by Dennis Crouch
We all love flowers, but what is their real purpose, their “use.” That was a key question the court faced when deciding In re WinGen LLC (Fed. Cir. 2023).
The utility patent at issue covers a petunia plant. Here, the Federal Circuit has affirmed that the claims are invalid based upon a pre-filing trade-show display of the ornamental plant — holding that the display counted as a “public use.” “The displaying of ‘Cherry Star’ … was … undoubtedly a use for its intended purpose: ornament.”
The inventors here used conventional plant breeding to create a new form of petunia (Calibrachoa). WinGen first obtained a plant patent (PP23,232); followed by a utility patent that was filed as a continuation-in-part (US9313959). The claims require two components (1) a particular petal phenotype and (2) a particular genotype:
Petal Phenotype: 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
Genetic Feature: a single half-dominant gene, as found in Calibrachoa variety ‘Cherry Star,’ representative seed having been deposited under ATCC Accession No. PTA-13363.
During the reissue, the patentee disclosed the potential invalidating prior use; admitting that the claimed variety was displayed at a private Home Depot event where wholesale growers displayed their wares. Nothing was for sale at the event, no orders were placed, and attendees were not permitted to take samples or cuttings. However, there was also no express or implied obligation of confidentiality binding individuals who attended.
The patentee argued that the display should not be considered a public use — it was only displayed — and not used. One case on point is Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007). In that Motionless Keyboard, the alleged prior use involved displaying the invention (a keyboard). But there, the court found no public use because the keyboard was not hooked-up to a computer. Id. The patentee also distinguished the old canard of Egbert v. Lippmann, 104 U.S. 333 (1881). In Egbert, the Supreme Court premised its public use finding on the notion the inventor failed to maintain control over his invention — allowing someone to wear the corset around in public repeatedly over an extended time without any restrictions. See, Dey, L.P. v. Sunovion Pharms., Inc., 715 F.3d 1351 (Fed. Cir. 2013). Here, however, the flower was kept in the control of the patentee despite being displayed.
In distinguishing these cases, the Federal Circuit looked to the purpose of the invention. The oddity of this utility patent is that it claims an ornamental plant. Although the claims were not challenged on Section 101 utility grounds, the Federal Circuit still considered the plant’s utility as it fed into the “public use” bar of Section 102. And without fanfare, the court concluded that its purpose was ornamentation; that a display of the plant counts as ornamentation; and therefore the plant was in public use.
Although the court indicates that this situation (ornamental use of a utility patent) is a unique question of first impression, the court inexplicitly issued its decision as non-precedential. Perhaps the court simply did not want to make law based upon a logical paradox. Further, the Federal Circuit’s justification was not found in the USPTO brief in the case. Rather, the USPTO asked for a simple rule that a public use follows from display of the complete invention in a commercial setting and without any secrecy limitations. But public display is not enough for a finding of traditional public use.
The patentee had also argued that its continued control over the plant meant that nobody at the Home Depot event could have learned of the genetic feature claim limitation. On appeal, the Federal Circuit did not consider that argument – finding that the argument had been forfeited because it was not meaningfully presented to the lower tribunal.
The patentee told the court in briefing and at oral arguments that the claims cover an ornamental plant. Those admissions allowed the court to rely upon that conclusion in its decision. Here, the real utility might be found in the specification (and deposit) that provide guidance on how to grow the plant.
Note that this was a pre-AIA case. The AIA now includes an additional catch-all “otherwise available to the public” that presumably makes it easier to show that certain public showings ‘count’ as prior art.
Moocow writes below: “ “Unlike the corset in Egbert this plant is purely ornamental.” This plant is ornamental but a corset is not, really, just like that? What about a saxophone, isn’t that also useful only for aesthetic purposes?”
The
I think the key distinction here gets to the heart of some major issues we see in eligibility. Merely observing something or detecting something or realizing a correlation associated with something is not “using it”. If the thing in question has no other specific and credible use or function except to “be observed” or “have weight” then the utility prong of 101 is failed.
Where the sausage gets sliced really thin is when we get into toys. A new sculpture can not be protected with a utility patent. BUT WAIT! If the sculpture has movable arms then it can theoretically be protected as a toy. Note that there will have to be something non-obvious about the mechanism which allows movement in order to get a patent (in which case it’s the mechanism that should be the subject of the claim, and not the sculpture).
Keep on trying to disregard computing innovation there Malcolm.
(renew my invite to you to abstain from using any innovation that you would not extend patent protection to)
Okaaaay…. so what about the saxophone then, which has no other purpose than to be heard?
Or, let’s say, a new perfume composition which has no other purpose than to be smelled, compared to a new bear spray, which has no other purpose than being smelled by a bear? I think all of these have utility. Or a new food sweetener, whose only purpose is to be tasted.
Just because something doesn’t do anything other than “to be heard, seen, smelled, tasted or otherwise sensed” can’t be the whole answer. Likewise, whether its use is only to appeal to aesthetic sensibilities (ok, the bear might disagree) can’t be the answer either, because lots of fine inventions do no more than that.
Personally I think the court got this one wrong; it also reads like a pretty lazy opinion. I always thought that a prior art reference must be enabled/enabling before it qualifies as prior art. And here nobody who observed the plant being “used” would have known about the hybrid gene that was crossed in, or could have understood how to make the invention. So how can one say that the plant was placed in the public’s possession? Nothing was taken away from the public by later granting a patent on this plant.
Good points, but wouldn’t having a plant patent be sufficient?
Maybe not. As far as I know, a plant patent is infringed only through asexual reproduction, like when someone takes and plants cuttings. It doesn’t preclude others from sexually reproducing the patented plant, through planting seeds.
As far as I can tell, the commercial value here may lie in the seeds – most people who like petunias buy seed packets in the early spring or, more often, just buy a pallet of plastic pots with petunias which may or may not have been produced from seed.
Ah thanks — but seeds in themselves, are not protectable (Monsanto aside — given the different facts of that case), eh?
“ so what about the saxophone then, which has no other purpose than to be heard?”
What about it? It’s a device that exists to be played to create music. The issue with ineligibility is not “can one imagine no other purpose”. The issue is that some “new” articles of manufacture are static objects without novel mechanisms and their only specific credible utility is “you admire its existence.” These don’t belong in the utility patent system. Most of them don’t belong in the design patent system either, for that matter (because they are obvious).
My comment was directed to the interesting distinction between the articles I mentioned above (which nobody seriously considers worthy of utility patent protection) and the class of articles which differ from the above class of articles only by virtue of some aspect that credibly permits the article to be labeled “a toy.”
Static…?
Without novel mechanisms…?
If a petunia blooms in a forest and nobody ever sees it, has it served an ornamental purpose? If a petunia grows in a cornfield and a farmer destroys it with Round-up Ready 2, did the petunia serve an ornamental purpose?
Does ornamentation require one to determine the intent of the plant provider or does it exist inherently? Is there an ordinary observer test for a finding of ornamentation in a utility patent?
Out of curiosity, why are inventors going for utility patents and not plant patents here?
I believe per the write-up above that they went for both.
This does seem like a very odd kind of utility patent. There are lots of ornamentations, like wall paper designs, paintings, photographs, sculptures, etc. that can be used for ornamentation. Those were always protected by copyright.
And without fanfare, the court concluded that its purpose was ornamentation; that a display of the plant counts as ornamentation; and therefore the plant was in public use.
The second clause does not necessarily follow from the first clause. Not every display is “ornamentation.” Displaying a pot or bed of petunias in front of my house is ornamentation. Displaying them at an event at Home Depot for wholesalers, where presumably many other flowers and plants were displayed, is selling. Nothing there was “ornamented.”
Apparently, it was “undisputed”that the flower wasn’t on-sale
Yes, I got that. The bar here is public use. My point is, if the use is “ornamenation,” not every display is ornamentation. To me, that means decorating something or making something look nicer. A house, yes, a table at a wholesaler trade fair, no.
Roses are red
Calibrachoa are blue
The prior public use
Makes the claims not new
Works better this way actually:
Calibrachoa are red
Violets are blue
The prior public use
Makes the claims not new
Patent law meets poetry.
How about a patent application in poetry? That would be novel.
Well, a while back, a not particularly serious person applied for patents on movie plots. I don’t think it was very successful in the end.
link to ipmall.law.unh.edu
But maybe poetry patents have yet to be attempted.
Claim 1:
a processor to
achieve the needed result
you guess how it works.
a computer that
follows logic instructions
Yes I will troll you
Ha!
How do you use a screwdriver?
(context: think multiple AND out of the box)
“..public display is not enough for a finding of traditional public use” [?] was not a assertion one should rely on for safely delaying filing a patent application more than a year thereafter even before this decision, especially if the public was allowed inspection access to a displayed device or it’s alleged novel features were publicly noted.
I understand the purpose and value of preclusion and predictability, but shouldn’t a specialized appeals court have the power to sua sponteraise an argument that is fundamental to a statue’s application…such as lack of utility in a utility patent?
Off-topic:
It has been my professional experience that the preparation of an ADS, PCT Request, and other forms necessary to file a patent application are viewed as administrative tasks performed by legal assistants, and therefore non-billable. During a conversation with a group of patent attorneys at a bar event, I learned that at least one firm was having a paralegal prepare filing documents and then billing the preparation time to the client. I was shocked because, as I said, it’s been my profession experience this is non-billable administrative work.
Is billing out form preparation a new trend or an outlier?
These have always been billable tasks in the various forms that I am aware of.
Including document copying costs [back when that was a significant overhead expense in some litigation discovery], unless agreed otherwise.
Two words: Engagement Letter
Someone, at some level, who is paid a salary by the business, is spending time, and employing their experience and training, to perform a task on behalf of a client. The question, surely, is not “is this billable” but “at what rate”?
Certainly, if a firm has a charging structure such that all of its operating costs are covered by attorney fees, then transactional work of this kind may come at no extra charge. But that’s a business model, not a rule. And the client is still paying, potentially, through higher attorney fees.
As WT quite rightly says, check you letter of engagement.
+1
And if there’s a screw-up, who’s on the hook for liability? The paralegal? Yeahright.
Some people bill by the hour. Some bill by the task. Some are willing to do an entire project at a fixed price. However it’s done, the buck stops with the attorney whose signature is on the paper, so that risk is usually charged to the client in one form or another.
But maybe you like working for free.
ipguy, that used to be the norm. The bill included the paralegals work. But now with prosecution becoming a commodity the paralegal fees are subsumed by the fixed fee prosecution.
Thank you for the feedback. But, if a legal assistant prepares the forms, wouldn’t the old norm still apply?
Great. The Court decided how many angels can dance in the flower of a petunia plant.
The next case will involve a pin.
At least you can’t accuse them of gilding the lily on this one.
All hail the CAFC.
One of the greatest innovation-disappearing magicians the world has ever seen.
The inventor never had a chance.
Never a chance.
+1
“ without fanfare, the court concluded that its purpose was ornamentation; that a display of the plant counts as ornamentation; and therefore the plant was in public use.”
It’s both pitiful and horrifying that the court didn’t use this slam dunk opportunity to expunge the utility patent system of this and a ton of other ornamental (i.e., legally “useless” for 101 purposes) patent claims. We have a plant patent system for a reason, folks.
Here’s hoping the CAFC fixes this travesty en banc, or that the Supremes get a hold of it and deliver the necessary beating.
I — again — have to check myself, being in agreement with Malcolm (we are in like accord for the force-fit of Design Patents into the [generally] utilitarian patent law system).
As to the Court’s choice of “ornamentation,” that’s a slender reed to reach into the natural utility aspects of patents.
This “reach” also does not rest easy with the Supreme Court “jurisprudence” in the anti-computing arts.
Pretty much any object with mass has utility as a paperweight.
But paperweight is one of the classic throwaway examples that doesn’t meet the utility standard.
Where is that from? I would think the problem of a paperweight is not lack of utility, but lack of novelty.
I think the actual example in the MPEP is using a claimed material composition as ordinary landfill, but if you look around, doorstops and paperweights are also popularly cited examples of throwaway utility.
But the point is not that a paperweight itself lacks utility, if that is actually the claimed subject matter. The point is that you have a problem when the asserted utility isn’t at all specific to the subject matter. So using the petunia in a pot as a mere paperweight is far too nonspecific.
That said, as long as the asserted use is reasonably specific (and credible), the standard for showing utility otherwise seems to be rather forgiving.
An example “in the MPEP” (especially outside of the 35 USC and 37 CFR areas) is not dispositive against applicants.
I’m not sure what you’re ultimately getting at, given that nobody (including me) was arguing about what is and isn’t dispositive. Although FWIW on this one I do agree.
The law requires a specific, substantial, credible utility. See in re fisher 421 F.3d 1365.
A paperweight only has general utility (in that it’s shared by the entire class of items which have mass). I think ornamentation, if that is even a valid utility, is not specific to the flowers at issue.
Given that plant patents are involved, the “someday this may be useful” aspect of EST’s in the case you provide is rather easily distinguished.
The term is “specific utility.” A claimed invention has to have “specific utility.”
This was put in place because people were literally claiming thousands and thousands of random snippets of DNA, or thousands of random chemicals, knowing that one day one of them would be useful for something. The “utility” of each random snippet (which has no known real utility) was something like, “it can be used in studies to see if it has any function,” or “it can be burned and produce energy”, etc.
The way this issue was solved was by finding an invention has to have “specific utility.” Whatever it means, but it means it cant be a paper weight, or fuel to burn, or whatever.
“Pet food supplement” was an amusing fallback position.
My fave was:
“Throw it on the lawn – if there was growth, it was useful as a fertilizer, if there was not, it was useful as a herbicide.”
“Unlike the corset in Egbert this plant is purely ornamental.” This plant is ornamental but a corset is not, really, just like that? What about a saxophone, isn’t that also useful only for aesthetic purposes?
The way of making something —no matter what that something is — may well have utility in the patent sense.
Think: would there have been promotion had Stradivarius patented his method of making violins?
(playing the violin? Not so much — but this only shows that asking the right question is important – or in other words, the Means really do matter)
I’m not usually a big fan of judicial minimalism, but here the examiner didn’t raise utility in the first instance, nor the Board take it up either. So in this particular occasion, I think the Court was wise in giving a wide berth to that potential briar patch.
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