Muscle magazines rarely enter into discussions of patentability. But a recent case involving a nutritional supplement turned on several advertisements that ran in a body-building periodical. The defendant in this infringement case argued that the plaintiff’s patent was invalid, because the invention was anticipated or rendered obvious by a number of similar supplements advertised in fitness periodicals. The court’s decision means current and prospective patent holders should probably reconsider the implications of advertisements when it comes to their inventions.

ROUGHED UP: MUSCLE MAG ADVERTISEMENTS AFFECT PATENTABILITY

In a recent case involving a nutritional supplement Iovate, Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., turned on several advertisements that ran in a body-building periodical. The court’s decision means current and prospective patent holders should probably reconsider the implications of advertisements when it comes to their inventions.

FACING OFF IN COURT

Lovate is the exclusive licensee of a patent for a nutritional supplement using a keto acid and an amino acid to enhance muscle performance or recovery from fatigue. Iovate sued Bio-Engineered Supplements & Nutrition (BSN), claiming certain BSN products infringed the patent. The products were advertised to enhance muscle strength or resistance to muscle fatigue.

BSN argued that the patent was invalid because the invention was anticipated or rendered obvious by a number of similar supplements advertised in fitness periodicals. The ads included a list of ingredients and directions for administering the supplement. The district court agreed, finding the invention was anticipated by ads published in Flex magazine more than one year before the patent application was originally filed on Nov. 13, 1997.

WEIGHING THE EVIDENCE

The U.S. Court of Appeals for the Federal Circuit focused on an ad for Professional Protein, evaluating it through the prism of Section 102(b) of the Patent Act. The provision bars the patenting of an invention that was described (or anticipated) in a printed publication before the critical date — that is, one year before the date of the patent application.

To qualify as a “printed publication,” the ad must have been disseminated or made accessible to persons interested and ordinarily skilled in the subject matter to which the ads related before the critical date of Nov. 13, 1996. The parties didn’t dispute that the ad satisfied these criteria, but Iovate argued that the ad wasn’t anticipatory. An anticipatory ad must describe each and every claim limitation on the patented invention and enable one skilled in the art to devise an embodiment of the invention without undue experimentation.

The court found that the ad disclosed each and every limitation of Iovate’s claims. It revealed that taking a supplement containing the claimed ingredients as advertised is effective for enhancing muscle performance and recovery after exercise.

Iovate’s expert witness testified that some terms in the ad weren’t synonymous with the terms used in the patent (for example, “promot[ing] muscle synthesis and growth” vs. “enhancing muscle performance”). The court characterized that argument as bordering on frivolous because both the patent and Iovate’s infringement allegations referred to “muscle strength” as a proxy for “enhancing muscle performance.”

The court also found that, when the ad appeared in Flex in June 1996, it enabled someone of skill in the art to devise an embodiment of the claimed invention. Such an individual could simply combine the listed ingredients and administer the composition as indicated by the ad.

Last, the court rejected Iovate’s argument that its patent required administering an effective amount of the composition. Even if it had, the ad indicated the amount of protein needed, and several other pre-1996 publications disclosed acceptable clinical dosages of the two ingredients.

SUPPLEMENTING YOUR RESEARCH

The printed-publication bar typically is applied to inventions disclosed in scientific journals or similar periodicals. The Iovate decision demonstrates that would-be patent holders also must pay attention to advertisements to ensure their inventions are patentable.

About the patent law firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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