Delano Farms Co. v. Cal. Table Grape Comm'n., No. 2014-1030, 2015 U.S. App. LEXIS 346 (Fed. Cir. Jan. 9, 2015) (Bryson, J.). Click Here for a copy of the opinion.
California grape growers challenged the validity of two plant patents for certain grape varieties, Scarlet Royal (U.S. Pat. No. PP 16,229) and Autumn King (U.S. Pat. No. PP 16,284). The plaintiffs alleged that the patented grape varieties were in public use more than one year before the September 28, 2004 filing date of the patents. After the bench trial, the district court held that the plaintiffs failed to show by clear and convincing evidence that the prior use was a public use under 35 U.S.C. § 102(b). The plaintiffs appealed.
The court held that the alleged use must be "publicly accessible" to be invalidating. The "actions of an unaffiliated third party acting in secret are evaluated as if he stood in the place of the inventor." This implicates factors such as: "the nature of the activity that occurred in public; the public access to and knowledge of the public use; and whether there was any confidentiality obligation imposed on persons who observed the use."
The Federal Circuit concluded that there was no public use bar under § 102(b). The third party who obtained the unreleased plant varieties maintained control over them, despite providing them to his cousin and his long-time marketer. The circumstances "weigh against the application of the public use bar." All three parties "had incentives to keep [their] possession secret, creating an environment of confidentiality, [and] [e]ach maintained tight control over who knew about the Scarlet Royal and Autumn King vines and their use." The facts related to the cultivation of these grapes did not support a finding of public use. Even though the grape vines were visible from public roads, the varieties were not identifiable and the unreleased varieties were not labeled in any way. Therefore, "the public has not been put in possession of [the features of the claimed invention," namely the Scarlet Royal and the Autumn King grape varieties.
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