Staccato Cherry U.S. Plant Patent InvalidatedJanuary 5, 2023

On December 30, 2022, a federal judge in the Eastern District of Washington granted a motion for summary judgment seeking to invalidate U.S. Plant Patent No. 20,551, covering a variety of cherry known as Staccato.

Staccato is a sweet cherry variety developed by Agriculture and Agri-Food Canada. The Canadian government, the owner and assignee of the patent, initially accused defendants Van Well Nursery, Inc. and Monson Fruit Company, Inc. of patent infringement. The defendants countered that the patent was invalid because the product was on sale for more than one year before the patent application was filed.

Under 35 U.S.C. § 102(b) (pre-AIA), a patent claim is invalid if “the invention was…on sale in this country, more than one year prior to the date of the application for patent in the United States.” The on-sale bar is triggered if the claimed invention was both (1) the subject of a commercial offer for sale and (2) ready for patenting more than one year before the United States patent application filing date.

In this case, business records clearly showed sales of 18,200 pounds of Staccato cherries in the year 2000, more than one year before the effective filing date. The Court also found that Staccato was reduced to practice before the sale because it (1) was known to possess characteristics that distinguished it as a new, late-harvest variety, and (2) was reproduced through asexual propagation in Canada for each season after 1992.

Although the plant patent was found invalid, several other claims still remain in the case, including allegations of unfair competition and false advertising.

Brian D. Keppler, Ph.D. is a registered Patent Agent in the MVS Biotechnology & Chemical Practice Group. To learn more, visit our MVS website, or contact Brian directly via email.

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