Mysterious to even many patent practitioners, plant patent issues create their own peculiar body of controlling case law.  A recent Federal Circuit decision, Delano Farms v. The California Table Grape Commission, illustrates this point well.

The Delano Farms case explores what factually does not count as invalidating “public use” of two patented table grape varieties, the Scarlet Royal and the Autumn King.  The case facts are a sociological study of how grape growers sometimes covertly operate in America’s cornucopia, the Central Valley of California.  In down-to-earth terms, the case reveals how fresh produce growers and their marketers tend to look out after their own—even when it means lying under oath in order to protect each other.

What Are Plant Patents Anyway?

Plant patents came into legal being relatively late in our nation’s history.  The Plant Patent Act of 1930 is really a posthumous tribute to the legacy of Luther Burbank (1849 – 1926), the legendary “Wizard of Horticulture.”  Burbank’s cross-breeding work led to such famous varieties as the Russet Burbank potato (used in McDonald’s french fries), the plumcot, rainbow chard and the Shasta daisy.  In testimony supporting passage of the Plant Patent Act, his good friend Thomas Edison opined that this bill “will, I feel sure, give us many Burbanks.”

Plant patents differ from regular utility patents, which generally cover “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” per 35 U.S.C. § 101.  In contrast, a plant patent is available for those who invent or discover and then asexually reproduce a distinct and new variety of a plant, other than a tuber propagated plant or a plant found in an uncultivated state.  The plant patent is supposed to describe the subject plant and identify its new and distinct features.  35 U.S.C. §§ 161, 162.

Many casually, but incorrectly assume that genetically modified seed patents (such as those issued to Monsanto) must be within the realm of plant patent law.  As the foregoing definition demonstrates, the Plant Patent Act specifically requires asexual, not seed-based reproduction of a plant.  Asexual propagation methods include cuttings, layering, budding and grafting.  “Cuttings involve rooting a severed piece of the parent plant; layering involves rooting a part of the parent and then severing it; and budding and grafting is joining two plant parts from different varieties.”[1]

Plant patents—unlike utility patents—can only include one invention claim.  The single claim covers the plant material itself.  For example, the plant patent claim for the Scarlet Royal grape is for a “new and distinct variety of grapevine denominated ‘Scarlet Royal,’ substantially as illustrated and described, characterized by its attractive dark red fruit color, oval fruit shape, and firm flesh texture with a neutral sweet flavor.”  US PP16,229.  The single claim for the Autumn King plant patent is for a “new and distinct variety of grapevine plant, ‘Autumn King,’ substantially as illustrated and described, characterized by its attractive pale green fruit color, cylindrical to ovoid fruit shape, and firm flesh texture with a neutral sweet flavor.”  US PP16,284.

Setting the Table of Case Facts

The Delano Farms case involves a patent validity battle between major table grape growers and the owner and exclusive licensor of the Scarlet Royal and Autumn King table grape varieties.  The U.S. Department of Agriculture (USDA) developed these two varieties and exclusively licensed them to the California Table Grape Commission.  More detailed case facts are set forth in the Findings of Fact and Conclusions of Law entered by the federal trial court located in the Eastern District of California.

The Delano Farm plaintiffs (also including Four Star Fruit and Gerawan Farming) sought to invalidate these two grapevine plant patents based on the “public use” bar of 35 U.S.C. § 102(b).  That former patentability bar states that a person will be entitled to a patent unless the invention was in public use in the United States more than one year before the date of the patent application filing.  With the passage of the Leahy-Smith America Invents Act in 2011 and its first-to-file patent regime, public use before a patent application filing date is now grounds for patent invalidation.[2]

The USDA applied for plant patent protection for both varieties on September 28, 2004.  That means that “public use” of the two grapevines before September 28, 2003, potentially would invalidate the grapevine patents.  That date becomes the “critical bar date” for analytical purposes.

In August 2001, the USDA held an “Experimental Variety Open House.”  Attendees could view and taste the mature fruit from these two table grape varieties.  The plant vines and cuttings themselves were not on display at the open house.  Two orchard owner brothers, Jim and Jack Ludy, attended the open house and asked whether growers would be permitted to view the experimental varieties in the field.  Because of the USDA patenting program, they were told “no.”

The trial focused on the covert activities of the Ludy brothers; their cousin, Larry Ludy; a USDA employee, Rodney Klassen; and a table grape marketer, Richard Sandrini.  Their interactions represent a classic example of the idiom, “you scratch my back and I’ll scratch yours.”

At plant breeding sites, Klassen performed various duties as a USDA employee, including operating a trailer, spraying grape plots for disease and weed control, and pruning.  Klassen thus had access to the two grapevines displayed at the open house.  When asked by Jim Ludy whether he could obtain the unreleased varieties for him, Klassen replied that he would “take care” of him.

When Klassen delivered the Autumn King and Scarlet Royal cuttings to Jim Ludy in an unmarked paper bag, he told Ludy to not let the plant materials “get away from him” and not to put any of the grapes “in a box,” i.e., not to sell them commercially.

Jim Ludy then gave “a few buds” of the USDA’s proprietary plant materials to his cousin Larry and told him that they should “keep it to ourselves.”  Cousin Larry did not follow that advice.  Richard Sandrini grafted over 19 acres of  grapevines with the Autumn King plant cuttings that Larry gave him .

The unreleased varieties growing on Larry Ludy’s orchard properties were all located on an outside row on his farm.  Those rows were visible from a nearby dirt road.  No fences surrounded the grapevines and the road was publicly accessible.  A separate parcel also included the novel grapevines.  It too was not fenced and was publicly accessible by dirt roads.  None of the plantings appear to have been marked with signs or labeled in any way.

When his Autumn King grapes were harvested (after the critical bar date), Sandrini intentionally mislabeled them as “Thompson Seedless” grapes in order to avoid unwanted attention from the USDA.  Nevertheless, he received a premium price for them—significantly more than would have been typical for genuine Thompson Seedless grapes.

During a pretrial deposition in 2006, Jim Ludy testified falsely under oath in order to protect Rodney Klassen’s identity as his source of his USDA plant cuttings.  When shown Klassen’s photograph, Ludy lied.  He said he didn’t recognize him nor remember the name of the person who had given him the proprietary grapevines.  After Klassen’s death, Ludy admitted in a 2012 deposition that his prior deposition testimony was false.[3]

Plant Anonymity in California’s Vast Central Valley

To determine whether the use of the patented grapevines one year before their patent application date constitutes “public use,” a court must determine whether the purported use was (1) accessible to the public; or (2) was commercially exploited.  The evidence necessary to invalidate a patent on public use grounds must be “clear and convincing.”

No trial evidence showed that the purloined grapevine cuttings or grapes had been sold to the public before the critical bar date.  Therefore, that patent invalidation argument was not available to the plaintiffs.  Rather, public accessibility became a focal point of trial testimony.

As anyone can attest who has driven through California’s Central Valley, you will cruise by seemingly endless arrays of cultivated fields and orchards.  Its sheer expanse can be overwhelming and mind-numbing.  That atmospheric fact worked in the USDA’s favor.  Without close, expert scrutiny, the unreleased grapevines were not publicly identifiable even if they could be seen and examined by the public.

A key paragraph of the trial court’s conclusion of law highlights this basic point:

Although the Ludy’s took no affirmative steps to keep secret their vines of the unreleased varieties by signing a confidentiality agreement, by erecting a fence, or otherwise, the anonymity of the unreleased varieties was assured because not even the inventor of the varieties, Dr. Ramming, could identify a variety solely by looking at the vines, buds or cuttings.  Essentially, the vines were hiding in plain sight.

Despite speculation as to what members of the public might have seen in the publicly accessible orchards, no trial witness testified to having seen or recognized the grapevines or mature fruit from these varieties prior to the critical bar date.  As the trial court found, it “is impossible to reproduce a grapevine without possessing plant material for the vine.  Merely seeing the vine or possessing the fruit is not sufficient to allow reproduction.”  Findings of Fact and Conclusions of  Law, ¶ 43.

The Ludy’s, moreover, had an economic incentive to keep their unauthorized possession of the unreleased grapevines a closely guarded secret.  They were losing money on existing grape varieties and “needed to graft over their existing vines to a more profitable variety to avoid going out of business.”  Id.  47.  “Obtaining the Scarlet Royal and Autumn King plant material prior to its release provided [them] with a ‘big advantage’ over other growers.”  Id.

These agricultural facts demonstrated that there was no legally cognizable “public use” of the two patented grapevines before the critical bar date.

Conclusion

The Delano Farms case affirms the validity of the Scarlet Royal and Autumn King plant patents on very fact-specific grounds.  The individuals who spirited away the USDA’s patented grapevines kept their propagation a secret in order to enrich themselves and to gain a head start on other table grape growers.  Their covert use cannot be deemed to be “public” use.  As for the public at large, they really had no clue as to what they may have seen or had access to along the dirt roads that crisscross California’s Central Valley.  Within its vast geographic range, patentable plants can and do hide in plain sight.