Originally published in outs & ins, vol. 4, no. 2, 2004.
On March 30, 2004, a unanimous panel of the Court of Appeals for the Federal Circuit decided Monsanto Company v. Bayer BioScience N.V. fully in favor of Bayer BioScience, as it agreed with Bayer’s position on every issue appealed. The case was remanded to the Eastern District of Missouri for further proceedings. Monsanto Company v. Bayer BioScience N.V., No. 03-1201 (Fed. Cir. Mar. 30, 2004).
As explained by the Federal Circuit, the four Bayer BioScience patents-in-suit claim a variety of methods and products that relate to the transformation of plants with DNA that encodes proteins which render the transformed plants resistant to insect attack. Plant Genetic Systems, N.V., the predecessor to Bayer BioScience, developed a way to genetically engineer plants to produce a truncated or shortened version of an insecticidal protein made by the soil bacterium Bacillus thuringiensis or “Bt.” The patents-in-suit claim chimeric genes having a DNA fragment that encodes a truncated insecticidal protein; plant cells and plants that make that protein; and methods of protecting plants by altering the plants’ genetic codes so that they produce the insecticidal protein.
At the district court level, Monsanto filed summary judgment motions that the patents-in-suit were unenforceable, invalid, and not infringed. The district court granted these motions. The Federal Circuit reversed all of these decisions by the district court.
First, the Federal Circuit found that the district court wrongly applied the doctrine of collateral estoppel. The district court was found to have wrongly applied the result of Plant Genetic Systems, N.V. v. DeKalb Genetics Corp., 175 F. Supp. 246 (D. Conn. 2001), aff’d, 315 F.3d 1335 (Fed. Cir. 2003), to the present case. The Federal Circuit found the issues in the two cases to be different and the patent specifications to be significantly different. Further, the Federal Circuit held that Bayer is entitled to have the intrinsic evidence relevant to these patents to be considered. It was therefore improper for the district court to apply the findings in the first case without an independent examination of the intrinsic evidence specific to the patents here in suit.
Second, the Federal Circuit adopted the claim construction put forth by Bayer and reversed a finding of a summary judgment of non-infringement. The district court had found that the claim term “Bt2” was limited to a strain of Bt obtained from an particular source. Thus, to the district court, an identical protein obtained from a different strain of Bt would not infringe. The Federal Circuit reversed this finding and held that the claims are not limited to a “Bt2 toxin” from any specific Bt strain. Rather, any toxin that complies with the molecular weight and amino acid sequence requirements of the claims satisfies the ordinary meaning of the claims. The Federal Circuit remanded the case to the district court for further proceedings in accord with its opinion.
Finally, the Federal Circuit reversed the district court’s finding on summary judgment that the patents-in-suit were unenforceable. The Federal Circuit found that the district court had wrongly discounted the evidence that Bayer had submitted that explained Bayer’s conduct during prosecution before the United States Patent and Trademark Office. Rather, the district court should have credited Bayer’s evidence and found on summary judgment that the affidavit submitted to the USPTO was true. In this case, there was a factual dispute not only on the issue of intent, but also whether the affidavit was false or misleading at all. The Federal Circuit remanded the case to the district court and held that, on remand, the district court must weigh all of the evidence, direct and circumstantial.