Method Patents for Seed Sprouts Are Invalid

Method Patents for Seed Sprouts Are Invalid Due to Features Inherent in Prior Art

The Bureau of National Affairs, Inc., Washington, D.C.

Volume 64, No.1587, Page 400

ISSN 0148-7965

August 30, 2002

Method patents on the production and consumption of broccoli seed sprouts with previously unrecognized but naturally occurring cancer fighting substances are invalid for anticipation, the U.S. Court of Appeals for the Federal Circuit held Aug. 21 (In re Cruciferous Sprout Litigation, Fed. Cir, 02-1031, 8/21/02).

Affirming a summary judgment of invalidity, the court found that the cancer-fighting properties of the sprouts are inherent characteristics that have existed as long as the sprouts themselves.  “While [the patent holder] may have recognized something quite interesting, it simply has not invented anything new,” the court said.

Broccoli Sprout Patents.  Plaintiffs Brassica Protection Products LLC and Johns Hopkins University (Brassica) hold three patents (5,725,895; 5,968,567; and 5,968,505) related to the production and consumption of seed sprouts to aid the body’s natural cancer fighting defense mechanism.

Specifically, the patents describe methods of preparing food products, such as the sprouts of broccoli and cauliflower, that are rich in glucosinolates and thus have a high potential for inducing chemoprotective Phase 2 enzymes.  Brassica sued Sunrise Farms and others (Sunrise) in various states, alleging that they infringed the Hopkins patents by producing and selling broccoli sprouts.  The cases were consolidated in the multidistrict litigation docket and assigned to Judge William Nickerson of the U.S. District Court for the District of Maryland.

After construing the claims, Judge Nickerson granted Sunrise’s motion for summary judgment that Claims 1-6 and 9 of the ‘895 patent, Claim 1-8 of the ‘567 patent, and Claims 1 and 16 of the ‘505 patent are invalid for anticipation. 168 F. Supp.2d 534, 60 USPQ2d1758 (D.Md. 2002) (63 PTCJ 7 11/2/01).

Brassica appealed.

Claim Interpretation.  The ‘895 patent claims in part “A method of preparing a food product rich in glucosinolates, comprising germinated cruciferous seeds…, and harvesting sprouts prior to the 2-leaf stage, to form a food product comprising a plurality of sprouts.”

The Federal Circuit agreed with Brassica that the district court erroneously failed to treat the preamble phrase “rich in glucosinolates” in Claim 1 of the ‘895 patent as a limitation of the claims.  Judge Sharon Prost explained that both the specification and prosecution history indicated that the phrase “rich in glucosinolates” helps define the claimed invention.

However, the court of appeals rejected Brassica’s proposed construction of that phrase and the phrase “high Phase 2 enzyme-inducing potential” in Claims 1 and 9 and Claim 1 of the ‘895 and ‘505 patents, respectively.  Brassica contended that the claim language required “at least 200,000 units per gram fresh weight of Phase 2 enzyme-inducing potential at 3-days following incubation under conditions in which cruciferous seeds germinate and grow.”

This proposed construction improperly imports limitations from the specification into the claims, Judge Prost explained.  The specification does not indicate that the phrases “rich in glucosinolates” or  “high in Phase 2 enzyme-inducing potential” are limits to these precise conditions, she observed.  Rather, the specification uses the term “high” in its ordinary, comparative sense to mean “not low,” she related.

Anticipation.  Brassica argued that the prior art does not expressly disclose the claim limitations of “preparing a food product rich in glucosinolates,” or “identifying high Phase 2 enzyme-inducing potential.”  Rather, according to Brassica, the prior merely discusses growing and eating sprouts without mention of any glucosinolates.  It also argued that these limitations are not inherently disclosed in the prior art because one following the prior art would have at most a possibility or probability of producing a food product high in Phase 2 enzyme-inducing potential.

The Federal Circuit was not persuaded.  Brassica does not claim to have invented a new kind of sprout or a new way of growing or harvesting sprouts, Judge Prost pointed out.  Instead, it simply recognized that some sprouts are high in glucosinolates and high in Phase 2 enzyme-inducing activity while others are not, she explained.  However, the glucosinolates content and Phase 2 enzyme-inducing potential of sprouts necessarily have existed as long as the sprouts themselves.  Stated differently, she elaborated, a sprout’s glucosinolate content and Phase 2 enzyme-inducing potential are inherent characteristics of the sprout.

It matters not that those or ordinary skill heretofore may not have recognized these inherent characteristics of the sprouts, the court of appeals continued.  For support, Judge Prost pointed to Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (31 PTCJ 65, 11/21/85).  That case held that patent claims to a corrosion-resistant alloy were anticipated by prior disclosures of a titanium base alloy, even though the corrosion-resistant property of the alloy was not disclosed.  The claim was anticipated because it was immaterial what inherent properties the alloys had or whether the patent applicant discovered those properties, Judge Prost explained.

“Brassica has done nothing more than recognize properties inherent in certain prior art sprouts, just like the corrosion resistance properties inherent to the prior art alloy in Titanium Metals,” she wrote.  ” While Brassica may have recognized something quite interesting about those sprouts, it simply has not invented anything new,” she added.

Nor was the court convinced by Brassica’s argument that the prior art does not disclose “selecting” the particular seeds that will germinate as sprouts rich in glucosinolates and high in Phase 2 enzyme-inducing potential.  Judge Prost observed that the prior art teaches sprouting and harvesting the very same seeds that the patents recognize.  She pointed out that numerous prior art references identify those same sprouts as suitable for eating.

The Federal Circuit similarly discounted Brassica’s assertion that the prior art fails to meet the patent’s claimed “identifying” step by not specifying which cultivars could be sprouted.  All of the appropriate cultivars identified in Brassica’s patent are in the public domain, Judge Prost explained, and Brassica cannot credibly claim that no one has heretofore grown and eaten one of those cultivars.  “It is unnecessary for purposes of anticipation for the persons sprouting these particular cultivars to have realized that they were sprouting something rich in glucosinolates and high in Phase 2 enzyme-inducing potential,” she emphasized.

The prior art also disclosed the remaining limitations of the claims, Judge Prost concluded.  The Munroe reference, for example, discloses the claim limitations of the two-leaf stage, as well as the limitations of forming a food product comprising a plurality of the sprouts, she pointed out.  “Brassica simply has not claimed anything that is new and its claims are therefore invalid,” the court of appeals summed up.

The summary judgment was affirmed.