This case is an excellent example of the tension between the disclosure requirements of the patent laws and the desire to keep something as a trade secret. Also, it feels like A.R.M.S. week here at the D. Mass. IP blog (see here, here, and here).
This latest opinion deals with Atlantic Research Marketing Systems’ claims against Troy Industries for infringement of Patent No. 6,499,245, reissued as RE39,465, directed to a modular sleeve yoke. The parties cross moved for summary judgment, A.R.M.S. seeking SJ of infringement, Troy seeking SJ of invalidity. Judge Saris ruled that the patent was invalid for failing to meet the written description and best mode requirements.
The asserted claims described a firearm handguard attached solely to the barrel nut. This configuration was also the best mode of practicing the invention. But the specification only disclosed embodiments which showed the handguard attached to both the barrel nut and to a receiver sleeve. A.R.M.S. was treating the barrel nut only embodiment as a trade secret and it didn’t make it into the specification. But the patent laws require a written description of claimed inventions as well as disclosure of the best mode. Those were absent here because the specification didn’t show the single attachment embodiment. An A.R.M.S. witness at trial even admitted as much.
A.R.M.S.’ trade secret briefing also appeared to have hurt its patent case. At one point A.R.M.S. appears to have suggested that the trade secret was only lost upon issuance of the ‘465 reissue patent rather than with the original ‘245 patent, despite identical specifications. If that’s the case, then the trade secret embodiment must not have been in the specification, therefore violating the written description and best mode requirements.
Atlantic Research Marketing Systems, Inc. v. Troy Industries, Inc., 07-11576-PBS (D. Mass. May 14, 2010)
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