By Dennis Crouch
Pioneer Hi-Bred International, Inc. ("Pioneer") v. Monsanto Technology LLC ("Monsanto") (Fed. Cir. 2012)
Both Pioneer and Monsanto claim to have invented the genetically modified variety of Zea Mays corn. In 1988, Pioneer filed its patent application and received U.S. Patent No. 6,258,999 in 2001 with a simple broad claim:
1. A fertile transgenic Zea mays plant comprised of stably incorporated foreign DNA, wherein said foreign DNA consists of DNA that is not from a corn plant and that is not comprised of a T-DNA border.
Monsanto filed its related GM Zea mays patent application in 2005 but asserted priority back to a 1990 filing date. The Board declared an interference in 2009 and assigned Pioneer as the senior party based upon its earlier filing date.
Both parties filed motions to the Board asking that the respective priority claims be denied. The board sided with Monsanto – finding that Monsanto's patent claim drafted in 2005 properly claimed priority to the 1990 filing document but that Pioneer's patented claim was not sufficiently disclosed in its 1988 application. That ruling made Monsanto the new senior party. On appeal, the Federal Circuit has affirmed.
Interference Claim Filing Date: On appeal, Pioneer argued that Monsanto's late-filed patent claim was time-barred by 35 U.S.C. § 135(b)(1). Under the statute, an interference can only be declared if the junior party makes a claim "prior to one year from the date on which the [senior party's] patent was granted." Here, the Federal Circuit affirmed the BPAI's ruling that Monsanto's patent claim submitted in 2005 was not time-barred even though it was filed four years after Pioneer's patent. That odd conclusion is based upon the [factual] conclusion that the 2005 was "sufficiently congruent" to patent claims filed by Monsanto before the critical date, even though no prior claim included all of the limitations found in the 2005 claim.
Burden of Proving/Disproving Priority: The second point on appeal focused on whether Pioneer's patent could properly claimed priority to its 1998 filing. Pioneer argued that the BPAI had improperly shifted the burden onto Pioneer for justifying an early priority date rather than forcing Monsanto to prove that Pioneer's patent claim was not entitled to the early filing-date priority. On appeal, the Federal Circuit agreed that Monsanto had the burden of showing why Pioneer should be deprived of its interference priority. However, the court agreed with the Board that Monsanto had met that burden by demonstrating that Pioneer's original application lacked any express reference to an embodiment in which the foreign DNA did not comprise a T-DNA border.
Deference: The case is perhaps most interesting for the clear deference that the appellate panel gives to the USPTO Board of Patent Appeals and Interferences – repeatedly focusing on whether the board committed reversible error rather than jumping to the underlying question of whether the Board made the correct decision. The Supreme Court's decision in Dickinson v. Zurko requires substantial deference be given for BPAI factual findings, although questions of law are still reviewed de novo.
- How this Relates to Marine Polymer: For this statute, the court provides a broad interpretation of the word "claim" that is not bound to the actual and literal text of the claim that is the subject of the interference. It is a parallel approach that led Judge Dyk to his conclusion in Marine Polymer that arguments made during prosecution change the scope of the claim and therefore should count as "amendments" under 35 U.S.C. 252. The issue of claim amendments under is important for reexaminations and reissue patents because those post-grant amendments (when "substantial") lead to absolute intervening rights for anyone using the invention prior to the amendments. The Federal Circuit has agreed to rehear the Marine Polymer case en banc later this year.
- My Friend Dr. Zuhn has more at PatentDocs
- Factual: In the text is bracket the word "factual" because it is not clear to me whether the conclusion of sufficiently congruent claims is a factual question regarding the scope of invention or a question of law based upon claim construction.