Claimed Method for Selecting Sprouts Having Anti

Claimed Method for Selecting Sprouts Having Anti-Carcinogenic Characteristics Found to Be Anticipated-Ask Your Mother
By John Prince


Law Firm of McDermott, Will & Emery, September 2002
Patents / Inherency.

When you were young, your parents told you that you should eat all your salad, including the sprouts, because eating your green leafy vegetables would help keep you healthy. If you didn't listen to your parents, you should have. They apparently had a good understanding of the prior art issues in In re Cruciferous Sprout Litigation, Case No. 02-1031 (Fed. Cir., Aug. 21, 2002).

Scientists at Johns Hopkins University made an important nutritional discovery, which was that foods that are rich in a special class of sugars known as glucosinolates can induce high levels of Phase 2 enzymes in humans. Phase 2 enzymes are part of the your body's mechanism for naturally detoxifying potential carcinogens. The scientist-inventors discovered that the Phase 2 enzyme-inducing glucosinolates are more highly concentrated in certain cruciferous sprouts (such as broccoli and cauliflower, but not cabbage, cress, mustard or radish) when the sprouts are harvested before the two-leaf stage, than they are in adult plants. A patent application was filed and the three patents that later issued were licensed to Brassica Protection Products, LLC. ("Brassica" is the Latin word for cabbage.) The issued patents claimed, for example, a "method of preparing a food product rich in glucosinolates" and a "method of increasing the chemoprotective amount of Phase 2 enzymes in a mammal" as well as a "method of reducing the level of carcinogens in a mammal."

As a result of cross motions for summary judgment on the issue of validity, the district court held the patents to be invalid as anticipated, finding the claims to be directed to an "unexpected benefit of a known process."

Brassica appealed, arguing that the district court wrongly construed the claims. Specifically, Brassica argued that the phrases "rich in glucosinolates" and "high Phase 2 enzyme-inducing potential" to require "at least 200,000 units per gram fresh weight of Phase 2 enzyme-inducing potential at 3-days following incubation under conditions in which cruciferous seeds germinate and grow."

The Federal Circuit affirmed the district court noting that Brassica's proposed construction not only improperly imported limitations from the specification into the claims, but also (under the canon of claim differentiation) was inconsistent with dependent claims, which were of the scope Brassica urged for the independent claim.

The court then compared the claims to the voluminous prior art, which included references as far back as "2939 B.C. [where] the Emperor of China recorded the use of health giving sprouts." Brassica argued that "the prior art merely discusses growing and eating sprouts without mention of any glucosinolates or Phase 2 enzyme-inducing potential, and without specifying that particular sprouts having these beneficial characteristics should be assembled into a 'food product.'" The Federal Circuit disagreed: "It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it." The court found all of the limitations of the claims to be present in the prior art, even though the prior art may not evidence an understanding of the importance of glucosinolates as an inherent characteristic of the healthful sprouts. "Brassica does not claim to have invented a new kind of sprout, or a new way of growing or harvesting sprouts. Rather, Brassica recognized that some sprouts are rich in glucosinolates and high in Phase 2 enzyme-inducing activity while other sprouts are not." However, the discovery of a scientific principle or characteristic of the prior art is not a novel invention. The characteristics of the claimed sprouts "are inherent properties of the sprouts put there by nature, not by Brassica." The court continued: "The prior art teaches sprouting and harvesting the very same seeds that the patents recognize as producing sprouts rich in glucosinolates and having high Phase 2 enzyme-inducing potential."