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Federal Circuit Affirms Muscle Supplement Patent Invalid as Anticipated by Prior Art Advertisement
By Ian B. Brooks – Edited by Miriam Weiler

Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., No. 2009-1018 (Fed. Cir. November 19, 2009).
Slip Opinion

The Federal Circuit affirmed the District Court for the Eastern District of Texas decision invalidating Iovate Health Sciences’ U.S. Patent 6,100,287 (“’287”) as anticipated under 35 U.S.C. § 102(b).

The Federal Circuit held that the advertisement for Iovate’s protein supplement published in Flex magazine rendered the patent obvious and invalid. The court found that the advertisement was an anticipatory printed publication that disclosed the ‘287 patent claim limitations.  With the knowledge provided in the ad, the court noted, one skilled in the art could practice an embodiment of the invention.

Patently-O provides an overview of the case. The National Law Journal provides brief comments from each party’s counsel.

Iovate Health Sciences, Inc., the maker of popular weight loss supplement Hydroxycut, is the exclusive licensee of U.S. Patent ’287, “which claims the use of nutritional supplements . . . to enhance muscle performance or recovery from fatigue.” Slip Op. at 2. Iovate filed an application for ‘287 on November 13, 1998, claiming priority to a provisional application filed on November 13, 1997. Subsequently, Bio-Engineered Supplements & Nutrition, Inc. (“BSN”) began marketing nutritional products for the purpose of enhanced muscle performance and reduced muscle fatigue. Iovate brought suit against BSN in March 2007 claiming BSN’s products infringed the ‘287 patent.

In granting BSN’s motion for summary judgment, the district court invalidated seven claims of the ‘287 patent as anticipated by the advertisement in Flex published prior to the November 13, 1996 critical date. Section 102(b) provides that “[a] person shall be entitled to a patent unless . . . the invention was . . . described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b). The court explained that to be anticipatory, the ad must describe each and every claim limitation and enable one skilled in the art to practice an embodiment of the claimed invention. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The advertisement in Flex magazine featured the protein supplement’s ingredients, directions for administering the supplement, claims of benefits, the sales price of $24.99 and where to obtain the product at retail stores. Circuit Judge Lourie concluded that the ad was an anticipatory printed publication because it disclosed the composition as well as ingredients that formed the additional limitations in multiple dependant claims. The ad also included marketing claims of improved muscle performance similar to the claims in the ‘287 patent. The court declined to read an effectiveness requirement into the claims, making it immaterial that the advertisement did not provide specific quantities for mixing the various ingredients. The court stated that the claims did not require a specified amount of the ingredients for the supplement to be effective, and even if they did the ad sufficiently enabled one skilled in the art to determine the requisite amount to create Ionane’s claimed invention.

While the majority declined to consider whether the advertisement constituted “public use” or “on sale” as grounds for anticipation and invalidation, Judge Mayer addressed the issue in his concurrence, suggesting that the products advertised in Flex were also on sale at least a year prior to the critical date under § 102(b). Patent Case Review questioned Judge Mayer’s conclusion.

This may be the first time the Federal Circuit has affirmed invalidity based on a prior art advertisement.

Posted On Nov - 28 - 2009 Comments Off

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