By Dmitriy Tishyevich – Edited by Jad Mills
In re POD-NERS, L.L.C., July 10, 2009, No. 2008-1492 (nonprecedential)
Slip Opinion

On July 10, 2009 in a per curium decision, the Court of Appeals for the Federal Circuit affirmed the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences (“Board”) decision invalidating the patent claims for a yellow bean of Mexican origin. The court held that the applicant failed to rebut the examiner’s prima facie determination that all of the claims were obvious.

Patent law blogs PatentlyO and The Patent Prospector summarize the opinion. The ETC Group and the Central Advisory Service on Intellectual Property provide background information about the history of the patent and some reactions to the decision.

While in Mexico in 1994, Larry Proctor purchased a package of dry beans of various colors and brought them to the United States. After spending three years selectively breeding some yellow beans from the package, Proctor named the line “Enola,” obtained patent protection for the bean, the plant producing it, and the method for producing it, and assigned the patent to POD-NERS, L.L.C. When POD-NERS tried to force Mexican bean importers to pay a 6 cent-per-pound royalty on yellow Mexican beans in 2000, The International Center for Tropical Agriculture requested a third party re-examination to invalidate the claims of the patent. In the re-examination the Examiner rejected Proctor’s claims as obvious, explaining that the Enola plant and seed appeared to be genetically identical to the yellow Azufrado Peruano 87 bean, and that any variation between the two plants was likely only the result of environmental conditions. The Board upheld the rejection, concluding that the Examiner had established a prima facie case of obviousness and that POD-NERS failed to rebut the prima facie case.

On review, the Court of Appeals applied the obviousness requirement of 35 U.S.C. § 103(a), which states that a patent cannot be granted if the differences between the subject matter sought to be patented and the prior art are such that the subject mater as a whole would have been obvious to a person having ordinary skill in the area (here, the breeding and growing of beans). The Court noted that in selecting and reproducing the yellow beans, Proctor did not devise or apply any new or unexpected techniques, but rather only followed the steps that one of ordinary skill would have done – planting the beans, harvesting the plants for seeds, planting the new seeds, and repeating the process two more times. The court further found that there was no indication that Proctor actually attempted to select for beans of the particular narrow range of yellow that the patent claims specified. Under KSR Int’l v. Teleflex Inc., “a court can take into account the inferences and creative steps that a person of ordinary skill in the art would employ.” Proctor’s efforts did not rise above the creativity of one of ordinary skill in the art of bean breeding, and this fact established a prima facie case of obviousness.

The court also noted that Proctor did not rebut the prima facie case of obviousness by providing objective evidence of secondary considerations of non-obviousness – for example, that particular shades of yellow resulted in substantial sales of the Enola line, that there was a long-felt need for that color that others were not able to supply, or that others had copied the Enola line.

The court acknowledged that the Board failed to explain the full reasoning underlying its conclusion that the claims were obvious. The court nevertheless affirmed the Board’s holding because the obviousness determination was a legal conclusion that did not involve any exercise of expert discretion.

Although it is not surprising that the Board would find a bean brought home from Mexico and bred according to established techniques to be obvious and unpatentable, it may be significant that the decision allowed the board to affirm the Examiner’s obviousness rejections without explaining its conclusion in detail.

Law Enforcement Using Cell Phone Data During Investigations, Privacy Laws Yet to Catch Up

On July 5, The New York Times posted an analysis of the use of cell phone forensics by law enforcement. According to the article, major cell phone service providers receive hundreds of requests each month from law enforcement agencies for data that can be used to track a user’s cell phone. Many of these requests are not backed by search warrants that require a showing of probable cause that a crime has been committed. The article reported that since September 12, 2001, federal prosecutors in New Jersey alone have used cell phone data without search warrants in 98 investigations, resulting in 83 prosecutions. The article also reports that civil liberties groups such as the ACLU are concerned about the loss of privacy caused by modern cell phone technology in combination with the failure of federal privacy law to properly catch up and regulate cell phone tracking.

RIAA Seeks Order Requiring Harvard Professor to Remove “Unauthorized and Illegal” Recordings From Website

On July 6, Wired.com reported that the Recording Industry Association of America (RIAA) is seeking a court order requiring Harvard Law School Professor Charles Nesson to remove recordings of depositions and telephone conversations regarding an ongoing music piracy lawsuit from his blog. The RIAA argues that the recordings are “unauthorized and illegal,” but Professor Nesson insists that the privacy laws that allegedly prevent him from posting the recordings are “outrageously unconstitutional.” Professor Nesson had previously failed to obtain permission to broadcast a live webcast of the trial.

Network Management Company Tells Canadian Agency Net Neutrality Doesn’t Exist; Regulations Inevitable

On July 6, the CBC reported that the Canadian Radio-television and Telecommunications Commission held hearings during which representatives from industry and consumer advocacy groups offered their views on the proper way to regulate how internet service providers (ISPs) can manage network traffic. Sandvine, a company that sells traffic management technology to ISPs, said that network congestion disproportionately affects certain types of internet services, and that traffic management could potentially alleviate the inequality. Sandvine argued that net neutrality does not exist because of these inequalities in network traffic, and that network traffic should be managed by ISPs to prioritize certain types of packets. The Public Interest Advocacy Centre stated that packet inspection of the type made possible by Sandvine raises privacy concerns because it allows ISPs to identify the type of applications used by their customers in addition to other personal information. The group warned “there will be abuse” if such prioritization is allowed.