NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: WINGEN LLC,

Appellant

______________________ 

2021-2322

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 15/229,819.

______________________ 

Decided: February 2, 2023

______________________ 

SEAN ALLEN PASSINO, Pilloff Passino & Cosenza LLP, 

Alexandria, VA, argued for appellant. Also represented by 

MARTIN JAMES COSENZA, II, RACHEL KAREN PILLOFF. 

 MAUREEN DONOVAN QUELER, Office of the Solicitor, 

United States Patent and Trademark Office, Alexandria, 

VA, argued for appellee Katherine K. Vidal. Also represented by SARAH E. CRAVEN, THOMAS W. KRAUSE, AMY J.

NELSON, FARHEENA YASMEEN RASHEED. 

______________________ 

Before LOURIE, TARANTO, and STOLL, Circuit Judges. 

LOURIE, Circuit Judge.

WinGen LLC (“WinGen”) appeals from a final written 

decision of the U.S. Patent and Trademark Office Patent 

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2 IN RE: WINGEN LLC

Trial and Appeals Board (“the Board”) affirming an examiner’s rejection of claims 1–4, 6, 7, and 9–15 of U.S. Patent

Application 15/229,819 (“the ’819 application”), which is an 

application for reissue of U.S. Patent 9,313,959 (“the ’959 

patent”) filed under 35 U.S.C. § 251. See Ex parte Ushio 

Sakazaki, Appeal No. 2021-002993 (P.T.A.B. Jul. 14, 2021) 

(“Decision”), J.A. 1–38. For the reasons provided below, we 

affirm. 

BACKGROUND

The ’819 application is a reissue application of a utility 

patent directed to an ornamental Calibrachoa plant, similar to a petunia, known as ‘Cherry Star.’ J.A. 88 at col. 1 

ll. 27–29. The claimed plant variety comprises a “single 

half-dominant gene” that results in a center-star pattern 

on the petals. Id. at col. 9 ll. 13–21. That petal phenotype 

had not previously been observed in any wild species of 

Calibrachoa, but rather was created through the inventor’s 

breeding process. Id. at col. 1 ll. 20–23. Figure 1, showing 

‘Cherry Star,’ is reproduced below. 

J.A. 140. 

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IN RE: WINGEN LLC 3

Claim 1 is representative:

1. A Calibrachoa plant comprising at least one 

inflorescence with a radially symmetric pattern 

along the center of the fused petal margins, 

wherein said pattern extends from the center of 

the inflorescence and does not fade during the life 

of the inflorescence, 

and wherein the Calibrachoa plant comprises 

a single half-dominant gene, as found in Calibrachoa variety ‘Cherry Star,’ representative 

seed having been deposited under ATCC Accession No. PTA-13363.

J.A. 92 at col. 9 ll. 13–21. During the prosecution of the 

’959 patent, the limitation “a single half-dominant gene” 

was added to claim 1 overcome a rejection. Decision, J.A. 8; 

J.A. 307. The other claims relate to more specific properties of the plant or methods of producing the plant. J.A. 92

at col. 9 ll. 22–col. 10 ll. 51. 

The examiner issued a final office action that included 

rejections for lack of written description, nonstatutory double patenting, lack of enablement, and prior public use. 

J.A. 1605–30. Of relevance, the examiner rejected claims 

1–4, 6, 7, and 11 under pre-AIA 35 U.S.C. § 102(b) based 

upon an alleged prior public use of the invention at an 

event hosted by Proven Winners North America LLC 

(“Proven Winners”). J.A. 1611–15. Other claims were rejected as obvious based on the aforementioned alleged public use of ‘Cherry Star’ in combination with one of two other 

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4 IN RE: WINGEN LLC

printed publications: Butler1 (claims 9, 10, 14, 15) and

Dole2 (claims 12, 13). J.A. 1615–16.

Proven Winners, which has common shareholders with 

the original assignee of the ’959 patent, Plant 21 LLC 

(“Plant 21”), is a brand management and marketing entity 

responsible for various plant brands. J.A. 29. WinGen is 

the current assignee of the ’959 patent. Plant 21 entrusted

Proven Winners with samples of ‘Cherry Star’ to show at a 

private event at Home Depot. At that event, a ‘Cherry Star’ 

plant was on display. J.A. 326. Attendees were not permitted to take cuttings, seeds, or tissue samples of the 

plant, but were provided a leaflet to bring home that included a photograph and brief description of the plant. Id. 

Visitors were under no obligations of confidentiality regarding what they had seen or the content of the handout

but were not provided any gene or breeding information regarding ‘Cherry Star.’ Id. 

Following the examiner’s final rejection of all pending 

claims, WinGen appealed to the Board. The Board reversed all but the examiner’s prior public use-based rejections. The Board found that ‘Cherry Star’ had been 

accessible to the public—the attendees, not Proven Winners—at the Home Depot event and upheld the examiner’s 

rejections under § 102(b). J.A. 28–36. The Board noted 

that it was undisputed that a complete invention 

1 J.D. Butler et al., Plant Breeding as a Hobby, UNIV.

OF ILL., COLL. OF AGRIC., EXTENSION SERV. IN AGRIC. AND 

HOME ECON. CIRCULAR 817 (1960), http://hdl.handle.net/2142/33706. See Ex parte Ushio Sakazaki, Appeal 

No. 2021-002993, Appeal Br. Ex. 21-1. 

2 John M. Dole et al., Producing Vegetative Petunias 

and Calibrachoa, GREENHOUSE PROD. NEWS (Mar. 2002),

http://www.gpnmag.com/article/producing-vegetative-petunias-and-calibrachoa/. See Ex parte Ushio Sakazaki, Appeal No. 2021-002993, Appeal Br. Ex. 22-1.

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IN RE: WINGEN LLC 5

comprising all the claimed characteristics was on display 

at the Home Depot event and found that there were no confidentiality restrictions due to the dissemination of the 

handout.3 J.A. 33–34. 

WinGen appeals the Board’s rejection of claims 1–4, 6, 

7, and 9–15 of the ’819 application. We have jurisdiction 

under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal determinations de novo, In 

re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and review

the Board’s factual findings underlying those determinations for substantial evidence. In re Gartside, 203 F.3d 

1305, 1316 (Fed. Cir. 2000). Public use under pre-AIA 

35 U.S.C. § 102(b) is a question of law based on underlying 

facts. Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 

1320 (Fed. Cir. 2002). Obviousness is a legal determination 

based on underlying factual findings. Intelligent Bio-Sys., 

Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. 

Cir. 2016).

WinGen argues on appeal that the Board erred in finding prior public use when all of the claimed features (e.g., 

the plant genetics) were not made available to the public. 

Namely, WinGen asserts that without actual possession of 

‘Cherry Star’ from which it may be bred, it could not fairly 

be said that anyone was in possession of all the claimed 

3 It is undisputed that ‘Cherry Star’ was not on sale 

or offered for sale at the Home Depot event. Because the 

Board found that ‘Cherry Star’ had been accessible to the 

public at the Home Depot event, the Board found that it 

did not need to address whether it had been commercially 

exploited or not. J.A. 30. We, like the Board, do not find it 

necessary to address that issue. 

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6 IN RE: WINGEN LLC

features. In particular, WinGen argues that attendees 

would not have been aware of or able to readily ascertain 

that ‘Cherry Star’ resulted from a “single half-dominant 

gene,” and therefore the display at the Home Depot event 

was not an invalidating prior public use. 

An applicant may not receive a patent for an invention 

that was “in public use . . . more than one year prior to the 

date of the application for patent in the United States.” 35 

U.S.C. § 102(b) (2012). To determine whether a prior use 

constitutes an invalidating “public use,” we consider 

“whether the purported use: (1) was accessible to the public; or (2) was commercially exploited.” Invitrogen Corp. 

v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005). 

Although our precedent includes a plethora of cases analyzing what constitutes a use “accessible to the public,” 

what is necessary for an invalidating prior public use of a 

plant has not been considered at length by this court. Our

only case involving prior public use of a plant, Delano 

Farms Co. v. Cal. Table Grape Comm’n, 778 F.3d 1243 

(Fed. Cir. 2015), hinged on facts much different from those 

before us. Delano Farms involved the unauthorized use of 

a patented grape varietal. Several alleged public uses were 

considered, but of relevance here was the unauthorized 

growing of the claimed grapes in locations visible from public roads. Id. at 1249. Although viewable by the public, 

these grapes were “not labeled in any way” and there was 

no evidence that anyone recognized the grapes as the 

claimed varietal. Id. We therefore concluded that there 

was no prior public use. 

Here, the same cannot be said. The ‘Cherry Star’ plant 

on display at the Home Depot event was indisputably identifiable as such. See J.A. 1473 (Examiner concluding that 

“‘Cherry Star’ . . . was specifically identified at the Home 

Depot event”). Indeed, Kerry Meyer, the Program Director 

at Proven Winners, testified that, “[a]n advertisement containing a picture and description of ‘Cherry Star’ was given 

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IN RE: WINGEN LLC 7

to attendees of the HOME DEPOT® event.” J.A. 326. The 

relevant portion of the handout is reproduced below.

J.A. 3945. Although the handout itself cannot constitute a 

public use, the leaflet confirms that attendees were informed that the physical plant on display was, in fact, 

‘Cherry Star.’

Further, and more importantly, unlike the grapes at 

issue in Delano Farms, the purpose, or use, of ‘Cherry Star’ 

is purely ornamental. Appellant Br. at 27 (“To be clear, 

‘Cherry Star’ is an ornamental plant.”); J.A. 88 at col. 1 

ll. 27–28 (“The present disclosure relates generally to the 

field of ornamental Calibrachoa plants.”). None of the significant public use cases, including those cited by the parties, involved an invention whose intended purpose was 

ornament.4 See, e.g., Egbert v. Lippmann, 104 U.S. 333 

(1881) (corset); Dey, L.P. v. Sunovion Pharms., Inc., 715 

F.3d 1351 (Fed. Cir. 2013) (pharmaceutical drug); 

4 Notably, plant inventors have the option of seeking 

either a plant patent under 35 U.S.C. § 161 or a utility patent directed to a plant under 35 U.S.C. § 101. Each has

certain drawbacks and benefits, but only § 101 requires the 

invention to be “useful.” Here, the applicant chose to seek 

a utility patent. Usefulness has not been raised in this case 

and we do not address it here. 

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Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 

1379 (Fed. Cir. 2007) (keyboard); In re Epstein, 32 F.3d 

1559 (Fed. Cir. 1994) (software). This case therefore presents a unique question. 

In Motionless Keyboard, 486 F.3d at 1385, we found 

that there was no evidence showing that “the inventions 

were used for their intended purpose” because the only alleged prior public uses involved the mere visual display of 

the claimed keyboard “without putting it into use.” We 

found that, because the keyboard “was not connected to a 

computer or any other device” and was not ever used “to 

transmit data,” the disclosures did not rise to the level of 

public use. Id. This case is different. The only stated use 

for ‘Cherry Star’ is to be ornamental. Appellant Br. at 27; 

J.A. 88 at col. 1 ll. 27–28. The displaying of ‘Cherry Star’ 

at the Home Depot event was therefore undoubtedly a use 

for its intended purpose: ornament. 

The Board concluded that because the ‘Cherry Star’ 

plant on display at the Home Depot event embodied the 

claimed invention and such use was publicly accessible, the 

display of the plant at the event constituted prior public 

use under pre-AIA 35 U.S.C. § 102. WinGen argues that 

the claimed genetics of ‘Cherry Star’ needed to have been 

publicly disclosed for there to have been an invalidating 

public use. But WinGen did not meaningfully present such 

an argument to the Board. We agree with the Director that 

such an argument was forfeited. The Board did not decide, 

and the Director does not contend, that it was legally irrelevant whether attendees at the plant display, lacking physical possession of the plant, could discern that it had the 

claimed genetic character. We do not decide the issue either.

We therefore affirm the Board’s affirmance of the examiner’s rejection of claims 1–4, 6, 7, and 11 as anticipated. 

Because WinGen makes no separate arguments with regard to the Board’s affirmance of the examiner’s rejection 

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IN RE: WINGEN LLC 9

of claims 9, 10, and 12–15 as obvious, we likewise affirm 

the rejection of those claims. 

CONCLUSION

We have considered WinGen’s remaining arguments 

but find them unpersuasive. For the foregoing reasons, the 

decision of the Board is affirmed. 

AFFIRMED

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