In re POD-NERS (Fed. Cir. 2009)
Larry Proctor purchased a package of Mexican beans of various colors. He separated-out the yellow ones and spent three years selectively breeding the plants. He then named his line “Enola” and obtained utility patent protection for the bean, its plant, its pollen, and the method of producing it. Pat. No. 5,894,079. Proctor also obtained a US Plant Variety Protection Act (PVPA) Certificate.
Soon thereafter, Proctor’s company POD-NERS wrote to importers of Mexican beans asking for a royalty of 6 cents per pound. Mexican government officials identified the patent as “Mexican bean biopiracy” and that they would “do everything necessary, anything it takes, because the defense of our beans is a matter of national interest.” The not-for-profit International Center for Tropical Agriculture (CIAT) requested an ex parte reexamination in 2000 (Procter also filed for a reissue so that claims could be added). A non-final rejection was mailed in 2003, a final rejection in 2005, and a BPAI decision affirming the decision in 2008. Now, the Federal Circuit has affirmed the “decision of the Board that all the claims here would have been obvious and therefore that they are invalid.”
This decision makes sense – a published article compared the DNA of Enola with ordinary mexican yellow-seeded beans and found them identical.
One of ordinary skill in the art seeking to reproduce (and hopefully improve) the yellow beans that Proctor brought back from Mexico would have done what he did: plant the beans, harvest the resulting plants for their seeds, planting the latter seeds, and repeat the process two more times.
There is no indication that in taking these steps Proctor sought to provide beans of the particular narrow range of yellow that the claims specified. To the contrary, it appears that all Proctor was attempting to do was to reproduce the yellow beans he had acquired in Mexico, and hopefully to improve them.
To do so he followed normal and well-established agricultural methods and techniques for doing that. See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (“a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”) He does not contend that he devised or applied new or unexpected techniques in reproducing the beans.
Although happy with the outcome, public interest groups have labelled the process a “travesty.” “In essence, the U.S. patent system allowed the owner of a flagrantly unjust patent to legally monopolize markets and destroy competition – for close to half the 20-year patent term.” [Link]
Carol,
Thank you for your reply. Your explanation does, however, further illustrate the need not only for more biological information but also for people who actually understand this information during the various stages of the patent process. Granted, my work was not available during the patent examination; however, other information was available, which was not considered.
The color claimed by Pod-ners was not in any way novel; this color has been around for decades, not only in Latin America but elsewhere as well (e.g, US and Europe). There was mention and an illustration of a Sulfur bean among the Vegetables of New York, published in 1932. The Bassett et al. paper clearly shows that the genetic control of the shade of yellow claimed by Pod-ners had already been described in 1940 by Prakken, a Dutch geneticist. In claiming this particular shade of yellow, Pod-ners merely sought to match the pre-existing preference of consumers for this particular shade of yellow.
Furthermore, the yellow beans mentioned as evidence of prior art by CIAT were not just any yellow beans, but were of the same type as the Enola beans (this was further confirmed by fingerprinting analysis in Pallottini et al. 2004).
So, when you say that “there wasn’t evidence that it was known and used in the U.S.”, that is just not the case. Yellow beans were known and in use in the U.S. well before 1999. Both the USPTO and the patentee were remiss in not digging deeper to find evidence of prior art (let alone provide evidence of non-obviousness). Ignorance on the part of the USPTO or the patentee about the biology underlying a patent should not be used as an argument for patentability.
This patent prevented the development of additional, improved yellow bean varieties in the U.S. and the exportation to the U.S. of yellow beans by Mexican farmers, among others in the state of Sinaloa. These same farmers had contributed to the development of the yellow beans Azufrado Pimono 78 (Mayocoba) and Azufrado Peruano 87 by the breeder Rafael Salinas. (The patented yellow bean of Pod-ners was nothing other than AP 87 according to our data!).
Finally, I do note that both the BPAI (solely) and CAFC (in conjunction with the Salinas disclosure) took into account and explicitly cited our DNA fingerprinting results (Pallottini et al. 2004) in reaching their decisions. I am glad that my research group was able to provide useful information relevant to the resolution of this case on scientific grounds!
Paul,
Despite your conclusion of genetic identity, and that “claims of novelty … were unwarranted” for an invention to lack novelty under U.S. patent law it has to be “known or used” in this country or published (with some caveats not discussed here). The Mexican yellow bean was known and used in Mexico, there wasn’t evidence that it was known and used in the U.S.
Moreover, neither Pod-ners or CIAT (the requester of a re-examination) showed that the yellow of the Mexican beans or any of the beans in the CIAT germplasm bank had or didn’t have the specific yellow color claimed in the patent. That was a deficiency on both sides, IMHO. So while yellow beans weren’t new, at least in some countries, we still don’t know if these yellow beans had the same yellow color. So many groups, including CIAT, jumped to the conclusion that a yellow bean was the same as the Enola bean. The patent specified a yellow color based on a color chart.
Genetic data didn’t go into examination of the patent because it wasn’t available. Your work wasn’t done until several years after the patent was granted. Therefore, your work was confirmatory only, it never was considered to be prior art (the only basis for rejection of lack of novelty). The most damaging piece of prior art at the BPAI stage was a publication – submitted to the PTO by Pod-ners – that described a plant producing a yellow bean in which the plant shared characteristics with the Enola plant (e.g., flower color, time to producing flowers and beans, leaf shape, etc.).
For more information, read my analysis at http://www.cougarlaw.com.
As a biologist (and more specifically a plant geneticist), I am disappointed by the lack of genetic data that went into the award of this patent and the further re-examination process. Not only was there a lack of data on similarity/differences with existing yellow bean varieties, the arguments used by the PTO, BPAI, and patentee (or his counsel) did not show a full understanding of basic biological parameters in this situation, such as the natural variability in seed color and the issue of representativity of the sample deposited at the ATCC.
Certainly, claims of novelty of the yellow color were unwarranted given the documented prior history of beans in Latin America. Claims by the (ex-)patent owner that he had “selected” beans for a particular shade of yellow, together with other traits, such as yield, were unsubstantiated in the patent application. Any plant geneticist or plant breeder worth their salt would have rejected such application.
Furthermore, the belated rejection of this patent came on the basis of DNA fingerprinting, conducted in my lab (see Pallottini et al. 1984: link to crop.scijournals.org), which demonstrated the identity of the patented yellow bean with a pre-existing Mexican variety released in 1987! This is the main argument on which the BPAI and CAFC ultimately relied on.
Although there must be several factors responsible for the extreme delay in adjudicating the re-examination request, we would not end up in such a situation if biological data were truly integrated into the whole utility patent process for plant materials. There has to be a way to evaluate which biological data are needed and how to evaluate their quality. I see very little of this going on, including in this discussion.
Proctor also has a USDA Plant Variety Protection certificate (PVP Certificate No. 9700027 (issued Jun. 30, 1999).) The PVP certificate is based on a deposit of the seeds with the United States Department of Agriculture.
As he was breeding for color, Proctor found that the yellower beans had deeper roots, were hardier, and more resistant to moisture. Farmers in his area (Colorado) were hurting, and Proctor thought the hardy beans could bring a better price.
I checked the USDA website to see if the certificate was still in force, and the info is unavailable.
Let’s hope the PTO will eventually draw a distinction between a purified qualitative trait, like uniformly yellow beans, and enhanced quantitative trait, like higher yield than the starting materials.
I can believe he got a patent on a purebred line of beans, but I can’t believe the court case got past the summary judgment phase. He was clearly trying to pull out of the public domain the very starting materials he used to make his invention!
Why wasn’t the invention inherently anticipated by the prior art yellow beans? It shouldn’t have even gotten to a question of obviousness.
Um.. did the patentee actually ‘destroy competition’ as the public interest groups claim?
Given how apparently unpatentable the invention was, surely the competition would have just ignored the patent, safe in the knowledge that any infringement challenge would be countered with a revocation action for invalidity?
DC or anyone else, do you know if the patentee ever tried to assert either of these travesties against anyone? If so, was he required to post a bond with court to offset defendants’ potential injuries?
It’s a pity that the CAFC didn’t assess costs against the patentee. And the PTO for so pitifully screwing this one up, affecting the livelihoods of the farmers in Mexico from whom the patentee had stolen the “invention” in the first place.
This case makes me want to puke.
Ironically, once the Medimmune decision came down, the parties that instituted the reexam could have gotten this before a district court and probably gotten a resolution quicker than at the PTO. That’s not what the reexam statute was aiming for when it was adopted.
“One of ordinary skill in the art seeking to reproduce (and hopefully improve) the yellow beans that Proctor brought back from Mexico would have done what he did”
I think we are on a slippery slope here. If you want a patent, you need to find a solution to a problem in a way nobody else would. Edison’s main method was trial and error. Since others could have come up with the same things using the same method, everything he created must have been obvious.
Not that I have much sympathy for this inventor, but certainly his invention must have been known to others in this country, whether here legally or not.
Re: “the consolidated reexam and reissue proceedings .. do show quite a bit of activity.”
The reexamination statutes and rules impose strict restraints on the small number of papers that can be validly filed, and on patent owner response times. [Very different from normal PTO prosecution.] Thus, there is no way that more than a very small percentage of the total time delays in such long delayed reexaminations can be attributed to the patent owner.
“..plant the [yellow] beans [bought in Mexico], harvest the resulting plants for their seeds, planting the latter seeds, and repeat the process two more times.” [Presumably to breed true, i.e., consistently yellow?]
[Unless this CAFC panel hereby grossly misscharacterized this “invention”, isn’t that what even high school biology books teach about what that monk in Austria (who invented genetics) did with colored sweet peas?] [A reminder of why the
Sup. Ct. KSR decision repeatedly suggests using more common sense in 103 evaluations?]
Paul,
While I agree that 8 years by any stretch can NOT be considered special dispatch, the file wrapper for the consolidated reexam and reissue proceedings (look at the continuity tab for patent 5,894,079 to find the application numbers) do show quite a bit of activity. It’s not like some cases I have seen where a period of 4 to 5 years have NO action.
curious,
Why are you being gratuitous by yanking Malcom’s chain? That’s like glibly denigrating whole fields of patents.
😉
The only way a reexamination could take 8 years is by PTO employees deliberately avoiding work on that reexamination to instead work for those years on thousands of lower prority matters (for easier personal financial credits) blatently ignoring the 35 USC 314(c) statutory priority handling imperative [and obviously without any effective PTO managerial control]. The term “scofflaw” seems to fit?
The 35 USC 314(c) statutory “special dispatch” requirement for conducting reexaminations expressly applies to both the examining corps and the Board. Taking eight years for any patent reexamination is inexcusable PTO missconduct.
Yes. The patent is a utility patent. I have updated the post to emphasize that point.
isn’t it a utility patent, namely US Patent No. 5,894,079, “field bean cultivar named enola”, and not a plant patent?
I’m confused. I thought plant patents could only contain a single claim. See 35 U.S.C. 162 (“§ 162. Description, claim
No plant patent shall be declared invalid for noncompliance with section 112 of this title [35 USC § 112] if the description is as complete as is reasonably possible.
The claim in the specification shall be in formal terms to the plant shown and described.”)
How could this have been a utility patent? I know SCOTUS said it was possible (J.E.M. Ag Supply v. Pioneer Hi-Bred Int’l, 534 U.S. 124 (2001)), but if that were the case here, no wonder the BPAI invalidated the patent. Unlike the patent at issue in JEM Ag Supply, it sure doesn’t seem like there’s a lot of science going on in this guy’s vegetable garden.
BTW, I agreed with the dissent in JEM Ag Supply (and still do). But because that case concerned just how wide the scope of section 101 is, it will be interesting to see how/if SCOTUS distinguishes it when it decides Bilski.
I would surely hope that the patent covering the sheet of paper on which is written the recipe for cooking these beans is valid.
(Just yanking your chain, Mooney)
Three years? They filed ex parte reexam in 2000!
Nearly half the patent term was spent with the patent in limbo (like schrodinger’s cat, neither alive nor dead). Whether it was ultimately valid or not, that is a travesty.
Indeed.
I’m surprised the mexican gov. didn’t just have him killed.
“a final rejection in 2005, and a BPAI decision affirming the decision in 2008.”
three years — that is inexcusable
Plant patents lie somewhere between design patents and utility patents in their tendency to claim invalid bullcrap.
This is a step in the right direction.
Thank you, KSR. Thank you.
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