`Judge Invalidates Patents for Olive-Based Supplements - Olive Oil Times

Judge Invalidates Patents for Olive-Based Supplements

Jan. 12, 2014
Virginia Brown Keyder

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When California-based Cre-Agri, Inc., self-styled world leader in olive-phe­nol dietary sup­ple­ments, sued its com­peti­tor, Pinnaclife, Inc., for infringe­ment of two of its basic patents before the District Court of the Northern District of California in 2011, the pos­si­bil­ity that those patents would be found invalid on a motion for sum­mary judg­ment was prob­a­bly the far­thest thing from its minds.

Though each patent was found invalid for a dif­fer­ent rea­son, the com­bined results will no doubt be a set­back for com­pa­nies world­wide engaged in pur­su­ing monop­oly rights on a grow­ing body of health ben­e­fits deriv­ing from the hum­ble olive tree. Any chill­ing effect of the deci­sions will be accen­tu­ated by the fact that in March, 2013, the first major changes in U.S. patent law in more than a cen­tury, the America Invents Act came into effect, expand­ing con­sid­er­ably the scope of prior art’ which may be used to inval­i­date a patent.

In sum­mary, the first patent (No. 6,416,808, or 808’) was found invalid on grounds of antic­i­pa­tion. While its title indi­cated that it cov­ered merely a method of obtain­ing’ a com­po­si­tion, the body of the patent actu­ally claimed the com­po­si­tion itself, i.e. A dietary sup­ple­ment com­pris­ing an aque­ous extract of olives con­tain­ing a weight ratio of hydrox­y­ty­rosol to oleoeu­ropein of between about 5:1 and about 200:1.”

The dis­pute arose around how to con­strue an aque­ous extract.’ CreAgri claimed this referred only to puri­fied water. District Judge Lucy H. Koh found, based on con­sid­er­able evi­dence (some of it con­tained in CreAgri’s own ear­lier and some­what con­tra­dic­tory state­ments) that it also included aque­ous alco­holic extracts.’ The effects of this wider con­struc­tion resulted in the Court’s find­ing that an ear­lier patent (refer­ring to aque­ous alco­holic extracts’) had described the inven­tion, antic­i­pated’ CreAgri’s claims, and there­fore destroyed its nov­elty. An ear­lier sci­en­tific pub­li­ca­tion, describ­ing an aque­ous extract of olives,’ was also found to have antic­i­pated CreAgri’s claims and the patent was declared invalid for lack of nov­elty.

The sec­ond patent (No. 8,216,599 or 599’) was held invalid on the grounds that it failed to pro­vide an accu­rate writ­ten descrip­tion of the inven­tion suf­fi­cient to enable one to rec­og­nize that the inven­tor actu­ally invented what is claimed in the patent, and that it failed to meet the req­ui­site stan­dard for util­ity. In other words, Judge Koh accepted Pinnaclife’s claim that the spec­i­fi­ca­tion in the patent did not sup­port or enable the use of any hydrox­y­ty­rosol-rich com­po­si­tion to treat inflam­ma­tion con­di­tions claimed because the spec­i­fi­ca­tion pro­vides no data what­so­ever to sup­port the anti-inflam­ma­tory effects of the claimed olive-derived prepa­ra­tions.”

Since the early 1980s, a trend to increase the num­ber of patents, often at the expense of qual­ity, has been grow­ing on the part of both gov­ern­ments and indus­try world­wide. Until recently, this was seen as key to incen­tiviz­ing inno­va­tion and ensur­ing eco­nomic suc­cess. This move­ment, as the America Invents Act indi­cates, has prob­a­bly peaked, as leg­is­la­tors and judges alike begin to under­stand that the cre­ation and enforce­ment of patent thick­ets’ sti­fles rather than encour­ages research and inno­va­tion. Those involved in dis­cov­er­ing the hid­den mol­e­c­u­lar secrets of the olive should take note of the cur­rent envi­ron­ment before they com­mit big bucks to the world of patent law.



    1 CREAGRI, INC. v. PINNACLIFE INC. CASE NO. Case No. 11-CV-6635-LHK. United States District Court, N.D. California, San Jose Division. Dec. 18, 2013

    2 US Patent Nos. 6,416,808 (Method of obtain­ing a hydrox­y­ty­rosol-rich com­po­si­tion from veg­e­ta­tion water, filed 2001, issued 2002) and U.S. Patent No. 8,216,599 (Method for treat­ment of inflam­ma­tion, filed 2003, issued 2012).

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    3 Pub. L. 112 – 29, 125 Stat. 285 enacted September 16, 2011.

    4 This Act did not apply to the present case because the patents were filed before the AIA came into effect.

    5 A patent claim is invalid for antic­i­pa­tion if, among other rea­sons, the inven­tion was … described in a printed pub­li­ca­tion in this or a for­eign coun­try …, more than one year prior to the date of the appli­ca­tion for patent in the United States,” 35 U.S.C. § 102(b) (2006), or the inven­tion was described in … a patent granted on an appli­ca­tion for patent by another filed in the United States before the inven­tion by the appli­cant for patent,” id. § 102(e) (2006)” (from the judg­ment).

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