Wednesday, November 13, 2013

Transco Products Inc. v. Performance Contracting, Inc. case brief

Transco Products Inc. v. Performance Contracting, Inc. case brief summary
38 F.3d 551 (1994)

Plaintiff appealed a judgment from the United States District Court's (Illinois), which was rendered for defendants in a patent law dispute.

Plaintiff appealed the decision of the district court that held by summary judgment that the patent claims were invalid on the basis of three violations of the best mode requirement of 35 U.S.C.S. § 112. The district court based two of these violations on the failure to update a best mode disclosure upon filing a continuation application pursuant to 37 C.F.R. § 1.60 and the third violation on the failure to provide a supplier/trade name information for a material recited in the claims and described in the specification.


  • On appeal, the court found that the district court erred as a matter of law in holding that an applicant must update the best mode disclosure upon the filing of a continuing application containing no new matter. 
  • In addition, because the district court improperly resolved a genuine issue of material fact on summary judgment to find the third violation, the case was remanded.

The court reversed in part and vacated in part because the district court erroneously granted summary judgment when there was clearly a factual dispute as to the adequacy of the patent applicant's disclosure. The court remanded for further determination of the matter.

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