Food Recipes Generally Are Not Patentable


One of the leading cases on whether food recipes are patentable is In re Levin, 178 F.2d 945 (CCPA 1949). The inventor claimed a soft, spreadable emulsion of oil-in-water and various ingredients. In rejecting the ten claims, no single reference showed or suggested all of the ingredients and steps set forth in the claims. There were composition and method claims.

The court states, with emphasis added:

“This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function.”

Those are pretty harsh words! As can be seen, the U.S. Patent and Trademark Office (USPTO) is hostile to issuing patents on recipes for food. Chefs beware.

Spiderman Toy Not Granted Patent Royalties Beyond the Life of the Patent

On 22 June 2015, the Supreme Court of the United States (SCOTUS), in a 6-3 decision, left undisturbed the 51-year-old decision in Brulotte v. Thys Co. (1964). The rule has been and continues to be that patent royalty agreements cannot require payments after the expiration of a patent. Kimble v. Marvel Entertainment, LLC, Case No. 13-720.

In this case, Marvel agreed to purchase Kimble’s patent for a lump sum plus a 3% royalty on future sales. The contract gave no expiration on the royalty. Toward the end of the life of the patent, Marvel asked a trial court to confirm that Marvel was not obligated to pay the royalty beyond the expiration of U.S. Patent No. 5,072,856. The court agreed. According to long-standing public policy, any invention as claimed in a patent falls into the public domain and thus grants the public free use of the invention after the patent expires. SCOTUS confirmed this understanding. According to SCOTUS, there are many other ways ways to structure contracts that include payments and other benefits to avoid this rule.

Defendant’s Beliefs about Patent’s Validity Does Not Free Him from Induced Infringement

Two days ago, on 26 May 2015, the U.S. Supreme Court (SCOTUS) decided another patent dispute — Commil USA, LLC v. Cisco Systems, Inc., 575 U.S. ___, (2015). At trial, the plaintiff, Commil, showed that Cisco was guilty of inducing its customers to infringe Commil’s patent under 35 U.S.C. § 271(b). This statute states, “Whoever actively induces infringement of a patent shall be liable as an infringer.” In practice, induced liability requires that a defendant has knowledge of the patent and knows that “the induced acts constitute patent infringement.” Slip op. at 3. See also Global-Tech Appliances, Inc. v. SEB S. A., 563 U. S. ___ (2011). For the first time, SCOTUS addresses whether knowledge of, or belief in, a patent’s validity is required for induced infringement under 35 U.S.C. § 271(b). The answer is no.

The reasoning may be subtle to the casual reader. Patent infringement and validity are distinct concepts in the Patent Act. Slip op. at 9. If belief in the invalidity of a patent were a defense to induced infringement, the force of that presumption would be lessened to a drastic degree, asserts the SCOTUS majority. A defendant could prevail if he proved he reasonably believed the patent was invalid. That would “circumvent the high bar Congress is presumed to have chosen,” which is the clear and convincing standard that a patent is valid unless shown otherwise. See Microsoft Corp. v. i4i Ltd. Partnership, 564 U. S. ___, ___– ___ (2011) (slip op., at 8–10). Invalidity of a patent is not a defense to infringement, it is a defense to liability. According to the SCOTUS majority, a belief as to invalidity cannot negate the scienter required for induced infringement. Slip op. at 11.

In its opinion, SCOTUS provides a few suggestions for defendants consistent with its decision. For example, accused inducers who believe a patent is invalid can file a declaratory judgment action asking a federal court to declare the patent invalid. See MedImmune, Inc. v. Genentech, Inc., 549 U. S. 118, 137 (2007). They also can seek inter partes review at the Patent Trial and Appeal Board (PTAB) and receive a decision as to validity within 12 to 18 months. See 35 U.S.C. § 316. Or they can, as Cisco did here, seek ex parte reexamination of the patent by the Patent and Trademark Office (USPTO) under 35 U.S.C. § 302. And, any accused infringer who believes the patent in suit is invalid may raise the affirmative defense of invalidity at trial under 35 U.S.C § 282(b)(2).

Notably absent from this opinion is any mention of the role of non-infringement opinions provided by outside or inside counsel. Also, according to my memory, this is the first time that I see an opinion use the term “patent trolls.” See p. 3 of the dissent by Justice Scalia.

Merely Scaling Up of a Known Process is Not Patentable

Sometimes it is hard to know what the U.S. Patent Office will decide when allowing some patent claims over others. How much novelty is needed? The Manual of Patent Examining Procedure gives some guidance, and mere changes in size or dimension over a known solution is not enough. MPEP (MPEP) 2144.04(IV)(A) references two cases:

  • In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) — Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.
  • In re Rinehart, 531 F.2d 1048, 1053, 189 USPQ 143, 148 (CCPA 1976) — “mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.”

Some lessons from these cases are self-evident. Patent application drafters need to include enough detail in the technical description of the invention. While a lot of research money may be spent on scaling up a design, if there are no details as to how scaling up presented additional problems, and no details about how these problems were overcome, a set of patent claims will not be allowed just because there is claim to a large-scale facility. A patent will not be granted even though no one has previously developed a device or system on a massive scale. My recommendation is to include an item in your pre-filing checklist for this aspect of your patent application. If in doubt, have a patent professional look over your application before submitting it.