Monsanto v. Sygenta (CAFC 2006-1472)

Monsanto tried to get '880 dependant claim 4 (to 1) declared independant, arguing that 4 was the capper to the product of claim 1. The so-called lynchpin was claim 4 preamble: "the process of claim 1 further comprising...."

To establish whether a claim is dependent upon another, this court examines if the new claim both refers to an earlier claim and further limits that referent. 35 U.S.C § 112, ¶ 4 (2000) ("[A] claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers."). A claim's status as dependent or independent depends on the substance of the claim in light of the language of § 112, ¶ 4, and not the form alone. See also Manual of Patent Examining Procedure (MPEP) § 608.01(m), (n) (August 2006); 37 C.F.R. § 1.75 (2007) (setting forth proper drafts for independent and dependent claims).

Claim 4 expressly recites the process of claim 1 and specifically requires a fertile transgenic plant obtained by the performance of the steps in claim 1. Further, it includes the additional step of obtaining progeny. Claim 4 thus incorporates the format specified by the statute for dependent claims. Contrary to Monsanto’s argument, claim 4 clearly references another claim, not simply a starting material. The claim might have used express language to clarify that it only invoked the product of the process in claim 1 as a starting material, but did not do so. Instead, the claim language reads claim 1 into claim 4.

Then, Monsanto argued that Sygenta infringed because every step of the process had been performed, with Sygenta completing the last step.

Monsanto’s first argument cannot prevail in light of this court’s decision in Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989). In Wahpeton, this court explained:

One may infringe an independent claim and not infringe a claim dependent on that claim. The reverse is not true. One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.   

Id.

As this court has stated many times, "[f]or infringement of a process invention, all of the steps of the process must be performed, either as claimed or by an equivalent step." EMI Group N. Am., Inc. v. Intel Corp., 157 F.3d 887, 896 (Fed. Cir. 1998). As a result of this rule, the performance of the three steps (of independent claim 1) is a prerequisite for the infringement of the four-step process claims of the Lundquist patents. Furthermore, infringement under § 271(a) requires use "without authority . . . during the patent term."

This case lacks any basis for infringement under claim 1 because those steps occurred before patent issuance. Monsanto itself performed those three steps before issuance of the Lundquist patents. Thus, Monsanto itself authorized the first three steps of the claimed four-step process.

Claim 1 of the '835 patent was nailed for lack of enablement, specifically, undue experimentation.

"[T]o be enabling, the specification of the patent must teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation. '" In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (citing In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991)); In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988); In re Fisher, 427 F.2d 833, 839 (C.C.P.A. 1970)).

The claim was so broad as to include all plants.

As this court noted in Plant Genetic Systems, "[f]lowering plants can be broadly categorized as monocotyledons (‘monocots‘) and dicotyledons (‘dicots‘), depending on whether the initial development of the seed produces one leaf (monocot) or two leaves (dicot)." 315 F.3d 1335, 1338 (Fed. Cir. 2003).

The district court correctly construed claim 1 of the '835 patent to require the claimed gene to function in any plant cell, including both dicots and monocots. Indeed, the functional language of claim 1 is analogous to the functional language in In re Vaeck. 947 F.2d 488, 490 (Fed. Cir. 1991). In Vaeck, this court held the limitation "[a] chimeric gene capable of being expressed in Cyanobacteria cells" required the claimed gene to function in all cyanobacteria. Id. at 495. This court affirmed the rejection of the Patent Office because there was "no reasonable correlation between the narrow disclosure in appellants' specification and the broad scope of protection sought in the claims encompassing gene expression in any and all cyanobacteria." Id. Indeed, cyanobacteria comprised approximately 150 different genera and was poorly studied and highly unpredictable. Id. at 493. Under these conditions, this court held full enablement would require undue experimentation. Id. at 496.

[T]he '835 patent was filed before transformation of monocot cells was possible. Therefore, those skilled in the art could not transform a monocot plant cell as of the filing date of the patent application. The claim requires transformation of the plant cell. Without the ability to transform a monocot cell, one skilled in the art could not determine whether the plant gene could carry out the claimed functions and thus fall within the scope of the claim.

District court patent whacking affirmed.