The opinion of the court was delivered by: Infante, Chief United States Magistrate Judge.
Plaintiff MSM Investments Co., LLC. sued Defendants
(collectively "Carolwood") for infringing U.S.Patent No.
5,071,878 ("the '878 patent"). In response, Defendants raised
several affirmative defenses, including patent invalidity. By the
instant motion, Defendants move for summary judgment that claims
1-8 of the '878 patent are invalid over an alleged public use
under 35 U.S.C. § 102(b).
Having considered the written submissions of the parties and
the oral arguments of counsel, the Court GRANTS the motion
for summary judgment.*fn1 Based on the evidence presented, the
Court finds that no genuine issue of material fact exists and
that claims 1-8 of the '878 patent are invalid, as a matter of
law, under 35 U.S.C. § 102(b). The Court's analysis is set forth
A. The '878 Patent
U.S.Patent No. 5,071,878 issued on December 10, 1991, from an
application filed on February 6, 1991. According to its title,
the '878 patent relates to the use of methylsulfonylmethane
("MSM") to enhance the diet of an animal. The '878 patent names
Robert J. Herschler as the sole inventor. Mr. Herschler assigned
all rights to the '878 patent to MSM Investments in 1996. See
Aman Aff., Exh. 16 (copy of assignment).
The '878 patent issued with a total of eight claims, two of
which are independent (claims 1 and 5). The independent claims
read as follows:*fn2
Claims 2, 3, and 4 depend from claim 1, and claims 6, 7, and 8
depend from claim 5. As can be seen, by the above claim language,
these claims generally relate to methods involving the oral
ingestion of MSM. For purposes of the instant motion, the claims
are construed in accordance with the parties' agreed construction
or, where the parties disputed the meaning of certain claim
terms, by this Court's Order Regarding Claim Construction of
U.S.Patent No. 5,071,878 dated July 23, 1999 ("Claim Construction
Order"). To the extent resolution of any issues raised by this
motion requires this Court to further construe the claims, the
Court sets forth the further claim construction and supporting
Whether the '878 patent is entitled to an effective filing date
based on the '130 patent depends on the adequacy of the '130
patent disclosure to support the '878 patent claims. While the
'130 patent is generally directed to the topical use of MSM for
cosmetic purposes, the '130 patent contains three passages
relevant to the '878 patent claims. The first reference appears
in the section of the '130 patent entitled "Summary of the
Invention" and reads as follows:
'130 patent, at 2:41-47. The second and third references appear
in the section entitled "Description of Preferred Embodiments."
The second reference reads as follows:
'130 patent, at 4:10-12. And, the third reference reads as
'130 patent, at 11:50-61. Neither party points to any other
passages of the '130 patent as supporting the '878 patent claims.
B. The Jacob Clinic Activities
Carolwood relies on activities occurring at the Jacob Clinic in
1981 as invalidating the '878 patent claims. According to
Carolwood, these activities constitute a "public use" under
35 U.S.C. § 102(b).
Much of the evidence offered by Carolwood remains
uncontroverted and comes in the form of deposition and trial
testimony from several witnesses and patient records. According
to the evidence (which MSM Investments concedes), Dr. Jacob
administered MSM to human patients for oral ingestion at an
outpatient clinic at the Oregon Health Sciences University
(referred to herein as the "Jacob Clinic") before September 14,
1981, as a pain reliever. See Opposition, at 11:24-25, 13:4-5.
The evidence shows that Dr. Jacob administered the MSM during a
period beginning as early as February, 1981 through September 14,
1981. See Amman Aff., Exh. 5; Exh. 7, p. 8; Exh. 9, pp. 3 and
5; Exh. 10. Dr. Herschler initially supplied Dr. Jacob with MSM,
but did not control Dr. Jacob's use of MSM at the clinic. Amman
Aff., Exh. 7, p. 10. At least in some cases, the amount
administered was up to one-half teaspoon, twice daily, in powered
form mixed in water or orange juice and was administered for
months at a time. See Motion, at 4:4-12 and cited exhibits;
Reply, at 3:19-21 and cited exhibits. MSM Investments does not
challenge Carolwood's contention that one-half teaspoon of
powdered MSM is roughly 2 grams. Motion, at 4:6-7. The evidence
shows that the patients were informed that they were being
treated with MSM. See Amman Aff., Exh. 7, pp. 11-12, Exh. 10.
Additional findings surrounding the activities at the Jacob
Clinic were made by the Vermont district court in Foodscience.
These findings are summarized below in the section entitled
"Related Patent Litigations." In its opposition, MSM Investments
has not asserted, much less shown, that any of the findings
relating to the Jacob Clinic activities made by the Foodscience
court were incorrect.
C. Related Patent Litigations
MSM Investments (or Mr. Herschler, the prior patent holder) has
been involved in several related patent litigations. Two of those
litigations are described below.
1. The Foodscience Litigation
In Herschler v. Foodscience Corp., Mr. Herschler brought suit
in Vermont for, among other things, infringement of the '039 and
'748 patents. In a bench trial, the Vermont court found the
patents infringed and not invalid. See Herschler v. Foodscience
Corp., Civil Action No. 90-84 (D.Vt. Nov. 5, 1992) (Foodscience
I) (Aman Aff., Exh. 14). The Vermont court made detailed
findings about the activities at the Jacob Clinic. Among these
findings were that Dr. Jacob's administration of DMSO2 (another
shorthand for methylsulfonylmethane) treatments between 1980 and
1981 was not experimental but rather was public, and was limited
to the pharmaceutical and non-pharmaceutical use of DMSO2.
Foodscience I, at 4-5. The Vermont court also found that Dr.
Jacob did not treat his patients with DMSO2 as a nutrient
affecting diet, that Mr. Herschler discovered without Dr. Jacob's
knowledge that DMSO2 acts as a nutrient and determined that DMSO2
should be included in one's diet to improve overall health, and
that Dr. Jacob and the clinic had no involvement in the use of
DMSO2 as a diet supplement. Id. at 5. Based on these findings,
the court concluded that Foodscience had not met its burden of
proving invalidity. Id. at 11. Carolwood represents that the
same evidence presented to the Vermont court has been submitted
to this Court in connection with the present motion for summary
judgment. See Motion, at 9:8-9.
On appeal, the Federal Circuit reversed part of the district
court's validity finding
and held that "the claims that include human use are invalid
based on prior public use at the Jacob Clinic, whereas those
claims that are limited to non-human use were not invalidated by
the use at the Clinic." Herschler v. Foodscience Corp.,
64 F.3d 677 (Fed.Cir. 1995) (Foodscience II) (Aman Aff., Exh. 6). The
invalidated claims include claims 1-3, 5-8, and 10. In its
decision, the Federal Circuit was silent as to its reason for
reversing the district court's finding of no invalidity.
Consequently, it is unclear whether the Federal Circuit found
error in the district court's claim construction, its factual
findings with respect to the prior art, or its comparison of the
prior art with the claims.
2. The Jacob Litigation
MSM Investments Co., LLC v. Jacob, case no. CV 97-1522-AA,
was brought in Oregon. There, MSM Investments sued several
companies and individuals, including some of the same defendants
in the instant litigation, for infringement of the '039 patent.
At the hearing on the instant motion, counsel represented that
dispositive motions have been filed with the Oregon court in the
Jacob case and that they are scheduled for hearing in October,
1999. A trial has been scheduled for February, 2000.
III. SUMMARY JUDGMENT STANDARD
Summary judgment is proper "if the pleadings, depositions,
answers to interrogatories, and admissions on file, together with
the affidavits, if any, show that there is no genuine issue as to
any material fact and that the moving party is entitled to
judgment as a matter of law." Fed. R.Civ.P. 56(c). The moving
party bears the initial burden of demonstrating the absence of a
genuine issue of material fact. Celotex Corp. v. Catrett,
477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In
addition, where the moving party has the burden of proof on a
claim or defense raised in the summary judgment motion, it must
show that the undisputed facts establish every element of the
claim or defense. Meyers v. Brooks Shoe Inc., 912 F.2d 1459
(Fed.Cir. 1990). Because a patent is presumed valid,
35 U.S.C. § 282, the accused infringer (in this case, Carolwood) bears the
burden of proving invalidity by clear and convincing evidence.
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1375 (Fed.Cir. 1986), cert. denied, 480 U.S. 947, 107 S.Ct.
1606, 94 L.Ed.2d 792 (1987).
The burden then shifts to the non-moving party to "designate
`specific facts showing that there is a genuine issue for
trial.'" Celotex at 324, 106 S.Ct. 2548. To carry this burden,
the non-moving party must "do more than simply show that there is
some metaphysical doubt as to the material facts." Matsushita
Electric Industrial Co., Ltd. v. Zenith Radio Corp.,
475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The mere
existence of a scintilla of evidence is insufficient; there must
be evidence on which the jury could reasonably find for the
non-moving party. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Evidence that
"is merely colorable, or is not significantly probative," is not
sufficient to avoid summary judgment. Id. at 249-50, 106 S.Ct.
Summary judgment cannot be granted where a genuine dispute
exists as to any material fact. Fed.R.Civ.Proc. 56(c). A material
fact is one which might affect the outcome of the case under the
applicable law. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. A
dispute about a material fact is genuine if a reasonable jury
could return a verdict for the non-moving party. Id. In
deciding a motion for summary judgment, the evidence is viewed in
the light most favorable to the non-moving party, and all
justifiable inferences are to be
drawn in its favor. Id. at 255, 106 S.Ct. 2505. "Credibility
determinations, the weighing of the evidence, and the drawing of
legitimate inferences from the facts are jury functions, not
those of a judge [when] he is ruling on a motion for summary
judgment." Id. Finally, mere denials or conclusory statements
are insufficient to create a genuine issue of material fact.
Armco v. Cyclops Corp., 791 F.2d 147, 149 (Fed.Cir. 1986).
Summary judgment is not precluded, however, when there is a
dispute over a question of law, such as claim scope or
construction. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033,
1037 (Fed.Cir. 1987). Thus, when facts are not in dispute, but
their legal significance is, the matter is amenable to summary
determination. Paperless Accounting, Inc. v. Bay Area Rapid
Transit System, 804 F.2d 659, 662 (Fed. Cir. 1986).
Carolwood offers two grounds in support of summary judgment.
First, Carolwood invokes the collateral estoppel doctrine and
argues that the findings made in Foodscience II invalidating
the narrower '039 patent claims preclude MSM Investments from
litigating the validity of the broader '878 patent claims.
Second, Carolwood contends that the Jacob Clinic activities
constitute an anticipatory "public use" under 35 U.S.C. § 102(b)
so as to invalidate all of the '878 patent claims.*fn3 Each
ground is analyzed in turn.
A. Collateral Estoppel
The doctrine of collateral estoppel protects a defendant from
the burden of litigating an issue that has been fully and fairly
tried in a prior action and decided against the plaintiff.
Comair Rotron, Inc., v. Nippon Densan Corp., 49 F.3d 1535, 1537
(Fed.Cir. 1995). The requirements for collateral estoppel are as
follows: (1) in the prior action, the party against whom estoppel
is sought had a full and fair opportunity to litigate the issue;
(2) the issue was actually litigated; (3) the controlling facts
and applicable legal rules were the same in both actions; (4)
resolution of the particular issue was essential to the final
judgment in the first action; and (5) the identical issue was
decided in the first action. Id. (citing Montana v. United
States, 440 U.S. 147, 153-55, 99 S.Ct. 970, 59 L.Ed.2d 210
(1979)); see also Steen v. John Hancock Mutual Life Insurance
Company, 106 F.3d 904 (9th Cir. 1997). While Ninth Circuit
collateral estoppel law governs, see Pharmacia & Upjohn Co. v.
Mylan Pharmaceuticals, Inc., 170 F.3d 1373, 1381 n. 4 (Fed.Cir.
1999), Federal Circuit law may be instructive in applying
collateral estoppel principles in the patent context.
Carolwood argues that the invalidity findings made in the
Foodscience case collaterally estop MSM Investments from
litigating the validity of the '878 patent. The basis for this
argument is that the '878 patent claims presently at issue are
the same or broader in scope than the '039 patent claims
previously found to be invalid in Foodscience II and therefore
must be invalid, as a matter of law, over the same invalidating
prior art. MSM Investments responds by arguing that collateral
estoppel does not apply because the identical issues were not
litigated in the Foodscience case and the Federal Circuit in
Foodscience II was ambiguous in its reasons for invalidating
the '039 patent claims that included human use.
In analyzing whether collateral estoppel applies here, the
Court adopts an initial approach of comparing the '878 patent
claims with the '039 patent claims. Differences in scope, to the
extent they raise new questions that were not adjudicated in the
prior litigation and may be determinative of the issue under
consideration in the later case, preclude application of
collateral estoppel. See Westwood Chemical, Inc. v. United
States, 207 Ct.Cl. 791, 525 F.2d 1367, 1375 (1975) (when a
comparison of adjudicated claims and unadjudicated claims reveals
"some differences of a substantive nature," the court must
further analyze the significance of those differences in
considering whether collateral estoppel applies); Interconnect
Planning Corp. v. Feil, 774 F.2d 1132, 1136 (Fed.Cir. 1985)
("[when] estoppel [is] raised as to unadjudicated claims of a
patent whose other claims had been adjudicated in an earlier
action, . . . a pragmatic approach [is] to determine whether any
new issues [are] raised as to the nonlitigated claims."). Such
differences, if they exist, subvert the "full and fair
opportunity" requirement and the "identical issue" requirement.
That the newly raised questions may ultimately be resolved
against the patent holder does not alter the inapplicability of
collateral estoppel. Without prior opportunity to "fully and
fairly" litigate a potentially determinative issue presented for
the first time in the later case, the prior adjudication is
impotent in the later case.
In the instant case, the '878 patent claims presently at issue
and the previously adjudicated '039 patent claims differ in scope
in several critical respects. First, the '878 patent claims are,
in some respects, broader in scope. For example, the '878 patent
claims are not restricted by any limitations requiring that the
animal's diet be deficient in metabolizable sulfur or
insufficient to maintain certain body levels of MSM, as recited
in claims 1 and 5 of the '039 patent, respectively. The '878
patent claims are also not restricted by any limitations
requiring that the amount of MSM be equivalent to at least 0.01
mg/kg of body weight per day or effective to maintain the body
levels at least 1 ppm, as recited in claims 1 and 5 of the '039
patent, respectively. The absence of these limitations in the
'878 patent claims raises a new issue — whether the '878 patent
claims are supported by the '130 patent in compliance with
section 112, paragraph 1, such that they are entitled to an
effective filing date based on the '130 patent. See Ethicon
Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.
7 (Fed.Cir. 1996) (a disclosure inadequate to support a narrower
claim may nonetheless be adequate to support a broader claim
under section 112, paragraph 1). A determination of this issue in
MSM Investments's favor would strip the Jacob Clinic activities
of any prior art status. Because MSM Investments had no
opportunity to litigate this potentially determinative issue in
the Foodscience case, the Court finds that collateral estoppel
cannot, and does not, apply.
The '878 patent claims are also narrower in some critical
respects. The '878 patent claims recite limitations not found
anywhere in the '039 patent claims, such as the term "beneficial
amount." The presence of these additional limitations in the '878
patent claims raises new questions concerning the adequacy of the
prior art to anticipate these claims. Because these questions may
also be determinative of validity, the Court finds that
collateral estoppel is inapplicable for this additional reason.
These limitations were not at issue in the Foodscience case and
thus MSM Investments had no prior opportunity to litigate these
The cases cited by Carolwood in support of this motion, Amgen,
Inc. v. Genetics Institute, Inc., 98 F.3d 1328 (Fed.Cir. 1996)
and In re Szwarc, 50 C.C.P.A. 1571, 319 F.2d 277 (1963), are
distinguishable. In both of those cases, the basis for
the previously litigated claims (nonenablement) was found
applicable to the unlitigated claims. Amgen, at 1331-32;
Szwarc, at 1580, 319 F.2d 277. Because the differences in claim
scope presented no potentially determinative issues that had not
been previously litigated, the courts applied collateral
estoppel. Here, as discussed above, the differences in claim
scope between the '878 patent claims and the '039 patent claims
are so significant as to raise potentially determinative issues
that have not been previously adjudicated and preclude the
application of collateral estoppel.
For these reasons, the Court declines to grant summary judgment
based on collateral estoppel.
B. Public Use Under 35 U.S.C. § 102(b)
Turning to Carolwood's substantive ground for summary judgment,
Carolwood relies on section 102(b) to argue invalidity. Section
102(b) reads, in relevant part, as follows:
A person shall be entitled to a patent unless . . .
the invention was . . . in public use . . . in this
country, more than one year prior to the date of the
application for patent in the United States.
35 U.S.C. § 102(b). In relying on section 102(b), Carolwood, as
the patent challenger, bears the burden of proving by clear and
convincing evidence that the requirements of this provision are
met for each claim of the '878 patent. See 35 U.S.C. § 282.
The invocation of section 102(b), as applied to the present
facts, poses three central questions: (1) do the alleged
activities at the Jacob Clinic constitute a "public use" within
the meaning of section 102(b); (2) do the alleged activities at
the Jacob Clinic "anticipate" the '878 patent claims within the
meaning of section 102; and (3) did the alleged activities at the
Jacob Clinic occur more than one year prior to the date of the
'878 patent application. Because the Court finds that Carolwood
has met its burden of establishing the answer to all three
questions in the affirmative, the Court finds, on summary
judgment, that the Jacob Clinic activities constitute a public
use under 35 U.S.C. § 102(b) and that these activities anticipate
claims 1-8 under section 102, rendering them invalid.
1. The Jacob Clinic Activities Were "In Public Use"
The question of whether an invention was "in public use" is one
of law based upon underlying issues of fact. Tone Brothers, Inc.
v. Sysco Corp., 28 F.3d 1192, 1197 n. 3 (Fed.Cir. 1994). Courts
must consider how the totality of the circumstances comports with
the policies underlying the public use bar.*fn4 Tone Brothers,
Inc. v. Sysco Corp., 28 F.3d 1192, 1198 (Fed.Cir. 1994) (listing
four policies underlying public use bar). An invention is
considered "in public use" within the meaning of section 102(b)
when the invention is used by a person other than the inventor
who is not under any limitation, restriction, or obligation of
secrecy to the inventor. In re Smith, 714 F.2d 1127, 1134
(Fed.Cir. 1983). Once the defendant has made a prima facie case
of public use, the patent owner bears the burden of production to
come forward with clear and convincing evidence to counter that
showing. Hycor Corp. v. The Schlueter Company, 740 F.2d 1529,
1535 (Fed.Cir. 1984). Such evidence may include evidence that the
use was primarily experimental in nature, not commercial. TP
Laboratories, Inc., v. Professional Positioners, Inc., 724
1053 F.2d 965, 970-72 (Fed.Cir. 1984). Once the patent owner has met
its burden of production, the court must consider all of the
evidence for and against public use together to determine
whether, under the totality of the circumstances, the invention
was "in public use," with the burden of persuasion remaining on
the defendant as the patent challenger at all times. Id.; Tone
Brothers, 28 F.3d at 1197 n. 4.
Based on the evidence presented, the Court finds that the Jacob
Clinic activities (as those activities are described above in the
Background section) were "in public use," as that term is used in
section 102(b). Carolwood has made a prima facie case
establishing "public use" by presenting evidence showing that Dr.
Jacob treated human patients with MSM for oral ingestion; that
the patients were informed about what they were being treated
with; that the named inventor, Dr. Herschler, did not control the
treatments; and that the patients were not under any
confidentiality obligations. See Aman Aff., Exh. 5, 7-12. MSM
Investments has not offered any evidence to negate this showing.
There is no evidence to show that Dr. Jacob or any of the
patients were under any confidentiality agreement with Dr.
Herschler. There is also no evidence to show that Dr. Jacob's
administration of MSM was experimental in nature. Thus, applying
a totality of the circumstances test, the Court finds that the
Jacob Clinic activities were "in public use."
Independent of the "public use" analysis set forth above, the
Court finds another basis for establishing that the Jacob Clinic
activities were "in public use" — collateral estoppel. In
Foodscience I, the Vermont court made a specific finding that
Dr. Jacob's administration of MSM was "not experimental" and "was
public." Foodscience I, at 5. By finding that certain claims of
the '039 patent were invalid based on the public use at the Jacob
Clinic, the Federal Circuit in Foodscience II necessarily
upheld the Vermont court's "public use" finding, though it did
not expressly say so. See Garrett v. City & County of San
Francisco, 818 F.2d 1515, 1520 (9th Cir. 1987) (applying
collateral estoppel to issue that was necessarily implicit in
prior holding); Morris v. County of Tehama, 795 F.2d 791, 794
(9th Cir. 1986) (matters determined by necessary implication
given preclusive effect). Because the issue of "public use" in
this case is identical to the one litigated and decided in the
Foodscience case and MSM Investments had a full and fair
opportunity to litigate that issue in the prior case, the Court
finds that the findings that the Jacob Clinic activities were in
public use and not experimental in the Foodscience case have
preclusive effect against MSM Investments in this case.
For these reasons, the Court finds that the Jacob Clinic
activities were "in public use" within the meaning of section
2. The Jacob Clinic Activities "Anticipate" the '878 Patent
"Anticipation" under section 102 is a question of fact and
requires the party challenging the patent to show, by clear and
convincing evidence, that each and every element of the claimed
invention is disclosed in a single prior art reference.
Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1235-36.
The absence of a single claim element negates anticipation.
Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571
In this case, the Court finds that no genuine issue of material
fact exists as to what activities occurred at the Jacob Clinic
and that those activities "anticipate" all of the '878 patent
claims. Each element of the claims is met by the Jacob Clinic
As for independent claims 1 and 5, the evidence shows that Dr.
Jacob administered to human patients a nonzero amount of MSM that
does not occur naturally in, and is in addition to, food actually
The only argument MSM Investments makes against anticipation is
that the Jacob Clinic activities do not meet the claim terms
"feeding" and "increasing the amount of metabolizable sulfur."
MSM Investments's argument rests completely on the premise that
these terms include a temporal limitation and a nutritional use
limitation. Because the Court interprets claims 1 and 5 as not
including these limitations, the Court finds no merit in MSM
Investments's argument. The terms "feeding" and "increasing" are
not limited temporally and do not require the performance of acts
on an ongoing or habitual basis. See Claim Construction Order,
Because the nutritional use limitation was not raised or
addressed in the Court's Claim Construction Order, the Court
addresses this limitation herein.*fn5 At the hearing on this
motion, MSM Investments pointed to the ordinary meaning of "feed"
and the '878 patent specification as supporting a use limitation
requiring nutritional, as opposed to pharmaceutical, use.
According to MSM Investments, the reference to "nourishment" in
the dictionary definition of "feed" indicates a nutritional
purpose.*fn6 In addition, MSM Investments argues, the '878
patent specification teaches using MSM for nutritional purposes
as a dietary supplement. The Court does not find support in
either the claim language or the specification for this
limitation. The term "feeding," on its face, simply does not
suggest any limited purpose and certainly does not exclude giving
food or supplying nourishment for pharmaceutical purposes, as MSM
Investments suggests. MSM Investments's reliance on "nourishment"
is completely unsupported. And, while the '878 patent
specification teaches taking MSM as a dietary supplement, it also
teaches taking MSM for pharmaceutical or pharmacological purposes
(see e.g., '878 patent, col. 13:53-14:62). Based on the claim
language, the '878 patent specification, and file history, the
Court interprets the term "feeding" in claim 1 as not limited
to using MSM for nutritional purposes, as proposed by MSM
MSM Investments's reliance on the term "feeding" as supporting
the nutritional use limitation is inapplicable to claim 5, which
does not recite the term "feeding." The Court rejects any
interpretation of the term "increasing the amount of
metabolizable sulfur" as including the nutritional use
limitation. There is no basis for such a limited reading of this
term. MSM Investments has not pointed to any language in claim 5
that suggests a limited use or purpose that even remotely
resembles the proposed nutritional use limitation.
With respect to the dependent claims, each of the elements is
also met by the Jacob Clinic activities. The evidence shows that
the amount dispensed was up to 4 grams per day (one-half
teaspoon, twice daily). This amount literally meets the
limitations of claims 2 and 6. In addition, because the patients
to whom the MSM was administered were humans, the limitations of
claims 3, 4, 7, and 8 are also met.
For these reasons, the Court finds that the Jacob Clinic
activities meet each and every limitation of claims 1-8 of the
'878 patent and therefore "anticipate" these claims.
3. The Jacob Clinic Activities Occurred More than One Year
Before the Effective Filing Date of the '878 Patent
Whether the Jacob Clinic activities even qualify as prior art
against the '878
patent under section 102(b) depends on the effective filing date
of the '878 patent. Prior art status attaches to these activities
by operation of section 102(b) only as to those claims of the
'878 patent for which the effective filing date is predated by
more than one year. See 35 U.S.C. § 102(b). Defendant Carolwood
contends that the effective filing date of the '878 patent is at
least as early as September 14, 1982, the filing date of the '421
patent.*fn7 Motion, at 6:22-23. MSM Investments argues that the
'878 patent is entitled to an even earlier effective filing date,
August 6, 1979, based on the '130 patent. Opposition, at 15:9-19.
According to MSM Investments, if the Court interprets the '878
patent claims broadly and finds that they are not limited to the
nutritional use of MSM (which the Court has), the '878 patent
claims are entitled to priority to the filing date of the '130
patent. If MSM Investments is correct about the effective filing
date, then the Jacob Clinic activities which occurred in 1981 do
not sufficiently predate, and therefore do not qualify as prior
art against, the '878 patent claims under section 102(b).
The '878 patent claims may rely on the '130 patent for an
effective filing date if, and only if, the requirements of
section 120 have been met.*fn8 The parties dispute compliance of
only one of these requirements — the disclosure requirement of
section 112, paragraph 1. Before a later-filed application may
benefit from the filing date of the earlier-filed application,
the disclosure of the earlier-filed application must satisfy all
of the requirements of section 112, paragraph 1, including the
written description requirement, to support the claims of the
later-filed application.*fn9 Carolwood argues that the '130
patent does not satisfy the written description requirement,
while MSM Investments argues that, under a broad reading of the
claims, the '130 patent does.
The question of whether a priority document contains sufficient
disclosure under section 112, paragraph 1 is a question of law,
but compliance with the written description aspect of that
requirement is a question of fact. Utter v. Hiraga,
845 F.2d 993, 998 (Fed.Cir. 1988). As defined by the Federal Circuit,
"[t]he test for sufficiency of support in a parent application is
whether the disclosure of the application relied upon reasonably
conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter." Ralston Purina
Company, v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985) (citation and quotation omitted). Support in the parent
application must be based on disclosures, and not obvious
variants of the disclosures. Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1571-72 (Fed.Cir. 1997). A claim acquires
the earlier filing date of the parent application if, and only
if, the claim could have
been added to the parent application without introducing new
matter. Studiengesellschaft Kohle, M.B.H., v. Shell Oil Co.,
112 F.3d 1561, 1564 (Fed.Cir. 1997). The court must assess each
claim separately, with all claim limitations appearing in the
supporting disclosure. Id.; Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1567 (Fed. Cir. 1991).
Applying these standards, the Court considers whether the '130
patent contains a written description sufficient under
35 U.S.C. § 112, ¶ 1, to support any of the '878 patent claims. Both
independent claims of the '878 patent (i.e., claims 1 and 5)
employ the term "beneficial amount." In interpreting this term in
the Claim Construction Order, the Court relied heavily on
teachings in the '878 patent specification, rather than the claim
language, to explain what a "beneficial amount" means. The Court
finds, however, that the '130 patent contains no teachings
supporting the term "beneficial amount" and that the complete
absence of such teachings makes the '130 patent specification
inadequate under 35 U.S.C. § 112, ¶ 1, as a matter of law, to
support claims 1 and 5. As discussed above, only three passages
of the '130 patent refer to administering MSM orally. The first
reference (col.2:41-47) contains only a general teaching that MSM
can be administered orally in different ways. The second
reference (col.4:10-12) teaches a benefit associated with orally
ingested MSM (i.e., "to preserve the pliancy of intestinal and
other tissue"). The third reference (col.11:50-61) teaches that
MSM orally ingested by rats in the amount of 20 grams per
kilogram of body weight per day did not cause adverse reactions.
None of these references, under any reasonable interpretation,
suggests what constitutes a "beneficial amount" of MSM, much less
conveys that the inventor was in possession of an invention
employing a "beneficial amount" of MSM at the time that the '130
patent was filed. Dependent claims 2-4 and 6-8 incorporate this
term as a limitation and therefore the '130 patent specification
is inadequate to support these claims as well. Accordingly, none
of the '878 patent claims is entitled to benefit from the '130
patent to establish an effective filing date of August 6, 1979.
Besides the "beneficial amount" limitation, the claims contain
other limitations that are also unsupported by the '130 patent
specification. Claim 2 recites that the amount of MSM provided
for ingestion is at least 100 milligrams, and claim 6 recites
that the amount is at least 100 mg daily. Claim 5 recites
increasing the amount of metabolizable sulfur defined by
providing MSM for ingestion. The Court finds, as a matter of law,
that the '130 patent contains no disclosures adequate to support
these claim recitations under 35 U.S.C. § 112, ¶ 1 and, for these
additional reasons, cannot serve as a basis to establish an
effective filing date for claims 2, 5, and 6.
Since the '130 patent does not contain a written description
adequate to support the '878 patent claims under 35 U.S.C. § 112,
¶ 1, the Court finds that none of the '878 patent claims are
entitled to an effective filing date based on the '130 patent and
that the earliest effective filing date to which the '878 patent
claims are entitled is September 14, 1982. Thus, the critical
date for the '878 patent claims (i.e., the date before which the
section 102(b) bar applies) is September 14, 1981 (one year
before the filing date of the '421 patent).
There is no genuine dispute that the Jacob Clinic activities
took place before September 14, 1981. Carolwood has presented
evidence showing that the activities relied upon took place
during a period at least as early as February, 1981 through
September 14, 1981. Because these activities predate the critical
date of the '878 patent, the Jacob Clinic activities acquire
prior art status under 35 U.S.C. § 102(b) against the '878
Because the Court finds that the Jacob Clinic activities were
"in public use," "anticipate" claims 1-8 of the '878 patent, and
qualify as section 102(b) prior art against the '878 patent, the
Court finds that claims 1-8 of the '878 patent are invalid under
35 U.S.C. § 102(b) as anticipated by the Jacob Clinic activities.
Accordingly, the Court GRANTS Carolwood's motion for summary
judgment for invalidity.
IT IS SO ORDERED.