Thursday, November 19, 2009

Iovate Health Sciences v. Bio-Engineered Supplements

The court affirmed the district court’s finding of anticipation of method claims directed toward “the use of nutritional supplements containing [certain ingredients] to enhance muscle performance or recovery from fatigue.” (p. 3.) These claims were anticipated by advertisements for nutritional supplements in a magazine that were published before the critical date.

The claims required administering a composition of a combination of supplements. The ad disclosed this combination. The patentee sought to avoid anticipation by arguing that the ad did not disclose administering an effective amount and did not disclose anything specific about enhancing muscle performance or recovering from fatigue as recited in the preamble. The court rejected these arguments, noting that the claims do not require an effective amount and that the ad’s disclosure general concepts of muscle “recuperation” and “post-workout recovery” encompass performance and fatigue.

The patentee also argued that the ads might not be enabling because the ads “lack any guidance on appropriate ingredient dosages.” (p. 9-10.) However, a person of ordinary skill in the art “would have been able to determine such an amount based on the ad and the knowledge in the art at the time.” The patent specification itself disclosed “numerous pre-1996 publications that teach acceptable clinical dosages of the” claimed ingredients. (p. 10.)

The court decided the case based on the ad being a printed publication. The majority opinion did not consider use or on sale grounds were also sufficient for anticipation. (See p. 5 (“While the district court’s decision and the parties’ arguments discuss three of the grounds listed in § 102(b)—printed publication, public use, and on sale—we need affirm the district court’s decision on only a single ground….”).) In a concurring opinion, Judge Mayer noted that the “the products were on sale more than one year before the critical date.” Assuming this is a reference to the ads, then the claimed method would have to have been on sale. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1320 (Fed. Cir. 2005) (“a method claim may be invalid if an offer to perform the method was made prior to the critical date”); see also Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1328 (Fed. Cir. 2001) ("The on sale bar rule applies to the sale of an 'invention, 'and in this case, the invention was a process, as permitted by § 101. As a result, the process involved in this case is subject to § 102(b)."); Plumtree Software, Inc. v. Datamize, LLC, 473 F.3d 1152, 1162 (Fed. Cir. 2006). While it seems clear that the printed publication taught the claimed method, whether that method was on sale is a more difficult question.