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Appeals Court Reverses Patent Invalidity Ruling in Favor of Kaye Scholer Client Ateliers de …

May 22, 2013

Appeals Court Reverses Patent Invalidity Ruling in Favor of Kaye Scholer Client Ateliers de la Haute-Garonne

Leading manufacturing of patented rivet distribution system adequately disclosed best mode of invention

NEW YORK: The US Court of Appeals for the Federal Circuit yesterday found in favor of Kaye Scholer client Ateliers de la Haute-Garonne and F2C2 Systems SAS (AHG), a French airplane equipment parts manufacturer, in a patent infringement case filed against German rival Bröetje Automation and its American subsidiary Broetje Automation USA.

AHG held two US patents relating to the dispensing of objects such as rivets through a pressured tube with grooves along its inner surface which improved the rapidity and smooth supply of rivets to assemble the metal parts of aircraft. Bröetje had previously purchased AHG’s rivet dispensing system from AHG, but then set about making its “own” rivet dispenser system, which, according to AHG’s complaint, virtually matched the one designed and patented by AHG.

AHG then sued Bröetje for two counts of patent infringement, trade dress infringement and unfair competition in the Delaware District Court. Bröetje argued that claims filed by the plaintiff were invalid because AHG had intentionally failed to disclose the best mode of carrying out the invention, which, under US patent law, stipulates that the inventor must appropriately disclose the best “way” or “method” for making the product. The defendant further alleged that AHG had abandoned its patent because it allegedly failed to pay the issue fee. Though the Delaware District Court rejected Broetje’s argument that the AHG had abandoned its patent, it sided with the defendant on the best mode argument. It deferred ruling on the other claims filed by AHG.

Kaye Scholer Intellectual Property Partner Scott Lindvall appealed on behalf of AHG, arguing that even though AHG ultimately developed and sold for commercial use a five-groove tube, the description it provided, including the use of three groves to prevent the rivets from jamming in the tube, was the best mode known to the inventors at the time the patent was filed, and the three-groove embodiment was specifically described and thus adequately disclosed in the specification’s text and drawings and in no way concealed a better mode beyond that described. The Federal Circuit agreed, finding that the inventor of AHG’s product had disclosed why an odd number of grooves was necessary and the invention specifications reflected an odd number of grooves in the text and drawings, thus “the best mode is satisfied when the inventor includes the preferred mode in the specification at the time the application was filed.”

In addition to Lindvall, Kaye Scholer associate Sarah W. Saunders also advised AHG.

Launched more than 45 years ago, Kaye Scholer’s Intellectual Property Department focuses on resolving disputes, both in and out of the courtroom. With an emphasis on patent litigation suits, we combine sophisticated scientific, technical and business knowledge with extensive courtroom experience. We also defend high-stakes trademark, false advertising, and copyright lawsuits and advise companies on trade secrets protection, hearings before the PTO and Section 337 cases before the ITC. Finally, we advise on technology and outsourcing issues, working in conjunction with Kaye Scholer’s transactional teams.

About Kaye Scholer LLP

Founded in New York in 1917, Kaye Scholer combines the continuity and business acumen of a century-old law firm with a forward-looking, tech savvy, results-driven approach focused around lasting client relationships. With industry strengths in life sciences, financial services, technology, real estate and energy & infrastructure, Kaye Scholer offers strategic guidance and legal services to public and private entities facing litigation, transactional or governance challenges. Kaye Scholer’s lawyers regularly advise on matters across multiple legal jurisdictions, including in the US, Canada, UK, EU, China and Japan.

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Andrea Orzehoski
PR & Communications Manager Kaye Scholer
212-836-7162
andrea.orzehoski@kayescholer.com

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