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A Party to an Interference Proceeding May Rely on Multiple Precritical Date Claims to Support a Postcritical Date Challenge to a Patent

February 28, 2012
Rodkey, Kevin D.

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Last Month at the Federal Circuit - March 2012

Judges: Prost, Clevenger (author), Reyna

[Appealed from: Board]

In Pioneer Hi-Bred International, Inc. v. Monsanto Technology LLC, No. 11-1285 (Fed. Cir. Feb. 28, 2012), the Federal Circuit affirmed the Board’s finding that Monsanto Technology LLC (“Monsanto”) was not time-barred in bringing an interference based on multiple claims under 35 U.S.C. § 135(b)(1) against Pioneer Hi-Bred International, Inc. (“Pioneer”), and that Monsanto was entitled to seniority in the interference proceedings.

The Board declared an interference between all of the claims of Pioneer’s U.S. Patent No. 6,258,999 (“the ’999 patent”), issued July 10, 2001, which claims an invention date of June 10, 1988, and twelve claims of Monsanto’s U.S. Patent Application No. 11/151,700 (“the ’700 application”), filed June 13, 2005, and claiming an invention date of January 22, 1990. The ’999 patent relates to a transgenic Zea mays corn plant without a T-DNA border. Monsanto’s ’700 application also pertains to a transgenic Zea mays corn plant.

The Board initially designated Pioneer as the senior party. The Board rejected Pioneer’s argument that Monstanto’s claims were time-barred under § 135(b) because, although the ’700 application was filed more than one year after the ’999 patent issued, the ’700 application related back to an application Monsanto filed before the critical date. Thereafter, the Board found that the ’999 patent was not entitled to its priority claim, thus making Monsanto the senior party. Pioneer then stipulated to judgment in Monsanto’s favor and, following the entry of judgment and cancelation of its claims, appealed.

On appeal, the Federal Circuit first considered whether Monsanto could rely on multiple claims of its precritical date application to provide a basis for the interference. The Court held that the Board properly relied on multiple precritical date claims even though the ’700 application was filed more than one year after the ’999 patent issued. Relying on established precedent, the Federal Circuit determined that § 135 can be satisfied by multiple prior claims. The Court determined that the holding in Thompson v. Hamilton, 152 F.2d 994 (C.C.P.A. 1946), was clear that multiple precritical date claims, considered together, can provide the foundation necessary for postcritical date claims to be held timely. The Court then noted that “Thompson therefore stands for the proposition that, for purposes of section 135(b)(1), the Board may in some cases find the required pre-critical date claiming by analyzing multiple claims together.” Slip op. at 9.

Second, the Federal Circuit concluded that the Board did not err in finding that Monsanto’s precritical date claims were sufficient to permit it to overcome the lack of timeliness. The Court rejected Pioneer’s argument that the precritical date claims were too disparate to be “sufficiently congruent” to form the foundation for the interference. The Federal Circuit approved the Board’s test of checking, for each precritical date claim, to see if the claim was directed to the “same invention” as the others or whether it was addressing a “related” invention. As such, the Federal Circuit rejected Pioneer’s argument that Monsanto’s precritical date claims were not directed to the same invention because claim 9 depended directly from claim 1 and claim 8 depended from claim 7, which depended from claim 1. The Court rejected Pioneer’s arguments: “[T]here is no error per se in considering multiple claims of a pre-critical date application together for section 135 purposes. To hold, as Pioneer proposes, that such consideration is limited to claims in a dependency relationship would undermine our precedent.” Id. at 10. Since a dependent claim inherits all limitations of the parent independent claim, considering a parent and its dependent together is not practically different from considering only the dependent claim.

In light of that conclusion, the Federal Circuit held that the Board did not err in finding that precritical date claim 9 (which added a limitation that the claimed plant “expresses a selectable marker gene”) was directed to the same invention as precritical date claims 7 and 8 (which added limitations concerning beneficial traits coded for by incorporated heterologous DNA) because nothing in claim 9 indicated a choice away from the limitations of claim 7 or claim 8. Thus, taken together, the precritical date claims provided the necessary support under § 135 that the precritical date claims did not differ materially from the postcritical date claim. The Court similarly concluded with respect to Monsanto’s other precritical date claims.

Finally, the Federal Circuit agreed with the Board’s conclusion that Pioneer was not entitled to the priority date of its earlier application because the earlier application lacked an enabling disclosure of an embodiment satisfying the ’999 patent claim’s requirement of “foreign DNA . . . that is not comprised of a T-DNA border.” Id. at 13 (citation omitted). The Court concluded that Monsanto satisfied its initial burden of showing why Pioneer should be deprived of its interference priority by highlighting the lack of any express reference to such an embodiment in Pioneer’s earlier application. Thus, “[t]he Board was entitled to treat this as a prima facie justification for relief, which Pioneer was required to rebut.” Id. at 14. Since Pioneer’s earlier application contained no express discussion of T-DNA borders and no serious contention of inherency was made, the Court affirmed the Board’s priority decision.

Accordingly, the Federal Circuit affirmed the judgment of the Board.

Summary authored by Kevin D. Rodkey, Esq.