Brassica Protection Products LLC and Johns Hopkins University (collectively “Brassica”) appeal from the decision of the United States District Court for the District of Maryland granting summary judgment that U.S. Patent Nos. 5,725,895 (“the '895 patent”), 5,968,567 (“the '567 patent”), and 5,968,505 (“the '505 patent”) are invalid as anticipated by the prior art. In re Cruciferous Sprout Patent Litig.,
BACKGROUND
The three patents-in-suit relate to growing and eating sprouts to reduce the level of carcinogens in animals, thereby reducing the risk of developing cancer. Specifically, the patents describe methods of preparing food products that contain high levels of substances that induce Phase 2 enzymes. These enzymes are part of the human body’s mechanism for detoxifying potential carcinogens. Thus, they have a chemoprotective effect against cancer. '895 patent, col. 1, ll. 28-34. Foods that are rich in glucosinolates, such as certain cruciferous sprouts, have high Phase 2 enzyme-inducing potential. The inventors of the patents-in-suit recognized that the Phase 2 enzyme-inducing agents (or their glucosinolate precursors) are far more concentrated in certain sprouts (such as broccoli and cauliflower but not cabbage, cress, mustard or radish) that are harvested before the two-leaf stage than in corresponding adult plants. Id. at col. 7,1. 63 col. 8, 1. 14. However, glucosi-nolate levels in cruciferous plants can be highly variable. ■ See id. at col. 12, 11, 66-67 (“There is variation in inducer potential among different broccoli cultivará”). According to the inventors, it is therefore desirable to select the seeds of those cru-ciferous plants which, when germinated and harvested before the two-leaf stage, produce sprouts that contain high levels of the desired enzyme-inducing potential.
The '895 patent was filed on September 15, 1995, and claims, inter alia, “A method of preparing a food product rich in glucosi-nolates, comprising germinated cruciferous seeds, with the exception of cabbage, cress, mustard and radish seeds, and harvesting sprouts prior to the 2-leaf stage, to form a food product comprising a plurality of sprouts.” '895 patent, claim 1. The '567 patent is a continuation of the '895 application and it claims a “method of preparing a human food product” from sprouts. '567 patent, claims 1 and 9. The '505 patent is a divisional of the '895 application and it claims a “method of increasing the chemo-protective amount of Phase 2 enzymes in a mammal,” as well as a “method of reducing the level of carcinogens in a mammal,” by creating a “food product” from sprouts and then “administering said food product” to a mammal. '505 patent, claims 1 and 16.
The three patents-in-suit are owned by Johns Hopkins University and exclusively licensed to Brassica Protection Products LLC. Johns Hopkins and Brassica sued Sunrise Farms, Becky Crikelany Frank Crikelair, Edrich Farms, Inc., Edward B. Stanfield, III, Edward F. Stanfield, Jr;, Richard Stanfield, Sally F. Stanfield, Banner Mountain Sprouts, Banner Mountain Sprouts, Inc., Lawrence Ravitz, Harmony
On August 10, 2001, the court granted defendants’ motion for summary judgment of invalidity and denied Brassica’s cross-motion for summary judgment. According to the district court, “[t]he record before the Court makes it abundantly clear that, prior to the issuance of the patents-in-suit, one skilled in the art could, by following the teachings of the prior art, germinate broccoli seeds, harvest the sprouts, and sell them as a food product.” In re Cruciferous Sprout Patent Litig.,
DISCUSSION
This court reviews a grant of summary judgment de novo, drawing all reasonable factual inferences in favor of the non-moving party. See, e.g., Anderson v. Liberty Lobby, Inc.,
Brassica contends that the district court erroneously construed the claims by failing to treat the preamble of claim 1 of the '895 patent as a limitation of the claims. In addition, Brassica argues that the district court failed .to construe the limitations “rich in glucosinolates” (appearing in claims 1 and 9 of the '895 patent) and “high Phase 2 enzyme-inducing potential” (appearing in claim 1 of the '567 patent and claims 1 and 16 of the '505 patent).
No litmus test defines when a preamble limits claim scope. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
In this case, both the specification and prosecution history- indicate that the phrase “rich in glucosinolates” helps to define the claimed invention and is, therefore, a limitation of claim 1 of the '895 patent. The specification, for example, states that “this invention relates to the production and consumption of foods which are rich in cancer chemoprotective compounds.” '895 patent, col. 1, 11. 18-19. A stated object of the invention is “to provide food products and food additives that are rich in cancer chemoprotective compounds.” Id. at col. 2, 11. 38-39. The specification therefore indicates that the inventors believed their invention to be making food products that are rich in che-moprotective compounds, or, in other words, food products “rich in glucosino-lates.”
Claim 1 of the patent, for example, is directed to “[a] method of preparing a*1348 food product rich in glucosinolates, ... and harvesting sprouts prior to the Si-leaf stage, to form a food product comprising a plurality of sprouts.” ... Although “rich in glucosinolates” is recited in the preamble of the claim, the pertinent case law holds that the preamble is given weight if it breathes life and meaning into the claim.... Accordingly, the cited prior art does not anticipate the claims because it does not explicitly teach a method of preparing a food product comprising cruciferous sprouts that are rich in glucosinolates or contain high levels of Phase 2 inducer activity.
This language shows a clear reliance by the patentee on the preamble to persuade the Patent Office that the claimed invention is not anticipated by the prior art. As such, the preamble is a limitation of the claims. See Bristol-Myers Squibb,
Brassica also asks this court to construe 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.” '895 patent, col. 7,11. 47-53.
“[T]he words of a claim are generally given their ordinary and accustomed meaning, unless it appears from the specification or the file history that they were used differently by the inventor.” Carroll Touch, Inc. v. Electro Mech. Sys., Inc.,
Brassica’s proposed construction is also inconsistent with the language of the dependent claims. Claim 19 of the '567 patent recites: “The method according to
II.
Having construed the claim limitations at issue, we now compare the claims to the prior art to determine if the prior art anticipates those claims. In order to prove that a claim is, anticipated under 35 U.S.C. § 102(b), defendants must present clear and convincing evidence that a single prior art reference discloses, either expressly or inherently, each limitation of the claim. Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
Brassica argues that the prior art does not expressly or inherently disclose the claim limitations of “preparing a food product rich in glucosinolates” (claims 1 and 9 of the .'895 patent), or “identifying seeds which produce cruciferous sprouts ... containing high Phase 2 enzyme-inducing potential” (claims 1 and 16 of the '505 patent, claim 1 of the '567 patent). According to Brassica, 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.”
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. See, e.g., Atlas Powder Co. v. Ireco Inc.,
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. See '895 patent, col. 10, 11. 28-42 (“Sprouts suitable as sources of cancer chemoprotectants are generally cruciferous sprouts, with the exception of cabbage (Brassica olecracea capitata), cress (Lepidiumsativum), mustard (Sinapis alba and S. niger) and radish (Raphanus sativus) sprouts.”). But the glucosinolate content and Phase 2 enzyme-inducing potential of sprouts necessarily have existed as long as sprouts themselves, which is certainly more than one year before the date of application at issue here. See, e.g., Karen Cross Whyte, The Complete Sprouting Cookbook 4 (1973) (noting that in “2939 B.C., the Emperor of China recorded the use of health giving sprouts”). Stated differently, a sprout’s glucosinolate content and Phase 2 enzyme-inducing potential are inherent characteristics of the sprout. Cf. Brian R. Clement, Hippocrates Health Program 8 (1989) (referring to “[inherent enzyme inhibitors, phytates (natural insecticides), oxalates, etc., present in every seed”). It matters not that those of ordinary skill heretofore may not have recognized these inherent characteristics of the sprouts. MEHL/Biophile,
Titanium Metals Corp. v. Banner is particularly instructive in this regard. In that case, the claim at issue recited:
A titanium base alloy consisting essentially by weight of about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up to 0.2% maximum iron, balance titanium, said alloy being characterized by good corrosion resistance in hot brine environments.
Titanium Metals,
The basic provision of Title 35 applicable here is § 101, providing in relevant part: “Whoever invents or discovers any new ... composition of matter, or any new ... improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
... [C]ounsel never came to grips with the real issues: (1) what do the claims cover and (2) is what they cover new? Under the laws Congress wrote, they must be considered. Congress has not seen fit to permit the patenting of an old alloy, known to others through a printed publication, by one who has discovered its corrosion resistance or other useful properties, or has found out to what extent one can modify the composition of the alloy without losing such properties.
Id. at 780, 782,
Brassica nevertheless argues that its claims are not anticipated because the pri- or art does not disclose selecting the particular seeds that will germinate as sprouts rich in glueosinolates and high in Phase 2 enzyme-inducing potential (as opposed to selecting other kinds of seeds to sprout) in order to form a food product. We disagree. The prior art teaches sprouting and harvesting the very same seeds that the patents recognize as producing sprouts rich in glueosinolates and having high Phase 2 enzyme-inducing potential. According to the patents, examples of suitable sprouts are
typically from the family Cruciferea, of the tribe Brassiceae, and of the subtribe Brassicinae. Preferably the sprouts are Brassica olerácea selected from the group of varieties consisting of acephala (kale, collards, wild cabbage, curly kale), medullosa (marrowstem kale), ramosa (thousand head kale), alboglabra (Chinese kale), botrytis (cauliflower, sprouting broccoli), costata (Portugese kale), gemmifera (Brussels sprouts), gongy-lodes (kohlrabi), italica (broccoli), palmi-folia (Jersey kale), sabauda (savoy cabbage), sabellica (collards), and selensia (borecole), among others.
'895 patent, col. 10, 11. 32-42. Numerous prior art references identify these same sprouts as suitable for eating. See, e.g., Stephen Facciola, Cornucopia: A Source Book of Edible Plants 47 (1990) (listing “Brassica olerácea Botrytis Group Cauliflower ... Sprouted seeds are eaten”), Esther Munroe, Sprouts to Grow and Eat 9-14 (1974) (identifying “Broccoli, Brussels sprouts, Cabbage, Cauliflower, Collards and Kale”). These references therefore meet the claim limitation of identifying seeds to-use in order to have sprouts with the inherent properties of glueosinolates and high Phase 2 enzyme-inducing activity. Despite the patents’ admissions about the suitability of particular plant species found in these prior art references, Brassica argues that only specific cultivars of these plant species are rich in glueosinolates and high in Phase 2 enzyme-inducing activity. Thus, according to Brassica, the prior art fails to meet the “identifying” steps of the claims because it does not specify which cultivars should be sprouted. However, all of the appropriate cultivars that are identified in Brassica’s patent are in the public domain. '895 patent, col. 10, 11. 43-65. Brassica cannot credibly maintain that no one has heretofore grown and eaten one of the many suitable cultivars identified by its patents'. It is unnecessary for purposes of anticipation for the persons sprouting these particular cultivars to have realized that they were sprouting something rich in glueosinolates and high in Phase 2 enzyme-inducing potential. Atlas Powder,
The prior art also discloses the remaining limitations of the claims! The Munroe
In summary, the prior art inherently contains the claim limitations that Brassica relies upon to distinguish its claims from the prior art. While Brassica may have recognized something about sprouts that was not known before, Brassica’s claims do not describe a new method.
CONCLUSION
For the foregoing reasons, we affirm the district court’s summary judgment that the claims at issue are anticipated by the prior art. The prior art indisputably includes growing, harvesting and eating particular sprouts which Brassica has recognized as being rich in glucosinolates and high in Phase 2 enzyme-inducing potential. But the glucosinolate content and Phase 2 enzyme-inducing potential of these sprouts are inherent properties of the sprouts put there by nature, not by Brassica. Brassi-ca simply has not claimed anything that is new and its claims are therefore invalid.
AFFIRMED.
Notes
. Phase 2 enzymes are part of the human body's mechanism for detoxifying potential carcinogens. These enzymes therefore have a chemoprotective effect against cancer. According to the '895 patent, "most of the [Phase 2 enzyme] inducer potential of crucifer plants is due to their content of isothiocya-nates and their biogenic precursors, glucosi-nolates.” '895 patent, col. 8, 11. 14-16.
. On December 6, 1999, the Patent Office granted a request for reexamination of the '895 patent. Claims 1-6 and 9-13 were rejected as anticipated by or obvious in light of many of the same prior art references relied on by the defendants in this case. After considering the patentee's arguments and declarations in support of patentability, the Patent Office issued a reexamination certificate and gave the following examiner’s statement of reasons for patentability: "a method of preparing a food product wherein cruciferous sprouts, with the exception of cabbage, cress, mustard, and radish sprouts, that are rich in glucosinolates or contain high levels of phase 2 inducer activity are harvested prior to the 2-leaf stage is not taught or fairly suggested by the prior art or any combination thereof.”
. "A food product is any ingestible preparation containing the sprouts of the instant invention, or extracts or preparations made from these sprouts ....” '895 patent, col. 6, 11. 26-28.
. Most of the claims at issue are method claims, not composition or product claims. Nevertheless, the principles of Titanium Metals still apply. See, e.g., MEHL/Biophile,