185 F.3d 1364 (Fed. Cir. 1999)
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.”1 The patent covers a post-mix beverage dispenser that stores beverage syrup concentrate and water separately until the beverage is dispensed after a consumer request.2 This differs from pre-mix dispensers where the beverage is pre-mixed and stored in a display reservoir bowl that stimulates impulse buying but requires frequent cleaning due to limited capacity and bacterial contamination.3
The claimed invention features a transparent bowl having no fluid connection with the outlet and visibly containing a quantity of fluid that is resistant to organic growth and simulates the appearance of the dispensed beverage.4 The bowl is positioned relative to the outlet to create the visual impression that the bowl is the reservoir and principal source of the dispensed beverage, although the beverage is mixed immediately before it is dispensed.5 Claim 1 requires that the bowl and the quantity of fluid visible within the bowl cooperate to create the visual impression that multiple servings of the dispensed beverage are stored within the bowl.6
Juicy Whip sued Orange Bang, Inc. and Unique Beverage Dispensers, Inc. in the United States District Court for the Central District of California alleging that they were infringing the claims of the 405 patent.7 Orange Bang moved for summary judgment of invalidity on the ground that the invention lacked utility, and the district court granted the motion.8
Whether the invention claimed in United States Patent No. 5,575,405 lacks utility under 35 U.S.C. § 101 because it is designed to deceive customers by imitating a pre-mix beverage dispenser?9
An invention is useful under section 101 if it is capable of providing some identifiable benefit.10 Inventions that are injurious to the well-being, good policy, or sound morals of society are unpatentable, but the principle that inventions are invalid if they are principally designed to serve immoral or illegal purposes has not been applied broadly in recent years.11
No. The post-mix beverage dispenser of the '405 patent is capable of providing the identifiable benefit of stimulating impulse buying while eliminating the need for frequent cleaning of display bowls. The transparent bowl creates the visual impression that it is the reservoir and principal source of the dispensed beverage. This capacity to fool customers does not render the invention unpatentable under section 101 because the requirement of utility in patent law is not a directive to serve as arbiters of deceptive trade practices.12
The invention claimed in the '405 patent does not lack utility under 35 U.S.C. § 101.13