Federal Circuit Holds Yellow Bean Patent Obvious and Invalid
By Dmitriy Tishyevich – Edited by Jad Mills
In re POD-NERS, L.L.C., July 10, 2009, No. 2008-1492 (nonprecedential)
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.