Plant Patent Pirates - Grape Growing, Public Planting
By Brian Dawley
In Delano Farms Co. v. Cal. Table Grape Comm’n, the Federal Circuit addressed the “public use” bar to patentability under 35 U.S.C. § 102(b) (pre-AIA). The “public use” bar prevents a patent from granting on an invention that was in public use in the United States more than one year prior to the effective filing date of the patent.
In Delano Farms, the Federal Circuit addressed a situation in which farmers gained access to table grape plant material that was covered by U.S. Patents PP16,229 (hereinafter, the “‘229 Patent”) and PP16,284 (hereinafter, the “‘284 Patent”), which were filed on September 28, 2014. The U.S. Department of Agriculture (USDA) presented grapes grown from vines covered by the patents at an open house on August 22, 2001.  Two grape farmers, Jim and Larry Ludy, attended the open house and viewed the grapes. No other plant material, such as vines or wood, was available for inspection at the open house.
A USDA employee, Rodney Klassen, presented the grapes at the open house. Recognizing a “‘huge competitive advantage’ to have grapes that sold at a significant premium before other growers,” Jim Ludy requested that Klassen give him some of the plant material, although Klassen was not authorized to do so. Nevertheless, Klassen said that he would “take care” of Jim Ludy. Ultimately Klassen provided the plant material to Jim Ludy, with the admonishment not to let the material “‘get away from [him]’ and not to ‘put them in a box.’” Jim Ludy “understood [this] to mean that he should not sell the resulting grapes until the varieties were commercially released.”
Jim Ludy grafted fewer than 50 vines with the covertly-acquired plant material. He also provided Larry Ludy with some of the plant material, but said they should “keep it to ourselves.” Larry Ludy proceeded to grow over 750 plants from the plant material.
Most of these plantings occurred prior to the critical date for the ‘229 Patent and the ‘284 Patent. The Ludy’s did not provide the plant material to anyone else until after the critical date. The plants were visible from publicly accessible roads, but the variety of grapes could not readily be determined from simply viewing the vines.
One other person, Richard Sandrini, the Ludy’s table grape marketer, was aware of the plants prior to the critical date. Sandrini sold a harvest of grapes produced from the vines after the critical date for the patents. To avoid detection, Sandrini labeled these grapes “Thompson Seedless.”
Given these facts, the Federal Circuit considered whether the Ludy’s actions constituted public use of the plant material that would bar patentability. There has been a long history of cases demonstrating uses that are public, vis-à-vis uses that are non-public. For example, experimental use, even if public, can prevent loss of patent rights, as shown in City of Elizabeth v. Am. Nicholson Pavement Co.
A use is public when it is:
- “a nonsecret use of a claimed process in the usual course of producing articles for commercial purposes”
- a “use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor”
- “open to public observation without restriction,” or
- by a person to whom the invention is given without limitation or restriction, or injunction of secrecy
In general, a use is non-public when others are not allowed to make and use the invention and the invention is not on sale for general use. Uses have been found non-public include those that are:
- marked with a confidentiality notice
- under an agreement of confidentiality, or
- in circumstances creating a similar expectation of secrecy where there is not commercial exploitation
In addition, third-party use is treated the same as those of the inventor in determining public use for purposes of patentability.
The Federal Circuit ultimately concluded that the Ludy’s behavior in Delano Farms was not a public use. Although Jim Ludy provided the plant material to Larry Ludy, the Federal Circuit concluded this was not a public use, because under the circumstances, Larry Ludy understood that the plant material was to remain a secret. The Federal Circuit contrasted Delano Farms with Egbert, noting that in Egbert, the Court “turned on the inventor’s lack of any effort to maintain control over the use of his invention,” which was a corset the inventor gave to his girlfriend.
Disclosing the plant material to Sandrini also did not act as a public use that would bar patentability, the Federal Circuit reasoned, because Sandrini could not practice the inventions since “he did not possess the plant material until after the critical date.” Finally, the Federal Circuit concluded that Ludy’s lack of secrecy was not a public use, because grape varieties cannot reliably be identified simply by viewing the growing vines alone.
 No. 2014-1030 (Fed. Cir. Jan. 9, 2015), available at http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1030.Opinion.1-7-2015.1.PDF.
 Post-AIA, the public use bar is found in 35 U.S.C. § 102(a).
 35 U.S.C. § 102(b) (2006).
 See Delano Farms, No. 2014-1030, slip op. at 3–5.
 Id., slip op. at 4.
 Id., slip op at 6.
 Id., slip op. at 4–5.
 Id., slip op. at 5.
 Id., slip op. at 5–6.
 Id., slip op. at 6.
 97 U.S. 126 (1877).
 WL Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1549 (Fed. Cir. 1983) (citing Electric Storage Battrey Co. v. Shimadzu, 307 U.S. 5, 20 (1939)).
 Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002) (citing Netscape Communications Corp. v. Konrad, 295 F>3d 1315, 1321 (Fed. Cir. 2002)).
 Egbert, 104 U.S. at 336.
 TP Laboratories, 724 F.2d at 970.
 Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 550 (Fed. Cir. 1990).
 Invitrogen Corp. v. Biocrest Mfg., 424 F. 3d 1374, 1382 (Fed. Cir. 2005) (citing TP Laboratories).
 Id., slip op at 8 (discussing Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1334 (Fed. Cir. 2005) and Dey, L.P. v. Sunovion Pharm., Inc., 715 F.3d 1351, 1355 (Fed. Cir. 2013)).
 Delano Farms Co. v. Cal. Table Grape Comm’n, No. 2014-1030, slip op. at 6 (Fed. Cir. Jan. 9, 2015).
 Id., slip op. at 8–10.
 Egbert v. Lippmann, 104 U.S. 333 (1881).
 Delano Farms, No. 2014-1030, slip op. at 10–11.
 Egbert, 104 U.S. at 337.
 Delano Farms, No. 2014-1030, slip op. at 11.
 Id., slip op. at 12.