The U.S. Court of Appeals for the Federal Circuit recently upheld a lower court’s ruling that a muscle magazine advertisement about a bodybuilding supplement rendered the underlying patent obvious and invalid.

The court’s Nov. 19 panel decision in Iovate Health Sciences Inc. v. Bio-Engineered Supplements & Nutrition Inc. upheld an Eastern District of Texas decision that seven claims of the patent were invalid because the invention “was disclosed in a printed publication before the critical date.”

The patent’s licensee, Iovate Health Sciences Inc., and its assignee, University of Florida Research Foundation Inc., sued Bio-Engineered Supplements & Nutrition Inc. and Medical Research Institute in March 2007, claiming patent infringement.

The lower court concluded that June 1995 and 1996 advertisements in Flex magazine about two other supplement companies’ products “anticipated” the foundation’s November 1997 provisional patent application and its November 1998 formal application.

The Federal Circuit concluded that a person with ordinary skill in the art would be able to figure out the exact amounts of the known ingredients listed in the ad to practice the invention, wrote Circuit Judge Alan Lourie.

“Thus, contrary to Iovate’s assertions, the district court correctly concluded, as do we, that a person of skill in the art, combining his or her knowledge of the art with the advertisement’s suggestions, would have considered the advertisement to be enabled,” Lourie wrote.

Charles Weiss, a partner at New York-based Kenyon & Kenyon, who argued the case for both Iovate and the university foundation, said he and his clients are “reviewing the decision and considering available options.”

Bio-Engineered Supplements’ lawyer, Philip Segrest Jr., a Chicago appellate and intellectual property litigation partner at Husch Blackwell Sanders, said he’s not aware of other Federal Circuit rulings involving advertisements, but it shouldn’t matter whether the invention was publicized in a scientific journal, magazine advertisement or newspaper article.

“In our case there was no issue that these magazines were printed and published and distributed,” Segrest said.

Bob Latham, a partner at Dallas-based Jackson Walker who represented defendant Medical Research Institute, said the advertisement disclosed all of the claim limitations of the patent in question and enabled a person skilled in the technology to make and use the invention.

“Since this particular patent related to muscle performance and recovery, it should not be so odd that invalidating prior art could be found in a muscle magazine,” Latham said.

Sheri Qualters can be reached at