# Delano Farms v. Table Grape Commission: Secret Vines and the Public Use Bar

> Federal Circuit held that clandestine, unauthorized planting of patented USDA grape varieties was not an invalidating public use, so the plant patents survived.

Topic: Patents  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/delano-farms-v-table-grape-commission-public-use/


*Delano Farms Co. v. California Table Grape Commission*, 778 F.3d 1243 (Fed. Cir. 2015), decided January 9, 2015, answers a question that self-replicating inventions make unavoidable: what happens to the public use bar when the invention is a plant that anyone who possesses it can copy simply by letting it grow? The Federal Circuit held that the secret, unauthorized planting of two patented grape varieties by growers who knew they were not supposed to have them was not an invalidating public use, and the United States Department of Agriculture's plant patents survived. The decision is now the leading modern authority on how the public use bar operates for living, reproducible material.

The case matters because plants defeat the usual intuition behind the bar. With a machine, a single unit in public hands rarely lets the world reproduce the invention. With a grapevine, one clandestine cutting can seed an industry. *Delano Farms* tells us that the analysis still turns on public accessibility and control, not on the theoretical ease of copying.

## At a glance

- **Case:** *Delano Farms Co. v. California Table Grape Commission*, 778 F.3d 1243 (Fed. Cir. 2015)
- **Decided:** January 9, 2015, United States Court of Appeals for the Federal Circuit, affirming the district court
- **Holding:** Unauthorized cultivation of patented grape varieties whose existence the growers kept secret, and which could not be identified by looking at the vines, is not an invalidating public use under pre-AIA 35 U.S.C. Section 102(b).
- **Status:** Final. The plant patents on the Scarlet Royal and Autumn King varieties were upheld.

## The patents and the challenge

The USDA developed two table grape varieties, Scarlet Royal and Autumn King, and obtained plant patents on them. It exclusively licensed those patents to the California Table Grape Commission, which sublicensed California growers, collected royalties shared with the USDA, and required growers to refrain from propagating the plants without authorization. Delano Farms and other grower-plaintiffs, unhappy with paying royalties, sued to invalidate the patents. Their theory was the public use bar: they contended the two varieties had been in public use in the United States more than one year before the patent applications were filed, which under pre-AIA 35 U.S.C. Section 102(b) would render the patents invalid.

The factual hook was real. Before the varieties were officially released, plant material had escaped USDA control. Two individuals had obtained unreleased plant material and grown the vines, and the plaintiffs argued that this pre-release cultivation was exactly the kind of use that Section 102(b) forbids. The district court disagreed after a bench trial, and the Federal Circuit affirmed.

## What the public use bar is for

Section 102(b) in its pre-AIA form barred a patent if the invention was "in public use or on sale in this country, more than one year prior to the date of the application." The doctrine has deep roots, tracing back through *Egbert v. Lippmann*, 104 U.S. 333 (1881), the corset-spring case that held even a single unrestricted use by one person could be public. The bar serves several policies: it discourages inventors from commercially exploiting an invention in secret while deferring the patent filing to stretch the effective monopoly, it protects the public's reliance on things it has been allowed to use freely, and it pushes prompt disclosure.

The modern framework the Federal Circuit applied here comes from its own cases rather than from *Pfaff v. Wells Electronics, Inc.*, 525 U.S. 55 (1998), which set the two-part test for the companion on-sale bar. As the court put it in *Invitrogen Corp. v. Biocrest Manufacturing, L.P.*, 424 F.3d 1374, 1380 (Fed. Cir. 2005), and repeated in *Delano Farms*, "[t]he proper test for the public use prong of the section 102(b) statutory bar is whether the purported use was accessible to the public or was commercially exploited." Use that is genuinely secret and controlled generally does not trigger the bar. The doctrine distinguishes between use by the inventor, where even secret commercial use can invalidate, and use by third parties, where the question centers on whether the third-party use made the invention available to the public.

## Why concealment carried the day

The Federal Circuit affirmed the finding that the pre-release cultivation was not a public use because it was not accessible to the public in any meaningful sense. Importantly, the vines themselves were not physically hidden: the district court found that both growers grew the plants in locations visible from public roads. What made the use non-public was something else. Three findings anchored the result. First, both growers knew they were not authorized to have the plants and knew they needed to conceal their possession of them, which created the expectation of secrecy the doctrine looks for even without a formal confidentiality agreement. Second, the vines were unlabeled, so nothing identified them as the new varieties, and the plantings were tiny next to the rest of the growers' acreage. Third, and decisively, the district court found as fact that grape varieties cannot be reliably identified simply by viewing the growing vines. The challengers introduced no evidence that anyone beyond the few individuals directly involved had ever recognized the unreleased varieties.

Put together, those findings meant the invention was never placed in the hands of a public that could appreciate it or reproduce it as the claimed invention. The plants sat in the ground in plain sight, but the invention, understood as the distinct new variety, remained effectively secret because nobody looking at the rows could tell what they were. The court quoted its earlier decision in *Dey, L.P. v. Sunovion Pharmaceuticals, Inc.*, 715 F.3d 1351, 1359 (Fed. Cir. 2013), for the point that "if members of the public are not informed of, and cannot readily discern, the claimed features of the invention in the allegedly invalidating prior art, the public has not been put in possession of those features." The court treated the growers' knowledge that they should not have the material as reinforcing the private, controlled character of the use rather than as evidence of public availability.

## The self-replication wrinkle

What makes *Delano Farms* more than a routine public use case is the nature of the invention. A grapevine is a machine for copying itself. One might argue that once even a single unauthorized vine exists, the invention has escaped, because anyone with a cutting can reproduce it forever. The Federal Circuit did not adopt that reasoning. The relevant question remained whether the invention was accessible to the public, not whether the material was theoretically capable of endless propagation in the wrong hands. Because the specific vines were unidentifiable and held by people who kept their possession of them secret, the self-replicating potential of the plants did not convert a private use into a public one. The decision therefore gives plant breeders meaningful breathing room during the vulnerable pre-release period, so long as material that leaks out stays unidentifiable and the people holding it keep their possession genuinely secret.

## Open questions

*Delano Farms* leaves several matters unsettled. The case was decided under pre-AIA Section 102(b), and while the "public use" language survives in the AIA's Section 102(a), the AIA added the phrase "or otherwise available to the public," and courts are still mapping how that clause interacts with third-party secret uses. The opinion also depended heavily on the specific factual finding that the varieties could not be identified by sight; a different plant, whose novelty is visible on inspection, might yield a different outcome from the same conduct. Most significantly, the court expressly declined to decide whether use of an invention by someone who misappropriated it, or obtained it through other improper means, can ever qualify as an invalidating public use. It did not need to reach that question, because the use here was not public even setting aside how the growers got the material. Those questions await cases with less favorable facts.

## Implications for inventors and businesses

- **Concealment can preserve rights, but only real concealment.** *Delano Farms* rewards genuine secrecy and control during the pre-filing period, so breeders and other inventors should treat unreleased material as confidential and document the controls in place.
- **Identifiability is a fact that matters.** Because the outcome turned on the vines being unrecognizable, inventors of things that betray their novelty on inspection cannot assume that hidden physical presence equals secrecy.
- **Third-party leaks are not automatically fatal.** An inventor whose material escapes to unauthorized hands is not doomed under the public use bar if the escaped use stays private and unidentifiable, which counsels prompt investigation rather than panic filing.
- **Filing discipline still protects you.** The cleanest way to avoid the entire fight is to file before any material leaves controlled hands, since the one-year clock and the accessibility inquiry only become live once the invention is out in the world.

## Frequently asked questions

**What is the public use bar in patent law?** Under pre-AIA 35 U.S.C. Section 102(b), a patent is invalid if the invention was in public use in the United States more than one year before the patent application was filed. The rule prevents inventors from commercially exploiting an invention for years and then belatedly claiming a full patent term.

**Why was secretly planting the patented grapes not a public use?** The Federal Circuit held that the growers knew they were not authorized to have the plants and kept their possession of them secret, the vines were unlabeled, and grape varieties cannot be reliably identified just by looking at the growing vines. The vines were actually visible from public roads, but because nobody could tell what they were, the use was not accessible to the public and so did not place the invention in the hands of the public.

**Does self-replicating plant material change the public use analysis?** It raises the stakes but not the legal test. The concern with plants and seeds is that a single escaped specimen can be endlessly propagated, yet *Delano Farms* shows that unauthorized, concealed possession by people who knew they should not have the plants does not by itself make the invention publicly available for Section 102(b) purposes.

## Authorities and sources

- [*Delano Farms Co. v. Cal. Table Grape Comm'n*, No. 2014-1030 (Fed. Cir. Jan. 9, 2015), slip opinion (U.S. Court of Appeals for the Federal Circuit)](https://cafc.uscourts.gov/opinions-orders/14-1030.opinion.1-7-2015.1.pdf)
- [Federal Circuit docket entry for the opinion, 14-1030, precedential](https://cafc.uscourts.gov/1-09-2015-14-1030-delano-farms-company-v-california-table-grape-comm-opinion-14-1030-opinion-1-7-2015-1/)
- [*Delano Farms Co. v. Cal. Table Grape Comm'n*, 655 F.3d 1337 (Fed. Cir. 2011), the earlier sovereign immunity appeal](https://cafc.uscourts.gov/opinions-orders/10-1546.pdf)
- [*Delano Farms Co. v. Calif. Table Grape Comm'n*, 778 F.3d 1243 (Leagle)](https://www.leagle.com/decision/infco20150109093)
- [Dennis Crouch, "Delano Farms v. California Table Grape Commission" (Patently-O)](https://patentlyo.com/patent/2015/01/delano-california-commission.html)
- [35 U.S.C. Section 102 (Cornell LII)](https://www.law.cornell.edu/uscode/text/35/102)
- [*Pfaff v. Wells Electronics, Inc.*, 525 U.S. 55 (1998) (Cornell LII)](https://www.law.cornell.edu/supremecourt/text/525/55)
- [*Egbert v. Lippmann*, 104 U.S. 333 (1881) (Cornell LII)](https://www.law.cornell.edu/supremecourt/text/104/333)