In re DBC, Fed. Cir. 2008.

By: Karin C. Khan

DBC, LLC (“DBC”) held U.S. Patent No. 6,730,333 (the “’333 patent”) for a composition containing the mangosteen fruit, which was marketed and sold as XanGoTM. This fruit is known for its health benefits, and several studies have been performed to identify the key elements and parts of the fruit. DBC had obtained the ‘333 patent for a nutraceutical beverage comprising the pericarp and juice from the mangosteen tree, as well as at least one juice from a group of fruit and vegetable juice. After the issuance of the ‘333 patent on May 4, 2004, the United States Patent & Trademark Office (“PTO”) granted a third-party’s request for reexamination. In the reexamination, all of the claims of the ‘333 patent were rejected by the PTO’s Board of Patent Appeals and Interferences (the “Board”) as being obvious over seven prior art references even though DBC had submitted three declarations in support of objective evidence of nonobviousness.

In turn, DBC appealed the Board’s decision based on three arguments. One of DBC’s arguments was that the Board’s decision should have been vacated because two members of the panel who overhead the appeal were unconstitutionally appointed. Although the decision here went into great detail regarding the sufficiency of DBC’s argument, the Court ultimately decided that DBC was untimely in raising this argument.

DBC also challenged whether the Board properly established a prima facie case of obviousness. In particular, DBC argued that one of the cited references that taught combining a fruit juice and mangosteen pericarp was simply cumulative and non-analogous art. However, after a review of the arguments made before the Board, the Court found that the reference in question was the only one that taught combining a mangosteen rind with fruits and fruit juices in order to make a nutraceutical beverage.

At one point during the reexamination, DBC submitted three declarations by its officer and employees in support of the commercial success of XanGoTM. The Board found that the declarations were insufficient to overcome the prima facie case of obviousness, namely because (1) they did not think that the declarations established that XanGoTM was commensurate in scope with the claims of the ‘333 patent; and (2) they found that no connection was established between the invention and its commercial success.

As to the Board’s first finding, the Court agreed with DBC that the declarations did not have to provide intricate detail regarding the contents of XanGoTM. Instead, it was adequate to aver personal knowledge in the declaration, especially in light of the fact that the XanGoTM product contained a product ingredient label. The declarations were sufficient as long as DBC’s product was within the scope of the claims of its patent.

As to the Board’s second finding, the Court agreed with the Board that there was no “nexus” between the invention and the DBC’s evidence of commercial success. Their conclusion was mainly based on the fact that DBC had aggressive marketing techniques for its products. Thus, the substantial sales figures did not explicitly demonstrate a connection to the claimed invention. In all, the Court affirmed the Board’s finding.