## Facts

- Green Edge Enterprises, LLC owned U.S. Patent No. 5,910,514, directed to synthetic rubber mulch colored to resemble natural wood mulch.
- The patent described using “water-based acrylic colorant systems” that provide earth tones, adhere to rubber, and resist washing off when wet.
- The specification stated that the “most preferred” systems were water-based acrylic systems “like the Visichrome system” sold by Futura Coatings, Inc.
- Futura did not sell a product under the trade name “Visichrome”; the system Green Edge used was sold under a product code (24009).
- Green Edge’s use of the “Visichrome” name stemmed from a pre-filing letter from a Futura vice president referring to the system as “Visichrome.”
- Green Edge sued several competing rubber mulch manufacturers for infringement in the Eastern District of Missouri.
- The defendants asserted the patent was invalid under pre-AIA 35 U.S.C. § 112, ¶ 1 for failure to disclose the best mode, arguing the incorrect trade name prevented skilled artisans from obtaining the inventor’s preferred colorant system.

## Issues

1. Whether a mistaken reference to a non-existent commercial name for a preferred component can constitute failure to disclose the best mode under pre-AIA 35 U.S.C. § 112, ¶ 1.
2. Whether the record established, as a matter of law, that the specification’s disclosure was inadequate to allow a person of ordinary skill to practice the inventor’s preferred mode.

## Decision

- The Federal Circuit reversed the district court’s summary judgment that invalidated the patent for failure to disclose the best mode and remanded for further proceedings.
- The court accepted that Green Edge had a preferred (best) mode at filing, but held that the adequacy of disclosure could not be resolved against Green Edge on summary judgment.
- The court concluded that a reasonable factfinder could determine the specification provided enough information—system type, desired performance characteristics, and supplier identity—for a skilled artisan to practice the preferred mode despite the misnomer.

## Legal Principles

- Pre-AIA best mode under § 112, ¶ 1 has two prongs: (1) whether the inventor subjectively possessed a best mode at filing, and (2) whether the specification objectively disclosed that mode with sufficient specificity for skilled artisans to practice it.
- A best mode violation is not established merely by an error in a commercial name if the disclosure otherwise identifies the preferred technology, its relevant characteristics, and a practical means for skilled artisans to obtain or implement it.
- Best mode is a mixed question of law and fact; summary judgment is improper where competing reasonable inferences exist as to whether the disclosure was fatally inadequate or instead sufficient despite mistakes.

## Conclusion

The Federal Circuit held that misnaming the preferred colorant system did not, on this record, establish a best mode violation as a matter of law, and it reversed summary judgment of invalidity because a factfinder could find the disclosure adequate for skilled artisans to practice the inventor’s preferred mode.


Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287 (Fed. Cir. 2010)