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Muscle Mag Ads Invalidate Supplement Claims

Posted on | November 19, 2008 | 1 Comment

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2009-1018 Iovate v. Bio-Engineered Supplements
ED/TX 07-cv-46
Judge Ron Clark

Plaintiff Iovate appeals from the order of Judge Ron Clark finding certain claims of 6,100,287 invalid as anticipated under § 102 based on TwinLabs and Weider advertisements and products.  Summary judgment as to other claims was denied, but Iovate stipulated to dismissal of those claims in order the appeal the order.   The patents are direct to a method for enhancing muscle performance and recover via a ketoacid and an amino acid, where the amino acid is cationic or dibasic.

The application of § 102 and the prior art ads to the claims is relatively straight forward, but the court's discussion of enablement in the § 102 context versus under § 112 is interesting.

The court rejected Iovate's argument that the advertisements were not enabled and did not teach the claimed method.  The court disagreed, finding that the ads met the easier enablement requirement of § 102.

Even assuming that the advertisement does need to be enabled, the standard for enablement for purposes of Section 102 is different from the standard under Section 112. Novo Nordisk Pharmaceuticals, Inc. v. Bio-Technology General Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005). The Section 102 standard is somewhat easier to meet, because it “only requires that those suggestions [in the disclosure] be enabled to one of skill in the art,” not that the suggestions must enable one skilled in the art to actually perform the invention. Id.

The Federal Circuit’s use of the term “enablement” to mean two different things under Sections 102 and 112 may cause some confusion. The court believes a careful reading of the cases discussing these provisions reveals the distinction. Under Section 112, a patent specification must “enable any person skilled in the art. . . to make and use” the invention described. Section 102, which does not use the word “enable,” only requires that the person of skill in the art recognize that what is described in the prior art reference could be practiced. Thus, a person of ordinary skill in the art does not have to actually make the supplement as claimed in a prior art reference so long as a method of preparing it would have been known by, or been obvious to, that person based on the disclosure and his or her knowledge. See In re Donohue, 766 F.2d 531, 534 (Fed. Cir. 1985)(citing Application of Samour, 571 F.2d 559, 563 n.6 (C.C.P.A. 1978)).

The Mass Fuel advertisement provides the following guidance:

When mixed with water, New Improved Mass Fuel provides 50 grams of high biologicalquality milk and egg protein and 100 grams of complex carbohydrates. . . [the product] is also enriched with branched chain amino acids, L-glutamine, alpha-ketoglutarates, ketoisocaproate (KIC), L-ornithine alpha-ketoglutarate, L-carnitine, and creatine monohydrate. Plus, high potencies of vitamins and minerals, including potassium and chromium. BSN Mot. Sum. J., Ex. Q, at p. 107 (grammatical errors in original).

While no precise amounts of some of the components are given, a person of ordinary skill in the art would, combining his or her knowledge with the advertisement’s suggestions, consider the advertisement to be enabled. Therefore, the court will grant BSN’s motion for summary judgment with respect to claims 1, 2, 5, 8, 9, and 18.

More reading:

Order
Category: Anticipation

Comments

One Response to “Muscle Mag Ads Invalidate Supplement Claims”

  1. Increase Penis Size
    May 13th, 2009 @ 12:59

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