Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., No. 2009-1018 (Fed. Cir. Nov. 19, 2009)

The asserted patent was directed to methods for enhancing muscle performance or recovery from fatigue by administering a nutritional supplement. After claim construction, the alleged infringer moved for summary judgment of invalidity, arguing that the patent was anticipated by a number of nutritional supplement advertisements printed in prior art fitness magazines. The district court granted the summary judgment motion, finding the advertisements anticipating and enabled to establish a prior public use or offer for sale. The plaintiff/licensee appealed the district court´s grant of summary judgment of invalidity.

The Federal Circuit affirmed. On appeal, the licensee argued that the prior art´s disclosure of “increasing muscle strength” did not meet the claimed limitation of “enhancing muscle performance.” The court found that this argument “borders on the frivolous” because the licensee repeatedly used the alleged infringer´s advertising claims of “enhancing muscle strength” to support its allegations of infringement. “[I]t is axiomatic that that which would literally infringe if later anticipates if earlier.”

The court also rejected the licensee´s argument to read in a claim limitation that the nutritional supplement must be effective, especially considering that the claims do not restrict the administered compositions to any specific dosage or amount, or even an “effective amount.” “Where the claims themselves do not require a particular activity, we have no call to require something more from an anticipating reference.”

The court also found that the prior art advertisements enabled one of skill in the art to practice the claimed invention. Even though the advertisements lacked any guidance on appropriate ingredient dosages to achieve a composition effective for enhancing muscle performance or recovery from fatigue, if such limitation were even required, one of skill in the art would simply need to mix together the known ingredients listed in the advertisements and administer the composition as taught by the advertisement.

A copy of the opinion can be found here.