Monsanto Co. v. Syngenta Seeds, Inc. (Fed. Cir. 2007)
Monsanto and its Dekalb subsidiary hold three patents covering Roundup-Ready Corn.
- 4,940,835 covers a GM gene that confers glyphosate resistance to plants.
- 5,538,880 covers the process of producing herbicide and insect resistant corn.
- 6,013,863 covers the process of producing glyphosate resistant corn having a marker gene.
Syngenta grew Dekalb GM seeds that had been produced according to the patented methods and then grew genetically identical progeny exhibiting the same GM traits.
In the ensuing infringement litigation, the district court held that the ‘835 patent invalid for under 35 USC 112 for lack of enablement and held that Syngenta did not infringe the two process patents because the accused infringer did not perform the initial step of the claims. (That initial step of “bombarding … cells with DNA-coated microprojectiles” was performed by Bayer prior to issuance of the patents).
Enablement: The ‘835 patent is not limited to corn. Rather, it claims to be applicable to ‘plant cells.’ During claim construction, the district court found that the patent scope extended to all plant cells – including both monocots and dicots. However, the ‘835 patent was filed before genetic transformation of monocot cells was possible.
“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.”
Thus, the ‘835 patent is invalid for lack of enablement.
Infringement of Dependent Process Claims: Generally, a dependent claim includes all the limitations of its parent. Here, however, Monsanto argues that its process claim structure necessitates an alternative viewpoint. In particular, Monsanto argued in the alternative that its Claim 4 is (1) not a dependent and (2) even if a dependent does not require all the limitations of Claim 1. The process claims line-up as follows:
- Claim 1: A process for producing a fertile transgenic Zea mays plant comprising the steps of …
- Claim 4: A process comprising obtaining progeny from a fertile transgenic plant obtained by the process of claim 1 which comprise said DNA.
Thus, Claim 4 is directed to a process of growing seeds from a plant that was produced according to the manner of claim 1. This could be considered a claim directed to a process of using a product of a process.
The CAFC quickly shot-down Monsanto’s argument — holding that claim 4 is a dependent and the all element rule applies.
“Although in a somewhat unusual format, claim 4 is dependent from claim 1 because it only stands if all three steps recited in claim 1 have been performed. In other words, the additional fourth step of obtaining progeny depends on the performance of the process comprising the three steps recited in claim 1 for obtaining a fertile transgenic plant. Claim 4 contains each element of a dependent claim.”
The court also repeated its rule that one “cannot infringe” a dependent claim without also infringing the parent claim.
271(g) Infringement: Under 271(g), a product made by a patented process also creates infringement liability. Here, however, Syngenta could not be held liable because several steps of the process were performed prior to issuance of the patent.
“Infringement is not possible under § 271(g) when the three first steps of the claimed process are performed before the issuance of the patent.”
Summary judgment of noninfringement and invalidity affirmed.