Prior publication left the patent holder in Iovate Health Services, Inc. v. Bio-Engineered Supplements & Nutrition Inc., No. 2009-1018 (Fed Cir. 11/19/2009) with sand in its face and an invalid patent. The patent in Iovate covered a method for "enhancing muscle performance or recovery from fatigue" through the use of specific nutritional supplements. The Federal Circuit found that a competitor's ad, which had appeared in a printed publication more than a year prior to the patent's application date, anticipated the claimed invention. The court held that the ad - published in the bodybuilding magazine "Flex" (really, we don't make this up) - was sufficiently descriptive to render the patent invalid under § 102(b) and affirmed the summary judgment order entered by the district court.
Feel the burn.
The patented method at issue included the single step of administering a composition that contains a ketoacid and either a cationic or dibasic amino acid - protein components derived from milk whey. The patent holder brought an infringement action and the alleged infringer argued invalidity under § 102(b) claiming that the "Flex" magazine ad constituted both a prior publication and prior anticipatory sale. The ads included a list of ingredients, directions for administering the dietary supplement orally, and marketing claims and testimonials from bodybuilders praising the products. One ad urged athletes to look for the product at "fine health food stores" and gyms or to write for a free catalog, and it offers a free training video with purchase. Another ad appeared the next year and provided a price and states that the product is available at GNC and other health food stores or by phone. The district court agreed and granted summary judgment on both grounds of prior printed publication and the on sale bar.
On appeal, the patent holder argued that the "Flex" ad did not disclose each element in the claims because the preamble included the goal of "enhancing muscle performance." However, the ads promoted "muscle synthesis and growth" and the court therefore rejected the patent holder's argument, finding that it "border[ed] on the frivolous." The patent holder also argued without success that the ad was not sufficiently enabling as prior art. The court said that "all one of ordinary skill in the art would need to do to practice an embodiment of the invention is to mix together the known ingredients listed in the ad and administer the composition as taught by the ad." While the parties' arguments were rooted in three grounds listed in section § 102(b) - printed publication, public use and on-sale - the majority believed it only needed to affirm on one ground. Accordingly the Federal Circuit affirmed the district court's summary judgment order on the bases of a "printed publication" alone, without reaching the on sale bar issue.
Iovate illustrates that prior art can be found in many interesting - and often overlooked - places. Qualifying prior publications under § 102(b) aren't limited to academic or scientific sources and ultimate success may go the party with the biggest (or most interesting) reading list. Our advice? To put similar muscle in their own cases, practitioners on both sides of the patent litigation bar may want to consider adding a few more reps to their prior art workout.
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