Fonar Corp. v. General Electric Co.

Fonar Corporation (plaintiff) owned a magnetic-resonance-imaging (MRI) patent that claimed a method of using an MRI machine to obtain images of a patient’s body at multiple angles in a single scan, a technique called multi-angle oblique (MAO) imaging. This was deemed an improvement over prior-art machines, which could only obtain multiple images by running multiple scans. Fonar sued General Electric Co. (GE) (defendant) for patent infringement. GE contended that Fonar’s patent was invalid for noncompliance with the best-mode requirement under 35 U.S.C. § 112 with respect to three aspects of Fonar’s claimed invention: (1) software routines; (2) a gradient multiplier board (GMB), for which no comparator was disclosed; and (3) a computer chip for implementing certain functions of the hardware. At trial, Fonar acknowledged that it had a best mode as to all three aspects, but it introduced evidence that its patent adequately disclosed all three of those best modes. Regarding software routines, Fonar’s witnesses testified that disclosing the software functions was more important than providing the source code for the software. Regarding the GMB, Fonar’s witnesses testified that the patent specification sufficiently described the GMB’s function. Witness David Hertz testified that the GMB of Fonar’s machine was not the only way to attain MAO imaging; that someone skilled in the art would have understood that a comparator should be used (thus rebutting GE’s argument that the lack of disclosure of a comparator violated the best-mode requirement); and that each machine had its own set of requirements for the GMB, which is why Fonar’s patent specification described the GMB in only general terms. Regarding the computer chip, Fonar showed that Figure 7 of its patent schematically illustrated the chip and that Fonar’s patent specification textually described the chip’s functions. The jury returned a verdict finding infringement and that Fonar’s asserted claims were not invalid for failure to comply with the best-mode requirement. GE moved for a judgment as a matter of law (JMOL) on several issues, including the best-mode verdict. The district court denied GE’s motions, and GE appealed.