The Pittsburgh Gazette reports on a lawsuit initiated by Leslie Friend, owner of a design patent for a pretzel shaped like a peace sign. The suit names Keystone Pretzels and Laurel Hill Foods as defendants, alleging that the former makes the infringing pretzels and the latter sells them.
In general terms, a US design patent relates to the ornamental design of an object having practical utility while a “utility patent” protects the way an article is used and works. Design patents are classified into 33 classes of subject matter, with Ms. Friend’s design patent assigned to Class 1 pertaining to “Edible Products.”
Given the nature of this case, a key issue will likely be the validity of the design patent, including the state of the prior art and whether it is “obvious.” Ms. Friend’s design patent was filed in 1999 and there may be a question of whether peace-sign pretzels were sold well before that date. As for obviousness, the Federal Circuit’s two-part test for determining whether a design patent is obviousness provides that (1) the prior art is viewed through the lens of one of ordinary skill in the art to determine “whether to combine earlier references to arrive at a single piece of prior art for comparison with the design or to modify a single prior art reference” and (2) once that piece of prior art has been constructed, “obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art.”
The U.S. Solicitor General has recommended that the U.S. Supreme Court not hear a case over whether the doctrine of patent exhaustion applies to Monsanto Co.’s herbicide-resistant Roundup Ready soybean seeds. A lower court held that farmer Vernon Bowman infringed the patents on the seeds through a “second planting” using so-called “commodity seed” obtained from local grain elevators. Bowman contends that his purchase of Monsanto seeds was an authorized sale and that Monsanto’s claims are thus precluded under the doctrine of patent exhaustion which provides that a patent holder cannot control a patented product after the first authorized sale.
Significantly, the seeds Bowman purchased were subject to a Technology Agreement in which licensed growers agreed: (1) “to use the seed containing Monsanto gene technologies for planting a commercial crop only in a single season”; (2) “to not supply any of this seed to any other person or entity for planting”; (3) “to not save any crop produced from this seed for replanting, or supply saved seed to anyone for replanting”; and (4) “to not use this seed or provide it to anyone for crop breeding, research, generation of herbicide registration data, or seed production.” Although licensees could sell seed to grain elevators for commodity use such as cattle feed, it excluded replanting.
But in light of recent Supreme Court law on this subject — most notably Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008) — Bowman argued that “[s]ales of second-generation seeds by growers to grain elevators, and then from grain elevators to purchasers (like Bowman) are authorized … and are thus exhausting sales….”
In a brief filed Aug. 24, U.S. Solicitor General Donald Verrilli argues that the Federal Circuit correctly held that the exhaustion doctrine is of no consequence because, even if Bowman’s purchase was an “authorized first sale,” Bowman created new seeds when he planted them: “[O]nce a grower … plants the commodity seeds containing [Monsanto’s] Roundup Ready technology and the next generation of seed develops, the grower has created a newly infringing article.” The Solicitor further notes that the lower court properly rejected the argument that replanting was the only use for the “commodity seed,” noting that the seed was useful for, among other things, animal feed. Finally, the brief notes that the patent-exhaustion doctrine still applies to self-replicating technology like seeds and that, after an authorized sale, Monsanto lost the right to control the use of the seed. Nevertheless, it still holds the exclusive right to make the seeds.