Monsanto Co. v. Homan McFarling (Fed. Cir. 2004)

Patent, Patent Cases 2004

Monsanto Co. v. Homan McFarling
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McFarling replanted some ROUNDUP READY(r) soybeans that he had saved from his prior year’s crop in violation of the Technology Agreement that he signed as a condition of his purchase of the seeds from Monsanto. (U.S. Patents 5,633,435 and 5,352,605). On appeal from a summary judgment, McFarling argued that the Technology Agreement involved an unlawful misuse of Monsanto’s patents by restricting use of “god-made” second-generation seeds. The Court disagreed. Because the first-generation seeds (sold by Monsanto) were nearly identical copies to the second-generation seeds, the court found that the patent scope includes both generations. Thus, the Court rejected McFarling’s appeal and held that the Technology Agreement did not impermissibly extend Monsanto’s rights.

The Court vacated and remanded the district court’s damages award under Missouri law as an “unenforceable and invalid penalty clause.”

Andrew Hagen provides some anti-GMO comments and links. Canola Farmers may also be violating Monsanto’s patents. Here is an older article on the Roundup Ready soybean controversy, and here is another. Andrew Raff provides further commentary.

Update: Farmers in Argentina are allowed to cull seeds for replanting new crops. Apparently there is also a large black-market for GM seeds. (Thanks to Carol Nottenburg for the link).

Inland Steel Co. v. LTV Steel Co. (Fed. Cir. 2004)

Patent, Patent Cases 2004

Inland Steel Co. v. LTV Steel Co. and USX Corp.

The Court found that USX was a “prevailing party” on a claim before the district court, even though USX prevailed on the issue of invalidity in a different forum (a PTO reexamination). (U.S. Patents 4,421,574 and 4,483,723). Thus, USX may have a right to attorney fees and costs under 35 U.S.C. 285 and Rule 54(d) of the Federal Rules of Civil Procedure. The major indication of the status of prevailing party cited by the Court is that the case would have res judicata effect as to any claims brought against USX in the future with respect to the patent claims that were at issue in the district court case.

Reversed and remanded to determine whether the case is “exceptional” or if the court should exercise its discretion to allow or deny costs to the prevailing party.

Phillips v. AWH Corp.

Patent, Patent Cases 2004

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Phillips v. AWH Corp. (Fed. Cir. 2004)

In a case involving modular wall panels for prisons (U.S. Patent 4,677,798), the Federal Circuit interpreted the term “baffles” to structures oriented at angles other than 90 degrees. Although the ordinary meaning of the term (“something for deflecting, checking, or otherwise regulating flow”) includes 90 degree orientations, the Court listed two reasons for abandoning the ordinary meaning. First, the only embodiment shows “baffles angled at other than 90 degrees.” Next, the Court found that baffles angled at other than 90 degrees better realize the invention’s purpose of providing impact or projectile resistance.

In dissent, Judge Dyk argued that 1) a patent describing only a single embodiment is limited to that embodiment, and 2) impact or projectile resistance was not the only objective listed in the patent and claims are not required to be capable of achieving all of the objectives of an invention.

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NOTE: This case is scheduled for a rehearing en banc and will likely create dramatic changes to patent litigation procedures, just as Markman has done. Read more here.

Norian v. Stryker (Fed. Cir.)

Patent, Patent Cases 2004

Norian v. Stryker

In the most interesting portion of the case, the Appellate Court found that the District Court erred in allowing the jury, while determining validity, to consider factual misstatements made by the patentee during prosecution. (Jury did not rule on inequitable conduct.) The Appellate Court did not overrule the verdict on that point, however, because no objection was made at trial.

The case was reversed and remanded on other grounds.

Novartis Pharmaceuticals v. Eon Labs (Fed. Cir.)

Patent, Patent Cases 2004

Novartis Pharmaceuticals v. Eon Labs
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Novartis patented a cyclosporin hydrosol (aqueous solution) and sued Eon for infringement. (U.S. Patent 5,389,382) Eon’s cyclosporin, however, is suspended in ethanol rather than water. The infringement argument was that a Eon’s drug formed a hydrosol when ingested by a patient.

The court held that “hydrosol” as used in the patent is limited to an “aqueous medicinal preparations prepared outside the body,” and thus, that Eon’s formulation did not infrnge.

See Eon’s press release.