ATELIERS DE LA HAUTE-GARONNE AND F2C2 SYSTEMS SAS, Plaintiffs-Appellants,
BROETJE AUTOMATION USA INC. AND BROETJE AUTOMATION GMBH, Defendants-Cross Appellants.
Appeals from the United States District Court for the District of Delaware in No. 09-CV-0598, Judge Leonard P. Stark.
Scott G. Lindvall, Kaye Scholer, LLP, of New York, New York, argued for plaintiffs-appellants. With him on the brief was Sarah W. Saunders.
Patrick J. Kelleher, Drinker Biddle & Reath LLP, of Chicago, Illinois, argued for defendants-cross appellants. With him on the brief were Darren S. Cahr, and Carrie A. Beyer.
Before Newman, Prost, and Reyna, Circuit Judges.
Newman, Circuit Judge
Plaintiffs Ateliers de la Haute-Garonne and F2C2 Systems S.A.S. (collectively "AHG") filed suit against defendants Broetje Automation USA Inc. and Brötje Automation GmbH (collectively "Broetje"), asserting counts of patent infringement, trade dress infringement, unfair competition, and intentional interference with prospective economic advantage. Ateliers de la Haute-Garonne is a French company whose employees include Jean-Marc Auriol and Philippe Bornes, the inventors of the patents in suit.
AHG asserted two patents, United States Patent No. 5, 011, 339 ("the '339 patent") issued April 30, 1991, and No. 5, 143, 216 ("the '216 patent") issued September 1, 1992, both entitled "Process for Distribution of Pieces such as Rivets, and Apparatus for carrying out the Process." AHG alleged infringement of claims 1, 2, 3, and 6 of the '339 patent and claims 1, 2, and 6 of the '216 patent. The patents claim priority to a French application filed on December 8, 1988, and relate to the dispensing of objects such as rivets through a pressurized tube with grooves along its inner surface, to provide a rapid and smooth supply of properly positioned rivets for such uses as the assembly of metal parts of aircraft. The invention "permits dispensing a very great number of pieces without risk of jamming in the tube and with a precise guiding permitting maintaining the alignment of the axes of the pieces." Abstract, '339 patent, '216 patent.
On Broetje's motion for summary judgment, the district court ruled, on September 26, 2011, that the claims in suit are invalid for failure to disclose the best mode of carrying out the invention, as required by 35 USC §112 ¶1. Judgment was entered under Federal Rule 54(b); the court did not decide the other issues in the complaint, except for, on October 13, 2011, rejecting Broetje's argument that AHG abandoned the '339 patent by failing to pay the issue fee. 
AHG appeals the judgment of invalidity on best mode grounds. Broetje cross-appeals, stating that the patent was abandoned. We reverse the judgment of invalidity, affirm that the patent was not abandoned, and remand for determination of the remaining issues.
The Best Mode
The specifications of the '339 and '216 patents include several drawings of embodiments of the grooved tube, and describe the operation of the invention as follows:
According to the present invention, the compressed fluid is admitted into the tube behind the last piece and is distributed along the length of the tube at the interior of at least one longitudinal passageway provided on the internal surface of said tube for opening into the hollow core thereof, such that the fluid pressure is exerted all along the hollow core in the spaces separating said pieces.
'339 patent, col.2 ll.35-42.
Claim 1 of the '339 patent follows, with numbers and letters that refer to the drawings, as exemplified in Figures 1 and 2:
1. A process for dispensing identical pieces having a symmetry of revolution about an axis, comprising: providing a tube (2) having a hollow center (2a) and a shape corresponding to the transverse section of the greatest diameter of the pieces for assuring a peripheral guiding of said pieces at the level of this section, arranging the pieces one after another in the interior of the tube (2) with their axes of revolution extending along the longitudinal axis of said tube and feeding one end of said tube with a compressed fluid for assuring the transfer of the pieces toward an open dispensing end (2d) of said tube, admitting the compressed fluid into the one end of the tube behind the piece closest to said one end of the tube and distributing the fluid along the length of the tube through at least one longitudinal passageway (2b) on the internal surface of said tube and opening into the hollow center (2a) thereof for exerting the pressure of the fluid along the hollow center in the spaces (E) between the pieces, to the piece (1P) closest to the dispensing end on which said pressure acts for assuring the transfer toward the dispensing end (2d).
The specification defines "longitudinal passageway" as "a passageway extending in the direction of the length of the tube." '339 patent, col.5 ll.59-61. The issue of "best mode" relates to the number of such passageways or grooves, illustrated at 2b in Figures 1 and 2:
A transverse sectional view of the tube is shown in Figure 2, which is described as a Preferred Embodiment:
The specification ...