Herrington v. Collins

Plain English (For Everyone)

A patent must describe the best way an inventor knows to make their invention. In this case, the court said that just because an inventor knew of a better way doesn't mean they broke the law, unless they intentionally tried to hide it. The patent was not invalidated for failing to disclose this better method.

For Legal Practitioners

The Federal Circuit clarified that a best mode violation under 35 U.S.C. § 112(b) requires affirmative proof of the patentee's subjective intent to conceal a preferred embodiment. Mere failure to disclose a known preferred mode, without evidence of concealment, is insufficient to invalidate a patent.

For Law Students

This case illustrates the 'best mode' requirement in patent law, emphasizing that a violation occurs only when an inventor intentionally hides their preferred method of practicing the invention, not simply when they fail to disclose it. The court applied a de novo review to uphold the patent.

Newsroom Summary

A federal appeals court ruled that a patent holder did not violate the 'best mode' rule, stating that inventors must intentionally hide their preferred invention method to be penalized, not just fail to disclose it. The ruling affirmed the validity of the patent.

Standard of Review

De novo review. The Federal Circuit reviews a district court's determination of a best mode violation for legal error, applying the same standard as the district court.

Procedural Posture

The case reached the Federal Circuit on appeal from the United States District Court for the Eastern District of Texas, following a finding of a best mode violation.

Burden of Proof

The burden of proof for a best mode violation rests with the party challenging the patent, typically the alleged infringer. The standard requires proving that the patent applicant had a subjective belief that a particular mode of practicing the invention was better than any other and intentionally concealed that mode.

Legal Tests Applied

Statutory References

Key Legal Definitions

Rule Statements

A best mode violation requires proof that the patent applicant had a subjective belief that a particular mode of practicing the invention was better than any other and intentionally concealed that mode.

The failure to disclose a preferred embodiment, without evidence of concealment, does not constitute a best mode violation.

Remedies

The district court's finding of a best mode violation was reversed, and the patent was not invalidated on that ground.

Scenario: You are accused of infringing a patent, and you argue the patent is invalid because the inventor didn't disclose their 'best mode' of making the invention.

Your Rights: You have the right to argue that the patent is invalid if the inventor intentionally concealed their preferred method of practicing the invention. However, you must prove this concealment.

What To Do: Gather evidence showing the inventor knew of a superior method and actively took steps to hide it from the patent application. Simply showing they were aware of a better method is not enough.

Is it legal to not disclose the best way I know to make my invention in a patent application?

Depends. You are legally required to disclose the 'best mode' you contemplate for carrying out your invention. However, a violation only occurs if you *intentionally conceal* that best mode. Simply failing to disclose it, without intent to hide, is generally not enough to invalidate the patent, according to recent interpretations.

This applies to U.S. patent law.

For Patent Challengers (e.g., alleged infringers)

The burden of proving a best mode violation is higher. Challengers must demonstrate not only that a preferred mode existed but also that the inventor intentionally concealed it, making it more difficult to invalidate patents on this ground.

For Patent Applicants/Inventors

While the 'best mode' requirement still exists, the standard for violation is less stringent. Inventors are less likely to have their patents invalidated solely for failing to disclose a preferred mode if there's no evidence of intentional concealment.

Q: What is Herrington v. Collins about?

Herrington v. Collins is a case decided by Federal Circuit on May 30, 2025.

Q: What court decided Herrington v. Collins?

Herrington v. Collins was decided by the Federal Circuit, which is part of the federal judiciary. This is a federal appellate court.

Q: When was Herrington v. Collins decided?

Herrington v. Collins was decided on May 30, 2025.

Q: What is the citation for Herrington v. Collins?

The citation for Herrington v. Collins is 138 F.4th 1324. Use this citation to reference the case in legal documents and research.

Q: What is the 'best mode' requirement in patent law?

The 'best mode' requirement, found in 35 U.S.C. § 112(b), mandates that a patent application must disclose the best way the inventor knows to carry out their invention at the time of filing.

Q: What was the specific issue in Herrington v. Collins?

The issue was whether the patent holder violated the best mode requirement by failing to disclose a specific embodiment that was allegedly their preferred way of practicing the invention.

Q: What was the outcome of the Herrington v. Collins case?

The Federal Circuit reversed the district court's finding of a best mode violation, holding that the patent holder did not intentionally conceal their preferred mode, thus affirming the patent's validity on this ground.

Q: Is Herrington v. Collins published?

Herrington v. Collins is a published, precedential opinion. Published opinions carry precedential weight and can be cited as authority in future cases.

Q: What topics does Herrington v. Collins cover?

Herrington v. Collins covers the following legal topics: Patent law, Best mode requirement, 35 U.S.C. § 112(b), Patent specification disclosure, Inventor's subjective intent, Concealment of preferred embodiment, Clear and convincing evidence standard.

Q: What was the ruling in Herrington v. Collins?

The court ruled in favor of the defendant in Herrington v. Collins. Key holdings: The court affirmed the district court's finding that the patent holder did not violate the best mode requirement because there was no evidence that the patentee subjectively intended to conceal a preferred embodiment of the invention.; A violation of the best mode requirement requires proof of the patentee's subjective intent to conceal a preferred embodiment, not merely the failure to disclose a preferred embodiment that the patentee was aware of.; The court clarified that the "best mode" inquiry focuses on whether the inventor knew of and intended to conceal a preferred mode, not simply whether a preferred mode existed and was not disclosed.; The Federal Circuit reiterated that the "best mode" requirement is satisfied if the specification describes a mode of carrying out the invention that the inventor believed to be the best at the time of filing, even if other, perhaps better, modes exist.; The district court's factual findings regarding the patentee's intent were not clearly erroneous, supporting the conclusion that no "best mode" violation occurred..

Q: Why is Herrington v. Collins important?

Herrington v. Collins has an impact score of 25/100, indicating limited broader impact. This decision reinforces the Federal Circuit's stringent interpretation of the "best mode" requirement, making it more difficult for defendants to invalidate patents based on this defense. It emphasizes that mere failure to disclose a preferred embodiment is insufficient; proof of deliberate concealment by the inventor is necessary, thereby providing greater certainty for patent holders regarding this aspect of patent disclosure.

Q: What precedent does Herrington v. Collins set?

Herrington v. Collins established the following key holdings: (1) The court affirmed the district court's finding that the patent holder did not violate the best mode requirement because there was no evidence that the patentee subjectively intended to conceal a preferred embodiment of the invention. (2) A violation of the best mode requirement requires proof of the patentee's subjective intent to conceal a preferred embodiment, not merely the failure to disclose a preferred embodiment that the patentee was aware of. (3) The court clarified that the "best mode" inquiry focuses on whether the inventor knew of and intended to conceal a preferred mode, not simply whether a preferred mode existed and was not disclosed. (4) The Federal Circuit reiterated that the "best mode" requirement is satisfied if the specification describes a mode of carrying out the invention that the inventor believed to be the best at the time of filing, even if other, perhaps better, modes exist. (5) The district court's factual findings regarding the patentee's intent were not clearly erroneous, supporting the conclusion that no "best mode" violation occurred.

Q: What are the key holdings in Herrington v. Collins?

1. The court affirmed the district court's finding that the patent holder did not violate the best mode requirement because there was no evidence that the patentee subjectively intended to conceal a preferred embodiment of the invention. 2. A violation of the best mode requirement requires proof of the patentee's subjective intent to conceal a preferred embodiment, not merely the failure to disclose a preferred embodiment that the patentee was aware of. 3. The court clarified that the "best mode" inquiry focuses on whether the inventor knew of and intended to conceal a preferred mode, not simply whether a preferred mode existed and was not disclosed. 4. The Federal Circuit reiterated that the "best mode" requirement is satisfied if the specification describes a mode of carrying out the invention that the inventor believed to be the best at the time of filing, even if other, perhaps better, modes exist. 5. The district court's factual findings regarding the patentee's intent were not clearly erroneous, supporting the conclusion that no "best mode" violation occurred.

Q: What cases are related to Herrington v. Collins?

Precedent cases cited or related to Herrington v. Collins: Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1343 (Fed. Cir. 2012); Amgen Inc. v. Sanofi-Aventis, 342 F.3d 1368 (Fed. Cir. 2003).

Q: What does it mean to 'conceal' the best mode?

Concealment means the inventor intentionally hid or failed to disclose their preferred way of practicing the invention. It requires proof of the inventor's subjective intent to hide.

Q: Can a patent be invalidated for failing to disclose the best mode?

Yes, but only if it's proven that the inventor had a subjective belief in a preferred mode and intentionally concealed it. Mere failure to disclose, without intent to hide, is generally not enough.

Q: Does awareness of a better method automatically mean a best mode violation?

No. The inventor must have not only been aware of a preferred mode but also intentionally concealed it. Simply knowing about a better way is insufficient.

Q: What evidence is needed to prove intentional concealment?

Evidence could include internal documents, communications, or testimony showing the inventor deliberately withheld information about a superior embodiment from the patent application.

Q: Are there any specific examples of what constitutes intentional concealment?

The opinion doesn't provide specific examples but emphasizes that actions taken to actively hide the preferred mode, rather than just omitting it, would be necessary.

Q: Can a patent be enforced if it has a best mode issue?

If a best mode violation is proven and leads to invalidation, the patent cannot be enforced. However, as in this case, if the violation is not proven, the patent remains enforceable.

Q: What is the difference between enablement and best mode?

Enablement requires teaching how to practice the invention, while best mode requires disclosing the inventor's preferred way of practicing it. One can enable an invention without disclosing the best mode.

Q: Does the court consider the inventor's intent in best mode cases?

Yes, the inventor's subjective intent is crucial. The court looks for evidence that the inventor *intended* to hide their preferred method, not just that they failed to disclose it.

Q: What are the implications for foreign inventors applying for U.S. patents?

The best mode requirement applies equally to foreign inventors. They must disclose the best mode they contemplate for carrying out the invention as understood in U.S. patent law.

Q: How does Herrington v. Collins affect me?

This decision reinforces the Federal Circuit's stringent interpretation of the "best mode" requirement, making it more difficult for defendants to invalidate patents based on this defense. It emphasizes that mere failure to disclose a preferred embodiment is insufficient; proof of deliberate concealment by the inventor is necessary, thereby providing greater certainty for patent holders regarding this aspect of patent disclosure. As a decision from a federal appellate court, its reach is national. This case is moderate in legal complexity to understand.

Q: How does this ruling affect patent prosecution?

Patent applicants should still strive to disclose their best mode. However, the ruling provides some relief by clarifying that the bar for proving a violation is high, focusing on intent to conceal.

Q: What if I'm sued for patent infringement and claim the patent is invalid due to a best mode violation?

You must present clear evidence that the patent holder intentionally hid their preferred method of practicing the invention. Without proof of intent to conceal, your argument is unlikely to succeed.

Q: What practical advice can inventors take regarding the best mode requirement?

Inventors should carefully document their invention process and ensure their patent application clearly describes the preferred embodiment, avoiding any ambiguity or suggestion of concealment.

Q: What should I do if I believe a competitor's patent has a best mode violation?

Consult with a patent attorney to assess the strength of your claim. You will need to gather substantial evidence of intentional concealment by the patent holder.

Q: Does the 'best mode' requirement still apply after the America Invents Act (AIA)?

Yes, the 'best mode' requirement remains in 35 U.S.C. § 112(b), although its enforceability and the standard for violation have been refined by case law like this one.

Q: How does this ruling compare to previous best mode cases?

It reinforces the high bar for proving best mode violations, emphasizing the need for evidence of concealment over mere non-disclosure, aligning with recent trends in patent law.

Q: What was the docket number in Herrington v. Collins?

The docket number for Herrington v. Collins is 23-2358. This identifier is used to track the case through the court system.

Q: Can Herrington v. Collins be appealed?

Potentially — decisions from federal appellate courts can be appealed to the Supreme Court of the United States via a petition for certiorari, though the Court accepts very few cases.

Q: Who has the burden of proof for a best mode violation?

The party challenging the patent, typically the alleged infringer, bears the burden of proving a best mode violation.

Q: What is the standard of review for best mode issues on appeal?

The Federal Circuit reviews a district court's best mode determination de novo, meaning they look at the issue fresh without giving deference to the lower court's legal conclusions.