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Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588, 76 U.S.P.Q. 280

Facts

Kalo Inoculant Company held a patent for a mixed culture of Rhizobium bacteria that could inoculate various leguminous plants without mutual inhibition. Prior to this patent, inoculants typically contained only one species of bacteria, requiring farmers to use multiple products for different crops. The district court found the patent invalid, but the Circuit Court of Appeals reversed this ruling, asserting that the mixed culture was indeed a valid invention.

Through some mysterious process leguminous plants are able to take nitrogen from the air and fix it in the plant for conversion to organic nitrogenous compounds. The ability of these plants to fix nitrogen from the air depends on the presence of bacteria of the genus Rhizobium which infect the roots of the plant and form nodules on them. These root-nodule bacteria of the genus Rhizobium fall into at least six species. No one species will infect the roots of all species of leguminous plants. But each will infect well-defined groups of those plants.

Issue

The main legal issue was whether the product claims of Kalo Inoculant Company's patent were valid and whether the patent constituted an invention under patent law.

The question of validity is the only question presented by this petition for certiorari.

Rule

The court applied the principle that for a patent to be valid, it must disclose an invention or discovery that is not merely a discovery of a natural phenomenon but an application of that discovery to a new and useful end.

A product must be more than new and useful to be patented; it must also satisfy the requirements of invention or discovery.

Analysis

The court analyzed the claims of the patent in light of the established legal standards for patentability. It concluded that while Bond's discovery of non-inhibitive strains was significant, the mere combination of these strains into a mixed culture did not constitute an invention as defined by patent law. The court emphasized that the bacteria's natural qualities were not patentable and that the combination did not produce a new or different result.

The application of this newly-discovered natural principle to the problem of packaging of inoculants may well have been an important commercial advance. But once nature's secret of the non-inhibitive quality of certain strains of the species of Rhizobium was discovered, the state of the art made the production of a mixed inoculant a simple step.

Conclusion

The Supreme Court reversed the Circuit Court of Appeals' decision, holding that the product claims did not disclose an invention or discovery within the meaning of the patent statutes.

Since we conclude that the product claims do not disclose an invention or discovery within the meaning of the patent statutes, we do not consider whether the other statutory requirements contained in 35 U.S.C. s 31, 35 U.S.C.A. s 31, R.S. s 4886 are satisfied.

Who won?

Kalo Inoculant Company prevailed in the Supreme Court's decision, which upheld the district court's ruling that the patent was invalid for lack of invention.

The District Court held the product claims invalid for want of invention and dismissed the complaint and counterclaim.

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