Section 102(b) of the U.S. Patent Act prevents an inventor from getting a patent for an invention that was “described in a printed publication in this . . . country . . . more than one year prior to the date of the application” (the “critical date”).  The U.S. Court of Appeals for the Federal Circuit just applied this provision to invalidate patent claims for a nutritional supplement method to enhance muscle performance or recovery from muscle fatigue, based on an advertisement for Weider’s VICTORY™ Professional Protein published in the June 1996 issue Flex Magazine.

Iovate Health Sciences, Inc. is the exclusive license holder of U.S. Patent No. 6,100,287 (the “’287 Patent”), owned by the University of Florida Research Foundation, Inc. The patent claimed a method for enhancing muscle performance or recovery from fatigue involving certain kinds of ketoacids and amino acids.  Iovate and the Foundation sued Bio-Engineered Supplements & Nutrition, Inc. (“BSN”) for infringing certain claims of the ‘287 patent.  BSN countered that the patent claims were invalid because the Flex ad was published before the critical date and was detailed enough to teach a “person skilled in the art” how to practice the method claimed in the patent.  The judge agreed, invalidating those patent claims.

Iovate argued on appeal that someone skilled in the art of nutritional supplements would not rely on an ad in a muscle magazine because of “the lack of scientific testing and the existence of false advertising in the industry.”  However, the Court agreed with BSN that the ad disclosed every limitation found in the patent claims on which Iovate relied , as well as how to administer the product to humans to enhance muscle performance or recovery from fatigue.  It was not necessary for the ad to disclose a specific dosage or an effective amount because the patent claims did not contain any required dosage amount.  A person skilled in the art could practice the invention by purchasing the ingredients listed in the ad, mixing them together and giving them to a person for the purposes described in the ad.  If necessary, anyone skilled in the art could figure out how much of each ingredient to include by reading publications listed in the patent that revealed acceptable clinical dosages of the two important ingredients.  No undue experimentation would have been required to make the method work.

This case shows that an invalidating “printed publication” does not have to be a scholarly article, Ph.D. thesis or issued patent.  Even an ad in a muscle magazine can do the trick.

Source:  Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., U.S. Ct. Apps. Fed. Cir., No. 2009-1018 (11/19/2009)

Judith L. Grubner, Esq. is a partner in the law firm of Arnstein & Lehr and Intellectual Property Practice Group Leader.  Thanks to Judy for her excellent post!