Issue 212 | June 8, 2004
Monsanto Company, v. Bayer Bioscience N.V.

In Monsanto Company, v. Bayer Bioscience N.V., No. 03-1201 (Fed. Cir. March 30, 2004), the federal circuit reversed a finding of inequitable conduct by patentee Bayer and reversed a judgment that Monsanto did not infringe Bayer's '565, '372, and '799 patents.

Monsanto sought a declaratory judgment that its genetically transformed corn products did not infringe any of Bayer's '565, '372, '546, and '799 patents, directed to a variety of methods and products relating to the insertion of bacterial DNA into plants to give the plants resistance to certain insects. (All four patents are related; the first three issued from divisional applications of the application that ultimately matured into the '799 patent.). Monsanto also alleged invalidity and inequitable conduct -- Bayer counterclaimed for infringement. Granting Monsanto's summary judgment motions, the district court held that (1) all of the patents were unenforceable because of inequitable conduct; (2) all claims of the '546 and 2 claims of the '372 patent were invalid under principles of collateral estoppel; (3) Monsanto did not infringe any asserted claim of the '799 patent; and (4) Monsanto was entitled to summary judgment of noninfringement as to all of the asserted claims of the '565 patent and one of the asserted claims of the '372 patent based on its construction of the claim term "Bt2."

Reversing the finding of inequitable conduct based on an alleged false declaration filed during prosecution, the federal circuit stated it was error for the district court to have discounted Bayer's evidence to the contrary, i.e., an affidavit explaining the omitted test results from the affidavit submitted during prosecution. On summary judgment, "[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor." Here, the district court "resolved the central dispute over the omitted test results in favor of Monsanto, a decision that required the court to reject the explanation provided in Mr. Jansens' [Bayer's] affidavit."

Next, the federal circuit reversed the district court decision giving collateral estoppel effect to a decision in an earlier case (Plant Genetic Systems) between the predecessors of the parties litigant, that corn was not susceptible to transformation by Agrobacterium as of the priority date for the patents at issue. Based on that characterization, the district court held that the asserted claims of the '546 patent and claims 13 and 18 of the '372 patent were invalid for lack of enablement and that the asserted claims of the '799 patent were not infringed. The federal circuit disagreed, stating that the questions of enablement and infringement were similar to the issues decided in the previous case, but they were not the same. In order to determine whether the specifications of the '546 and '372 patents enabled the transformation of monocots through the use of Agrobacterium, the district court was required to consult those specifications, which differed significantly from the specification of the patent at issue in the Plant Genetic Systems case. It was also error for the district court to have applied the claim construction in the Plant Genetic Systems case without examining the intrinsic evidence specific to the '799 patent.

Finally, the federal circuit disagreed with the claim construction applied by the district court supporting its infringement determination. Because the ‘565 patent claims defined a "Bt2 toxin" as a molecule having a molecular weight of about 60 to about 80 kD with a particular amino acid sequence, it was error for the district court to have limited "Bt2" to a strain of Bt obtained from a particular source, the Berliner 1715 strain, and to have limited "Bt2 toxin" to a protein derived from that strain.

To view the full decision visit http://www.aplf.org/mailer/Issue212.doc

To discuss this topic further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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