Monsanto Co. v. Syngenta Seeds, Inc.

Citations: 503 F.3d 1352; 84 U.S.P.Q. 2d (BNA) 1705; 2007 U.S. App. LEXIS 23255; 2007 WL 2874217Docket: 2006-1472

Court: Court of Appeals for the Federal Circuit; October 4, 2007; Federal Appellate Court

Original Court Document: View Document

SummaryOriginalCytator Case TreatmentBackward CitatorAnalysis

EnglishEspañolSimplified EnglishEspañol Fácil

The United States Court of Appeals for the Federal Circuit affirmed the decision of the District Court for Delaware, which ruled that Syngenta and its associated companies did not infringe on U.S. Patents Nos. 5,538,880 and 6,013,863 (the Lundquist patents) owned by Dekalb Genetics Corporation, nor did they infringe on U.S. Patent No. 4,940,835 (the '835 patent) owned by Monsanto, which was deemed invalid for lack of enablement under 35 U.S.C. § 112. The patents in question relate to technologies for developing glyphosate-resistant transgenic corn, specifically the GA21 variety. The '835 patent claims a chimeric gene that imparts glyphosate resistance, while the Lundquist patents involve methods for producing herbicide-resistant corn. The '880 patent encompasses both herbicide and insect resistance, while the '863 patent focuses on glyphosate resistance with a screenable marker gene. Monsanto and Dekalb alleged that Syngenta infringed these patents by using GA21 seeds received from Monsanto's licensees to produce progeny with the GA21 trait. The case was originally filed in Delaware after being transferred from Illinois.

Syngenta asserts it did not infringe the Lundquist patents as it did not perform all steps of the claimed processes during the patent's term, despite Dekalb completing the necessary steps. Syngenta also contends that the '835 patent application lacks enablement for its asserted claims. Syngenta, which produces genetically engineered crops, acquired GA21 seeds from Garst Seed Company and Golden Harvest Seeds, which were licensed to sell these seeds. Monsanto acknowledges that Dekalb originally produced transgenic GA21 corn using a glyphosate-resistant gene from Bayer AG before the Lundquist patents were issued. Following a lawsuit from Dekalb, Syngenta filed an antitrust suit against Monsanto, consolidating it with the '835 patent case. The Delaware District Court, after claim construction, ruled on May 10, 2006, that the Lundquist patents were not infringed since Dekalb performed the initial process steps and found claims 1, 5, and 6 of the '835 patent invalid due to lack of enablement. The court noted that Syngenta legally obtained GA21 seeds from Monsanto’s licensees, thereby acquiring rights to produce GA21 progenies. On June 6, 2006, a final judgment favored Syngenta against Monsanto's infringement claim and upheld Syngenta's counterclaim for invalidity under 35 U.S.C. § 112. The appellate court reviews the summary judgment without deference, determining if there are any genuine material facts in dispute.

In Celotex Corp. v. Catrett, the court applies a standard that favors the nonmoving party by drawing all reasonable inferences in their favor. In patent infringement analysis, two key steps are involved: first, the interpretation of the patent claims, and second, comparing these claims to the accused device. Claim construction is treated as a legal question, while infringement, whether literal or under the doctrine of equivalents, is a factual question. Appeals regarding enablement determinations under 35 U.S.C. § 112 are conducted without deference, with factual underpinnings reviewed for clear error.

The case involves Monsanto's claims against Syngenta regarding the infringement of the '880 and '863 patents. Monsanto argues that claim 4 of the '880 patent is independent and does not require performing all steps of claim 1, while Syngenta contends that claim 4 is dependent on claim 1 and thus requires all steps of both claims to be performed for infringement to occur. The district court has construed claims 4-9 of the '880 patent and claims 5-6 of the '863 patent as dependent on claim 1. Claim 1 describes a three-step process for creating a herbicide-resistant transgenic plant, while claim 4 adds a fourth step of obtaining progeny from that plant. Monsanto posits that claim 4, despite its dependent format, is a distinct process that refers to the progeny obtained from the method in claim 1, which challenges the traditional understanding of dependent claims. The determination of whether a claim is dependent hinges on whether it refers back to and further limits the earlier claim as outlined in 35 U.S.C. § 112.

A dependent claim must reference a previously set claim and specify additional limitations related to the subject matter. It incorporates all limitations of the referenced claim. The classification of a claim as dependent or independent is based on its substance relative to 35 U.S.C. 112.4, not merely its format. Claim 4 refers to claim 1, detailing a process that results in a fertile transgenic plant and adds the step of obtaining progeny, thus conforming to the requirements for dependent claims. Monsanto's assertion that claim 4 is merely a product claim rather than a process claim is deemed irrelevant, as performing the steps of claim 1 remains necessary for infringement of claim 4. Claim 4 is effectively dependent on the completion of the steps detailed in claim 1, as the additional step of obtaining progeny relies on this prior process. The prosecution history of the '880 patent confirms that the original claim 30 was a dependent claim, requiring the performance of all steps in claim 23, which corresponds to claim 1. Amendments made to the claim were deemed formal and did not alter its dependent nature. Consequently, the district court’s interpretation of claims 4-9 of the '880 patent and claims 5-6 of the '863 patent as dependent claims is upheld. Additionally, Monsanto's appeal regarding non-infringement involves claims under 35 U.S.C. 271(a) and 271(g).

The district court determined that Syngenta could not infringe the dependent claims of the Lundquist patents since it did not infringe the independent claims. Under 35 U.S.C. § 112, dependent claims incorporate all limitations of their corresponding independent claims. Monsanto admitted that Syngenta did not infringe independent claim 1 but argued that Syngenta infringed dependent claims 4-9 of the '880 patent and claims 5-6 of the '863 patent. Monsanto's first argument was that Syngenta should be liable for infringement because all limitations of the independent claims were performed by Monsanto’s subsidiary, Dekalb. However, this argument was dismissed based on the precedent set in Wahpeton Canvas Co. Inc. v. Frontier, Inc., which states that if an independent claim is not infringed, dependent claims cannot be infringed either. Monsanto contended that Wahpeton applies only when an accused product lacks a single limitation from the independent claim, which was not the case here. The court reiterated that for infringement to occur, all steps of a claimed process must be performed, as established in EMI Group N. Am. Inc. v. Intel Corp. Since the three steps of the independent claim were practiced before the patents were issued, there was no infringement under 35 U.S.C. § 271(a). Consequently, Monsanto’s own actions authorized these steps, negating any claim of infringement. Additionally, the court found that infringement under 35 U.S.C. § 271(g) was also not applicable, as the requisite process steps had been completed before the patent issuance, referencing Mycogen Plant Science, Inc. v. Monsanto Co. to support this conclusion.

The court found no infringement under 35 U.S.C. § 271(g) because all process steps associated with the products were completed before the relevant patents were issued, despite the sale of those products during the patent period. It clarified that domestic entities practicing a patented process prior to the patent's issuance do not infringe, and this principle applies to overseas entities as well. In the case of Joy Technologies, the court reiterated that a method claim is infringed only when the entire process is performed, ruling that Syngenta could not be liable under § 271(a) or (g) for claims 4-9 of the '880 patent and claims 5-6 of the '863 patent.

Regarding patent enablement, the district court invalidated claims 1, 5, and 6 of the '835 patent under 35 U.S.C. § 112, stating the specification failed to enable the full scope of the claimed invention without undue experimentation. Claim 1 describes a chimeric plant gene with specific functional elements that must operate in any plant cell, including both monocots and dicots. The court referenced previous cases, particularly In re Vaeck, to illustrate the necessity of a reasonable correlation between a patent's narrow disclosure and its broad claims, emphasizing that the broad functional language in claim 1 lacked adequate support in the specification.

Full enablement of the '835 patent requires undue experimentation due to the inability to transform monocot plant cells at the time of its filing in July 1986. The claim encompasses all flowering plants, but without reliable methods for monocot cell transformation, the claimed functions cannot be verified. Monsanto contends that the claim language does not limit the scope to transformed plant cells, asserting that the patent includes separate claims for such cells. The court aligns with the district court's ruling, referencing past cases—In re Goodman and Plant Genetic Systems—where similar claims were found not enabled due to the lack of evidence for gene transformation methods applicable to monocots. The district court did not address all disputed claim terms for this appeal, focusing only on relevant ones, and Monsanto's invitation to vacate certain claim constructions is not addressed since they are not part of the appeal. The district court granted summary judgment that Syngenta did not infringe the asserted claims and that certain claims of the '835 patent are invalid for lack of enablement. The appellate court affirms the district court's decision, stating there are no genuine issues of material fact and the judgment is legally sound. Each party is responsible for its own costs.