Virginia Lawyers Weekly VA Lawyers Weekly
Where an inventor argued the United States Patent and Trademark Office wrongfully denied patent protection to his nutritional formulations, but each of the claims dealt with products of nature or abstract ideas that are patent ineligible and the additional claim elements did not transform the natural products into a patent-eligible application, the USPTO was granted summary judgment.
Background
Plaintiff is the inventor of the United States Patent Application No. 13/877,847. The application describes nutritional formulations as supplements, meal components or meals, that may be administered in any orally acceptable form, including, capsules, tablets, liquid formulations or whole foods. The United States Patent and Trademark’s Patent Trial and Appeal Board affirmed the rejection of the plaintiff’s application claims because they were obvious in light of numerous past expert studies and disclosures. Pending before the court is defendant’s motion for summary judgment.
Analysis
The two-step framework for determining whether claims that are within a statutory category nevertheless fall within a patent-ineligible exception is set out by the Supreme Court in Alice Corp. Pty. Ltd.v. CLS Bank Int’l, 573 U.S. 208 (2014). Step one is “whether the claims at issue are directed at one of [the] patent-ineligible concepts.” The patent-ineligible concepts include laws of nature, natural phenomena and abstract ideas.
If claims are directed at one of the patentineligible concepts, then the court moves to step two and considers the elements of each claim “both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patenteligible application.”
The court finds that each of plaintiff’s claims of the application at issue deal with products of nature or abstract ideas that are patent ineligible. Plaintiff’s claims 82-89, 91-104, 107-110 and 113-120 of the application contain a recitation of the combination of nutrients naturally present in almonds and thus are a natural product. Further, the claims do not have any limitations that transform the natural product into patent-eligible subject matter.
Independent claims 82, 99, 115 and 116 recite nutritional formulations with a combination of nutrients in various specified dosages. These claimed nutrients are naturally present in almonds, making the claims about a natural product. Since almonds contain all of the claimed nutrients, the claims do not recite a product with any markedly different characteristics from those found in nature.
Having determined that the product and method claims of the application are about a natural product under the first step of the Alice inquiry, the court now moves to step two to determine if the additional claim elements transform the natural product into a patent-eligible application. Transformation of a natural product into eligible subject matter requires the additional features be more than “well-known understood, routine, conventional activit[ies].” The court finds that the additional claim elements do not transform the natural product into a patent-eligible application.
Further showing the application’s patent-ineligibility, plaintiff’s claims of the application are obvious under 35 U.S.C. § 103. A claim is unpatentable under § 103 if the differences between the claims and the prior art would have been obvious to a person of ordinary skill in the art at the time of the invention. A presumption of obviousness exists if the claims recite a range that overlap with what is disclosed in the prior art. Here, the prior art teaches all the claimed nutrients in dosages overlapping the claimed ranges, thereby establishing such a presumption.
Defendant’s motion for summary judgment granted.
Bhagat v. The United States Patent and Trademark Office, Case No. 1:20-cv-1515, March 30, 2023. EDVA at Alexandria (Hilton). VLW 023-3-169. 14 pp.
