Court Upholds Finding of Inherent Anticipation
August 21, 2002
Last Month at the Federal Circuit - September 2002
Judges: Prost (author), Clevenger, and Bryson
In In re Cruciferous Sprout Litigation, No. 02-1031 (Fed. Cir. Aug. 21, 2002), the Federal Circuit affirmed the district court’s holding that the asserted claims of U.S. Patent Nos. 5,725,895 (“the ‘895 patent”); 5,968,567 (“the ‘567 patent”); and 5,968,505 (“the ‘505 patent”) were invalid as anticipated by the prior art.
The asserted patents concern methods of preparing food products containing cruciferous sprouts rich in glucosinolates and possessing high Phase 2 enzyme-inducing potential. The patents disclose that consumption of these products reduces the level of certain carcinogens, thereby decreasing the risk of cancer.
In the district court, Johns Hopkins University, owner of the three patents-in-suit, and Brassica Protection Products LLC (“Brassica”), the exclusive licensee, sued numerous parties for infringement. Following consolidation of the cases, the Defendants moved for SJ of invalidity, asserting that the patents were anticipated by prior art references disclosing the growing and eating of sprouts. The district court granted Defendants’ motion, concluding that the claimed sprouts could not be patented based only on the discovery of a naturally occurring beneficial feature of those sprouts.
On appeal, Brassica argued that the district court had not properly construed the claim limitations “rich in glucosinolates” (appearing in claims 1 and 9 of the ‘895 patent) and “high Phase 2 enzyme inducing potential” (appearing in claim 1 of the ‘567 patent and claims 1 and 16 of the ‘505 patent). Specifically, Brassica contended that both limitations should be construed to require “at least 200,000 units per gram fresh weight of Phase 2 enzyme-inducing potential at 3-days following incubation under conditions in which cruciferous seeds germinate and grow.”
As a preliminary matter, the Court ruled that the “rich in glucosinolates” language, though only present in the preamble of claim 1 of the ‘895 patent, constituted a limitation in that claim. Focusing on both the specification and the prosecution history of the patent, the Court found that the phrase helped to define the claimed invention. According to the Court, the specification indicated that the invention related to production of food products “rich in glucosinolates.” Moreover, the Court noted that, during reexamination of the patent, the patentee relied on this language to distinguish their invention over the prior art.
In evaluating the disputed language, however, the Court held that Brassica’s proposed construction improperly imported limitations from the specification into the claims. According to the Court, the specification did not define the limitations in terms of the particular conditions given in Brassica’s interpretation, but rather used them according to their ordinary meanings. Moreover, the Court further contended that Brassica’s proposed construction violated principles of claim differentiation in that many of the dependant claims recite the conditions advanced by Brassica.
Having rejected Brassica’s proposed construction, the Court concluded that the asserted claims were anticipated by the prior art. Brassica had asserted that the claims were not anticipated because no prior art reference had disclosed sprouts rich in glucosinolates or possessing high Phase 2 enzyme-inducing potential, much less assembling these sprouts into a food product. The Court, however, found that the glucosinolate content and Phase 2 enzyme-inducing potential are inherent characteristics of sprouts that have well-known uses as food products. While acknowledging that particular seeds produce sprouts that are rich in glucosinolates and high in Phase 2 enzyme-inducing potential, the Court noted that all of these sprouts have been identified as suitable for eating. In the Court’s view, it was unnecessary for purposes of anticipation for persons in the art to have recognized the additional beneficial characteristics.