Talk:Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)

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The district court in this case held a patent invalid for lack of utility on the ground that the patented invention was designed to deceive customers by imitating another product and thereby increasing sales of a particular good. We reverse and remand.

Juicy Whip, Inc., is the assignee of United States Patent No. 5,575,405, which is entitled "Post-Mix Beverage Dispenser With an Associated Simulated Display of Beverage." A "post-mix" beverage dispenser stores beverage syrup concentrate and water in separate locations until the beverage is ready to be dispensed.

Juicy Whip sued defendants Orange Bang, Inc., and Unique Beverage Dispensers, Inc., (collectively, "Orange Bang") in the United States District Court for the Central District of California, alleging that they were infringing the claims of the '405 patent. Orange Bang moved for summary judgment of invalidity, and the district court granted Orange Bang's motion on the ground that the invention lacked utility and thus was unpatentable under 35 U.S.C. § 101.

The court concluded that the invention lacked utility because its purpose was to increase sales by deception, i.e., through imitation of another product. The court explained that the purpose of the invention "is to create an illusion, whereby customers believe that the fluid contained in the bowl is the actual beverage that they are receiving, when of course it is not." Although the court acknowledged Juicy Whip's argument that the invention provides an accurate representation of the dispensed beverage for the consumer's benefit while eliminating the need for retailers to clean their display bowls, the court concluded that those claimed reasons for the patent's utility "are not independent of its deceptive purpose, and are thus insufficient to raise a disputed factual issue to present to a jury."

The court further held that the invention lacked utility because it "improves the prior art only to the extent that it increases the salability of beverages dispensed from post-mix dispensers"; an invention lacks utility, the court stated, if it confers no benefit to the public other than the opportunity for making a product more salable. Finally, the court ruled that the invention lacked utility because it "is merely an imitation of the pre-mix dispenser," and thus does not constitute a new and useful machine.

Section 101 of the Patent Act of 1952, 35 U.S.C. § 101, provides that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," may obtain a patent on the invention or discovery. The threshold of utility is not high: An invention is "useful" under section 101 if it is capable of providing some identifiable benefit.

It is not at all unusual for a product to be designed to appear to viewers to be something it is not. For example, cubic zirconium is designed to simulate a diamond, imitation gold leaf is designed to imitate real gold leaf, synthetic fabrics are designed to simulate expensive natural fabrics, and imitation leather is designed to look like real leather.

The fact that customers may believe they are receiving fluid directly from the display tank does not deprive the invention of utility.