By: Payton Miles

 

A bouquet of flowers can be used in many different ways, from an “I’m sorry” to a centerpiece on the dining room table. But what is a flower’s main use? The United States Court of Appeals for the Federal Circuit recently held that displaying flowers is a use for an intended purpose – ornamentation.[1]

On February 2, 2023, the Federal Circuit decided in In re WinGen LLC that a patent for a petunia-like plant was invalid because it was on display at a trade show before the patent was initially filed.[2] The patent in issue is a utility patent directed to an ornamental Calibrachoa plant known as “Cherry Star.”[3] Through the inventor’s breeding process, the claimed plant has a single half-dominant gene that results in a star pattern displayed on the center of the petals.[4]

During a reissue of this utility patent, which is an application filed to correct an error in the patent that would otherwise make it “wholly or partly inoperative or invalid,”[5] the patent owner admitted that its “ornamental” plant was on display at a private Home Depot event before the patent was filed.[6] Under pre-AIA 35 U.S.C. § 102(b), a person may receive a patent unless the invention was “in public use . . . more than one year prior to the date of application for patent in the United States.”[7] When deciding what constitutes a “prior use” under pre-AIA law, courts will typically consider “whether the purported use: (1) was accessible to the public; or (2) was commercially exploited.” [8] In this case, the Federal Circuit was newly tasked with deciding what “accessible to the public” meant for an ornamental plant at a trade show.

In Motionless Keyboard Co. v. Microsoft Corp., the court found that the visual display of a keyboard did not amount to a “public use” because the keyboard was not connected to a device that would allow it to be used for its intended purpose while on display.[9] Here, the Federal Circuit seemed to differentiate the plant from the keyboard in that the sole purpose of the plant was to be on display.[10] Therefore, the display of the plant at the Home Depot trade show was a public use before the patent was filed, causing the patent to be invalid.[11]

It should be noted that WinGen tried to argue that the utility of the “Cherry Star” comes from the genetics of the plant, which were not publicly disclosed at the trade show.[12] However, the Federal Circuit declined to address that issue because WinGen did not present this argument to the USPTO Patent Trial and Appeals Board. If WinGen focused on the genetics and how to grow the plant from the beginning of the reissue, then this decision may have looked more like Motionless Keyboard.[13] What if the intended purpose was growing this unique plant rather than merely displaying it? No information about growing the plant was revealed at the trade show, so the Federal Circuit may have had to do a further analysis into this “prior use.” Regardless, WinGen seems to have set themselves up for failure by initially telling the Court that the patent claims covered an ornamental plant.[14]

 

 

 

[1] See In re WinGen LLC, No. 2021-2322, 2023 U.S. App. LEXIS 2628, at *8 (Fed. Cir. Feb. 2, 2023).

[2] Id. at *1.

[3] Id.

[4] Id. at *1–*2.

[5] 1402 Grounds for Filing, USPTO, https://www.uspto.gov/web/offices/pac/mpep/s1402.html#:~:text=A%20reissue%20application%20is%20filed,application%20which%20became%20the%20patent (last visited Feb. 22, 2023).

[6] Dennis Crouch, How Does One “Use” Flowers?, Patently-O (Feb. 6, 2023), https://patentlyo.com/patent/2023/02/how-does-flowers.html.

[7] 35 U.S.C. § 102(b).

[8] Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005).

[9] See Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 1385 (Fed. Cir. 2007).

[10] See In re WinGen, 2023 U.S. App. LEXIS 2628, at *8.

[11] Id.

[12] Id.

[13] Id. at *7.

[14] See Crouch, supra note 6.

 

Image Source: https://patentlyo.com/patent/2023/02/how-does-flowers.html