Delano Farms v. California Table Grape Commission (Fed. Cir. 2015)

by Dennis Crouch

Like their utility and design patent brethren, plant patents must also satisfy the patentability requirements of Section 102 and 103 of the Patent Act. In Delano Farms v. California Table Grape Commission (Fed. Cir. 2015), the plant patents at issue relate to Scarlet Royal and Autumn King table grapes. Plant Patent Nos. PP16,229 and PP16,284.  The declaratory-judgment plaintiffs are grape growers seeking to invalidate the patents so that they can grow the grapes without continuing to pay a license fee.

Public Use: Under pre-AIA law, Section 102(b) renders patents invalid if the claimed invention was “in public use” more than one year before the application priority filing date and here, the question is whether certain proven third-party uses count under the law.

Interesting Factual Story: The patented grapes here were created through a USDA project and the patents are owned by the USDA. More than one year before filing the patent applications, the USDA held an open house where it displayed the two varieties.  At the event, a USDA employee (Klassen) gave some of the plants to a local grower (Ludy) but asked Ludy not to sell the grapes he might grow.  Ludy also apparently understood at the time that Klassen had no authority and should not have given out the plants.  Nevertheless, Ludy did grow the variety and also gave some buds to his cousin for him to grow.  However, Ludy testified that his cousin also understood that he should keep the variety secret until it was commercially released by the USDA.  (However, there was nothing written regarding the secrecy needed).   The cousin grew several hundred plants but did not sell any of the resulting grapes before the one-year critical 102(b) date.  Finally, Ludy also showed the plants to Sandrini who was an outside marketer of grapes for both Ludy and his cousin.

Public Use: In interpreting the public use prong of 102(b), the Federal Circuit has focused on whether the invention was either accessible to the public or commercially exploited.  Importantly, the court has previously held that “secret or confidential third-party uses do not invalidate later-filed patents.” Dey v. Sunovion.  But the Leading public use case continues to be Egbert v. Lippmann, 104 U.S. 333 (1881).  In that case, the inventor gave an under-garment corset to his love (who was not yet his wife) who wore it in various forms for 11 years before the patent application was filed.  Even though there was no evidence that anyone in the public saw the corset, the Supreme Court found an impermissible public use and the patent void writing:

If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and knowledge of the use may be confined to one person.

The challengers in the grape case here latched onto Egbert and argued that there was no real secrecy limitation here despite the fact that only a few individuals actually knew of the public use.

Siding with the USDA Patentee, the Federal Circuit affirmed the district court’s factual findings that the patentee did not authorize Klassen to facilitate third party use of the invention and that Ludy understood that he should keep the variety secret until publicly released by the USDA. “The findings of the district court clearly establish, therefore, that both Ludys knew that they were not authorized to have the plants and that they needed to conceal their possession of the plants.”

Distinguishing Egbert, the Federal Circuit noted that case turned on the inventor’s lack of effort to maintain secrecy.  Here, the USDA made attempts to keep secrecy and, to a large extent, was successful.  The tale here is interesting because of the way it softens the otherwise harsh limits under Section 102(b).

Impact of the AIA: This case was decided under pre-AIA law because the patent application was filed prior to March 2013.  The AIA rewrote much of the novelty provision of Section 102, but included the limit on patenting inventions already “in public use.”  I would expect that under the new law, these same activities would likewise not be seen as being in public use. One difference with the AIA is that the critical date for public use is no longer one-year prior to the application filing date, but instead is moved-forward the actual filing date itself.  In this case, that change would likely have made a difference because the third-parties were less private in the year leading up to the application filing, including commercial sales of the grapes.

44 thoughts on “Delano Farms v. California Table Grape Commission (Fed. Cir. 2015)

  1. 6

    “One difference with the AIA is that the critical date for public use is no longer one-year prior to the application filing date, but instead is moved-forward the actual filing date itself.”

    Has it been decided that public use is not a “disclosure” under 102(b)(1)?

  2. 5

    I have not read the case yet, but how can mere display of an invention to the public in a non informing manner disclose the invention? Giving a copy to another without restriction on its use or disclosure is certainly a public disclosure and thus public knowledge. But mere display of an object embodying an invention should not be enough.

    The principle of Pennock v. Dialogue is that commercial exploitation by the patent applicant is a “public use.” In Egbert, the invention was used for its intended purpose — in public because of a lack of confidentiality.

    1. 5.1

      “in an informing manner” may be the key.

      Note Ned, our past discussions on the AIA and “The Soluloquy” in regards to Trade Secret use that falls outside of that very key “in an informing manner.”

      I would date say that the Judicial common law of mere “commercial use” without such informing manner has been explicitly wiped away by the branch of the government with sanctioned authority to write patent law.

      (and I would remind you to review my previous writings as to how this does not – and cannot – offend the constitutional sense of “limited times”)

      1. 5.1.1

        anon, you may be right about the AIA Soliloquy. However, in a proper case, I think the Supreme Court would come out the same way as it did in Pennock. Consider a process that is keep secret for years, used to produce products, and then, when the art gets close to discovering the secret, the inventor the files and obtains a patent.

        Supreme Court: On sale bar applies.

        My prediction.

        1. 5.1.1.1

          If still a secret after years on the market, then clearly the “informing usage” is not reached, and there is NO WAY that the Soliloquy will not control in a post AIA case.

          Zero chance.

  3. 3

    I wonder if the result would have changed if, like Egbert’s corset, there was evidence that grapes from the plants had actually been “used” “in public” by Ludy, i.e., if Ludy made jelly from the grapes and ate jelly sandwiches public and/or made wine from them and drank the wine in public.

    1. 3.1

      Is there a distinction to be made between the use of the item per se and a use that takes advantage of the claimed invention?

      Per my comment below to Anon2, a plant patent may be different in this regard since the “use of” can be thought to be synonymous with the object itself, a condition that does not always carry with utility patents.

      1. 3.1.1

        I see your comment below after I posted above.

        Comment still applies even given the additional information (vis a vis my notation as to ‘claimed invention’ distinguished from what might accompany the claim in the specification).

    1. 2.1

      Yes., but the case does offer some interesting insight for folks who are bringing products to trade shows and hiring marketing folks whose lips tend to be looser than what the patent attorneys would like.

      1. 2.1.1

        Few things scare me more in this line of work than marketing people being (even only slightly) involved in the process before patent applications are filed.

  4. 1

    The slip opinion clarifies that only the separated fruit of the plant, not the plant as a whole, was on display at the open house. I would think that the result would be different if the whole plant were on display, as the open house seems like an awfully public use in itself.

    1. 1.2

      Public display of the results caused (i.e. the fruit) by an embodiment of an invention is not the same as public display of an embodiment of the invention itself (i.e. the plant).

      This often forgotten distinction between the invention what it is embodied in and what results from it is very important to identify and remember.

        1. 1.2.1.1

          Well I did not see the claims… and I am not familiar with conventionally what the claims “read on”.

          Yes the if the claim is to the DNA as such… well it would be in the fruit of course.

          1. 1.2.1.1.1

            No “as such” required.

            If you claim “the thing,” and that thing is exemplified by the DNA, then whatever else is exemplified by the DNA is also “the thing.”

            This has an analogy to the “product by process” doctrine.

            1. 1.2.1.1.1.1

              If you claim “the thing,” and that thing is exemplified by the DNA, then whatever else is exemplified by the DNA is also “the thing.”

              I would appreciate a citation, please, if you have one, because you seem to be saying that a piece of fruit is a plant, which certainly defies the scientific definition of the latter.

              I’d also like to see an elaboration of your product-by-process analogy, because I don’t see how you get from there to your fruit-is-a-plant theory. A claimed product-by-process is limited to products made by that process, but I don’t think we say that the resulting product is the process.

              Forgive me if I’m misunderstanding your position.

              1. 1.2.1.1.1.1.1

                I would appreciate if you showed a token of good faith (and are not just tr011ing me) by supplying those long ago references regarding not using the ladders of abstraction.

                Forgive me if I don’t just take your word for it.

                1. …and then let me know when you are willing to provide a citation for anything (and everything) that you post.

                2. Forgive me if I don’t just take your word for it.

                  I’m afraid that I have never understood what you’re talking about with respect to those “long ago references,” anon. You want me to supply you with references that do not discuss “ladders of abstraction”? I think that’s probably pretty easy to do, but I’m not sure what purpose that would serve.

                  I don’t expect you to take my word for anything. But next time I make what appears to be an emphatic positive statement of law, please feel free to challenge me for a citation.

                3. How about I simply ask you for a citation whenever you post?

                  Or so you also (still?) have a difficulty recognizing that you only happen to charge at certain red capes?

                  (And for the record, my statement was not an “emphatic positive statement of law,” as it was a simple factual statement of identity.

                  Unless you think that you can make DNA magically disappear…

              2. 1.2.1.1.1.1.2

                you seem to be saying that a piece of fruit is a plant

                In this particular case, it might depend on whether the grapes are seedless or not.

                1. In this particular case, the grapes are indeed seedless. I’m no botanist, but I don’t think a seed is a plant, either.

                2. You are no botanist is right.

                  What then, to your non-botanist thinking, is “a plant?”

                  Is a leaf enough?

                  How about a root?

                  Maybe some bark, or perhaps stem?

                  (try to be a bit less pedantic, my friend)

                3. Here’s a definition that’s reasonably understandable to non-botanist me:

                  Any of various photosynthetic, eukaryotic, multicellular organisms of the kingdom Plantae characteristically containing chloroplasts, having cell walls made of cellulose, producing embryos, and lacking the power of locomotion.

                  I don’t believe a piece of fruit falls under this definition.

                  No, a leaf is not enough, nor is a root. They are organs of a plant, and are no more a plant than your liver is a human being. Bark is part of the stem, and is also not a plant.

                  (try to be a bit less pedantic, my friend)

                  It seems to me that pedantry is a good thing when talking about the law – no?

                4. But back to the topic at hand. Someone suggested that public use of a piece of fruit was not the same as public use of the patented plant. You corrected him, “from a DNA replication standpoint.”

                  So far, your support has been “DNA!” and “product-by-process analogy” and ” the if before/ then after adage.” Not very convincing, in my humble opinion. In fact, it looks like a lot of huffing and puffing.

                5. Some people won’t be convinced no matter what.

                  (hint: the problem there is NOT in those trying to do the convincing).

                  You seem to be saying that only a public use of the entire plant suffices.

                  Um, do you have a citation for that?

                  Can I use a flowering plant in the off season when there is no flower?

                6. …and yes, you are very convincing in that you are being an @sshat.

                  Congrats (but perhaps you should aim for something else)

                7. You seem to be saying that only a public use of the entire plant suffices.

                  Actually, I said nothing of the kind. Anon2 said that public use of a piece of fruit is different (in a legally significant way) from public use of the plant from which the fruit came. You said that he was wrong, because “DNA” and “product-by-process.” I asked you to explain. Apparently you can’t, so you’re working terribly hard to pretend the conversation is about something else, and you can’t resist throwing in a few gratuitous insults in the process.

                8. Wow – look how defensive you are getting when it is becoming clear that your being pedantic is NOT a good thing (even here in discussions about law).

                  I take it then that you DON’T have a citation, even as you pestered me for one.

                  G e e, what a surprise.

                  (not)

                9. For the point that you are trying to argue…

                  hello…?

                  (hint: if you think that my supposition that a part of an item that has DNA of the whole is not sufficient then you MUST think that the whole is required – even as you seek to deny it post facto.

                  Perhaps you have yet another “magic label” for your position….?

                  (if so, please back up that position with a citation as well)

      1. 1.2.2

        Anon2: Public display of the results caused (i.e. the fruit) by an embodiment of an invention is not the same as public display of an embodiment of the invention itself (i.e. the plant).

        And yet the mere public display of the results caused by Egbert’s corset was legally sufficient to tank his patent.

        The fruit in question here is not merely “the result” of the plant in question. The fruit is the most important feature of this plant. It’s also the aspect of the plant that distinguishes it from varieties in the prior art:

        The new variety of grapevine is most similar to its pollen parent `C51-63` by having dark red, firm texture fruit. It is distinguished therefrom and an improvement thereon in a number of fruit characteristics. The berry size is larger, and the dark red color is easier to develop. The fruit ripens 4 weeks before `C51-63`. The new grapevine is also similar to the commercial variety `Ruby Seedless` in that they ripen at the same time and have red seedless berries. It is distinguished therefrom and an improvement thereon in that the berries of the new variety are larger and firmer than those of `Ruby Seedless`. It is also similar to the commercial variety `Crimson Seedless` (unpatented), in that they have firm red seedless fruit. It is distinguished therefrom and an improvement thereon in that the berries of the new variety are larger and develop the dark red color easier than does `Crimson Seedless`.

        1. 1.2.2.1

          Good points MM, however, Egbert’s corset was an embodiment of the invention and was actually present.

          Could we all agree that presenting the wine produced by the grapes of the plant (assuming no DNA survives intact) and pictures of the grapes (displaying the color) would amount to displaying only the results caused by and not any embodiment of, the invention proper.

          1. 1.2.2.1.1

            That would be a neat trick as to eliminating all vestiges of the DNA and yet retaining any particular characteristic aimed to be captured (i.e., that a patent enforcement action could be brought) in any later product on the market.

            1. 1.2.2.1.1.1

              Who said anything about trying to enforce the patent on the wine? The question on the table is whether a public use of the wine bars a patent on the vine.

              1. 1.2.2.1.1.1.1

                No one directly – but you may have heard of the if before/ then after adage.

                Unless of course, you think that something completely untraceable should for some reason have an affect here…

                1. you may have heard of the if before/ then after adage

                  Yes, I certainly have, but that deals with the symmetry between infringement and anticipation. I still don’t see what this has to do with whether public use of a wine constitutes public use of the plant. Could you explain?

          2. 1.2.2.1.2

            Egbert’s corset was an embodiment of the invention and was actually present

            The plant that produced the grapes is surely “present”, as well. Like Egbert’s corset, it was not displayed to the public. But the grapes were displayed and presumably also some stems. The grapes and stemps are part of the plant — a critical and defining feature of the plant, in fact — and hardly a “mere result.”

            In contrast, no element of Egbert’s corset was displayed to the public. All the public saw was “the result.”

            Query: if an entire vine except for the chopped off roots was displayed to the public, would that still be a “result” in your opinion and insufficient to qualify as a public display? After all, a complete embodiment is not “present”.

            1. 1.2.2.1.2.1

              Egads – perhaps an historic event here, as Malcolm and I are of accord and it is Anon2 and DanH/Leopold that fall short.

              (Ok, DanH falling short is NOT an historic event, but it is indeed rare that he seems not to be so eager to rah rah on his id0l Malcolm)

    2. 1.3

      Brennan, IIRC, a public use by other than the inventor must be enabling. By the inventor, it must be an actual use for its intended purposes that is non confidential.

      Just how is displaying a plant a public use? It is neither enabling, or use for its intended purposes.

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