainless steel hooks (but see n. 19), that assertion merits a "so what?" response. Transco has offered no evidence that the use of stainless steel hooks creates any significant difference in function, way or result from the use of high temperature resistant nylon hooks. Again strips with high temperature resistant nylon hooks and stainless steel hooks would serve the same basic function: to hold the insulation in place. They would be equally easy to install and remove, and at least as heat-resistant as the high temperature resistant nylon strips and loops. Pinsky testified that stainless steel hooks clearly performed better than simple nylon hooks, which under testing "disintegrated" and "turned black," ultimately causing the release of the fastener (Pinsky Dep. 392-93, P. Ex. 9).
But high temperature resistant nylon hooks would not exhibit such tendencies. On the record now before this Court, then, the TA, A, G, and MA constructions would appear to infringe the limitation "two woven nylon, hook and loop fasteners" under the doctrine of equivalents.
Analysis under the doctrine of equivalents is necessarily incomplete for two reasons, however. In fact, the second of those reasons forces inquiry into an entire field not yet addressed by the parties.
First of all, any comparison between fasteners having Nomex (R) strips and loops and stainless steel hooks and fasteners having high temperature resistant nylon hooks, loops and strips has to assume the existence of such high temperature resistant nylon hooks. But up to now neither party has offered evidence that they exist. All that Pinsky stated in his deposition was that he tested simple nylon hooks and stainless steel hooks, and that the first type failed. And so the question whether high temperature resistant nylon hooks do exist for purposes of analysis under the doctrine of equivalents must await further information from the parties.
There is a second topic--this one potentially outcome-determinative--on which input is required from the parties. Transco has suggested (though without providing argument or relevant law on the topic) that Pinsky violated the best mode requirement by failing to disclose to the patent attorney, so that the 1974 continuation application did not disclose, that Pinsky's tests had revealed that Nomex (R) strips and loops and stainless steel hooks were the best ingredients for the fasteners (P. R. Mem. 21 n. 10; Pinsky Dep. 135, P. Ex. 9).
Even though its final memorandum was filed later, Performance Contracting did not respond to Transco's footnoted innuendo.
Disclosure of the best mode "contemplated by the inventor" is mandated by 35 U.S.C. § 112. As Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1209-10 (Fed. Cir. 1991) has put it:
The best mode requirement thus is intended to ensure that a patent applicant plays fair and square with the patent system. . . . One must not receive the right to exclude others unless at the time of filing he has provided an adequate disclosure of the best mode known to him of carrying out his invention.
See also 2 Donald S. Chisum, Patents §§ 7.05-7.05 (1992).
In evaluating that issue, a court must first ask the subjective question "whether at the time the inventor filed his patent application, he knew of a mode of practicing his claimed invention that he considered to be better than any other" ( Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 928 (Fed. Cir. 1990)). If so, the question becomes "is the disclosure adequate to enable one skilled in the art to practice the best mode or, in other words, has the inventor 'concealed' his preferred mode from the 'public'?" (id.).
Here Claim 1 stated only that "woven nylon, hook and loop fasteners" are used, while the specification explained that "high temperature resistant nylon is preferred" (P. Ex. 4 at T112). Chemcast, 913 F.2d at 928 (emphasis in original) makes an important distinction between "best mode" and "enablement," to be kept in mind in the 35 U.S.C. § 112 inquiry:
A patent applicant must disclose the best mode of carrying out his claimed invention, not merely a mode of making and using what he claimed. A specification can be enabling yet fail to disclose an applicant's contemplated best mode.
In those terms Pinsky had done tests on various fastener ingredients and had determined, before the continuation application was filed, that Nomex (R) strips and loops and stainless steel hooks worked best (Pinsky Dep. at 135, P. Ex. 9). Even more, Pinsky had found that simple nylon hooks burned and failed in the heat of containment areas (id. at 392). It may be that Performance Contracting relies on the fact that no reference at all was made to the material of the hooks--on the current motion it has said that the claim language was not intended to specify the material of the hooks (D. Mem. 8). However, a complete failure to reveal material subject matter can be a violation of the best mode requirement (see Spectra-Physics, 827 F.2d at 1536 (failure to disclose the specific braze cycle used, which was the preferred means of attachment, violated the best mode even though no attachment means was described at all)).
It seems at first blush, then, that a strong case might be made that the Pinsky patent is invalid for failure to disclose the best mode of practicing the invention. Even though the present posture of the case precludes a ruling on that issue, it is so obviously evoked by what has been tendered to date that the litigants are now ordered to supplement their filings to permit this Court to deal with it promptly.
3. "the glass cloth has a finish of a leachable organic silicate carried in a fatty and mineral oil vehicle."
Claim 1 of the Pinsky patent also contains the limitation that "the glass cloth has a finish of a leachable organic silicate carried in a fatty and mineral oil vehicle." Transco argues that the prosecution history narrows the Pinsky patent to that specification because (1) its limitation was not in the original patent application's Claim 1 and (2) the application was approved only after the limitation was added (P. Mem. 21-24; P. Ex. 4 at T140, P. Ex. 3 at T089, 099, P. Ex. 4 at T114, 121).
For its part Performance Contracting does not specifically contest the limitation. It rather states that the finish used by Transco is the same as or substantially equivalent to that used by Performance Contracting (D. Mem. 11; D. 12(n) P 28).
Performance Contracting uses Burlington Industries' 603A fabric and claims that it has the finish of a "leachable organic silicate carried in a fatty and mineral oil vehicle" (D. 12(m) P 35). Transco uses JPS Glass Fabric's 9383 cloth in the TA, A, and G constructions (D. 12(m), P. 12(n) PP 43, 45, 51). Performance Contracting contends that while those constructions "do not have the quoted element," nonetheless the finish is equivalent (D. 12(m) PP 44, 46, 52). As for the MA and MB constructions, Performance Contracting says that they use Burlington Industries' 603A fabric (D. 12(m) PP 47, 49, D. Mem. 10, D. Exs. H, I, Pinsky Aff. P 14, Vaughan Aff. P 5). Transco denies that, but it nowhere explains what fabric it claims to be used in the MA and MB constructions (P. 12(n) PP 47, 49).
Transco admits that the 9383 and 603A fabrics may be similar (P. R. Mem. 6). Thus Performance Contracting accurately points out that Transco has not argued that the 9383 finish is not equivalent to the 603A finish (D. R. Mem. 11). But in this infringement action the inquiry is not simply whether those two finishes are equivalent as such--instead the proper question is whether the 9383 fabric can be said to be substantially equivalent to a fabric that has "a finish of a leachable organic silicate carried in a fatty and mineral oil vehicle."
Transco contends that it cannot (P. 12(m) P 28, P. Mem. 25-27). Transco explains that the "finish" of the 9383 fabric is not something added to the material but rather is a "wash and clean" heating process to remove as much of the oils and lubricants in the sizing or the binder as possible without crystallizing the glass (P. Ex. 11, JPS Dep. 37-38, 46-47). Transco presented evidence that JPS Glass Fabrics (the fabric weaver and finisher) did not design the fabric to be leachable (Waddington Dep. 44-45) and that PPG (the maker of the glass yarn) does not use in its binder lubricant either a "leachable organic silicate" or a "fatty and mineral oil vehicle" (Lawton Dep. 47). Transco has also presented evidence that neither the United States Coast Guard Specifications for Incombustible Materials nor Owens-Corning Fiberglas' discussion of how to meet Navy stainless steel stress corrosion specifications mentions doing so with a fabric having a "finish of a leachable organic silicate in a fatty and mineral oil vehicle" (P. Exs. 17, 18).
Performance Contracting has presented testimony that "a leachable organic silicate carried in a fatty and mineral oil vehicle," although technically "not completely accurate," would have been understood to one of ordinary skill in the art in 1973 to be a "generic description for 603A finish" (Vaughan Aff. P 3). Performance Contracting has also presented evidence that both the 603A cloth and the 9383 cloth contain silicates (D. Exs. I, K).
For purposes of Transco's motion for summary judgment of noninfringement, this Court must credit Performance Contracting's evidence that the 603A cloth would have been understood by one of ordinary skill in the art to have a "finish of a leachable organic silicate carried in a fatty and mineral oil vehicle." Because Transco has not contested the equivalency of 603A cloth and 9383 cloth, Transco has failed to show noninfringement of that limitation by any the TA, A and G constructions. And absent any evidence to counter Performance Contracting's evidence that the MA and MB constructions use 603A cloth, Transco has also not shown that those constructions are noninfringing as to the literal terms of the limitation now in issue.
But on the other side of the coin (that is, on Performance Contracting's motion for judgment of infringement), this Court must accept as true Transco's evidence that there is no such creature as cloth with a "finish of a leachable organic silicate carried in a fatty and mineral oil vehicle." Every inventor must describe his or her claims with such clarity that "persons of skill in the art will recognize that the applicant made the invention having those limitations" ( Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987)). If Performance Contracting has indeed described a finish that does not exist, then neither the 9383 cloth used in the TA, A and G constructions nor 603A cloth, which may be used in the MA and MB constructions, can be said to infringe the limitation at issue either literally or equivalently.
As to this last limitation, then, the risk of dual defeat of cross-motions under Rule 56 that this opinion identified earlier has unfortunately been realized. And that spells defeat for both sides on their respective summary judgment motions.
Transco has not shown that any single limitation in the Pinsky patent is not infringed by the five accused Transco constructions. Transco's motion for a summary judgment declaring noninfringement is therefore denied. And although Performance Contracting has shown that one limitation ("a plurality of spaced quick release and engage fasteners") is infringed by four Transco constructions, the waters remain muddied as to the second limitation ("two woven nylon, hook and loop mating strips"),
and performance has not demonstrated that the third challenged limitation in Claim 1 of the Pinsky patent is infringed either literally or equivalently by the Transco constructions. Performance Contracting's motion for summary judgment of infringement is therefore denied as well.
Two things remain. First, both parties are ordered to provide simultaneous submissions (whether evidentiary or legal in nature, or both) on the "best mode" question on or before February 10, 1993. Second, if those submissions do not prove dispositive on validity grounds, Rule 56(d) findings by this Court are called for to conform to the rulings in this opinion. Accordingly the parties' February 10 submissions should also include proposed forms of order toward that end.
Milton I. Shadur
Senior United States District Judge
Date: January 28, 1993
[SEE APPENDIX 1 IN ORIGINAL]