In re Cruciferous Sprout Patent Litigation

• Decision Date: 08 August 2001
• Docket Number: No. MDL 1388.,MDL 1388.
• Citation: 168 F.Supp.2d 534
• Parties: In re CRUCIFEROUS SPROUT PATENT LITIGATION.
• Court: U.S. District Court — District of Maryland

168 F.Supp.2d 534

In re CRUCIFEROUS SPROUT PATENT LITIGATION.

No. MDL 1388.

United States District Court, D. Maryland.

August 8, 2001.

MEMORANDUM

NICKERSON, District Judge.

Pursuant to 28 U.S.C. § 1407, the Judicial Panel for Multidistrict Litigation consolidated these actions before this Court for pre-trial purposes. These actions all involve the validity of certain patents owned by Plaintiffs Brassica Protection Products LLC and Johns Hopkins University. On July 23, 2001, the Court held a Markman¹ hearing addressing the construction of the claims at issue, and also heard argument on Defendants' Motion for Summary Judgment, which had been fully briefed.² Upon consideration of the pleadings, the argument of counsel, and the relevant case law, the Court determines that Defendants' motion should be granted.

I. FACTUAL AND PROCEDURAL BACKGROUND

The patents-in-suit all involve the production and the consumption of the sprouts of certain types of cruciferous seeds such as broccoli and cauliflower. The inventors of the patents, Jed Fahey and Paul Talalay, discovered that the sprouts of these seeds, when harvested and consumed at a particular stage of their growth, contain high Phase 2 enzyme-inducing potential and non-toxic levels of indole glucosinolates. These substances aid the body's natural cancer fighting defense mechanisms.

Although all three patents-in-suit relate to cruciferous sprouts and glucosinolates, each varies slightly in its emphasis. Patent 5,725,895 discloses and claims, inter alia, "a method of preparing a food product rich in glucosinolates, comprising germinated cruciferous seeds, with the exception of cabbage, cress, mustard and radish seeds,³ and harvesting sprouts prior to the 2-leaf stage, to form a food product comprising a plurality of sprouts." '895 patent, claim 1. Patent 5,968,567 discloses and claims, inter alia, a method of preparing a human food product comprising cruciferous sprouts containing high Phase 2 enzyme-inducing potential and non-toxic levels of indole glucosinolates and their breakdown products and goitrogenic hydroxybutenyl glucosinolates. '567 patent, claim 1. The '567 patent also specifies the steps of the invention as "(a) identifying seeds which produce said sprouts ... (b) germinating said seeds; and (c) harvesting said spouts between the onset of germination up to and including the 2-leaf stage, to form a human food product." Id. The last patent-in-suit, Patent 5,968,505, claims "a method of increasing the chemoprotective amount of Phase 2 enzymes in a mammal." '505 patent, claim 1. The '505 patent then recites the three steps of the '567 patent, and adds a fourth; "(d) administering said food product, or a non-toxic extract of said food product, to said animal."

Plaintiffs' sprouts have been the subject of litigation prior to the instant suits. In June of 1999, Plaintiff Brassica filed an action in the United States District Court for the District of Delaware against Sproutman, Inc. and Murray Tiser (collectively, Sproutman), alleging that these defendants were infringing on the '895 patent⁴ by producing and selling broccoli sprouts. Civ. Action No. 99-350-SLR. Sproutman argued in that litigation that the '895 patent was invalid under 35 U.S.C. § 102(b), because the patent was anticipated by the prior art and was invalid as obvious under 35 U.S.C. § 103. This prior art reveals that it has been well known for years that broccoli seeds can be sprouted and the sprouts consumed as food.

During the pendency of the Delaware litigation, Sproutman also filed a request for reexamination with the U.S. Patent and Trademark Office. The Patent Office granted Sproutman's request and issued an Office Action in Re-examination, rejecting Claims 1-6 and 9-13 of the '895 patent, finding these claims both anticipated under § 102(b) and unpatentable under § 103. Brassica then filed an Amendment and Request for Reconsideration, raising essentially the same arguments that Plaintiffs raise here. Upon reconsideration, the Patent Office withdrew the rejections and re-affirmed the validity of Claims 1-6 and 9-13.

Referencing the prior art submitted in the re-examination proceedings, as well as some additional published sources that pre-date Plaintiffs' patents, Defendants argue in the pending summary judgment motion that Plaintiffs' patents are invalid because the "invention" is not "new." As Defendants succinctly present the question before the Court: "Can a plant (broccoli sprouts), long well known in nature and cultivated and eaten by humans for decades, be patented merely on the basis of a recent realization that the plant has always had some heretofore unknown but naturally occurring beneficial feature?" Defendants' June 7, 2001 Supplemental Memo. at 1 (emphasis in original). For the reasons that follow, the Court finds that the answer to that question must be "no."

II. LEGAL STANDARD

Summary judgment is appropriate when, based on the record before the Court, no genuine issue exists as to any material fact, and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c). A genuine issue exists if the evidence is such that a reasonable jury could find for the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 980 (Fed.Cir. 1997). A disputed fact is material if it might affect the outcome of the suit such that a finding of that fact is necessary and relevant to the proceeding. See Anderson, 477 U.S. at 248, 106 S.Ct. 2505; General Mills, 103 F.3d at 980.

Under the patent statutes, a patent enjoys a presumption of validity, see 35 U.S.C. § 282 (1994), which can be overcome only through clear and convincing evidence. See United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1563 (Fed.Cir.1997). Thus, a moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that no reasonable finder of fact could conclude otherwise. In determining whether a genuine issue of material fact exists, the court views the evidence in the light most favorable to the nonmoving party and resolves all doubts in its favor. See Anderson, 477 U.S. at 255, 106 S.Ct. 2505; Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274 (Fed.Cir.1995).

III. DISCUSSION

The facts relevant to the construction and the validity of Plaintiffs' patent claims are fairly uncomplicated and largely undisputed. Plaintiffs do not dispute that the prior art taught that cruciferous seeds, including broccoli, can be germinated and consumed as a food product in the sprout stage.⁵ See, e.g., Esther Munroe, Sprouts to Grow and Eat, 9-14 (Second printing Dec. 1977) (1974) ("CABBAGE FAMILY — Broccoli ... Cauliflower ... and Kale.... All are easy to sprout and each one produces a tasty sprout .... these sprouts tend to be strong flavored or bitter if grown too long, so use them when they are most pleasant to your taste in soups, salads and main dishes. Like their parent plants they are high in vitamins and so are well worth sprouting"); Stephen Facciola Cornucopia: A Source Book of Edible Plants, 47 (1990). Plaintiffs also do not claim that their patents involve doing anything to alter or modify the natural seeds. They are simply germinated, harvested, and eaten.

Defendants, on the other hand, do not dispute that Fahey and Talalay discovered a new and significant property of certain types of cruciferous sprouts, i.e., that these sprouts contain high levels of substances that aid the human body in preventing cancer. Defendants do not challenge that Fahey and Talalay also discovered that certain cruciferous sprouts, such as broccoli and cauliflower, contain much higher levels of these substances than other cruciferous seeds. Instead, Defendants contend, and the Court agrees, that merely describing unexpected beneficial results of a known process does not entitle Plaintiffs to patent that process.

It is a fundamental precept of patent law that a product is not patentable unless it is new. Patent claims that lack novelty are said to be anticipated by the prior art and are invalid pursuant to 35 U.S.C. § 102(b). Section 102(b) provides that a patent is invalid as anticipated if the claimed invention "was patented or described in a printed publication in this or a foreign country or in public use or on sale in the country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. § 102(b). Courts have interpreted § 102(b) to require that "each and every element as set forth in the claim [be] found, either expressly or inherently described, in a single prior art reference." Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed.Cir.1988) (emphasis added).

Under the concept of inherency, where the prior art necessarily functions in accordance with or includes the claimed limitations, the prior art anticipates those limitations. In re King, 801 F.2d 1324, 1326 (Fed.Cir.1986). It is important to note that a property or result can be inherent in the prior art regardless of whether those skilled in the art were previously aware of that property or result. "Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342 (Fed.Cir. 1999). "However, the discovery of a previously unappreciated property of a prior art composition ... does not render the old composition patentably new to the discoverer." Id.

These principles were applied by the Federal Circuit Court of Appeals in Titanium Metals Corp. of Amer. v. Banner, 778 F.2d 775 (Fed.Cir.1985). In Titanium Metals, the patent applicants sought to obtain a patent for an alloy made up of titanium and small percentages of nickel, molybdenum, and iron. The applicants had discovered that titanium alloys within a specified range were...