« Bailout | Main | Almost Enough »

July 10, 2009


In permissible hindsight, the PTO during the Clinton administration was so lenient in doling out patents that Obzilla (aka KSR) became a necessity to expeditiously clean up the mess. Case in point: letting Larry Proctor patent a transplanted yellow Mexican bean after growing it for a few seasons. The applicant was open-faced about doing a simple Mendel with the bean, but was granted a patent for it anyway. Reportedly, Proctor then proceeded to commit "predatory patenting" and "biopiracy," beaning 16 small bean seed companies for infringement.

In Re Pod-ners (CAFC 2008-1492) non-precedential

The facts are undisputed. In 1994 Larry Proctor purchased in Mexico a package of dry beans, which contained beans of various colors and varieties, including yellow beans, which he brought back to the United States. Over the next three years, he planted and harvested the beans and their producing plants. After three such annual plantings and harvestings, he was issued U.S. Patent No. 5,894,079

A third party filed with the Patent and Trademark Office a petition for re-examination of the patent that also sought to invalidate it. POD--NERS responded by seeking a re-issue of the patent to include eleven additional claims.

In a 49-page opinion, the Board held that all of the claims in the '079 patent, including those sought to be added through re-issue, were invalid on several grounds, including that they would have been obvious.

One of ordinary skill in the art seeking to reproduce (and hopefully improve) the yellow beans that Proctor brought back from Mexico would have done what he did: plant the beans, harvest the resulting plants for their seeds, planting the latter seeds, and repeat the process two more times.

There is no indication that in taking these steps Proctor sought to provide beans of the particular narrow range of yellow that the claims specified. To the contrary, it appears that all Proctor was attempting to do was to reproduce the yellow beans he had acquired in Mexico, and hopefully to improve them.

To do so he followed normal and well-established agricultural methods and techniques for doing that. See KSR Int'l v. Teleflex Inc., 550 U.S. 398, 418 ("a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.") He does not contend that he devised or applied new or unexpected techniques in reproducing the beans.

The sloppy BPAI couldn't be bothered to explain its reasoning for the prior art combination it used in concluding obviousness, but the CAFC gave it a pass nonetheless. Observance of the law in the breach, with a bit of twisted justification by the CAFC for excusing PTO negligence.

In ruling that the claims would have been obvious, the Board did not explain its conclusion in detail.

In KSR, 550 U.S. at 421, the Supreme Court pointed out that "rigid preventative rules that deny fact finders recourse to common sense, however, are neither necessary under our case law nor consistent with it." To reject the Board's obviousness ruling here, would be to deny the Board that very "recourse to common sense" that the Supreme Court there warned against.


Posted by Patent Hawk at July 10, 2009 11:28 AM | Prior Art