Interference No. 103,586
rights given the inventor under the patent laws, obtains from the inventor a full disclosure of
the preferred embodiment of the invention which they conceived. Id. See also In re Gay,
309 F.2d 769, 135 USPQ 311 (CCPA 1962).
Determining whether a patent complies with the best mode requirement involves
two underlying factual inquiries. First, it must be determined whether, at the time the patent
application was filed, the inventor had a best mode of practicing the claimed invention.
Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 927, 16 USPQ2d 1033, 1036 (Fed.
Cir. 1990). Thus, the first inquiry is subjective Chemcast, 913 F.2d at 928, 16 USPQ2d at
1037 and focuses on the inventor’s state of mind at the time they filed their application.
Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 34 USPQ2d 1565 (Fed. Cir.), cert. denied,
516 U.S. 988 (1995). Second, if the inventor had a best mode of practicing the claimed
invention, it must be determined whether the specification adequately disclosed what the
inventor contemplated as the best mode so that those having ordinary skill in the art could
practice it. Chemcast, 913 F.2d at 927-928, 16 USPQ 2d at 1036-37. Thus, the second
inquiry is objective and depends upon the scope of the claimed invention and the level of
the skill in the art. Chemcast, 913 F.2d at 928-929, 16 USPQ2d at 1037.
Brown, in their motion allege that the Barbacid specification is defective in that it
fails to identify any particular test substance used in the Barbacid claimed process. Brown
contend that Barbacid “were aware of particular test substances that had been
successfully tested and shown to have measurable activity in inhibiting farnesyl transferase
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