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September 30, 1999


The opinion of the court was delivered by: Infante, Chief United States Magistrate Judge.

  INVALIDITY UNDER 35 U.S.C. § 102(b) AND § 103

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 below.


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

  1. A method of feeding [] an animal which comprises
  providing to the animal for ingestion a beneficial
  amount of methylsulfonylmethane which is in addition
  to any amount present as a naturally occurring
  constituent in the foodstuff ingested by the animal.
  5. A method of increasing the amount of metabolizable
  sulfur ingested by an animal which comprises
  providing to the animal for ingestion thereby a
  beneficial amount of methylsulfonylmethane which is
  exogenous to and which is in addition to any amount
  thereof which is present as a naturally occurring
  ingredient of the foodstuff sources thereof ingested
  by the animal.

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 analysis herein.

The prosecution history offers insight into the '878 patent claims. In an Office Action dated May 14, 1991, the Patent Examiner assigned to the '878 patent application made three rejections. First, the Examiner rejected claims 1-4 as indefinite under 35 U.S.C. § 112, ¶ 2. Second, the Examiner rejected claims 1-4 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 5-11 of U.S.Patent No. 4,616,039 ("the '039 patent"). The Examiner explained that "the determination of the optimum proportioning of ingredient is considered to be well within the skill of the art." Office Action, at 2:13-15. And third, the Examiner rejected claims 5-8 as unpatentable over claims 1-4 of the '039 patent, applying the same reasoning as in the second rejection. In an Amendment filed June 11, 1991, Mr. Herschler overcame these rejections by amending the preamble of claim I and filing a terminal disclaimer.

The '878 patent claims priority to a chain of nine earlier-filed applications. The chain of applications and their relationships are summarized in the following table:

  Serial No. (Patent No.)  Filing Date (Issue Date)       Relationship to Parent
  06/071,068 (4,296,130)   Aug.  6, 1979 (Oct. 20, 1981)  no parent
  06/277,592 (4,477,469)   Jun. 26, 1981 (Oct. 16, 1984)  divisional of 06/071,068
  06/418,110 (4,514,421)   Sep. 14, 1982 (Apr. 30, 1985)  continuation-in-part of 06/277,592)
  06/584,354 (4,568,547)   Feb. 28, 1984 (Feb.  4, 1986)  continuation-in-part of 06/418,110
                                                          and 06/277,592
  06/601,771 (4,559,329)   Apr. 17, 1984 (Dec. 17, 1985)  continuation-in-part of 06/418,110,
                                                          and 06/277,592
  06/727,989 (4,616,039)   Apr. 29, 1985 (Oct.  7, 1986)  continuation-in-part of 06/418,110,
                                                          06/584,354, 06/601,771
  06/878,948 (4,863,748)   Jun. 26, 1986 (Sep.  5, 1989)  divisional of 06/727,989 and continuation-in-parts
                                                          of 06/418,110,
                                                          06/584,354, 06/601,771, 06/727,989
  07/385,117 (4,973,605)   Jul. 26, 1989 (Nov. 27, 1990)  divisional of 06/878,948
  07/564,946               Aug.  9, 1990                  divisional of 07/385,117
  07/654,856 (5,071,878)   Feb.  6, 1991 (Dec. 10, 1991)  continuation-in-part of 07/564,946

The parties dispute the effective filing date of the '878 patent. Defendant Carolwood contends that the effective filing date of the '878 patent is September 14, 1982 (the filing date of the '421 patent). Motion, at 6:22-23. MSM Investments argues that the effective filing date is August 6, 1979, based on the '130 patent. Opposition, at 15:9-19.

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:

    Depending on its intended use, a preparation can
  contain MSM in solution or in a dispersion. It may
  take the form of a cream, lotion, gel or paste for
  topical administration or a liquid, solid or vapor
  for administration by other routes such as injection,
  inhalation, oral injestion [sic] and the like.

'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:

  [MSM] can be included in syrups, tablets or capsules
  which are ingested to preserve the pliancy of
  intestinal and other tissue.

'130 patent, at 4:10-12. And, the third reference reads as follows:

MSM Administered Orally

Example 16

    To determine whether living animal subject would
  react adversely to orally administered compositions
  of MSM, a 40 weight percent solution of MSM in
  distilled water was prepared. This solution was
  administered orally to laboratory rats at such a rate
  that each rat received 20 grams of MSM per kilogram
  of body weight per day.
    After six weeks of administration, none of the
  animals had died or displayed unusual ...

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