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Claims to using product made via another claim are dependent claims, noninfringement affirmed

October 04, 2007
Post by Blog Staff

In a battle between two agricultural heavyweights, Monsanto and Syngenta, the Federal Circuit affirmed a district court's ruling that Syngenta did not infringe two Monsanto patents and that a third was invalid for lack of enablement. The patents relate to tolerance to the herbicide glyphosate.

The court affirmed the district court's claim construction, noting that certain claims directed toward manipulating a plant obtained by the process in another claim were properly considered dependent claims. Because it was undisputed that Monsanto performed the three claimed steps to produce the original plant and Syngenta only performed the final step in the dependent claim, Syngenta was not liable for direct infringement under § 271(a). Also, because Monsanto had performed the three initial steps before the patent issued, there could be no infringement under § 271(g).

With regard to enablement, the court affirmed the invalidity of claims directed toward a chimeric gene that functions "in plant cells." As of the patent's priority date, transformation of monocots had not yet been successfully completed, and as a result, the specification did not enable the gene to function in all plant cells. Accordingly, the invalidity of those claims was affirmed.

More detail of Monsanto Co. v. Syngenta Seeds, Inc. after the jump.

Monsanto holds several patents relating to incorporation of genes conferring glyphosate tolerance into plants, as well as patents to the gene itself. At issue in this case were three patents. Two patents (the Lundquist patents) relate to methods for producing glyphosate-resistant corn plants and seeds, and a third relates to the gene that confers the resistance. Monsanto asserted these patents against Syngenta, one of its competitors in the seed corn business.

The applicable claims of the '880 patent are (emphasis added):

4. A process comprising obtaining progeny from a fertile transgenic plant obtained by the process of claim 1 which comprise said DNA.
5. The process of claim 4 wherein said progeny are obtained by crossing said fertile transgenic plant with an inbred line.
6. The process of claim 4 comprising obtaining seed from said progeny plants comprising said DNA from said seed.
7. The process of claim 5 wherein the progeny obtained are crossed back to the inbred line, to obtain further progeny which comprise said DNA.
8. The process of claim 6 wherein seed are obtained from said further progeny plants and plants comprising said DNA are recovered from said seed.
9. The process of claim 7 wherein said further progeny are crossed back to the inbred line to obtain progeny which comprise said DNA.

These claims all depend from claim 1, either directly or indirectly, which reads:

1. A process for producing a fertile transgenic Zea mays plant comprising the steps of (i) bombarding intact regenerable Zea mays cells with DNA-coated microprojectiles, (ii) identifying or selecting a population of transformed cells, and (iii) regenerating a fertile transgenic plant therefrom, wherein said DNA is transmitted through a complete sexual cycle of said transgenic plant to its progeny, and imparts herbicide resistance thereto.

The applicable claims from the '863 patent are:

5. The process of claim 1 further comprising obtaining transgenic glyphosate resistant progeny plants of subsequent generations from said fertile transgenic plant.
6. The process of claim 5 further comprising obtaining seed from one of said progeny plants.

As with the '880 patent, these claims depend from claim 1, which reads:

1. A process for producing a fertile transgenic Zea mays plant comprising the steps of (i) bombarding intact regenerable Zea mays cells with DNA-coated microprojectiles, wherein said DNA comprises at least a screenable marker gene; (ii) selecting a population of transformed cells expressing the selectable marker gene; and (iii) regenerating a fertile transgenic plant therefrom, wherein said DNA is expressed so as to impart glyphosate resistance to said transgenic plant and is transmitted through a normal sexual cycle of said transgenic plant to progeny plants.

Accordingly, each of the Lundquist patents has a claim 1 with three steps, and further claims that add additional steps.

The district court granted summary judgment of noninfringment of the asserted claims to Syngenta. Monsanto asserted that these claims were not actually dependent, but instead were independent, and just used the product produced from claim 1 as the starting material. It was undisputed that Monsanto performed the steps in claim 1 of each of these patents, and Syngenta only performed the steps listed in the various asserted dependent claims. The district court was unpersuaded by Monsanto's argument, finding the claims to be dependent claims, and as a result, Syngenta could not directly infringe having not performed the steps in claim 1. Also, there was no infringement under § 271(g) because Monsanto had performed the initial three steps before the patent had issued.

Claim 1 of the gene ('835) patent is representative (emphasis added):

1. A chimeric plant gene which comprises: (a) a promoter sequence which functions in plant cells; (b) a coding sequence which causes the production of RNA, encoding a chloroplast transit peptide/5-enolpyruvylshikimate-3-phosphate synthase fusion polypeptide, which chloroplast transit peptide permits the fusion polypeptide to be imported into a chloroplast of a plant cell; and (c) a 3' non-translated region which encodes a polyadenylation signal which functions in plant cells to cause the addition of polyadenylate nucleotides to the 3' end of the RNA; the promoter being heterologous with respect to the coding sequence and adapted to cause sufficient expression of the fusion polypeptide to enhance the glyphosate resistance of a plant cell transformed with the gene.

The district court granted summary judgment that this claim (and claims 5 and 6) was not enabled. As of the patent's priority date, it was not yet possible to transform monocot plant cells, only dicot cells. As a result, the claimed gene could not function "in plant cells" in the generic sense. Monsanto appealed these findings.

The Federal Circuit affirmed in all respects. Turning first to the infringement issue, the court held that the asserted claims of the Lundquist patents were properly considered dependent claims. As stated by the court:

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.

As a result, based on Monsanto's admission that it performed the first three steps of the process, Syngenta could not be found to directly infringe. The court also affirmed the finding of no infringement under § 271(g). According to the court, "infringement of a multi-step method claim cannot lie by the performance of a single step after issuance of the patent when the initial steps were performed prior to issuance."

Finally, the court also affirmed the finding of no enablement. It was undisputed that transformation of monocot plants was not possible as of the '835 patent's priority date. As a result, Monsanto was not entitled to broad claims to its gene that functions "in plant cells," because as of the priority date, it was impossible to successfully integrate the gene into monocot plant cells. Based on this finding, the district court's finding of nonenablement was affirmed.

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