In Re WINGEN LLC ( 2023 )

Case: 21-2322 Document: 35 Page: 1 Filed: 02/02/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: WINGEN LLC,
Appellant
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2021-2322
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 15/229,819.
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Decided: February 2, 2023
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SEAN ALLEN PASSINO, Pilloff Passino & Cosenza LLP,
Alexandria, VA, argued for appellant. Also represented by
MARTIN JAMES COSENZA, II, RACHEL KAREN PILLOFF.
MAUREEN DONOVAN QUELER, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for appellee Katherine K. Vidal. Also repre-
sented by SARAH E. CRAVEN, THOMAS W. KRAUSE, AMY J.
NELSON, FARHEENA YASMEEN RASHEED.
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Before LOURIE, TARANTO, and STOLL, Circuit Judges.
LOURIE, Circuit Judge.
WinGen LLC (“WinGen”) appeals from a final written
decision of the U.S. Patent and Trademark Office Patent
Case: 21-2322 Document: 35 Page: 2 Filed: 02/02/2023
2 IN RE: WINGEN LLC
Trial and Appeals Board (“the Board”) affirming an exam-
iner’s rejection of claims 1–4, 6, 7, and 9–15 of U.S. Patent
Application 15/229,819 (“the ’819 application”), which is an
application for reissue of U.S. Patent 9,313,959 (“the ’959
patent”) filed under 35 U.S.C. § 251. See Ex parte Ushio
Sakazaki, Appeal No. 2021-002993 (P.T.A.B. Jul. 14, 2021)
(“Decision”), J.A. 1–38. For the reasons provided below, we
affirm.
BACKGROUND
The ’819 application is a reissue application of a utility
patent directed to an ornamental Calibrachoa plant, simi-
lar to a petunia, known as ‘Cherry Star.’ J.A. 88 at col. 1
ll. 27–29. The claimed plant variety comprises a “single
half-dominant gene” that results in a center-star pattern
on the petals. Id. at col. 9 ll. 13–21. That petal phenotype
had not previously been observed in any wild species of
Calibrachoa, but rather was created through the inventor’s
breeding process. Id. at col. 1 ll. 20–23. Figure 1, showing
‘Cherry Star,’ is reproduced below.
J.A. 140.
Case: 21-2322 Document: 35 Page: 3 Filed: 02/02/2023
IN RE: WINGEN LLC 3
Claim 1 is representative:
1. A Calibrachoa plant comprising at least one
inflorescence with a radially symmetric pattern
along the center of the fused petal margins,
wherein said pattern extends from the center of
the inflorescence and does not fade during the life
of the inflorescence,
and wherein the Calibrachoa plant comprises
a single half-dominant gene, as found in Cal-
ibrachoa variety ‘Cherry Star,’ representative
seed having been deposited under ATCC Ac-
cession No. PTA-13363.
J.A. 92 at col. 9 ll. 13–21. During the prosecution of the
’959 patent, the limitation “a single half-dominant gene”
was added to claim 1 overcome a rejection. Decision, J.A. 8;
J.A. 307. The other claims relate to more specific proper-
ties of the plant or methods of producing the plant. J.A. 92
at col. 9 ll. 22–col. 10 ll. 51.
The examiner issued a final office action that included
rejections for lack of written description, nonstatutory dou-
ble patenting, lack of enablement, and prior public use.
J.A. 1605–30. Of relevance, the examiner rejected claims
1–4, 6, 7, and 11 under pre-AIA 35 U.S.C. § 102(b) based
upon an alleged prior public use of the invention at an
event hosted by Proven Winners North America LLC
(“Proven Winners”). J.A. 1611–15. Other claims were re-
jected as obvious based on the aforementioned alleged pub-
lic use of ‘Cherry Star’ in combination with one of two other
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4 IN RE: WINGEN LLC
printed publications: Butler 1 (claims 9, 10, 14, 15) and
Dole 2 (claims 12, 13). J.A. 1615–16.
Proven Winners, which has common shareholders with
the original assignee of the ’959 patent, Plant 21 LLC
(“Plant 21”), is a brand management and marketing entity
responsible for various plant brands. J.A. 29. WinGen is
the current assignee of the ’959 patent. Plant 21 entrusted
Proven Winners with samples of ‘Cherry Star’ to show at a
private event at Home Depot. At that event, a ‘Cherry Star’
plant was on display. J.A. 326. Attendees were not per-
mitted to take cuttings, seeds, or tissue samples of the
plant, but were provided a leaflet to bring home that in-
cluded a photograph and brief description of the plant. Id.Visitors were under no obligations of confidentiality re-
garding what they had seen or the content of the handout
but were not provided any gene or breeding information re-
garding ‘Cherry Star.’ Id.Following the examiner’s final rejection of all pending
claims, WinGen appealed to the Board. The Board re-
versed all but the examiner’s prior public use-based rejec-
tions. The Board found that ‘Cherry Star’ had been
accessible to the public—the attendees, not Proven Win-
ners—at the Home Depot event and upheld the examiner’s
rejections under § 102(b). J.A. 28–36. The Board noted
that it was undisputed that a complete invention
1 J.D. Butler et al., Plant Breeding as a Hobby, UNIV.
OF ILL., COLL. OF AGRIC., EXTENSION SERV. IN AGRIC. AND
HOME ECON. CIRCULAR 817 (1960), http://hdl.han-
dle.net/2142/33706. See Ex parte Ushio Sakazaki, Appeal
No. 2021-002993, Appeal Br. Ex. 21-1.
2 John M. Dole et al., Producing Vegetative Petunias
and Calibrachoa, GREENHOUSE PROD. NEWS (Mar. 2002),
http://www.gpnmag.com/article/producing-vegetative-pe-
tunias-and-calibrachoa/. See Ex parte Ushio Sakazaki, Ap-
peal No. 2021-002993, Appeal Br. Ex. 22-1.
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IN RE: WINGEN LLC 5
comprising all the claimed characteristics was on display
at the Home Depot event and found that there were no con-
fidentiality restrictions due to the dissemination of the
handout. 3 J.A. 33–34.
WinGen appeals the Board’s rejection of claims 1–4, 6,
7, and 9–15 of the ’819 application. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and review
the Board’s factual findings underlying those determina-
tions for substantial evidence. In re Gartside, 203 F.3d
1305, 1316 (Fed. Cir. 2000). Public use under pre-AIA
35 U.S.C. § 102(b) is a question of law based on underlying
facts. Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315,
1320 (Fed. Cir. 2002). Obviousness is a legal determination
based on underlying factual findings. Intelligent Bio-Sys.,
Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed.
Cir. 2016).
WinGen argues on appeal that the Board erred in find-
ing prior public use when all of the claimed features (e.g.,
the plant genetics) were not made available to the public.
Namely, WinGen asserts that without actual possession of
‘Cherry Star’ from which it may be bred, it could not fairly
be said that anyone was in possession of all the claimed
3 It is undisputed that ‘Cherry Star’ was not on sale
or offered for sale at the Home Depot event. Because the
Board found that ‘Cherry Star’ had been accessible to the
public at the Home Depot event, the Board found that it
did not need to address whether it had been commercially
exploited or not. J.A. 30. We, like the Board, do not find it
necessary to address that issue.
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6 IN RE: WINGEN LLC
features. In particular, WinGen argues that attendees
would not have been aware of or able to readily ascertain
that ‘Cherry Star’ resulted from a “single half-dominant
gene,” and therefore the display at the Home Depot event
was not an invalidating prior public use.
An applicant may not receive a patent for an invention
that was “in public use . . . more than one year prior to the
date of the application for patent in the United States.” 35
U.S.C. § 102(b) (2012). To determine whether a prior use
constitutes an invalidating “public use,” we consider
“whether the purported use: (1) was accessible to the pub-
lic; or (2) was commercially exploited.” Invitrogen Corp.
v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005).
Although our precedent includes a plethora of cases ana-
lyzing what constitutes a use “accessible to the public,”
what is necessary for an invalidating prior public use of a
plant has not been considered at length by this court. Our
only case involving prior public use of a plant, Delano
Farms Co. v. Cal. Table Grape Comm’n, 778 F.3d 1243(Fed. Cir. 2015), hinged on facts much different from those
before us. Delano Farms involved the unauthorized use of
a patented grape varietal. Several alleged public uses were
considered, but of relevance here was the unauthorized
growing of the claimed grapes in locations visible from pub-
lic roads. Id. at 1249. Although viewable by the public,
these grapes were “not labeled in any way” and there was
no evidence that anyone recognized the grapes as the
claimed varietal. Id. We therefore concluded that there
was no prior public use.
Here, the same cannot be said. The ‘Cherry Star’ plant
on display at the Home Depot event was indisputably iden-
tifiable as such. See J.A. 1473 (Examiner concluding that
“‘Cherry Star’ . . . was specifically identified at the Home
Depot event”). Indeed, Kerry Meyer, the Program Director
at Proven Winners, testified that, “[a]n advertisement con-
taining a picture and description of ‘Cherry Star’ was given
Case: 21-2322 Document: 35 Page: 7 Filed: 02/02/2023
IN RE: WINGEN LLC 7
to attendees of the HOME DEPOT® event.” J.A. 326. The
relevant portion of the handout is reproduced below.
J.A. 3945. Although the handout itself cannot constitute a
public use, the leaflet confirms that attendees were in-
formed that the physical plant on display was, in fact,
‘Cherry Star.’
Further, and more importantly, unlike the grapes at
issue in Delano Farms, the purpose, or use, of ‘Cherry Star’
is purely ornamental. Appellant Br. at 27 (“To be clear,
‘Cherry Star’ is an ornamental plant.”); J.A. 88 at col. 1
ll. 27–28 (“The present disclosure relates generally to the
field of ornamental Calibrachoa plants.”). None of the sig-
nificant public use cases, including those cited by the par-
ties, involved an invention whose intended purpose was
ornament. 4 See, e.g., Egbert v. Lippmann, 104 U.S. 333(1881) (corset); Dey, L.P. v. Sunovion Pharms., Inc., 715
F.3d 1351 (Fed. Cir. 2013) (pharmaceutical drug);
4 Notably, plant inventors have the option of seeking
either a plant patent under 35 U.S.C. § 161 or a utility pa-
tent directed to a plant under 35 U.S.C. § 101. Each has
certain drawbacks and benefits, but only § 101 requires the
invention to be “useful.” Here, the applicant chose to seek
a utility patent. Usefulness has not been raised in this case
and we do not address it here.
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8 IN RE: WINGEN LLC
Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376,
1379 (Fed. Cir. 2007) (keyboard); In re Epstein, 32 F.3d
1559 (Fed. Cir. 1994) (software). This case therefore pre-
sents a unique question.
In Motionless Keyboard, 486 F.3d at 1385, we found
that there was no evidence showing that “the inventions
were used for their intended purpose” because the only al-
leged prior public uses involved the mere visual display of
the claimed keyboard “without putting it into use.” We
found that, because the keyboard “was not connected to a
computer or any other device” and was not ever used “to
transmit data,” the disclosures did not rise to the level of
public use. Id. This case is different. The only stated use
for ‘Cherry Star’ is to be ornamental. Appellant Br. at 27;
J.A. 88 at col. 1 ll. 27–28. The displaying of ‘Cherry Star’
at the Home Depot event was therefore undoubtedly a use
for its intended purpose: ornament.
The Board concluded that because the ‘Cherry Star’
plant on display at the Home Depot event embodied the
claimed invention and such use was publicly accessible, the
display of the plant at the event constituted prior public
use under pre-AIA 35 U.S.C. § 102. WinGen argues that
the claimed genetics of ‘Cherry Star’ needed to have been
publicly disclosed for there to have been an invalidating
public use. But WinGen did not meaningfully present such
an argument to the Board. We agree with the Director that
such an argument was forfeited. The Board did not decide,
and the Director does not contend, that it was legally irrel-
evant whether attendees at the plant display, lacking phys-
ical possession of the plant, could discern that it had the
claimed genetic character. We do not decide the issue ei-
ther.
We therefore affirm the Board’s affirmance of the ex-
aminer’s rejection of claims 1–4, 6, 7, and 11 as anticipated.
Because WinGen makes no separate arguments with re-
gard to the Board’s affirmance of the examiner’s rejection
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IN RE: WINGEN LLC 9
of claims 9, 10, and 12–15 as obvious, we likewise affirm
the rejection of those claims.
CONCLUSION
We have considered WinGen’s remaining arguments
but find them unpersuasive. For the foregoing reasons, the
decision of the Board is affirmed.
AFFIRMED