Law School Case Brief
Juicy Whip, Inc. v. Orange Bang, Inc. - 185 F.3d 1364 (Fed. Cir. 1999)
Section 101 of the Patent Act of 1952, 35 U.S.C.S. § 101, provides that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent on the invention or discovery.
Juicy Whip, Inc. was the assignee of ‘405 patent, which claimed that the patent was a post-mix beverage dispenser that was designed to look like a pre-mix beverage dispenser. The claims required the post-mix dispenser to have a transparent bowl that was filled with a fluid that simulated the appearance of the dispensed beverage and was resistant to bacterial growth. The claims also required that the dispenser create the visual impression that the bowl was the principal source of the dispensed beverage, although in fact the beverage was mixed immediately before it is dispensed, as in conventional post-mix dispensers. Believing that defendants Orange Bang, Inc. and Unique Beverage Dispensers, Inc. (collectively, “Orange Bang”) infringed on its patent, Juicy Whip instituted a patent infringement claim against the defendants. Orange Bang moved for summary judgment of invalidity, and the district court granted Orange Bang's motion on the ground that the invention lacked utility and thus was unpatentable under 35 U.S.C. § 101. The court concluded that the invention lacked utility because its purpose was to increase sales by deception through imitation of another product. The court explained that the purpose of the invention was to create an illusion, whereby customers believe that the fluid contained in the bowl is the actual beverage that they are receiving, when of course it is not. Although the court acknowledged Juicy Whip's argument that the invention provided an accurate representation of the dispensed beverage for the consumer's benefit while eliminating the need for retailers to clean their display bowls, the court concluded that those claimed reasons for the patent's utility were not independent of its deceptive purpose, and are thus, insufficient to raise a disputed factual issue to present to a jury. The court further held that the invention lacked utility because it improved the prior art only to the extent that it increased the salability of beverages dispensed from post-mix dispensers. According to the district court, an invention lacked utility if it conferred no benefit to the public other than the opportunity for making a product more salable. Finally, the court ruled that the invention lacked utility because it was merely an imitation of the pre-mix dispenser, and thus, did not constitute a new and useful machine.
Was the ‘405 patent invalid for lacking utility?
The Court held that the requirement of utility in patent law was not a directive to the Patent and Trademark Office or the courts to serve as arbiters of deceptive trade practices. According to the Court, the fact that one product could be altered to make it look like another was in itself a specific benefit sufficient to satisfy the statutory requirement of utility. As such, the Court concluded that the district court erred in holding that the invention of the patent lacked utility because it deceived the public through imitation in a manner that was designed to increase product sales.
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