For many years the Federal Circuit has appeared to hold that an inventor can violate the best mode requirement even if he or she did not intend to conceal the best mode.  For example, in Minco Inc. v. Combustion Engineering Inc., 95 F.3d 1109, 1116 n.* (Fed. Cir. 1996), the court instructed that “invalidity may result from the failure to disclose, regardless of whether the inventor specifically intended to conceal his or her best mode.”  This followed CCPA precedent instructing that “only evidence of concealment (whether accidental or intentional) is to be considered.” In re Sherwood, 613 F.2d 809, 816 (CCPA 1980).  Indeed, one panel of the Federal Circuit has expressly held that “[i]nquiry into an intent to conceal, being subjective, is inconsistent with the objective nature of the second aspect of best mode compliance”, therefore, the “district court did not need to determine that [the inventor] intentionally concealed his best mode[, r]ather it was sufficient that the court held that there was no genuine dispute that the `267 specification did not adequately disclose William’s best mode in a way that would allow those of ordinary skill in the art to practice it.”  United States Gypsum Co. v. National Gypsum Co., 74 F.3d 1209, 1216 (Fed. Cir. 1996).

Despite these and other similar precedents some members of the Federal Circuit have stated their view that a best mode violation requires intent to conceal.  One of the most notable supporters of this view has been Judge Newman.  E.g., High Concrete Structures, Inc. v. New Enterprise Stone and Lime Co., 377 F.3d 1379, 1383 (Fed. Cir. 2004) (Newman, J.) (“Invalidation based on a best-mode violation requires that the inventor knew of and intentionally concealed a better mode than was disclosed.”); Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1575 (Fed. Cir. 1992) (Newman, J.) (“Invalidity for violation of the best mode requires intentional concealment of a better mode than was disclosed[.]” (emphasis added, citing Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1531, 20 USPQ2d 1300, 1302 (Fed. Cir. 1991) (Newman, J.))

In the court’s most recent opinion addressing best mode, Judge Rader appears to agree with Judge Newman’s view as to the necessity of finding an intent to conceal before a best mode violation will be found.  In Wellman, Inc. v. Eastman Chemical Co., No. 2010-1249, __ F.3d __, __, 2011 WL 1601994, *9 (Fed. Cir. Apr. 29, 2011) (Rader, CJ.), the panel, quoting and following High Concrete Structures, affirmed a finding of a best mode violation because the “record also shows that [the inventor] intentionally concealed the best mode.” Id. 2011 WL 1601994, at *9.  The court specifically relied on evidence of intentional concealment of the best mode proven by the patentee’s “choosing to maintain [the best mode] as a trade secret.”  Id. 

Wellman and High Concrete appear in direct conflict with United States Gypsum Co. as to the requirement of an intent to conceal the best mode.  In most instances an apparent conflict in Federal Circuit authority would strongly suggest the need for en banc rehearing.  But, should patent reform pass, with its provision to eliminate best mode as an invalidity defense assertable by an accused infringer, a practical need for resolving this difference of opinion may be diminished. 

For additional discussion and case authority on this topic see Annotated Patent Digest § 21:44 Necessity of Intent to Conceal.