*1 diced motion to the Continental’s extent sought attorney’s
it fees under 1988. Fi- § nally, the defendant contended that plaintiffs prevailed could not have under denying plaintiff’s its order
§ motion the court only district said that it arguments parties
had “reviewed the and the relevant case law” and had deter- denied,
mined that the motion should be stating without its reasons for the denial. Although we review the district court’s de- attorney’s
nial of fees for an abuse discretion, any explanation without impossible for us to discern the correctness judgment.
of the district court’s It is nec- therefore, essary, to remand the case to the explanation district court for an of the ba- plaintiff’s sis for its denial of the motion for attorney’s fees.
Consequently, we AFFIRM the district court’s determination that 664.02 does hot appeal. moot the We AFFIRM the judgment that, of the district court con-
junction, 664.03(3) 658.29 and are uncon- §§
stitutional. We REMAND the case to the
district court for findings further and the
legal basis for its plaintiff’s denial of the motion for attorney’s fees.
SPECTRA-PHYSICS, INC.,
Appellee/Cross-Appellant,
COHERENT, INC., Appellant/Cross Appellee. Appeal 86-1114, Nos. 86-1133. United States Court of Appeals,
Federal Circuit.
Aug. 17, 1987. *2 infringed by valid and Spectra-Phys-
ics, (Spectra). Inc.
We reverse the holding district court’s that both are invalid lack of reverse, however, enablement. We also finding the court’s specifi- both *3 complied cations with the best mode re- quirement of and thus affirm the § judgment invalid, but
legal ground. on a different legal discussing
Before of aspects case, explain this we first the technology gave involved which to rise them. Limbach, Limbach, Karl A. of Limbach & Sutton, Francisco, Cal., argued ap- San for Background
pellant. Of counsel were J. William Wi- gert, Stallman, Jr. Michael A. of Lim- A. Ion Lasers—In General bach, Sutton, Francisco, Limbach & San Cal. patent The Hobart is directed to an ion laser patеnt structure and Mefferd ato Geriak, Lyon Lyon, James W. of & Los fabricating method of an ion laser. “La- Angeles, Cal., argued for appellee. With ser” is an acronym l a ight for mplification Benassi, him on the brief were John M. by s timulated e r mission of An adiation.1 Shalek, H. James David B. Ritchie and Paul type gaseous ion laser is a laser. The Meier, Lyon Lyon, Angeles, H. & Los medium, lasing typically argon krypton or Cal. gas, is contained within a discharge sealed axially aligned tube which is pair with a RICH, Judge, Before Circuit optical to cavity mirrors form the or reso- SKELTON, Judge, Senior Circuit nator. ARCHER, Judge. Circuit lasing place, argon For to take or krypton gas must excited to elevated RICH, Judge. Circuit energy by states. This is accomplished These are cross-appeals from the December рroviding high-energy electrical dis- 16, 1985, judgment of the United States through gas. charge discharge The District Court for the Northern District of through the laser must then be constrained holding California pat both of Coherent’s straight along to a line optical the laser’s suit, 4,378,600 ents in No. entitled “Gas path pinched to a small diameter to Laser” 29, 1983, issued on March to James energy concentrate its elongat- into small (the L. patent) Hobart Hobart and No. ed volume. 4,376,328 entitled “Method of Constructing discharge through Gaseous Laser” The issued on March laser ex- Wayne tremely to (the up S. Mefferd to 6000°C. The patent), exterior of hot— laser, however, invalid for of enabling operate lack un must at disclosure room der 35 U.S.C. paragraph, temperature, requiring dissipation first after of large еntering originally judgment cooling. ver amounts heat external It is finding 2, 5, 7, dict claims important gas also pressure 18 of the be uni- Hobart and claim 10 of the Mefferd formly along discharge controlled tube. Unabridged 1. Webster’s Third region New spectrum Internation netic waves in the from Dictionary, al which further defines as laser "a including ultraviolet the far-infrared device that utilizes the natural oscillations of region.” visible amplifying generating atoms for electromag- spaced-apart tungsten agreed in a series discs reason, entirely upon For some discharge move to one laser The gas within the dis- tends by physicists, phenom- This charge or the other. itself is ceramic the tube tube thin-walled end of un- causes an enon, “pumping,” tube, known example, of alumina (AI2O3). in the dis- pressure differеntial gas even tungsten discs is transmit- Heat from performance tube, resulting poor charge through to and the ce- ted conduction all. performance or no (26), which is surrounded ramic tube copper (50) jacket, by cups attached
water B. Hobart Fig. below, of the tube. See inside showing is a dissected sectional view gas to a directed Hobart portion awith portions two end substantial discharge laser having improved laser omitted, the broken section central of the laser is discharge path tube.2 axis. representing longitudinal aligned apertures line by coaxially determined path providing a means heat conduction patent reads: of the Hobart *4 Claim aperture said of each of discs from the central comprising: laser A1. through comprising wall tube cylindrical made a rela- tube gas-confining a thin-walled, electrically-insulating attaching pheriphery mate- a disc at the tively rial; means for [sic, opening periphery] of the of each gen- spaced-apart within and discs plurality attaching a cup members means for tube, perpendicular the axis said erally along edge cup of each of the rims distal co-axially aperture having a each aligned central tube; said inside wall of of said tube define axis tube; exciting gas said means within discharge path; central aligned optical cavity with said an of a cup-shaped members material plurality of conductivity, having high having each thermal generally cylindri- generally flat face and rim, opening having and eaсh cal face; middle *5 a providing patent Claim calls for “means for The Hobart further discloses path aper- cylin- heat conduction from the central a “shield” which is claims a feature through each ture of of said discs to and ring coaxially to or formed drical attached the tube wall.” This includes both means copper cups.3 each of integrally with (48) attaching tungsten discs (56) minimizing gas in These shields aid copper cup opening center of each pumping discharge within the tube. attaching cups means for inside High wall of the ceramic tube. thermal C. Mefferd conductivity by brazing or is achieved sol- patent The method Mefferd describes a dering provides permanent a which metallic fabricating structure of the laser cups contact bеtween the and the tube addressed in patent.4. problem wall. Hobart The patent assemblying plurality spaced-apart 3. Claim of a the Hobart reads: [sic] members, heat-conducting having a each dis- 2. A laser as in each claim 1 wherein defining aperture generally charge central cylindri- cup-shaped said members includes a axis, aligned in tube within and con- ring gas coaxially aligned cal barrier which tube; electrically-insulating tact with an aperture with the extends central and which tensioning through provided the cen- cup-shaped within the mandrel volume of member. bring apertures aperture to tral the central patent 4. Claim of the Mefferd reads: alignment; into exact heat-conducting securing fabricating gaseous permanently mem- A method оf laser electrically-insulating discharge comprising: tube tube. bers to the aligned, assembly insert and tures are the whole is how to the Mefferd cups permanently parts in- bond the conducting brazed with- place heat in hold Fig. tube, in and to the tube walls. See 12 below while at long, slender side the copper cups apertured discs are the shields maintaining the time same the discs the mandrel 74 and the discloses alignment. precise figure par- whereby the ceramic tube 26. The shows a technique “floating” disc tensioning assembly tial before the aligned by apertures disc cups, through each discs to the which is done a vertical passed that has been mandrel “B” aper- position upward. with end the disc apertures. Once of the disc by experimenting with solder- Importance Brazing D. ceramic bond ing. attempts These were unsuccessful the Hobart and Both attempt try made to even and no importance of the bond between stress the together any shaped parts. laser ceramic solder copper cups and the *6 contact them results Poor thermal between brought Wayne Mefferd then to higher temperatures which turn disc His problem. attachment solu- solve the through gas flow the tube. impedes brazing. tion was reliable, copper-ce- to be For the laser patent specifications disclose While the must also be able to withstand ramic bond soldering one method of attach- pulse as differing cycling. Due to the repeated heat ment, meth- clearly preferred is expansion copрer and of thermal rates 68, Fig. brazing shim process, od. In this alumina, compressive is to subject the bond cup up copper the laser heats and tensile 50 and placed forces as is between the during cooling. stress tube see the inner wall of the ceramic Fig. 3, assembly is heated to and the whole initially approached prob- Dr. Hobart melting point the braze material. copper make the to lem of how to critical heating cup specifies During mechanically is ex- 850°C. The sheet also panded into contact the tube means performed braze should be in a vacuum or expansion tool inserted into tube 26. atmosphere dry argon gas. in a neutral Using general guidelines, these further disclose “TiCuSil” developed six-stage using braze preferred brazing This material. mate- copper cups TiCuSil to attach the (an copper alloy rial is a silver eutectic cycle” ceramic “Braze a term of is ingredients proportioned are whose to have process art which refers to a defined possible melting point) the lowest awith specific parameters temperature, length percentage of small titanium added for given temperatures, of times atmo- making a ceramic metal seal under what pressure. sphere, and process. known as active metal process, this the titanium invades wets Mefferd knew that there were tradeoffs copper-silver so the ceramic one, cycle. generally in the braze For it is material copper can hold the to the ceramic. parts possi- desirable to heat as fast as In the alloy absence of an active metal heated, however, parts ble. theAs component titanium, such as the ceramic “outgassing” occurs and contaminants with, premetalized must be example, trapped parts in the are released into the moly-manganese (MoMn), provide a me- atmosphere of the oven. The vacuum tallic surface copper-silver to which the contaminants, pump outgassed removes the braze material will adhere. if outgassing rapid, but then is too process pre- TiCuSil active metal pressure may pump will not rise requires step ferred because one Also, if oxygen part work. is evolved as premetalizаtion. and avoids the need for out-gas, may the titanium react with it *7 addition, In copper cups the cannot elec- degrade strength and the of the braze trically connected destroys because this the joint. evenly graduated potential electrical down tradeoffs, assessing In the Mefferd let the bore of the required tube which pressure cycle, the the control braze as one operate. Thus, laser the any premetali- experimental approach. example, For Mef zation stripes along must be in circular pressure ferd held in the oven at 10-4 inner surface of the cop- tube so that each assembly initially torr while heated was per cup can be brazed or soldered to a 0 to from 750<’C. This took from hour stripe. different step, and a half to two hours. the next temperature he held the 750° for at ten to
E. Six-Stage Patentee Coherent’s reducing fifteen minutes while further Cycle Braze pressure. temperature The then in According to product speci- period approximately creased of fif standard sheet, fication TiCuSil should be brazed at teen minutes until it 850°C. The reached holding manganese process. remaining steps temp include This using involved specified precision tubing time and at ceramic special at 850°Cfor and a erature com- torr, decreasing puterized striping of 10-4 pressure ground tool which circu- adding temperature to 750°C and ar rings away oven moly-manga- lar from a coat of turning the oven off. gon gas, and then painted nese metallization on thе entire in- side of the tube. six-stage cycle produced a reli- Mefferd’s cups joint copper between able Spectra eventually introduced its Model ap- Because this and the ceramic tube. gas using laser which was made worked, proach Coherent continued to use process. moly-manganese Like Coherent’s investigated moly- TiCuSil and never laser, copper cups each of the in the 2020 process experiment- or further manganese ring has a or laser shield alleviate the soldering. pat- Neither ed with the Hobart gas pumping problem. however, patent, ent nor the Mefferd dis- any additional closes the braze The Decision Below brazing copper to ceramic information on Spectra brought declаratory judgment using TiCuSil. against asking action Coherent holding invalidity non-infringement pat- and of both Spectra’s F. Disc” Lasers “Cold ents. Coherent counterclaimed for in- Wright, Spec- Dave head of research at fringement adjudication validity. and an tra, Riley, and his technician Martin thirty-two trial, days After the district worked on so-called “cold disc” lasers of eighteen “Interrogatories court submitted They in type suit the late 1970’s. Jury” jury and the answered fifteen referred to these lasers as “cold disc” la- them, finding part Spectra’s that mod- process sers because the infringed el 2020 laser claims and 18 copper cups provided to the ceramic tube of the Hobart and claim 10 of the good thermal conduction as contrasted with (the claims). Mefferd shield radiatively the earlier cooled lasers which jury remaining found that the claims of Wright however, Riley, ran hot. and had both were invalid for obviousness lasers, only limited success with cold disc anticipated by or were the work done part they because could not make a satis- Wright Riley Spectra. jury and also factory copper cups between the and bond found, however, Wright Riley had Upon repeated alumina ceramic practice not reduced their cold disc laser to cycling, heat the ceramic would crack and conception subject before matter set overheat, copper away, cause the to break patents. forth in the Hobart melt, destroyed operation years, tube. After two and a half entering judgment After on the ver- Wright was unable to make a TiCuSil braze dict, judg- the district court withdrew the joint enough which was reliable for a com- parties prepare pro- ment and asked the mercially acceptable product Spectra posed findings of fact and conclusions of temporarily project. abandoned the including law on several issues additional disclosure of best mode and enablement
Spectra resumed work on the cold disc 112, co-inventorship under of the shield project in 1981 after Coherent introduced Rempel, claims Dr. another Coherent embodying its INNOVA laser the inven- *8 employee, inequitable and conduct. The patents tions of the in suit. Because of court ruled in favor of Coherent on all of uncertainty brazing, Spectra their abоut Reed, except brazing expert, hired a these issues enablement. On that Dr. Leonard issue, develop patents a the court held both moly-manganese process for invalid attaching six-stage cups the to the ceramic for failure to disclose the nearly After year experimentation, of Dr. used Coherent to manufacture the developed Reed Spectra’s proprietary moly- found that the laser. court best mode 1532 satisfied, however, ing
requirement patents was be- while at the time same concealing public preferred Hobart nor deliber- from the cause neither em- of bodiments their inventions ately accidentally they or concealed as have in fact attaching conceived. copper cups of the the best mode ceramic tube. question ... of whether an inven- tor has has not disclosed what he feels from appeals judgment the Coherent is, however, is his best mode question respect to lack of enablement with and separate and distinct question from the jury of the seeks reinstatement verdict that sufficiency of the of his disclosure to infringed are the claims valid and shield satisfy requirements of [enablement]. appeals portion Spectra. also Coherent 772, USPQ (emphasis Id. at 315 finding judgment remaining of the original). (non-shield) invalid for claims obviousness of an erroneous because instruction Thus, compliance with the best requests remand for a trial new on requirement mode on focuses a different these claims. compliance matter than does еn requirement. ablement Enablement looks cross-appeals from Spectra judgment placing subject matter of the claims mode, inventorship as it relates to best of generally possession public. claims, the shield and derivation of the If, however, applicant develops specific subject Wright claimed from matter instrumentalities or techniques which are Riley. Spectra appeals also the denial of recognized filing at the time of as the best request attorney its fees. invention, way carrying out then the best imposes mode obli gation OPINION to disclose that information to the public Flick-Reedy Corp. as well. See v. 1. Adequate Disclosure Introduction — Co., 546, 550-51, Hydro-Line Mfg. F.2d 112, Under Paragraph 1st § USPQ (7th 694, Cir.1965), cert. denied, 958, 1222, 86 S.Ct. U.S. adequate To constitute disclosurе (1966); L.Ed.2d 301 Corp. Union Carbide paragraph under the first of 35 U.S.C. Borg Corp., Warner F.2d 361- 112, patent specification must set forth § (6th Cir.1977). 6-7 both the process manner and making using (the the invention enablement The situation before us is one in which requirement) and the best mode contem patent specifications disclose more than plated by the inventor carrying out the making one means for the claimed inven- (the invention best requirement). tion, mode do adequately but disclose the The difference actually between these is ex best two means known to the inven- plained recognized In re tors. The court Gay, 309 F.2d district that the (CCPA specifications inadequate 1962): were under incorrectly but based its decision The essence of enablement re- [the explain, lack of enablement. As we quirement] specification is that a shall problem mode, is really one of best disclose an invention in such a manner as thus, disagree while we with the district
will enable one skilled in the art to make issues, court’s views on these judgment and utilize it. Separate and distinct both invalid cor- from best mode re- [enablement] [the rect and must be sustained. quirement], the essence of which re- quires the inventor to disclose the best contemplated
mode Enablement him, time he application, executes the Question Jury a. The carrying out his Manifestly, invention. the sole purpose require- of this latter addressing Before substance ment is to enablement, restrain apply- inventors from district court’s decision on we
1533
Coherent,
by
information to enable those
question, raised
skilled in
thе
the
consider
art to make and use the claimed
free to decide en-
invention.
court was
the
whether
See,
Hybritech
e.g.,
Inc. v. Monoclonal
considering
first
all without
ablement
Antibodies, Inc.,
1367, 1384,
802 F.2d
231
specific ques-
no
While
jury
the
verdict.
USPQ 81,
(Fed.Cir.1986),
denied,
94
cert.
jury
the
on enable-
submitted to
tion was
— U.S.-,
1606,
107 S.Ct.
94 L.Ed.2d
jury
the
ment,
court instructed
the district
(1987).
792
The district court held both of
infringed”
cannot be
claims
that “invalid
patents
in suit invalid for lack of en
on the
general instructions
provided
their failure
ablement based on
to disclose
Coherent maintains
of enablement.
law
six-stage
cycle
Coherent’s
for
braze
braz
infringed,
finding
shield claims
by
ing
TiCuSil.
court found that
enablement in its
implicitlydecided
jury
“necessary
enjoy
to the
favor,
the court could not overrule
and that
ment of the invention [sic].”
making the
findings without
determi-
these
however,
cycle,
appli-
Coherent’s braze
required
JNOV.
nations
brazing,
just
cable
to TiCuSil
which is
however,
court,
did not feel
The district
ways
one
to make and use the
jury
verdict because it
constrained
claimed
inventions.
Hobart
question
of enablement
considered
attaching”
copper
calls
“means for
court also viewed the
one of law. The
be
cups to the inside of the ceramic tube and
special
as a
verdict
form of
verdict
essentially
step
has
same
Fed.R.Civ.P.,
49(a),
Rule
as a
under
“permanently securing”
cups
verdict.
general
specifications identify
tube. The
as suit-
techniques
able attachment
the alternatives
ultimately
Although enablement is
brazing, moly-manganese
of TiCuSil
braz-
law, see,
question
e.g.,
Moleculon Re
ing,
low-tempеrature pulse-soldering.
CBS, Inc.,
1261,
Corp.
793 F.2d
search
v.
1268,
805,
(Fed.Cir.1986),
USPQ
810
pertains
If an invention
to an art
— U.S.-,
875,
denied,
107 S.Ct.
cert.
predictable, e.g.,
the results are
me
where
(1987),
recog
Spectra argues moly-manganese process refer- successful also do process” “moly-manganese is ences of not show lack enablement. For exam- low-temperature only regard pulse-sol- in to ple, Spectra moly-manga- contends that the disagree. A dering, brazing. not We fair process requires nese the precision use of reading paragraph part of of that tubing, something ceramic taught not in brazing, given of general that discussion Jarrett, patent. charged But Steve brazing was the moly-manganese most developing Spectra's process, braze bonding method metal to ce- common stated that precision reason he used ramic, in the is that one skillеd art would tubing Likewise, was to save labor costs. recognize moly-manganese brazing that Spectra claims that Dr. Reed had to devel- an means of was alternative attachment. special op computerized striping a tool Wright, among others, Dave Spectra’s tes- grind away rings circular from the coat moly-manganese brazing tified that was moly-manganese painted metallization on industry common in was well- the inside of the A Spectra in-house brazing copper to ceramic. known reveals, however, report stripe that metal- lized tubes were available from the same ignored court moly The district vendors that made the ceramic tubes them- however, manganese process, for the erro selves. neous reason that it was “neither described patents nor advocated in suit.” A As court’s statement that teach, patent need not preferably moly-manganese not was “advocated” in omits, is what well known in the Hy art. patents, this is entirely. another matter britech, USPQ 802 F.2d at at 94. only We can surmise that the court some moly-man While there is no elaboration how confused the enablement ganese brazing specifications, with the best mode.6 is Nonenablement brazing the district court found that mode, any failure to disclose In re an technique old and well-known when the Glass, 492 F.2d applications were filed. 1974), (CCPA depend and does not Spectra argues moly-manganese that applicant advocating particular a em constructing suitable for use in making bodiment or method for the inven lasers thе two was not enabled terms, practical In tion. only where required experimentation because it undue enabled, alternative embodiment the dis as evidenced the amount of time and may closure of the best mode be inade money spent it developing moly-manga- its quate. separate But is question that process. efforts, Spectra’s however, nese question distinct from the whether simply not finding moly- were directed to specification enabled in one to make the manganese process work, that would but vention at Gay, all. In re F.2d at encompassed a range enterprises whole USPQ at 315. necessary making commercially suc- product. fact, cessful it took three Finally, there no mention at all of months Spectra from the time decided on a low-temperature pulse-soldering, except to specific design for its laser until it estab- the extent that the court considered be it to lished workable technique, but it “moly-manganese pro- the same as the year was almost another before it made its Spectra pulse-soldering cess.” asserts that truly prototype first successful laser. could not be used in the method claimed major problems Spectra permits two that because it sol- claims it had to solve in dering order to have a of only cup may one time. This (1st Cir.1973), 6. One probably USPQ indication that district court and Union Carbide concepts confused the mode is the cases cited enablement and best Borg Corp. Corp., Warner 550 F.2d the court in its (6th Cir.1977), primarily which deal enablement, conclusions on Dale Electronics mode, enablement, with best under Electronics, Inc., Inc. v. RGL 488 F.2d true, nothing making (right by jury says about to trial of factual issue may but by agreeing be waived patent. instructions claimed in the Hobart the structure questions); need not answer all see least, very the court should At the have also 5A Moore’s Federal Practice 1149.03[4] operative it was an al- considered whether *11 (1986). Coherent’s failure object to to the making the Hobart structure. ternative interrogatories form of the caused the best issue, by operation 49(a), mode of Rule to 3. Mode Best Quak revert to court for decision. See 1453, F.2d City, USPQ er 747 at 223 at Question Jury (Again) a. The Thus, 1166. we review the district court’s question raises the same with Coherent findings on best mode under “clearly respect to mоde that we found unnec- best 52(a), erroneous” standard of Rule Fed.R. enablement, is, essary Civ.P., not, to decide for that argument as Coherent’s suggests, jury implicitly ruling found that the as if the lower court’s whether a denial of a motion for JNOY under Rule disclosed the mode. Because patents best 50(b). court found for the district also Coherent mode, unnecessary seem on best would single jury The instruction to the that question in context jury
to decide the
this
(a
infringed
invalid claims cannot be
non-
however,
relevant,
It is
as far as
well.
statement),
many
sense
one
supposed
of
on
proper
standard of review in
it affects
law,
general principles
of
does not
and so
must address it.
operate
this court
we
interrogatories
convert the
on
infringement
general
into
verdicts which
parties clearly
jury
The
intended the
Spectra’s invalidity
subsumed all of
defens-
interrogatories
mode.
decide best
The
sub-
es, including
Any
best mode.
inference
however,
jury,
carry
mitted to the
failed to
jury implicitly
found that the best
14
Interrogatory
out that intent.
read as
negated
mode
was satisfied is
follows:
preamble
to interrogatory 14 which
14. Did Coherent disclose the best mode
jury
in effect
told the
it need not
patent appli-
the time
known to it at
consider the best mode.
cation was filed?
Yes_
No_
Adequate
b.
Disclosure
Best Mode
of
question
The
came back unanswered be-
provi
Because
best mode
preamble
question
cause the
to the
in-
speaks
112
sion of
terms of the best
jury
structed the
to consider
mode
best
inventor,”
“contemplated by
mode
only
prеceding
if it had answered the
inter-
objective
there is no
standard
which to
rogatory
jury
“no.” The
obviousness
judge
adequacy
of a best mode disclo
question “yes”
only
answered that
1318,
Bernier,
DeGeorge
sure.
v.
768 F.2d
—but
preamble
1324,
for certain claims. The
to inter-
USPQ 758,
(Fed.Cir.1985).
Instead,
“concealment,”
rogatory 14
should have instructed the
evidence of
intentional,
whether accidental or
is con
to answer best mode if the answer to obvi-
specificity
sidered.
Id. The
of disclosure
“yes
ousness was “no” or
as to less than
required
comply
the best mode re
all claims.”
by the
quirement must be determined
type
This is the
of inadvertent omis
knowledge
possession
of facts within the
of
49(a), Fed.R.Civ.P.,
sion that Rule
remedies
filing
appli
the inventor at the time of
by providing
by jury
that trial
has been
Dep’t Energy
сation. See United States
effectively
waived
these circumstances.
438, 446,
Daugherty, 687 F.2d
Quaker
Works,
City
See
Gear
Inc. v. Skil
4,
(CCPA 1982).
1446, 1453, USPQ 1161,
Corp., 747 F.2d
(Fed.Cir.1984),
denied,
471 U.S.
cert.
mode re
Compliance with the best
(1985)
appli-
quirement,
depends
because it
on the
105 S.Ct.
need not decide the other issues appeal Spectra’s by Coherent’s cross- namely, appeal, relating those obviousness, inventоrship of instruction claims, and derivation from the shield Wright Riley.
CONCLUSION judgment of the district court that patents Hobart and Mefferd are both is affirmed but on a invalid different ground than that relied on the court hold both
below. We that are in- paragraph, valid under first fail- mode, ure to disclose the best not for lack of enablement as the district court held. Spectra’s district court’s denial of request attorney fees is affirmed.
AFFIRMED ARCHER, Judge, concurring. Circuit join opinion
I the majority, except I majority’s find no basis for the com- regarding ment the “aid of lawyers.” [the] appeal The record on does not indicate that lawyers misled the court otherwise *14 affirmatively er- contributed the court’s regarding ror enablement and best mode which, intended, whether seems to the implication comment. KIRLIN, INC.,
JOHN J. Plaintiff-Appellant, STATES, The UNITED Defendant-Appellee.
No. 87-1162. United States Appeals, Court of
Federal Circuit.
Sept.