Print PDF

For Infringement Under 35 U.S.C. § 271(g), Process Must Be Patented at Time Product Is Made

May 30, 2001

Decision icon Decision

Last Month at the Federal Circuit - June 2001

Judges: Bryson (author), Clevenger, and Linn

In Mycogen Plant Science, Inc. v. Monsanto Co., No. 00-1127 (Fed. Cir. May 30, 2001), the Federal Circuit reversed the district court’s SJ that the patent-in-suit is invalid under 35 U.S.C. § 102(g), affirmed the district court’s ruling on the interpretation of 35 U.S.C. § 271(g), and affirmed the district court’s ruling that Monsanto Company (“Monsanto”) is not liable for infringement under the DOE.

Mycogen Plant Science, Inc. and Agrigenetics, Inc. (collectively “Mycogen”) sued Monsanto for infringement of Mycogen’s U.S. Patent No. 5,380,831 (“the ‘831 patent”). On Monsanto’s motion for SJ, the district court ruled that the process claims of the ‘831 patent are invalid under 35 U.S.C. § 102(g) based on work done by scientists at Monsanto; that Monsanto could not have infringed Mycogen’s process claims under 35 U.S.C. § 271(g) based on any process Monsanto performed before the ‘831 patent issued; and that prosecution history estoppel barred application of the DOE to the product claims of the ‘831 patent.

This case relates to another infringement suit between the same parties, Mycogen Plant Science, Inc. v. Monsanto Co., 243 F.3d 1316 (Fed. Cir. 2001) (“Delaware I”). One of the two patents at issue in Delaware I, U.S. Patent No. 5,567,600 (“the ‘600 patent”), was also owned by Mycogen. The ‘831 patent and the ‘600 patent have virtually identical specifications and contain similar claims. In Delaware I, the Federal Circuit affirmed the district court’s claim construction and the jury’s verdict finding the claims of the ‘600 patent invalid due to prior invention under 35 U.S.C. § 102(g).

The independent process claim of the ‘831 patent recites a two-step method of designing a synthetic Bacillus thuringiensis gene to be more highly expressed in plants. The representative claim in the ‘600 patent, which was found invalid in the Delaware I litigation, recited a four-step method of designing such a gene. The first two steps in the ‘600 patent are also found in the ‘831 patent.

The Federal Circuit held that with regard to claim construction, the terms of the claims of the ‘831 patent must be construed consistently with the same terms in the ‘600 patent because claim construction had been litigated in Delaware I and in the district court below, and determination of that issue was necessary to a judgment in that case.

The Federal Circuit also held that a finding that Monsanto had reduced the four-step invention of the ‘600 patent to practice before September 9, 1988 (the date on which Mycogen had constructively reduced the invention to practice), necessarily means that Monsanto also had reduced the twostep invention of the ‘831 patent to practice prior to that date. The district court had determined that Mycogen was the first to conceive and that the conception occurred as early as November 1985. The Federal Circuit agreed. As to Monsanto’s date of conception, the Federal Circuit found that the record compels the conclusion that Monsanto had conceived the invention at least by September 8, 1987.

However, the Federal Circuit concluded that the evidence of record raised a genuine issue of material fact as to whether Mycogen was diligent throughout the critical period, which started just before Monsanto’s conception, i.e., September 8, 1987. As a result, the Federal Circuit reversed the district court’s grant of SJ that the process claims of the ‘831 patent are invalid as anticipated by prior invention by Monsanto.

Monsanto also argued that the claims are not enabled under 35 U.S.C. § 112, ¶ 1. Finding that the Delaware I judgment did not give rise to collateral estoppel on this issue, the Court held that since the district court had not addressed this issue and the proper resolution was not sufficiently clear, the district court should be left to decide whether there is a genuine issue of material fact as to enablement.

Mycogen also appealed from the district court’s SJ that Monsanto could not be liable under 35 U.S.C. § 271(g) for selling products containing genes made by the process of the ‘831 patent before the ‘831 patent issued. Mycogen argued that section 271(g) applies to the postissuance sale of any product made by a patented process, regardless of when the accused infringer performed the process. Monsanto countered that while it is true that the use must occur during the patent term, section 271(g) also requires that the product be made by a process patented in the United States, and that products made before the patent issued are not so made. The Federal Circuit held that liability for selling or using products under section 271(g) requires that the patent be issued and in force at the time that the process is practiced and the product made.

Finally, the district court had ruled on SJ that the prosecution history estopped Mycogen from relying on the DOE to show infringement of those claims. The Federal Circuit noted from the prosecution history that certain original product claims were rejected on the grounds of obviousness and lack of enablement, and they were canceled and replaced by narrower claims. The Court held that the cancellation of a claim with a broad limitation in favor of a claim with a narrow limitation creates prosecution history estoppel just like an amendment to a claim. Hence, no range of equivalents is available for that claim limitation.