March 5, 2020

Hot Potato War: Patent to Pretreat Vegetables Not Directed to Ineligible Concept

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

J.R. Simplot and McCain Foods have spent the last few years battling in the U.S. District Court for the District of Idaho over issues related to – unsurprisingly – potatoes, with each party asserting a design patent related to a spiraled potato. However, for this blog, we'll focus on the challenge to McCain's utility patent that is directed to the process of using high-energy electric field technology to pretreat potatoes (and other vegetables) before cutting and cooking them.

Simplot filed a motion for judgment on the pleadings, arguing that McCain's patent is ineligible because it contains an overbroad claim directed to both a natural law and an abstract idea: that vegetables soften when exposed to an electric field. Claim 1 of the asserted patent reads:

A process for treating vegetables and fruit before cooking in order to reduce their resistance to cutting, characterized by the application of a high electric field directly to the vegetables and/or fruit under conditions such that the resulting increase in the temperature of the vegetables and/or fruit is almost zero or at least sufficiently low as to not amount to a preheating step.

Court's Section 101 Analysis

Simplot argued that vegetables softening (i.e., becoming easier to cut) when exposed to an electric field is a natural law and, therefore, a patent directed to an electric field making vegetables easier to cut is not patent eligible. In Simplot's view, claim 1 is impermissibly directed at the natural law itself. The court, however, noted that while it is true that Section 101 prohibits patents based on laws of nature, a claim drawn to a law of nature or natural phenomena does not become nonstatutory simply because it contains a law of nature.

Looking at Rapid Litigation v. CellzDirect, the court stated that while the claimed process employs a well-known natural phenomena, it does not preempt the use of the phenomena. Instead, the claim only seeks to foreclose the use of the phenomena "in conjunction with all of the other steps of the claimed process." This cut against a finding that the asserted patent was impermissibly directed to a natural law.

Simplot also argued that the claim is directed to an abstract idea. It reasoned that softening vegetables before cutting and cooking is a vague idea, so there must be some inventive concept for the patent to survive. The court, again, disagreed. It said the inventors recognized that applying an electric field to vegetables would soften them, but that's not what they patented. Their patent claims an application of that knowledge to create a new process.

The court also looked at the U.S. Patent and Trademark Office's (USPTO) recent consideration of the patent in an inter partes review as "something of extrinsic evidence" regarding the patent's validity. The USPTO's action "seems to suggest that the claimed process of pretreating vegetables and fruit with a high electric field under the specified claim parameters before cutting and cooking is innovative." For all of these reasons, the court found the asserted claim patent eligible and denied the motion for judgment on the pleadings.

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