It’s not surprising to hear talk of flowers in February, but it is unusual when that discussion is in a Federal Circuit opinion.  This month the Federal Circuit decided a case involving whether the display of a flowering plant constitutes an invalidating prior public use.

Wingen LLC (“Wingen”) applied for a reissue of its utility patent for a Calibrachoa plant, called Cherry Star, which is similar to a petunia.  Cherry Star has a “single half-dominant gene” that creates a center-star pattern on the flower’s petals.  Such a pattern on the petals of these plants is not found in nature but rather was created through breeding techniques.  Claim 1 recites:

  1. A Calibrachoa plant comprising at least one inflorescence with a radially symmetric pattern along the center of the fused petal margins wherein said pattern extends from the center of the inflorescence and does not fade during the life of the inflorescence,
  2. and wherein the Calibrachoa  plant comprises a single half-dominant gene, as found in Calibrachoa variety ‘Cherry Star,’ representative seed having been deposited under ATCC Accession No. PTA-13363.

The patentee disclosed during reissue that Cherry Star plants were displayed at an event at Home Depot.  Attendees were able to view the plant but were not allowed to take cuttings, seeds, or tissue samples.  The attendees, however, were given a brochure with a photograph and description clearly identifying the plant.  Attendees had no confidentiality obligations and “were not provided any gene or breeding information.” 

A patent applicant is not entitled to a patent when the claimed invention was “in public use… more than one year prior to the date of the application for patent in the United States.”  The patent examiner rejected claims during reissue based on a finding that the display at Home Depot constituted such a prior public use.

On appeal to the Patent Trial and Appeal Board (“PTAB”), the PTAB affirmed the examiner’s rejection that was based on prior public use. Wingen appealed to the Court of Appeals for the Federal Circuit, arguing that the PTAB “erred in finding prior public use when all of the claimed features (e.g., the plant genetics) were not made available to the public.”  Wingen argued that one would have to have “actual possession of ‘Cherry Star’ from which it could be bred” to be in possession of all the claimed features of the invention. According to Wingen, because the attendees did not have such possession and were not aware that Cherry Star was the result of a “single half-dominant gene,” “the display at the Home Depot event was not an invalidating prior public use.”

In determining whether a prior use of an invention is considered a “public use,” the court looks to “whether the purposed use: (1) was accessible to the public; or (2) was commercially exploited.”  While the Federal Circuit has often considered what constitutes an invention being “accessible to the public,” they have only considered it once before in the context of plants.

But in that prior case, Delano Farms Co. v. Cal. Table Grape Comm’n, the facts were considerably different.  In Delano the question was whether growing the claimed grapes in areas visible to the public was an invalidating prior use when the grapes were not labeled and there was no evidence anyone recognized the grapes as the claimed varietal.  Under those facts, the Federal Circuit determined there was no prior public use. 

In contrast, here it is undisputed that Cherry Star was on display at Home Depot and was specifically identified at the event.  And unlike the grapes in Delano, it is undisputed that “the purpose, or use, of ‘Cherry Star’ is purely ornamental.”  The usefulness of Cherry Star is relevant here because the reissue relates to a utility patent under 35 U.S.C. § 101 rather than a plant patent under 35 U.S.C. § 161. 

In considering this case, the Federal Circuit was asked to address a unique question because the significant and cited prior public use cases did not address “invention[s] whose intended purpose was ornament[al].”  For example, in Motionless Keyboard Co. v. Microsoft Corp., the Court found that merely displaying a computer keyboard was not a prior public use because the keyboard was not connected to a computer and was not used for its intended purpose.

But it is undisputed that the only intended purpose of Cherry Star is as an ornament.  Thus, the display at Home Depot was clearly a use for that purpose.  While Wingen “argue[d] that the claimed genetics of ‘Cherry Star’ needed to have been publicly disclosed for there to have been an invalidating public use,” Wingen forfeited that argument by not presenting it to the PTAB.  Therefore, the Federal Circuit affirmed the PTAB’s rejection of claims based on an invalidating prior public use.

This patent application for Cherry Star was pre-AIA, but one would expect the same result post AIA given that the AIA’s reference to “otherwise available to the public” may encompass even more public displays.  Therefore, this case serves as yet another reminder that one should file patent applications prior to any public display to avoid having to rely on arguments such as the display was insufficient to be a public use or the display was expressly or implicitly confidential.