A Picture is Worth a Thousand Words in Establishing Public Use When Utility is Ornamental
| April 3, 2023
In re WinGen LLC
Decided: February 2, 2023
Before Lourie, Taranto, and Stoll (Opinion by Lourie)
Summary
After reading this nonprecedential decision, one may wonder why it was not designated precedential, in view of quotes from the decision such as “what is necessary for an invalidating prior public use of a plant has not been considered by this court” and “This case therefore presents a unique question.” Nonetheless, a number of very interesting topics are raised regarding different ways to secure patent protection (a plant patent and/or a utility patent), and what may be considered an invalidating public use. This decision becomes more interesting when exploring the background of the patent in question which was not discussed in the decision, namely, why was a reissue pursued in the first place. Based on the author’s opinion, the reissue application may have become necessary due to a misunderstanding of the invention by both the Examiner and the prosecuting attorney.
Background
U.S. Patent No. 9,313,959 is directed to a Calibrachoa plant. Claim 1 is representative:
1. A Calibrachoa plant comprising at least one inflorescence with a radially symmetric pattern along the center of the fused petal margins, wherein said pattern extends from the center of the inflorescence and does not fade during the life of the inflorescence,
and wherein the Calibrachoa plant comprises a single half-dominant gene, as found in Calibrachoa variety ‘Cherry Star,’ representative seed having been deposited under ATCC Accession No. PTA-13363.
Reissue Application 15/229,819 was filed as a broadening reissue to delete “representative seed having been deposited under ATCC Accession No. PTA-13363”.[1] During prosecution of the reissue application, a final rejection was made that included rejections for lack of written description, nonstatutory double patenting, lack of enablement, and prior public use. On appeal to the Board, the Board reversed all the rejections except for the prior public use rejections. The Board found that a display of ‘Cherry Star’ had been accessible to the public at an event at The Home Depot. This event was hosted by Proven Winners North America LLC, a common shareholder with the original assignee of the ‘959 patent, Plant 21 LLC. Proven Winners is a brand management and marketing entity. Plant 21 entrusted Proven Winners with samples of ‘Cherry Star’ to show at a private event at The Home Depot. At the event, the attendees were not permitted to take cuttings, seeds, or tissue samples of the plant. However, the attendees were provided with a leaflet to bring home that included a photograph and brief description of the plant. In addition, the visitors were under no obligations of confidentiality. The visitors were not provided with any gene or breeding information regarding ‘Cherry Star’. The handout is shown below:
The Board’s decision also commented that it was undisputed that a complete invention comprising all the claimed characteristics[2] was on display at The Home Depot event.
WinGen appealed to the CAFC, arguing that the Board erred in finding prior public use when all the claimed features were not made available to the public. In particular, the attendees would not have been aware of or able to readily ascertain that ‘Cherry Star’ resulted from a “single half dominant gene”, and thus the display was not an invalidating prior public use.
Discussion
Under pre-AIA 35 U.S.C. 102(b), an applicant may not receive a patent for an invention that was in public use “more than one year prior to the date of application in the United States.” To determine an invalidating public use, the court considers whether the purported use (1) was accessible to the public or (2) was commercially exploited. Here, the CAFC commented that there was only one prior case involving prior public use of a plant (Delano Farms v. Cal. Table Grape Comm’n, 778 F.3d 1243 (Fed. Cir. 2015). That case involved the unauthorized growing of the claimed grapes in locations visible from public roads. Although the grapes were viewable to the public, they were not labeled in any way and there was no evidence that anyone recognized the grapes as the claimed varietal.
The CAFC distinguished this prior case from what occurred at The Home Depot event. At the event, ‘Cherry Star’ was indisputably identified. Although the handout itself was not a public use, the leaflet confirms that the physical plant on display was in fact ‘Cherry Star’.
The CAFC further commented that the use of ‘Cherry Star’ is purely ornamental, in contrast to the grapes in Delano Farms.
The CAFC noted that this case presents a unique question with respect to a purpose of ornament than other decisions regarding alleged public uses. For example, in Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007), there was no evidence showing the invention was used for its intended purpose (visual display of a keyboard did not constitute public use because it was not connected to a computer or other device).
Although this all makes sense, whatever happened to WinGen’s argument regarding the claimed genetics (“comprises a single half-dominant gene”)? The CAFC dismissed this argument as WinGen “did not meaningfully present such an argument to the Board. We agree with the Director that such an argument was forfeited.” Had such an argument been made, it is likely there would have been a different outcome.
Background Notes
I was curious why the reissue became necessary. I looked at the prosecution history of the original patent and noted several interesting things that occurred during prosecution. Prior to the first action, there were several third-party prior art submissions. This is indicative that there were competitors concerned about a utility patent issuing. One submission included a photograph of ‘Cherry Star’. This photograph was initially entered by the USPTO, but then later expunged after the patent applicant filed a petition. A subsequent third-party submission included another photograph from a publication describing ‘Cherry Star’ which was entered into the record.
The Examiner’s first office action included numerous rejections. An interview was conducted prior to filing a response which seemed productive in that the Examiner suggested amendment to include the semi-dominant gene as found in the deposited variety ‘Cherry Star’. However, there was also an objection made by the Examiner regarding the use of “tissue” in the specification instead of “seed” in reference to the biological material which was deposited. The applicant proceeded with the Examiner’s suggested amendment, but this may have been the mistake that led to the need for a reissue application. The original specification described that the plant is produced from tissue having been deposited. The use of “tissue” seems to have meant the genetic material as opposed to seeds. As described in the specification:
Additionally, and as known in the art, Calibrachoa plants can be reproduced asexually by vegetative propagation or other clonal method known in the art. For example, and in no way limiting, a Calibrachoa plant having at least one inflorescence with a radially symmetric pattern along the center of the fused petal margins, can be reproduced by (a) obtaining a tissue cutting from said plant, (b) culturing said tissue cutting under conditions sufficient to produce a plantlet with roots and shoots; and (c) growing said plantlet to produce a plant,
In other words, the plants themselves are asexually reproduced. Growing plants from the seeds may not produce the claimed plant.
[1] Observed by the author from the image file wrapper of the reissue application.
[2] This admission or lack of dispute proves detrimental to the patentee.
