Upon Wysong Corporation’s request, an ex parte patent reexamination was made of a disputed patent issued by the United States Patent and Trademark Office (USPTO). The patent office has rejected all 17 claims of a food probiotic patent (patent #5,968,569) previously granted to Nestec (Nestle/Purina) on October 19, 1999. This will effectively revoke the patent.
With ample prior art evidence, Wysong Corporation (Midland, MI) proved it had invented, and long incorporated into production, the probiotic application technology some 15 years prior to the patent.
In summary, the USPTO patent examiner states -
“Claims 1-17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Wysong I in view of Wysong II, Wysong III…”
This decision by the USPTO will effectively null Nestec’s suit against Wysong filed in October of 2008 in Missouri federal court for alleged patent infringement. This also defeats Nestec’s attempt to force, by way of exorbitant litigation costs, Wysong to pay them licensing fees for Wysong’s use of its own invention.
Wysong’s counterclaims against Nestec remain to be litigated. Nestec has reportedly been collecting licensing fees from companies internationally for the use of the patent’s technology, and attempting to force those who would not comply – such as Wysong – into costly patent litigation.
In its counterclaim, Wysong argues that Nestec is guilty of Sherman Act violations/patent misuse, misleading the United States Patent Office, failing to comply with the U.S. Patent Laws, including 35 USC §101-103, 111-113 and 133, improper attempts to monopolize the market, unfair competition, antitrust violations, false advertising under the Lanham Act, state claims for deceptive trade practices, RICO violations, and is subject to punitive damages under the Clayton Act.
Wysong’s position, leading to the ex parte filing, was that the patent should have never been granted by the United States Patent and Trademark Office, and that it has always been invalid and unenforceable due to Wysong’s clear prior invention. Accordingly, Wysong contends that any attempt by Nestec to force a company into patent litigation or surrendering licensing fees is unethical and illegal.
Wysong used the technology in products distributed domestically and internationally for almost 15 years prior to Nestec’s application for the patent. Therefore, Wysong claims that the patent holders copied Wysong art and did not fulfill their duty to reveal this to the patent office when filing, or anytime thereafter. Additionally, Wysong prior art was instrumental in defeating an attempt by Nestec to obtain a nearly identical sister probiotic patent in Europe within the past few years, which proves they (Nestec) had full knowledge of Wysong’s prior invention before their litigation actions against Wysong in the United States.
The technology at issue involves the application of probiotic microorganisms (such as found in yogurt) to dried ready to eat human and animal foods. Wysong argues this imparts important health benefits to animals and humans alike, including stimulation of natural immunity, inhibition of disease-causing organisms, and, among other salubrious effects, production of enzymes, vitamins, and growth factors. The medical and scientific literature is replete with the documented benefits of these organisms.
Wysong has used this technology in both its human and animal foods since the early 1980s. On the other hand, the technology in the Nestle/Purina patent was never actually implemented in their products, and the patent has been reportedly used solely as a means to collect licensing fees.