Ending the 10-year international reign of terror of the yellow bean patent, the U.S. Court of Appeals for the Federal Circuit upheld a final rejection of claims to yellow beans by the Board of Patent Appeals and Interferences (Board) on the grounds of obviousness. In re POD-NERS, LLC, Case No. 2008-1492 (Fed. Cir., July 10, 2009) (nonprecedential) (per curiam; Prost, J., concurring).
While vacationing in Mexico, Larry Proctor purchased a bag of dry beans which included yellow beans. Back home in Colorado, he planted only the yellow beans and then harvested and replanted over three years. Proctor’s efforts yielded beans with a particular and reproducible yellow color. He was granted a patent, assigned to POD-NERS. Proctor named the bean “Enola,” his wife’s middle name.
POD-NERS sent a letter to all Mexican bean importers demanding that they take a license if they wished to continue selling yellow beans. Export sales by Mexican farmers reportedly dropped 90 percent. These were farmers whose families had grown and sold yellow beans for generations. The International Center for Tropical Agriculture in Colombia filed a request for reexamination. POD-NERS responded by seeking reissue of the patent with 11 more claims. Ultimately, Board held all claims invalid for obviousness. POD-NERS appealed.
The Federal Circuit affirmed. The Court stated that Proctor had done nothing but perform routine, well-established methods in the breeder-grower art. The Court noted that there was no indication that Proctor was trying to achieve the particular yellow color or that he was attempting to do anything more than reproduce the beans he acquired in Mexico or improve them. The Court further reasoned that the yellow color was not claimed to have any “meaningful impact” on the beans’ properties, nor was there evidence of secondary considerations such as long-felt need. The Court relied on printed publications describing well-known bean variants that rendered the Enola bean obvious, if not anticipated. The Court concluded that “[t]o reject the Board’s obviousness ruling here […] would be to deny the Board that very ‘recourse to common sense’” that KSR encourages.