CPLRG™ 0006 - Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc. - Nov. 19, 2009

586 F.3d 1376, 2009 U.S. App. LEXIS 25388 (Fed. Cir. 2009)


MAJOR ISSUES: Anticipation–lack of novelty
Printed publication more than a year before patent application filing–Section 102(b)
Advertisement in a trade magazine

A patent concerned a nutrition supplement.  uspatno6100287 Its claims were to “[a] method for enhancing muscle performance or recovery from fatigue wherein said method comprising administering” a specified composition.  The Federal Circuit affirmed a district court summary judgment that the claims were invalid as anticipated by a magazine advertisement for a nutritional supplement product published more than a year before priority application for the patent was filed.  35 U.S.C. Section 102(b).

The decision creates no new law, but it illustrates an important point: an anticipatory prior art publication need not be a patent or formal technical publication.  Rather, a publication can include a commercial advertisement for a product if the advertisement is published in a manner making it accessible to “persons interested and ordinarily skilled in the subject matter to which the ads relate prior to the critical date.”  See Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).  To anticipate a patent claim, the advertisement must meet two requirements.  First, it must disclose all the claim’s limitations.  In this case, the patent owner made a weak argument that the advertisement’s disclosure of muscle strength enhancement did not meet the claim requirement of muscle performance enhancement.  The evidence indicated that performance enhancement included strength enhancement.  Second, the advertisement must meet an “enablement requirement,” that is, it must, when combined with prior art knowledge, enable a skill person to make an embodiment.  In this case, enablement was easily met, in part, because the claim did not require any level of effectiveness or any dosage.

FALSE ADVERTISING?  An interesting question about advertisements as prior art was raised but not resolved in Iovate Health Sciences.  The patent owner’s expert suggested that advertisements in the industry often include false advertising about products.  Potentially, inoperative prior art does not anticipate.  See United States v. Adams, 383 U.S. 39, 50 (1966).  Here, the court noted only:  “regardless of any questions about false advertising, the ad teaches that taking a supplement containing the claimed ingredients as advertised is effective for increasing muscle performance and recovery after exercise.”

ON SALE.  In Iovate, the Federal Circuit relied only on the printed publication bar in Section 102(b).  The district court had also found an “on sale” bar.  In the Federal Circuit, Judge Mayer concurred, also finding an “on sale” bar.  The problem with finding an “on sale” bar with an advertisement is case law requiring that an offer for sale be an actual offer within the meaning of contract law.  See Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001).  An advertisement rarely meets this requirement.

For a discussion of printed publications as prior art, see Chisum Patent Law Digest § 1320; Chisum on Patents § 3.04, § 6.02[4].  For a discussion of the contract offer requirement for “on sale,” see Chisum on Patents § 6.02[6][a][iv].

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