In a patent infringement case in which Jackson Walker partner Bob Latham argued for Defendant/Appellee Medical Research Institute, the Federal Circuit upheld a summary judgment by the Eastern District of Texas, finding that the patent in suit was invalid. Iovate Health Science, Inc. v. BSN, Inc. and Medical Research Institute, 92 U.S.P.Q. 2d 1672 (Fed. Cir. 2009).

Judge Ron Clark of the Eastern District of Texas had previously held that claims in the patent at issue, directed to the administration of dietary supplements, were anticipated by a prior printed publication — namely advertisements in fitness magazines for supplements enhancing muscle recovery. Judge Clark also found that the on-sale bar of 35 U.S.C. § 102(b) provided a basis for summary judgment for the defendants as well, and that the product had been in public use more than one year prior to the critical date of the patent in suit.

The Federal Circuit affirmed the summary judgment in its opinion of November 19, 2009, finding that the advertisements in a fitness magazine constituted an anticipatory prior printed publication that invalidated the pertinent claims of the patent in suit.In a concurring opinion, Judge Mayer opined that the products were on sale more than one year before the critical date and therefore the on-sale bar of 35 U.S.C. § 102(b) would compel judgment for the defendant/appellees as well.

With Mr. Latham on the brief were Jackson Walker partner David Moran, chair of the firm’s Appellate practice group, and Jackson Walker associate Sara Borrelli.